What is the Trademark Clearinghouse in the ICANN new gTLD program?

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The Trademark Clearinghouse (TMCH) is a database established by the Internet Corporation for Assigned Names and Numbers (ICANN) as part of its New generic Top-Level Domain (gTLD) Program. It serves as a central repository for trademark data, aiming to protect trademark holders' rights during the introduction of new gTLDs.

Here's a breakdown of its key aspects:

Purpose:

  • Rights Protection: The primary goal of the TMCH is to help trademark owners protect their brands in the expanded domain name system resulting from the introduction of numerous new gTLDs (e.g., .app, .shop, .berlin).
  • Verification and Authentication: The TMCH verifies and authenticates trademark information from various jurisdictions worldwide. This includes registered trademarks, marks protected by statute or treaty, and court-validated marks.
  • Centralized Database: It maintains a database of these verified trademarks, making the information accessible to new gTLD registries and registrars.

Key Functions and Benefits for Trademark Holders:

  • Sunrise Period: Trademark holders who have registered their marks with the TMCH are granted priority access to register domain names that match their trademarks during the "Sunrise Period" before the general public. This allows them to secure their key domain names in the new gTLDs before cybersquatters or other parties can.
  • Trademark Claims Service: During the general availability period of a new gTLD, if someone attempts to register a domain name that matches a trademark recorded in the TMCH, they will receive a notification warning them about the potential trademark infringement.
  • Claims Notification to Trademark Holders: Simultaneously, the trademark holder registered in the TMCH will also be notified if a domain name that matches their trademark has been successfully registered in a new gTLD. This allows them to take appropriate action if they believe their rights are being infringed.
  • Simplified Verification: Once a trademark is verified and recorded in the TMCH, the trademark holder does not need to go through the verification process for every new gTLD.
  • Global Coverage: The TMCH accepts and verifies trademark data from multiple global regions, providing broad protection.

How it Works:

  1. Trademark Submission: Trademark holders (or their agents) submit their trademark information and relevant documentation to the TMCH for verification. This typically includes proof of registration and evidence of use.
  2. Verification Process: The TMCH verifies the submitted information to ensure the validity of the trademark.
  3. Database Record: Once verified, the trademark details are entered into the TMCH database.
  4. Sunrise Registration: During the Sunrise Period of a new gTLD launch, trademark holders in the TMCH can register domain names matching their trademarks through participating registrars. They will typically need to provide a Signed Mark Data (SMD) file obtained from the TMCH as proof of their registration.
  5. Claims Notifications: After the Sunrise Period, the Trademark Claims service becomes active. Registrars are required to check the TMCH database during domain name registration in new gTLDs. If a match is found, the potential registrant is notified. Similarly, the trademark holder is informed of the registration.

Important Considerations:

  • Not a Trademark Registry: The TMCH is not a trademark registration authority. It relies on existing trademark registrations from national or regional intellectual property offices, court-validated marks, or marks protected by law or treaty. Registering with the TMCH does not grant trademark rights.
  • Second-Level Domains: The TMCH primarily focuses on protecting trademarks in the second-level domain (the part before the dot, e.g., "yourbrand" in "yourbrand.newgtld").
  • Cost: There are fees associated with registering a trademark with the TMCH.
  • No Guarantee Against Infringement: While the TMCH provides valuable tools, it does not guarantee that trademark infringement will not occur. Trademark holders still need to actively monitor and enforce their rights.
  • Uniform Rapid Suspension (URS): The TMCH works in conjunction with other rights protection mechanisms in the ICANN New gTLD Program, such as the Uniform Rapid Suspension (URS), which provides a faster and cheaper dispute resolution process for clear cases of infringement.

In summary, the Trademark Clearinghouse is a crucial component of the ICANN's New gTLD Program, designed to mitigate potential issues for trademark holders arising from the significant expansion of the domain name space. It offers proactive mechanisms like Sunrise registration and reactive notifications through the Trademark Claims Service to help brand owners protect their online identity.