1st anniversary of the TMCH: over 28,000 trademarks added by brand owners

We are now into a regular beat of gTLD releases with up to seven opening for Sunrise each week. When the program was defined back in the glory years of 2011 many trademark holders raised red flags on the age-old issue of trademark cyber squatting, and the huge headaches they would have in managing multiple trademark application periods at any one time.

ICANN listened to these concerns and in conjunction with Deloitte created the Trademark Clearinghouse (TMCH) a single database of registered marks that every new gTLD registry would have to connect to. Many welcomed the news, although a few doubters raised concerns over the extent of the protection the service would offer.

The basis of the service was a claims notice period (initially set at the first 90 days of the gTLD operation) whereby anyone who tried to register a domain name that was in direct breach of an object verified within the TMCH would receive a warning that they were about to potentially breach a known trademark. If they accepted this risk by clicking on a verification link, the trademark holder would then be informed of the breach.

Three months into the launch of the TMCH and statistics show that the the claims warning is having an effect. Deloitte have this week revealed that over 500,000 Claims Notices have been issued, of which 95% of the queries for trademark terms are not being followed through to a live registration.

This week marks the first anniversary of the opening of the TMCH with over 10,000 brands adding over 28,000 trademarks in the past 12 months. Jan Corstens, Worldwide Project Director at Trademark Clearinghouse and Partner at Deloitte commented, “Our firm message is to encourage any trademark holders who have yet to record their marks with the TMCH to come forward as soon as possible - it’s not too late to benefit. The TMCH remains the only universal rights protection system across the entire new gTLD programme and by recording protected terms in the TMCH, trademark owners are being offered the best protection available as more new domains are deployed."

The TMCH's research, released last week, revealed that nearly 100 percent of the world’s most valuable companies (as defined by Interbrand's Best Global Brand Index for 2013) are potential targets for certain gTLDs.

A number of large companies have already seen their brands infringed after failing to either enter their domains in the Trademark Clearinghouse or not exercising any of their rights as Trademark holders. The TMCH said the third parties had attempted to pre-order 98 percent of the world’s most valuable brands under the new .web domain and 96 per cent under the new .online domain name.

Jonathan Robinson, strategic consultant to the TCMH, commented on the research that although the new gTLD programme is set to “enhance competition, innovation, and consumer choice” on the Internet, the research showed that some of the biggest brand names were at risk.

Robinson added that with other parties “keen to capitalise” on the traffic a branded website would generate, cybersquatted domain names could potentially compromise the reputation of each brand targeted.

The cost of legally recovering one infringed domain name can cost over 10 times that of a single registration within the TMCH for three years. Whilst over 70 gTLDs have now entered the trademark sunrise phase, it is still not too late for a brand holder to put some basic protection in place by using the Trademark Clearinghouse.

Written by Stuart Fuller, Director of Commercial Operations and Communications, NetNames.