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Claims period at the Trademark Clearinghouse extended indefinitely

13/12/2013
The Trademark Clearinghouse, which originally intended to operate a notification system to warn rights holders about registrations of potentially infringing domain names in new TLDs in the first 60 The Trademark Clearinghouse, which originally intended to operate a notification system to warn rights holders about registrations of potentially infringing domain names in new TLDs in the first 60 days of general availability, has announced this week that the notification period will be extended indefinitely.

This comes at a time when the new TLD program is gathering momentum, with sunrise periods now open for a number of TLDs including 7 launched by Donuts Registry this week: .contractors, .construction, .directory, .kitchen, .land, .today and .technology.

Benefits of the Clearinghouse

The Clearinghouse was designed to help brand owners to protect their marks in the fast-approaching era of new TLDs.  For some time now, trade mark owners have been able record their registered trade marks at the Clearinghouse, bringing a number of benefits:

  • rights holders who can prove use of their trade mark can register corresponding domain names in sunrise periods; and

  • rights holders are notified when third parties register domain names which match their trade mark (or match any name which has been protected by a Court, UDRP or equivalent decision), a benefit which has now been extended to operate indefinitely.


The Clearinghouse's role as a central repository of rights information has also been utilised by Registries operating new TLDs, bringing additional potential benefits to those who have recorded their trade marks at the Clearinghouse.  Donuts Registry, which applied for 307 new TLDs and estimates that it will end up operating around 150, has launched a Domains Protected Marks List (DPML).  For a fee of around US$3,000 rights owners will be able to block the registration of domain names which match their trade marks or which include them, provided the corresponding trade mark is recorded in the Clearinghouse.  This goes further than the protection afforded by the Clearinghouse alone, as the Clearinghouse would warn you about an application for apple.tld, but not necessarily for applestore.tld – the DPML could potentially allow you to block both, albeit at a cost.

The extension of the Clearinghouse notification period is undoubtedly a positive development for rights holders.  However, the cost of taking advantage of all the various new rights protection measures, including those adopted by Registries, is mounting.  A balance will need to be struck when considering how best to protect brands in the new online space.

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