New Trademark Clearinghouse Allows Brand Owners to Monitor and Register Domain Names

The Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for “running” the Internet, has created a central database that allows brand owners to register their trademarks. This repository, called the Trademark Clearinghouse, will enable companies and individuals with verified trademark rights to participate in services that will help protect their rights. The Clearinghouse will alert brand owners when someone is registering a matching domain name (i.e., a letter string with a top level domain indicator (e.g., .com, .net)).  The party applying for the domain name will be notified that its application corresponds to a verified trademark in the database.

Four types of marks are eligible for inclusion in the Clearinghouse database:

• Nationally or regionally registered word marks from all jurisdictions
• “Common law” (unregistered) word marks that have been validated through a court of law or other judicial proceeding
• Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion
• Other marks that constitute intellectual property

Rights holders that register their marks with the Clearinghouse will receive:

• Access to Sunrise Services – The Sunrise period allows trademark holders the opportunity to register domain names corresponding to their marks before such names are generally available to the public. This will occur whenever a new top level domain is created and will last for at least 30 days.

•  Access to Trademark Claims Services – Trademark Claims Services become available after the Sunrise period.  It is a notification service that warns a potential domain name registrant when a new domain name matches a trademark term in the Clearinghouse database.  If after receiving the notice, the potential registrant proceeds to register the domain name, the owner of the corresponding trademark is notified to permit them to take appropriate action if they so desire.

In order to register a mark with the Clearinghouse, a trademark owner must submit basic information about the trademark (e.g., registration number, registration date, jurisdiction, description of goods and services, etc.), which will be verified by the Clearinghouse prior to acceptance. A party who wishes to have the option to use the Sunrise Services must also submit a signed declaration of use and a sample of proof of use of the mark.

The cost to register a single trademark with the Clearinghouse is:

• $150 for one year
• $435 for three years
• $725 for five years

If you have questions about the ICANN Trademark Clearinghouse, contact your Boyle Fredrickson attorney.