Two years ago, ICANN (International Corporation for Assigned Names and Numbers) announced a major reform of the Internet domain name “endings”, also known as generic top-level domains or gTLDs.  Amongst other developments, the new gTLD programme allows organisations to use descriptive terms such as “mining”, geographical words such as “africa” or even their own brands as domain name extensions.

Fast-forward to 2013, and the launch of these new sponsored gTLDs is projected for later this year. The end result is that hundreds of new gTLDs such as .app, .africa, .porn, .web, .site and .shop will soon be released.

In preparation, ICANN has established a global Trademark Clearinghouse (TMCH) to assist in protecting the rights of trade mark owners.

What does this mean for trade mark owners?

Trade mark owners will be given priority to register their trade marks within each new gTLD during a “Sunrise Period” (trade mark pre-launch period). Each new gTLD will have its own Sunrise Period. In order for a trademark proprietor to participate in registering its trademark as a new domain name during a Sunrise Period, a trade mark must be validated with the TMCH.

What is the Trademark Clearinghouse?

The TMCH is the organisation that will verify a trade mark. Once verified they will allocate a verification code for the trade mark that will be used to participate in a Sunrise Period.

The TMCH will also notify the trade mark owner when a third party attempts to register a domain name within a new gTLD, that matches their trade mark. Thus, even if the trade mark owner does not want to register a new domain name themselves, by registering with the TMCH, the trade mark owner will be notified if a third party applies to register its exact trade mark as a domain name. Registering a trade mark with the TMCH will serve as a watching service to receive notice if someone else tries to register one’s trademark as a domain name. At that point one can choose to object to the registration of the domain name and/or register the domain name itself. Registration of your trademarks with TMCH can be beneficial even if you have no intention of registering additional domain names under the particular gTLD.

Trade marks can be verified for 1, 3 or 5 years. It is advisable to verify a trade mark for 3 years so that it covers the majority of Sunrise Periods.

What must you do now?

Step 1: Identify which trade marks you want to submit to the TMCH
Step 2: Our firm will submit your trade mark to the TMCH and keep the verification date for use in the Sunrise Period. We will send you a declaration of use to sign.
Step 3: We will prepare a report recommending under which new gTLDs you should register your trade mark.
Step 4: Wait for each Sunrise Period to commence. We will notify you before the start of a Sunrise Period and will submit your domain name application on your behalf based on the new gTLD report prepared in Step 3.

For an explanation of how the TMCH will work, click here to view the video on YouTube.