New Generic Top-Level Domains and the Trademark Clearinghouse

New gTLDs? TMCH? What is this all about?

Until recently, the internet domain name space comprised a rather limited number of top-level domains (TLDs; ie, the extensions after the “.” in internet domain names, such as .com>, .at> and .eu>) under which sublevel domain names could be registered (eg, ). In February 2014, the first ones of many new generic Top-Level Domains (gTLDs) have been launched. This means that in the future nearly any term can serve as a top-level domain (eg, .shop>, .blog>, .wien>).

Along with this development comes the risk that non-authorised persons could try to register domain names under these new gTLDs matching existing trademarks, possibly harming the trademark owner’s interests.

Trying to meet the trademark owners’ concerns, ICANN (the NGO in charge for administering the internet domain name system) introduced the Trademark Clearinghouse (TMCH). The TMCH offers owners of registered trademarks the opportunity to enter their trademarks into its centralised worldwide database. This allows trademark owners to benefit from specific services, the most relevant of which are:

• Sunrise-Services: Trademark owners are allowed to participate in “Sunrise Periods” (ie, the preferred upfront delegation of domain names before they become generally available to the public).
• Claims Services: The TMCH notifies trademark owners as soon as somebody registers a domain name matching the trademark entered in the TMCH.

Specifics and functionalities of the TMCH

In general, any validly registered trademark can be subject to a TMCH entry, as long as it contains a readable word element. The TMCH entry will then generate a “label” exactly matching such word element; no elements must be added to or removed from the trademarks as registered.

The TMCH services relate only to sublevel domains exactly matching such label. Based on the trademark “ABC” recorded in the TMCH, the trademark owner can claim sunrise services only for the domain name but not for . The same applies for the claims services: The trademark owner will be notified only of applications for domain names that concern a sublevel domain identical to the respective TMCH label.

Note that an entry in the TMCH cannot prevent the delegation of a matching domain name to a third party. It would be up to the trademark owner to take appropriate action once notified, if such delegation may harm the trademark owner’s interests. But first statistics show that the claims service also appears to have a deterrent effect since approximately 90% of all applicants who have been notified during the delegation process that the desired domain name matches a TMCH entry, refrained from moving on with the delegation process.

Which trademarks should be entered in the TMCH?

In general, word marks (ideally without containing any special characters) are best suited for entry into the TMCH. Specific attention should be given to “mutated vowels” (eg, “ä”, “ö” or “ü”). Since they can also be part of a domain name, the labels generated by the TMCH will also contain mutated vowels included in the underlying trademark registration. However, internationally operating companies usually use the transcriptions (“ae”, “oe” or “ue”) as part of their domain names to ensure broad accessibility of the domain also from other countries, which would require a suitable trademark that includes such transcriptions. Ideally, trademarks entered into the TMCH should remain valid for the entire term of TMCH entry (one, three, five years, renewable).

If the TMCH entry should mainly allow participation in sunrise periods, trademark owners should enter trademarks exactly matching the desired (sublevel) domain name. Further, to participate in sunrise periods, the trademark owner must prove use of the trademark to the TMCH (including a formal declaration and a sample showing the exactly matching use of the mark).

For claims notifications, focus should be on trademarks that are likely to be unfairly exploited by third parties (even if no own interest in recording such domain names exists on the trademark owner’s side).

Strategic aspects

The functionality of the TMCH aims at delegating domain names to trademark owners and preventing abusive delegation of domain names to third parties. Thus, the selection of which trademarks to be entered into the TMCH should fit into the domain-portfolio and (online) brand (enforcement) strategy.

Further, it must be checked whether the current trademark portfolio even contains a trademark registration suitable for the desired purpose, or whether the portfolio may need adaptations. The fact that the TMCH is dependent from a valid trademark registration further requires a close link to the trademark administration.
Schoenherr regularly advises clients on strategy and organises the entry of trademarks into the TMCH.

To participate in new gTLD sunrise periods and to allow swift reaction to abusive domain name registrations, trademarks should be entered into the Trademark Clearinghouse.

author: Michael Woller