TREx: hunting for trademark infringers

20-05-2018

TREx: hunting for trademark infringers

sorbetto / iStockphoto.com

The new TREx service by the Trademark Clearinghouse offers brands an extra weapon in their fight against online infringement. WIPR speaks to Geert Debyser of the TMCH to find out more.

The whirlwind that followed the launch of ICANN’s Trademark Clearinghouse (TMCH) is beginning to calm.

Trademark submissions, from an initial influx of around 13,400 per year in the three years since the TMCH’s launch in 2013, have steadied and brand owners, armed with their marks, are now keen to find efficient methods for defending them.

The interest in the vastly expanded list of generic top-level domains (TLDs) was welcome but it inevitably exposed brands to an increased risk of cybersquatting—third parties swooping in to register an infringing domain.

With the TMCH, brands have been able to plug into multiple sunrise periods, which provide priority registration within TLDs, and later receive notifications about anyone intending to register (and then registering) domains matching their marks. They have also been able to use rights protection mechanisms including the Uniform Rapid Suspension System.

Now they have an extra tool: the Trademark Registry Exchange (TREx), a service that gives trademark owners more weaponry with which to fend off the threat of cybersquatting.

More value for trademark owners

In a previous interview with WIPR, Jan Corstens, worldwide project partner at Deloitte, which provides trademark verification services for the TMCH, said the TMCH was “always looking at creating more value for trademark holders”.

Geert Debyser, chief development officer at CHIP, which helps to run the TMCH, points to TREx as an example of this.

Debyser says the aim is to allow brand owners to begin to adopt a more proactive approach than before.

Until now, trademark owners have submitted their marks to the TMCH. Once the mark is approved, the owner is then allowed to participate in any sunrise period.

Although this hands brand owners a head-start over other internet users—including the dreaded cybersquatters—registration by a third party during
the subsequent general availability phase is still possible. 

If an attempt is made to register a domain that matches an existing trademark, the TMCH alerts
the person concerned about the existing trademark rights. 

They are required to acknowledge this, but registration is still possible. If an application is successful, the TMCH notifies the relevant rights owner that the domain has been registered—allowing the rights owner to track and take any necessary action to protect its mark.

How it works

Now, for TLDs signed up to the TREx service, subsequent registrants of a domain name matching a label linked to a mark will, instead of merely acknowledging the existing rights, need to be verified before registration.

“We want to give even more of an active measure to the mark holder,” says Debyser. “With TREx, you can reserve the mark or corresponding label in the participating TLD. You can be more certain that no-one without appropriate rights can take your mark.”

He adds: “Until now, protecting marks has been done passively; you wait until someone notifies you that your mark might be infringed. But with TREx, rights owners have a more proactive way to protect their mark—it’s an additional layer of protection.”

"With TREx, rights owners have a more proactive way to protect their mark—it’s an additional layer of protection."

The system works in a similar fashion to the domains protected marks list (DPML)—available for the TLDs managed by the Donuts Inc registry—but TREx covers other TLDs.

Debyser adds: “It gives some kind of insurance—you can make sure that those names are not generally available and that someone wishing to register those names must be verified.” He stresses however that TREx is not an “outright blocker”. “We are just making sure the person who activates the name is a verified entity,” he adds.

Referencing brand owners’ focus on preventing cybersquatting, he also notes a shift in consumer demand since the early days of the TMCH.

“When the programme was fresh, a lot of trademarks were coming in for brand protection,” he says. In its first three years of operation the TMCH received more than 40,000 submissions from brand owners.

Apart from a surge in TMCH submissions in March and April following the launch of the sunrise period for ‘dot app’, brand owner attention has been more focused on protecting existing registrations.

For claims notifications sent within the first 90 days of a TLD’s launch, the TMCH has sent 262,000 notices to date; for ongoing claims (beyond the 90 days), the total is nearly 800,000.

The ongoing notifications service sends an alert to trademark owners when a domain name is activated that is not just matching, but sufficiently similar to, an existing mark. This could be a typo, variation of the mark, a partial use of a trademarked word, or a suffix.

"The launch of TREx ties in perfectly with the high level of ongoing notifications and the efforts to combat cybersquatting."

Debyser says the launch of TREx ties in perfectly with the high level of ongoing notifications and the efforts to combat cybersquatting.

Early days

TREx is still in its infancy. Around 40 TLDs are included in phase one of the project but additional TLDs, subject to demand, are to be included in future bundles. The eventual aim is to also include country-code TLDs and legacy TLDs.

“We are still in the beta stage; we are waiting to see the initial technical response from the TLD registries,” says Debyser.

He adds: “It is open for any TLD that wishes to participate. We included some local rights for geographic TLDs to be included. This has grown through a discussion, so it’s an interesting service for them.”

TLDs participating in phase one include ‘dot beer’, ‘dot cooking’, ‘dot yoga’ and ‘dot wedding’. For brands keen to utilise location-specific TLDs, ‘dot London’, ‘dot Boston’, ‘dot Miami’ and ‘dot Osaka’ are also in the first batch.

Debyser adds: “It’s still early days, and a challenge is we have a low volume of TLDs, but we have learned that every backend registry has its own roadmap with its own implementations. We need to start conversations with lots of registry operators and keep adding them.”

It costs less than $5 to register a label (trademarked term) with TREx in a single TLD and the TMCH has developed agreements with different registry operators so it has a lower price than making an actual registration.

“This benefits operators, who do not want to see registrations fall into the wrong hands,” says Debyser.

“It’s a philosophical point—whether a name that hasn’t been registered now will be in two or three years, and if so, when? And vice versa, if it’s not registered now, should the brand owner be worried? But we have found a way to ensure returns for brand owners and registry operators.”

In a previous article for our sister website Trademarks & Brands Online, Joel Vertes, partner in the London office of law firm CMS Cameron McKenna Nabarro Olswang, said that although the TMCH was “fastidious” when verifying marks, it had not yet proved to be a panacea to cybersquatting.

With the birth of TREx, that may be about to change, if it hasn’t already.

Geert Debyser, TMCH, Trademark Clearinghouse, online trademark infringement, Uniform Rapid Suspension System, Trademark Registry Exchange, cybersquatting

WIPR