New gTLDs : new details on the Trademark Clearinghouse (TMCH) before its opening on March 26, 2013

On March 20, 2013, Icann made some updates about the TMCH.

After the public comment period followed by observations from the Generic Names Supporting Organization (GNSO, a support organization), ICANN which manages the worldwide domain name system has brought to light the following proposals of the Strawman solution[1]:

  • 30-Day Notice Requirement for Sunrise

This notice will allow rights holders to anticipate and prepare themselves to the launch of a new TLD.

If this measure is charitable, it is nevertheless not revolutionary. Indeed, the existence of a notice prior the launch of a new gTLD is quite usual.

The Trademark Claims Service is a notification service providing notice to the registrant of a domain name that (perfectly) matches a trademark in the TMCH.

The initial period, set at 60 days, has been extended to 90 days.

If this announcement may look appealing, the consequences are limited due to the very function of the Trademark Claims Service. Indeed, the registrant will be able to register the domain name even if it receives a notification. The latter does not prevent the registration of the disputed domain name but is an evidence of bad faith in case of litigation.

  • Trademark Claims protection for previously abused names

A new system has just been established, designed to protect trademarks which have already been subject to cybersquatting. It is now possible to record names infringing a trademark. The following conditions were imposed:

–          as a result of a UDRP or court proceeding, the name must have been found to be the subject of abusive registrations;

–          the said mark has to be duly registered in the TMCH;

–          the number of the names is limited to 50.

This measure is interesting and innovative but should have a limited scope. Indeed, according to our experience, it is not often that a name is included identically in several extensions. This element should therefore involve quite a small number of names.

If the protective effects of these measures are limited in general, these initiatives should be welcomed, being in favor of rights holders.

Our Law firm is at your disposal for any further information.

[1] The Strawman was developped by community stakeholders in November 2012 in order to complete the launch of new gTLDs.