The Trademark Claims Service is a service offered by the Trademark Clearinghouse (TMCH). During the first 90 days of the general opening, alerts are sent to applicants wanting to register a name identical to the trademark registered with the TMCH including to the holders of the said trademark if the name could be registered.
The novelty lies in the service of sending notifications for post-registration to trademark holders, which will be expanded indefinitely whereas the pre-registration alerts directed to the applicant will only be active during the initial 90 day period.
This expansion of the service is an advantage for trademark holders as they will remain informed of the registration of names and may act accordingly even after the initial 90 day period. However the pre-registration alerts will be stopped, but this situation may be amended if the registrars are willing to cooperate in this matter.
This service is of particular interest to the extent that it enables monitoring – albeit limited- of trademarks registered with the TMCH. It is therefore perfectly suited to the defense of secondary trademarks which are not subject to extensive monitoring.
On 6 November 2013, The Paris International Chamber of Commerce published an important decision in the development process of new strings: the designated experts rejected the Limited Public Interest objection filed by the Independent Objector against the application made by the Afilias ltd Company for the delegation of the string .HEALTH (for more details on this decision go to: http://newgtlds.icann.org/sites/default/files/drsp/15nov13/determination-1-1-868-3442-en.pdf).
This decision sets a precedent: it is the first decision to be made following a Limited Public Interest objection.
As a reminder, 4 types of objections were available to oppose an application for one of the new strings: the String Confusion Objections, Legal Rights Objections, Community Objections and finally the Limited Public Interest Objection (http://newgtlds.icann.org/en/program-status/odr).
Limited Public Interest objections can only be filed by the Independent Objector when he considers that the tld was “in breach of morality and public order as defined in the general principles of international law” (Applicant’s Guide, art 3.5.3). This clause covers unjustified violent actions, racism, child pornography and anything that would be contrary to the principles of international law in accordance with international conventions (specified in the Applicant’s Guide, 11 in total, from the Universal Declaration of Human Rights to the Convention on the Rights of the Child).
The Independent Objector has the task of defending the interests of Internet users and must be represented in the International Chamber of Commerce in Paris (CCIP). Nominated by ICANN in May 2012, the Independent Objector is currently Professor Alain Pellet (official website http://www.independent-objector-newgtlds.org).
Accordingly, the Independent Objector, considering that the granting of .HEALTH to the Afilias ltd Company would be against the interests of Internet users, filed an objection against their application. For the Independent Objector, the term “health” does not designate something anodyne but rather “a crucial, existential need for every human being” recognized as a fundamental right in several International Conventions such as the Universal Declaration of Human Rights in 1948.
Based on this observation, the Independent Objector stated that the way that Afilias ltd intended to use the word “health” would not respect the fundamental right of access to healthcare, would not ensure the promotion of this right in the public interest and would be used in the same way as the other strings for which the Afilias ltd Company had applied, such as “.wine” or “.casino”. Moreover, he stated that several NGOs as well as the French and Malian governments had expressed their concern as to the reliability and loyalty of the .HEALTH string in the event of it being granted to a private Company.
In its defense, Afilias ltd pointed out that the tld .HEALTH could in no way be considered to be “in breach of morality and public order as defined in the general principles of international law” and that an evaluation of this nature concerning the potential future use of the string, and not the string itself, went beyond the mandate of the Objector.
In addition, Afilias ltd highlighted the different rights protection mechanisms that it has voluntarily set up, in particular a hotline for non-conformity breaches of <.HEALTH> and specific communication channels with national authorities and international organizations in order to ensure that .HEALTH functions in accordance with current legislation.
The CCIP experts rejected this interpretation by Afilias ltd. They confirmed that it was not possible to evaluate the compatibility of a string with public order and morality without taking into account the context of the application, including the probable effects on Internet users once the string was functioning. They also recognized that the .HEALTH string would operate in a sensitive domain in which the risks of negligence or abuse, as with fraud, are particularly high. All sides agree on this point, considering that the word « health », linked to the health sector, inspires a high degree of consumer confidence by persuading them that information available under a certain domain name has been scientifically proved.
Nevertheless, the experts do not share the suspicions of the Independent Objector concerning the management of the .HEALTH tld by a private Company. The experts stated that without proof to the contrary, they could not support the assertion made by the Objector that a private Company cannot, in a serious and responsible way, manage this string. Furthermore, the experts reminded the Objector that even if several NGOs and two countries (France and Mali) support this view, the World Health Organization, holding a unique position in the context of public health at international level, has implicitly rejected this position.
