In the house: a partial solution
The Internet community has been following the launch of new generic top-level domains (gTLDs) since 2010 and has eagerly awaited the launch of the Trademark Clearinghouse (TMCH). Even if the discussions revolve around which new gTLDs applications have successfully passed the examination, protection of trademark owners against the impact of these gTLDs remains the main goal.
On the one hand, it is indisputable that the TMCH is an efficient tool for trademark owners to register domain names during the Sunrise Period. On the other, the Trademark Claims service, which enables trademark owners to receive notifications of potentially infringing identical domain registrations for a limited period of 90 days after the Sunrise Period of a new gTLD, raises a major question: does the recording of a trademark with the TMCH sufficiently guarantee that a conflicting identical or similar domain name cannot be fraudulently registered?
Registration at the TMCH
Within the scope of the Trademark Claims service, a potential domain name registrant gets a warning notice when attempting to register a domain name that matches a recorded sign in the TMCH. If, after receiving and accepting the notice, the domain name registrant further registers the domain name, the trademark holder with a corresponding mark will receive notification of the domain name registration, so that it can take any appropriate action.
This means that the applicant for registration of the domain name is the first to be informed that a conflict could result from the domain name registration.
"Trademark owners should not give up their watching activities and should continue to monitor which domain names are applied for by third parties."
The trademark owner having registered (with costs) its trademarks with the TMCH is only informed second, if the domain name applicant decides to pursue the registration despite the notification.
Therefore, the domain name applicant can decide that it will not pursue the registration of the domain name and wait until the 90-day notification period is over. Figuratively speaking, the system offered by the Trademark Claims service is like giving a thief the choice to steal a car now and probably get prosecuted, or to steal it later and not worry about prosecution.
Furthermore, the time period fixed for the Trademark Claims service is quite short. What will happen after the expiry of the Trademarks Claims period? Third parties will still be able to register domain names that are similar or identical to trademarks recorded with the TMCH, and owners will not be notified about it any more.
As a further limitation, the clearance offered by the TMCH covers only identical signs—but what about similar signs? A risk of confusion may also occur with similar signs, where the TMCH does not provide notifications to trademark owners about applied similar infringing domain names. For example, there is no protection against typosquatters (or URL hijackers), who rely on mistakes such as typographical errors made by Internet users when they type a website address into a web browser, and lead them to their website and not to the originally intended website.
Not registering at the TMCH
Not recording a trademark with the TMCH means that the trademark owner will not be eligible to register a domain name during the Sunrise Period. Consequently, after the launch of a new gTLD the first person requesting registration of a domain incorporating a trademark will own it according to the ‘first come, first served’ principle. Even if we cannot deny the advantage to be able to register domain names before others during the Sunrise Period, the protection is complete only if associated with the Trademark Claims service.
As mentioned above, the question can be raised whether this period of time is sufficient to provide satisfactory protection to trademark owners against potential domain name registration that could lead to confusion among the public. Therefore, the trademark owner should continue to watch domain registries outside the TMCH. A number of watch service providers exist that can help trademark owners monitor the registration of potential infringing domain names.
Moreover, not registering trademarks with the TMCH does not prevent trademark owners from undertaking later necessary steps against infringement. If a third party was to register a domain name that would prejudice an already registered trademark for being too similar, the owner of the prejudiced trademark would still have the opportunity to engage in procedures such as alternative dispute resolution proceedings according to the Uniform Domain-Name Dispute-Resolution Policy, if the prerequisites are respected. A procedure before a court remains available.
It is important to keep in mind that the creation of the TMCH is definitely a good way to improve the awareness of trademark owners about potential infringements, but it is only one of several measures. Trademark owners should not give up their watching activities and should continue to monitor which domain names are applied for by third parties.
They should review their trademark portfolio, ideally with the help of their legal adviser, consider the budgetary aspect and choose which strategy they want to adopt. They can choose to be offensive and register all their trademarks with the TMCH or to rely on the services of a domain name watch service provider, but there is a risk that following the launch of a new gTLD that the first person requesting registration of a domain incorporating one of their trademarks will own it.
In July 2013, Deloitte revealed that more than 5,000 trademarks have already been recorded with the TMCH. Let’s see what the future brings and whether the number of registered trademarks is going to further increase or whether the utility of the TMCH will begin to be discussed.
Clémence Le Cointe is a French trademark attorney at Dennemeyer & Associates in Munich. She can be contacted at clecointe@dennemeyer-law.com
