TREx: hunting for trademark infringers
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.”