Based on these factors, the CCIP experts rejected the objection.
The importance of this decision is not limited to its novelty: it provides vital keys to the evaluation of Limited Public Interest objections. Accordingly, it is now recognized that Limited Public Interest objections will not only be assessed on how they are formulated but also on their potential use.
On November 28, 2013, the Court of First Instance of Paris has declared null and void the trademark Vente-privée.com on the ground that it was a common noun.
L’Express interviewed Nathalie who commented on the decision.
More information on the subject here (French article): link
The program continues and after the launch of 7 new gTLDs this week, Donuts Inc announced 7 new strings for December, 10. As a reminder, the different phases of the program are as follows:
Sunrises :
– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered are .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES;
– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available are: .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY;
– Sunrise from 10 December 2013 to 7 February 2014: the 7 new gTLDs will be .CONTRACTORS, .CONSTRUCTION, .DIRECTORY, .KITCHEN, .LAND, .TODAY and .TECHNOLOGY.
To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.
Donuts will accept registrations of domain names blocked by ICANN due to domain name collisions. These domain names will only be activated and used once the technical tests are finalised by ICANN.
Please find the complete list of the second-level domains blocked by ICANN on the following link:
http://newgtlds.icann.org/en/announcements-and-media/announcement-2-17nov13-en
Early Access Program :
During one week after each Sunrise, new gTLDs will be available on a “First-Come, First-Served” basis. The application fee for this period will be declining as per weekdays. Some of the Premium names cannot be registered.
General Availability :
As from the 5th, 12th or 19th February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Served” basis.
New gTLDs: . みんな, the first and only Japanese new gTLD
Google schedules to launch shortly a Sunrise for its first new gTLD, the Japanese IDN みんな(mee-nuh) which means “everybody”.
New gTLDs: Uniregistry will launch .SEXY and .TATOO gTLDs
Uniregistry, which applied for the gTLDs .GUITARS, .CHRISTMAS and .BLACKFRIDAY, will soon announce a first Sunrise of 60 days for its .SEXY and .TATOO gTLDs.
The registry will propose a mechanism for the protection of rights by blocking TMCH registered trademark.
New gTLDs: imminent launch of .MENU
ARI registry will intend to launch its new gTLD .MENU very soon.
The targets of this new gTLD are restaurants, chefs and every person interested in cookery. As the term “menu” is used in 33 different languages, the gTLD .MENU will gather a large online community throughout the world.
New gTLDs and TMCH : the Trademark Claims Service is updated
The trademark Clearing house is to give an indefinite extension of part of the Trademark Claims Service.
The post-registration alerts to trademark holders will be extended indefinitely whereas the pre-registration warning for the registrant will be sent during the original 90-days period.
Possible registration of .UK for summer 2014
Nominet will soon accept .UK registrations provided that these domain names do not already exist under .CO.UK and .ORG.UK gTLDs.
.CO.UK and .ORG.UK customers will have 5 years to decide whether they want to register their existing domain names in .UK or to keep only the .UK address. In the case where a person holds a .CO.UK and another one an .ORG.UK, the UK name will be offered in priority to the .CO.UK owner.
.DE registry adds a domain name restoration service
Since December 3, 2013, DENIC introduced its domain name restoration service, the RGP or Redemption Grace Period, which will allow domain name owners to recover their expired domain for up to 30 days after its expiry.
This service is available for all second-level domain names in case of their accidental deletion. If no redemption is requested during these 30 days, the domain name will be again available for registration.
On September 30, 2013, a judge awarded Pinterest 7.2 million dollars in damages and legal fees against a Chinese cybersquatter.
Qian Jin had bought more than 100 domain names including pinterests.com, pimterest.com and pinterost.com and was using them as domain parking.
The judge proclaimed that the infringement was “willful and serial” and stated that “there is no indication of good faith mistake or excusable neglect justifying defendant’s failure to respond or otherwise defend against plaintiff’s allegations”.
Pinterest also took possession of the domain names.
On May 17, 2013, the Rwandan Government submitted its request to join the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (known as the “Madrid Protocol”).
The Madrid Protocol became effective with respect to Rwanda on August 17, 2013.
Article 290 of Law n° 31/2009 of 26/10/2009 on the Protection of Intellectual Property in Rwanda states that:
The provisions of any international intellectual property treaty to which the Republic of Rwanda is party shall apply. In case of conflict with the provisions of this Law, the provisions of the international treaty shall prevail over the latter.
