The Trademark Clearinghouse - A burglar alarm for the next internet generation

With great opportunity comes great risk.  Today, brands are constantly fighting with spammers, counterfeiters and phishers; all of whom will go to great lengths to use legitimate brand names for cybercrime.

Whilst at a recent dinner party, the conversation turned to what 2013 would bring us this year, and as usual the male guests launched into wild predictions about what their respective football/soccer teams would win in the coming year, before I threw in an even wilder statement  about my team,  West Ham United ’s title ambitions,  I announced "2013 will be the year when the world hits the reset button on the Internet".

The whole room fell silent and my wife picked up my glass of water, sniffed it, expecting to find gin or vodka, and then looked at me with the same puzzled face, mirroring the other dozen guests’. I was lucid, sober and above all, dead serious.

The impending commencement of the process of delegating up to 1,200 new Top Level Domain Names (TLDs) will change the way both brands and consumers use the internet forever. This is the World Wide Web on steroids. Today, our use of domain names is largely restricted to half a dozen general TLDs (gTLDs) such as .com, .net, .org and .info.  Country Code TLDs (ccTLDs) such as, .de and .cn give us some regional flavour, but over 80% of all domain names in existence today sit under  ten TLDs.

The first set of domain names started appearing 18 years ago and since then registrations have grown dramatically. The figure stands close to 250 million at the last count in October 2012. In 2013, all of this is about to change.  The way we search for information is about to change forever and the majority of brands are completely unaware of the implications.   No longer will people play "search roulette" by simply adding a .com to any brand you are searching for. Instead they will tailor their searches by categories. The age of the .com isn't coming to an end though.  It is still the most recognized and valuable online digital asset a brand can own (one look at the prices at which keyword rich domain names are sold for, such as at $16 million, and it tells you how important .com domain names are).  This is an opportunity for all brands to move into some internet white space after years of grey clutter.

ICANN's new gTLD program will start to change our internet usage behaviours in May 2013 according to the latest time line.  From the moment the first of these new gTLDs hits our online streets, they should be rolled out at a rate of 20 per week. Even the most switched on marketing managers will struggle to keep up with how to ensure web users are finding their brands in the brave new internet world.

Need a hotel in London? (or even could be a good starting point.

What about information on a new BMW? Well car.BMW may well be your preferred search term.

Fancy yourself as a Ninja?  If you do, make sure you get your .ninja when that new gTLD hits the Internet streets in 2014.

And with great opportunity comes great risk.  Today, brands are constantly fighting with spammers, counterfeiters and phishers; all who will go to great lengths to use legitimate brand names and assets for cybercrime. Domain names are valuable as we have already discussed, so surely 1,200 new opportunities for a brand to be abused is a cybercriminals idea of heaven?  Not quite.

Fortunately there will be mechanisms in place to help brands to protect themselves in this brave new world.  One such innovation will be the launch of the Trademark Clearinghouse (TMCH).  This virtual organization is the first direct integration of a brand's trademarks and domain registrations.

The TMCH will be operated by Deloitte and act as a traffic light for new gTLD registrations. If someone tries to register a new TLD which directly breaches a trademark lodged in the TMCH, they will be given a warning of the potential infringement.  Likewise, the trademark holder will be notified if someone is registering new domains using their trademark.  Gone will be the days when a cybersquatter can use ignorance of a trademark as a defense. All good news, right?

Well, it is not quite simple as that.  The TMCH is not an automatic opt-in for brands.  Trademark holders will have to pay an annual fee per mark. It will cover them only for a period of up to 60 days after the launch of a new gTLD and it doesn't stop people registering domains if they are breaching a trademark.  It simply warns them that they are in breach. Not so good news, right?

It is actually good news in many instances.  If a brand wants to register its own .london, .hotel and of course .ninja, they should submit their trademark. This would enable them to use the Sunrise period of the respective new gTLD to secure their name before any cybersquatter has the chance to do any damage.  If they chose not to use the Sunrise period and someone else cybersquats a name, they can use the new Uniform Rapid Suspension (URS) process to recover the name quickly and without cost (unlike the existing UDRP process), as there will be a clear deliberate breach of the trademark by the cybersquatter ignoring the yellow traffic light that they are about to register a name they shouldn't.

The current plan is only for protection for a period of up to 60 days.  Many brands do not feel it is enough and a proposal, known as The Straw Man proposal, is gathering support, which outlines a further period where the trademark holder would still be notified of any registration breaches.

So why wouldn't a brand use the TMCH?  For companies with a small number of marks it is a relatively inexpensive measure and should form the first part of their online brand protection strategy.  Big brands with hundreds or thousands of trademarks should analyze what they need to protect and where they want to be protected.  This is certainly the advice that NetNames is giving its clients.

One thing is for sure -the internet is going to change, and change fast.  The Trademark Clearinghouse is like installing CCTV in an office.  Brand owners need to know who is deliberately trespassing on their property.  Whether they then choose to send in the guard dogs is then up to the intent of the interloper.

I felt satisfied that my guests now understood where I was coming from.  I could sit back and relax, seeing their furrowed brows were signs of contemplation as to how they would change their online behaviours.  That was except one guest who will remain nameless that said:

"So will I break the internet if I search for'

I just sighed and took another sip of my water/vodka.

Written by Stuart Fuller, Director of Communication for NetNames Limited who will be applying for

24 January 2013