By Doug Isenberg
Although ICANN’s recently launched Trademark Clearinghouse (TMCH) boasts that it will help you “protect your trademark online,” the truth is that while it offers some important protections, it also has significant limitations. And, despite all of the recent webinars, news articles and client alerts, a number of misunderstandings persist.
To be certain, the TMCH is an important part of the new top-level domain (gTLD) program, and trademark owners would be foolish not to participate in it. But, no one should be lured into a false sense of online brand security simply because they have submitted their trademarks to the TMCH.
Yes, by registering your trademarks with the TMCH in a timely manner, you will be able to participate in appropriate “sunrise” periods as new gTLDs come online. And, for limited periods of time, others will be alerted of your rights.
But, keep in mind the following shortcomings of the TMCH:
Registering a trademark with the TMCH does not entitle you to any domain names. Rather, if you have participated in the TMCH, you will be allowed to participate in the sunrise period offered by each new gTLD registry — which means only that you will have an early opportunity to pursue registration of (and payment for) a domain name that corresponds to your trademark.
TMCH participants are not guaranteed domain name registrations even during the sunrise periods. Each new registry is required to have a Sunrise Dispute Resolution Policy (SDRP), which will “allow challenges” to registrations. Plus, there may be instances in which multiple TMCH registrations have been filed for the same mark, as in the case of dictionary terms (think Delta or United) or competing trademark owners (think Playtex or Scrabble). Indeed, ICANN has clearly passed the buck on this issue, saying: “If two different rights holders try to register the same mark as a domain name in the same TLD, the registry has a process for working that out.”
The TMCH’s “Trademark Claims Service” won’t prevent cybersquatting. For a limited time after each sunrise period, prospective domain name registrants will be notified when they seek to register domain names that correspond to marks registered in the TMCH — but, such registrants will be allowed to proceed if they simply acknowledge the notice.
The TMCH’s attenuated protections are limited to “exact matches” and other narrow criteria. Fortunately, ICANN recently agreed to broaden the scope of a trademark owner’s rights from “exact matches” of its registered marks to those “that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding).” But even this expansion won’t offer any protection to trademark owners against blatant (but previously unenforced) forms of cybersquatting.
In light of all of these limitations, trademark owners must remember that reactive enforcement (including via the URS and the UDRP) — not just proactive protection via the TMCH — will remain an important strategy for online brand protection as new gTLDs launch.