This accession favors trademarks holders who might include Republic of Rwanda when depositing an international mark or extending existing international registrations to Rwanda.
The program of new generic strings known as New gTLDs (New Generic Top Level Domain Names), such as <.PARIS>, <.BOOKS>, <.SHOP>, <.LOVE> and several hundred others, has entered its final phase. However, the risk of domain name collisions, taken very seriously by ICANN, is delaying the activation of these new strings awaited with such anticipation by Internet users and rights holders alike. The management of these risks is imposing new constraints on the reservation of second level domains and de facto forcing changes to the reservation of domain names in the new strings.
Reminder
A domain name comprises a radical and a suffix, which is also known as a string. The suffix is the top level domain name (TLD) and the radical is the second level domain name (SLD).
Name Collision is a problem of nomenclature that could occur in the domain name system (DNS), between the new strings and those used in a private domain name system. In reality, these names are used in different protocols on the Internet and may give rise to confusion. An Internet enquiry could thereby be directed to a non-designated site.
The risks
Enquiries aimed at resources in private networks end up searching the public DNS and thereby “collide” with the newly delegated gTLDs, and vice versa.
A firm’s e-mail system could transfer mails to the wrong server.
Internet users could be directed to the wrong Internet site.
Internet users could conclude that the requested website does not exist.
The challenge
What is at stake regarding Name Collision is nothing less than public confidence in the DNS system and the Internet itself.
ICANN’s position
Taking very seriously the risks that could be caused by name collisions, ICANN asked IAS Global Advisors LLC to carry out a study to analyze the risks relating to each future domain name, both at top level (gTLD) and also second level (SLD)..
It is worth remembering that the DNS root servers are the thirteen root servers of the Internet’s Domain Name System that come under the authority of ICANN. They respond to requests concerning top level domain names (TLDs) and redirect them towards the DNS server of the relevant top level. The root server data were collected on the “Day in the life of the internet” (DITL), an initiative run by the Domain Name System Operations Analysis and Research Center alias DNS-OARC).
The study analyzed two types of data:
Samples of DNS requests transferred to root servers
Information coming from certification authorities concerning the delivery of certificates for internal names (for example: TLS/SSL certificates for non-delegated names).
Based on this study ICANN was able to take measures that aimed to reduce the risk of name collision. These measures affect both first level and second level domains.
Name Collision & generic top level domains (gTLDs)
Risk classification : L’étude sur la collision des noms identifie trois catégories d’extension en fonction de leurs risques potentiels de collision dans l’espace de noms.
High Risk: only 2 strings (<.home> and <.corp>), the most widely used in Company networks, were classed as “High” risk.
Indeterminate Risk: in 20% of applied-for strings (ex: <.cba>), the risk of name collision is undefined.
Low risk: 80% of applied-for strings represent a low risk of name collision. In general, the longer and more descriptive the gTLD, the lower the risk. A minimum of 4 letters represents adequate security in the majority of cases.
Measures taken to reduce risks:
High Risk: No delegation of <.corp> and <.home>.
Indeterminate Risk: Carry out more detailed studies knowing that they could take from 3 to 6 months (ex: <.cba>)
Low risk: It is possible to delegate strings belonging to this category. However, a waiting period of at least 120 days from signing the delegation contract must be respected before being able to activate the first domain names at the second level (SLD) in the DNS.
Name Collision & second level domains (SLDs)
In order to activate second level domain names (SLDs), the registry operators of new strings must first receive their Collision Occurrence Assessment. According to the results of this evaluation, personalized risk-reduction measures to avoid collision will be required of registry operators for each new gTLD. These measures can include:
The indefinite block of second level domain names (SLDs)
The temporary block of second level domain names (SLDs)
The creation of a delegation trial using any format
Making the SLD valid for the single entity causing the name collision
Any other risk-reducing measures that may be identified during the evaluation or by any further studies
The specific context for the management of the consequences of the collision-risk evaluation has not yet been defined. ICANN hopes to finalize this before the end of March 2014. As a result, the activation of SLDs has yet to be tabled.
If the New gTLDs are eligible, the operators of these registers will be able to delegate the SLDs before the name collision risk is evaluated. However, they must block all the domain names designated by ICANN (for example: <.PARIS> a list of approximately 18,000 SLDs including <disneyland>, <hermes>, <diesel>, <louisvuitton>, etc…).
