DON'T MISS THE NEW TOP-LEVEL DOMAIN
In the framework of the programme to launch new top-level domains, ICANN plans to inaugurate the Trademark Clearinghouse on 21 February 2013.
The Trademark Clearinghouse (TMCH) is a key system to protect marks on the Internet. This is a global database in which registered trade mark proprietors will declare their trade marks, allowing for the centralisation, authentication, storage and distribution of information related to the rights of trade mark proprietors. This system will therefore facilitate the protection of trade marks when a new top-level domain becomes available.
This monitoring and notification system provides true advantages:
- The TMCH is first and foremost a trade mark database. The inclusion in this database of a trade mark will provide its proprietor with an opportunity to benefit from priority periods (called "Sunrise" periods) to register the corresponding domain name.
- The TMCH is also a preventive system. The applicant for registration of a domain name identical to a trade mark registered in the TMCH will be informed that an earlier trade mark exists.
- Lastly, the TMCH is an information system. Trade mark proprietors will be informed that a domain name identical to a notified trade mark has been registered.
Therefore, a third party who wishes to reserve a domain name will be informed that the name he is attempting to register corresponds to a trade mark in the TMCH.
If he confirms his application and if the registration is approved, the trade mark proprietor will then receive a notice and will therefore be informed of this attempt. (This is referred to as the "Trademark Claims" period).
These "Sunrise" and "Trademark Claims" periods constitute a mandatory prerequisite for the launch of new top-level domains.
Although the schedule may still change, a few reminders and recommendations are set out below:
Role of the TMCH:
The TMCH is intended to be a single database that lists the trade mark rights of all those who so expressly request.
The role of the TMCH must be twofold:
- Authenticate and validate trade marks
- Manage the database and provide information to new registries.
For a trade mark to be included in the TMCH, it must fulfil certain criteria. Only the following trade marks will be accepted:
- A national or regional verbal mark (this provision applies to Community marks, for example) that has been registered, or
- A mark validated by a court of justice or through a judicial process (this provision applies to common law countries), or
- A mark protected by a law or treaty in effect (this provision applies to commercial names, for example).
New registry operators must, due to the contract that binds them to ICANN, plan on a "Sunrise" period and a "Trademark Claims" period before making their top-level domain available.
Those who have declared their trade mark rights in the TMCH may request registration of the corresponding domain name in the new top-level domains of their choice during the "Sunrise" period organised by the new registry.
Owners of trade marks that are included in the TMCH must provide proof of the use thereof to be able to claim a priority right in the "Sunrise" period. Proof of use will be provided by way of a declaration (standard form provided by the TMCH), signed by the proprietor of the right, as well as a sample.
Trade marks thereby validated will be assigned a code (called the "Sunrise Code"), which will be required to participate in the Sunrise periods.
N.B. The inclusion of a trade mark in the TMCH will be the sole mean for its proprietor to participate in the priority Sunrise periods organised by the new registries.
The organisation of "Trademark Claims" periods will also be required by ICANN of each new registry. Trademark Claims periods must last at least 60 days from the launch of a new gTLD (a new top-level domain).
"Trademark Claims" are a tool to inform third party applicants for the registration of a domain name with a new top-level domain of the existence of a domain name that is identical to a trade mark declared in the TMCH.
Therefore, he will be fully informed when making the reservation.
For his part, the trade mark proprietor who has declared his trade mark in the TMCH will be notified of the registration of this domain name by a third party.
Furthermore, he may choose to register his rights in the TMCH for periods of one, three or five years.
We therefore recommend you conduct an audit of your trade mark portfolio in order to identify the marks that should be declared in the TMCH.
As the registration of a trade mark in the Trademark Clearinghouse does not prevent filings by third parties of domain names that are identical to a trade mark, ICANN has also implemented a process called the URS (Uniform Rapid Suspension System), which is somewhat similar to the UDRP process.
In terms of its conditions, it is similar to the UDRP, but faster and less expensive. It will allow for a disputed domain name to be blocked (and therefore the related website as well) in less than 30 days.
LAVOIX can help you declare your rights in the TMCH and offers the following services:
- pre-validation of your rights
- registration in the TMCH
- information related to the proof of use or your rights and follow-up with the TMCH
- storage of Sunrise codes
- participation in Sunrise periods
- distribution of Trademark Claims notices
Please contact us for further information.
Paris - Catherine Levalet
Lyon - Béatrice Daubin
Publication date : February 2013