The New gTLD Trademark Clearinghouse Opens

Author:Mr Alistair Payne, Sharon Daly, Gerard Kelly and Valerie Shaw

A Stitch in Time…..The New gTLD Trademark Clearinghouse Opens. Have You Planned Your Brand Protection Strategy? The start of the new gTLD system is upon us. The Internet Corporation For Assigned Names and Numbers (“ICANN”) anticipates making the first of around 1900 new gTLDs available in mid-2013. Release will happen on a staggered basis with the first likely to be Chinese followed by other foreign language domain names and then gTLDs in English that have no competing bidders. A full list of the proposed new gTLDs is set out on the ICANN website.

There are significant consequences in all of this for brand owners and the likelihood of a very substantial spike in cybersquatting. After much debate and negotiation, the Trademark Clearinghouse has been developed to help alleviate some of the risks. The Trademark Clearinghouse will enable brand owners to register their trade marks to a centralised database which will facilitate both a “Trademark Claims” service and a “Sunrise Service”.

The “Trademark Claims” service will provide would-be registrants in a new gTLD with notice of a prior trade mark owners' rights and if registration proceeds will provide notification to the trade mark owner. The “Sunrise Service” will offer pre-existing trade mark owners the right to priority registration of an identical registered domain name in the new gTLD space.

While both services are important stepping stones towards limiting cyber-squatting, because of the identical match requirements between trade marks...

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