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As the first sunrise period for new gTLDs opens – are your marks adequately protected at the Trademark Clearinghouse…?

05/11/2013
ICANN's new gTLD program took another small step forward last week, with the first sunrise period for a new gTLD beginning.  Internationalised domains (i.e. those in non-Latin scripts) will be the ICANN's new gTLD program took another small step forward last week, with the first sunrise period for a new gTLD beginning.  Internationalised domains (i.e. those in non-Latin scripts) will be the first to go live, and the first of those to enter its sunrise period is شبكة (or .shakaba, which roughly translates to .web in Arabic).  The sunrise period for شبكة opened on 31 October 2013 and will run until 30 December 2013.  In order to register a domain during this time you will need to have your trade mark verified by the Trademark Clearinghouse.

Background on the Clearinghouse

The Clearinghouse is designed to help brand owners to protect their marks when new TLDs finally hit our desktops.  For some time, trade mark owners have been able record their registered trade marks at the Clearinghouse.  Recording a trade mark has a number of benefits:

  • rights holders who can prove use of their trade mark will be able to register corresponding domain names in sunrise periods (e.g. [yourbrand].شبكة); and



  • holders of trade marks recorded at the Clearinghouse will be notified when a third party registers a domain name which matches their trade mark either during a sunrise period or during the first 60 days that a TLD is open for general registration.


Recording in the Clearinghouse generally allows you to register (or be notified about) identical matches only, and you will not normally be notified about similar marks or misspellings.  However, there are some exceptions:

  • Special rules apply where a trade mark includes a special character (such as a space, "&" and/or "@") which cannot be included in a domain name.  In those cases, a special character can either be omitted or replaced with a hyphen, and the characters "&" and "@" may also be translated into the official language of the trade mark jurisdiction in question.



  • As of 11 October 2013, trade mark owners can also record "abused strings".  This means that, once a trade mark is verified by the Clearinghouse, you may add extra strings based on UDRP or Court decisions.  So, if you managed to recover misspelledbrand.org through a UDRP, you could add the string "misspelledbrand" to the list of strings in the Clearinghouse.  This will entitle you to be notified in respect of the registration of that string by a third party (although it will not allow you to apply for a matching domain in a sunrise period).


Recording your marks in the Trademark Clearinghouse is undoubtedly a sensible step in ensuring your brand is adequately protected in the new online space, and is essential if you would like to register in the sunrise period for any new TLD.  However, although the ability to add abused strings is a welcome addition to the trade mark owner's arsenal, even with these additional provisions the Clearinghouse is unlikely to be a substitute for a comprehensive online brand protection strategy.

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