If they are not eligible, the operators of these new registers will not be able to delegate the SLDs before doing an in-depth evaluation. Since the final framework for this evaluation has not yet been determined, the 25 ineligible new gTLDs will have longer to wait. The TLDs involved are the following: .blog, .box, .business, .casa, .cisco, .comcast, .dev, .family, .free, .google, .iinet, .mail, .network, .office, .orange, .philips, .prod, .sfr, .site, .taobao, .taxi, .web, .work, .world, .zip .
As a result, it is now vital for rights holders to check the reservation possibilities for their second level domain names in relation to each new string.
We can offer you a personalized study according to the strategy defined for the reservation of domain names in the new strings.
The 13th edition of the ‘Trophées du Droit’ (legal industry awards) was held on 28 November in an award ceremony for the best legal firms which gathered over 950 figures involved in the legal profession(1)(2).
Dreyfus was recognized this year in the category Management of legal firms and received the Special Mention:Trademark Attorney : trademarks(3).
In previous years, the firm had already been awarded a Silver Trophy in the same category of Trademark Attorney but was also recognized for its performance as an emerging team of specialists.
We would like to thank our clients for their support without which we would not have received this special award.
In October 2013, Nathalie Dreyfus was interviewed by James Nurton, editor of Managing Intellectual Property on the issue of the new gTLDs, recent developments in France and the start of her law firm.
With the current wave of new gTLDs that have recently been launched, Nathalie points out that these new strings are a “revolution on the Internet”, particularly because they now convey meaning. She illustrates the point by citing a recent UDRP case which examined whether to take the string into consideration when comparing similarities between the trademark and the name. Nathalie added that the Trademark Clearinghouse “can also be a good thing” in the sense that rights holders can more easily warn offenders in the case of litigation over names, and also benefit from this service by using Donuts’ Domains Protected Marks List (DPML). In this way they control the reservation of domain names identical to their trademarks.
Concerning recent developments in France, Nathalie points out that since 2011, cases have been heard and examined more rapidly by the courts, but that there are “fewer oral pleadings and fewer specialist judges for Intellectual Property”. Cases are also judged “on their own merits, which is very favourable for trademark owners”.
Nathalie completes her observations by highlighting the fact that since the offices of the INPI were relocated outside Paris, an online service for trademark renewal would be a welcome addition in 2014 since specific trips have to be made to these offices and there is no postal address anywhere in the capital.
Nathalie then outlined the reasons for starting her law firm. Ten years ago she noticed that many Companies were concerned by the protection of their trademarks “in countries where they didn’t even have a business” whereas, in the case of their domain names, these were visible right around the world. Growing ever since, the firm now employs over 15 people and created a platform entitled Dreyfus IPweb to “consolidate and summarize all the information available to [her] clients”.
Nathalie Dreyfus finished the interview by stating that “domain names are becoming as important as trademarks” but that they will never replace them since the Law requires that a trademark be registered if rights are to be defended on the Internet, not only with domain names but also on social networks. Trademarks are “tools for actions – the king of the distinctive sign”.
The full interview (in English) is available here.
In order to defend trademark rights more effectively, the additional solution provided by the Abused DNL Service has been set up within the TMCH. This service is now operational.
The Abused DNL Service: what does it offer?
This is a system that allows a trademark already registered in the TMCH to be linked to a maximum of 50 domain names that have already been disputed (abused labels) that concern the mark that has in fact been integrated into the TMCH.
These abused labels will then benefit from a more extensive Trademark Claims Service (TCS) during the period when new gTLDs are opened to the public. As a reminder, the TCS is a warning system that notifies Internet users registering domain names of the existence of prior rights and alerts rights holders in the event of registration of domain names identical to their trademarks. The TCS is activated for all marks registered with the TMCH. The abused labels will expand the system of automatic alerts to include domain names that suffered previous infringements in other TLDs.
Who can benefit from the Abused DNL Service?
The prerequisite is to have registered trademarks with the TMCH. The eligibility criteria for obtaining this complementary protection are, however, restrictive:
The domain names must have been the object of either a UDRP decision or a legal ruling;
It only involves those cases in which it was proven that the names had been registered illegally;
This service is only open to marks registered with the TMCH. In fact, the marks cited in the UDRP or legal decision must exactly match those registered in the TMCH (same registration number and same jurisdiction).
If a decision involves several domain names, the mark holder can choose to include one, several or all the names affected by the decision.
