The two sides of the Trademark Clearinghouse

TMCH service is of great value to brand owners that chose to approach this expansion strategically…

The priority draw for new generic Top Level Domains, held by ICANN on 18 December 2012 in Los Angeles, determined the order in which evaluation results will be released for the 1,930 applications. Internet users are likely to see the first new top-level domains appear from the religion, technology and automotive sectors as early as July next year.

Non-Latin TLDs were given priority over Latin script applications with the top five slots going to:

.catholic in Chinese
.store in Japanese
.web in Arabic
.shangri-la in Chinese
.citic in Chinese

As a big fan of Internalized Domain Names (IDNs) I was both pleased to see IDNs being given priority but also slightly disappointed at the relatively low numbers of IDN applications. With VeriSign and Afilias behind some of the open IDN applications and large brands such as Philips and Samsung recognizing the importance of the non-Latin script markets we may finally see this area expand and deliver what IDNs have always promised to internet users not using Latin script keyboards.

The latest results of the Office of National Statistics 2011 Census demonstrate how diverse language use is in the UK alone, with the census requiring translation support for 56 languages. There is massive potential both at home and abroad to reach these as yet untapped digital markets through local language domains. However, this also represents an added headache for brand owners who have solid existing domain portfolio strategies.

There will no doubt be an increase in cybersquatting activity in these virgin namespaces, and it is simply  not feasible to either defensively or pro-actively register the domain strings in approximately 700 TLDs that will be open for registration. As we have mentioned on this blog before, preparation and a well thought out strategy is going to be key for brand owners who wants to navigate this change in the Internet successfully.

One key component of this change is the Trademark Clearinghouse (TMCH). While the TMCH represents, at best, a compromise as a brand protection mechanism, many ideas and suggestions have been put forward to give it more weight from the Globally Protected Marks List (GPML) to the proposals from the Intellectual Property Constituency (IPC) and Business Constituency (BC) at the recent meetings held with ICANN on the TMCH which resulted in the straw man proposal. The TMCH functions still provide a robust service to brand owners by notifying them of domain registrations identical to their mark registered in the TMCH as well as notifying the potential registrant of the domain of the prior rights registered. The notices will deter registrations by enterprising individuals attempting online cybersquatting and will even make seasoned squatters think twice.

The other side of the TMCH service is of great value to brand owners that choose to approach this expansion strategically. Once your rights are validated in the TMCH you may re-use those rights in any new gTLD string launch as long as your rights remain registered in the TMCH and meet the requirements of the registry.

The last three  major TLD launches in recent years (.xxx, .co and .eu) were costly in the initial Sunrise phases. A large percentage of those inflated Sunrise fees actually went straight to the Trademark validation agents. That component of Sunrise launches has now gone with the centralized validation mechanism of the TMCH, which will result in lower Sunrise fees for would-be registrants. The difficulty will obviously come in choosing which rights to register in the TMCH, it makes little sense to register all your trademarks in the TMCH if you are not going to register those strings under any of the new gTLDs – there are better and more cost effective ways to monitor  infringements to brands. Your selection should be based on your domain portfolio strategy and future plans for your brand.

Choosing a provider that is prepared for this change will be key in mitigating the risks surrounding the expansion but also allow digitally savvy brands to capitalize on the innovation to come. Next week, NetNames will be holding a series of webinars with the operator of the TMCH, Deloitte – Risk Management Services. These webinars will take an in-depth look at the rules and processes of the TMCH and discuss how brand owners should approach registrations in the TMCH. We will also be looking beyond the services currently offered by the TMCH and discussing the innovative approach NetNames will be taking - not to be missed I’m sure you will agree.

Register for the NetNames hosted TMCH webinar series here.


Written by Ben Anderson, Head of New gTLD Products, NetNames

9 January 2013