As an example:
Lego Juris A/S. registered with the TCMH the Chinese mark LEGO n° 75682 which had been duly validated.
Lego won a case before the UDRP, OMPI litigation n° D2013-0683, concerning the domain name <legobox.net>.
The Chinese mark LEGO n° 75682 was cited in the decision.
Lego will therefore be able to add the term “legobox” as a label to its Chinese mark LEGO n° 75682 registered in the TMCH.
Which documents must be provided?
For a UDRP decision:
– the name of the arbitration centre that gave the ruling
– the case number
– the language used in the case
– the domain name(s) involved without the string
– a copy of the decision if it cannot be located in the online database
For a judicial ruling:
– a copy of the decision
– the country in which the decision was rendered
– the name of the jurisdiction that gave the ruling
– the case reference number
– the language used in the case
– the domain name(s) involved without the string
How useful is this new service?
The usefulness of this service, though addressing real issues, remains limited. In reality, the abused labels registered only trigger the TMCH notification system, the Trademark Claims Service, once the names have been registered; no block will be applied if the mark is merely registered with the TMCH.
Accordingly, during the 90 days after the new string has been opened to the public, the applicant may receive notification warning him that the name he wishes to reserve is likely to infringe the trademark rights of a third party, and a reference to litigation will be included in the notification. The applicant is then free to pursue the registration or not, being fully informed of the violation of the trademark rights of a third party that has already been recognized either inside or outside the courts.
Equally, during the 90 days after the new string has been opened to the public, the rights holder will also receive notification informing him of a potential case of cybersquatting if the applicant confirms the registration of the name despite the warning received.
The system does not allow for the registration of domain names in the new strings but could nevertheless have a dissuasive effect.
Length of subscription of domain names (labels)
The length of registration of contested domain names (abused label) in the TMCH is linked to the length of subscription of the trademark to which they are associated.
If the mark has been registered for several years, the subscription to the abused labels will be identical to that of the trademark. They will expire on the same date.
As an example, if the mark is registered for a duration of 3 years as of 1st January 2014, and a contested domain name associated with this mark is registered in March 2014, it will only be registered until January 2017, at which time the registration of the mark must be extended in the TMCH.
What costs are involved?
The anticipated costs depend on the nature of the decision, whether based on a UDRP ruling or a judicial decision.
For a UDRP decision:
A 50$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
For a judicial decision:
A 150$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
We are at your disposal should you wish to explore the opportunity to make use of this complementary system.
Our site uses cookies to offer you the best service and to produce statistics, and measure the website's audience. You can change your preferences at any time by clicking on the "Customise my choices" section.
When browsing the Website, Internet users leave digital traces. This information is collected by a connection indicator called "cookie".
Dreyfus uses cookies for statistical analysis purposes to offer you the best experience on its Website.
In compliance with the applicable regulations and with your prior consent, Dreyfus may collect information relating to your terminal or the networks from which you access the Website.
The cookies associated with our Website are intended to store only information relating to your navigation on the Website. This information can be directly read or modified during your subsequent visits and searches on the Website.
Necessary cookies are absolutely essential for the website to function properly. These cookies ensure basic functionalities and security features of the website, anonymously.
Dreyfus is concerned about protecting your privacy and the Personal Data ("Data"; "Personal Data") it collects and processes for you.
Hence, Dreyfus complies every day with the European Union legislation regarding Data protection and particularly the European General Data Protection Regulation Number 2016/679 of 27 April 2016 (GDPR).
This Privacy Policy is aimed at informing you clearly and comprehensively about how Dreyfus, as Data Controller, collects and uses your Personal Data. In addition, the purpose of this Policy is to inform you about the means at your disposal to control this use and exercise your rights related to the said processing, collection and use of your Personal Data.
This Privacy Policy describes how Dreyfus collects and processes your Personal Data. The collection happens when you visit our Website, when you exchange with Dreyfus by e-mail or post, when exercising our Intellectual Property Attorney and representative roles, when we interact with our clients and fellow practitioners, or on any other occasion when you provide your Personal Data to Dreyfus, in particular when you register for our professional events.
Written by Dreyfus24/12/2013 
The Trademark Claims Service is a service offered by the Trademark Clearinghouse (TMCH). During the first 90 days of the general opening, alerts are sent to applicants wanting to register a name identical to the trademark registered with the TMCH including to the holders of the said trademark if the name could be registered.
