Grand opening of the Trademark Clearinghouse (TMCH)

Published onFebruary 2013

The creation of new domain names extensions or new generic top-level domains (new gTLDs) before ICANN (Internet Corporation For Assigned Names and Numbers) represents a true technical and legal revolution in the digital world. It also means great risks for trademark owners that their trademarks be stolen from them.

For example, what if a new gTLD reproducing a trademark is created by a person with no right or entitlement over said trademark? Not only would such a situation give rise to a potentially complex and expensive litigation but it could prove very long to get solved for the trademark owner.

And it is hardly possible for all trademark owners to try and avoid such a dispute by creating beforehand their own new gTLD when such creation before ICANN costs U.S.$ 185.000 plus a management fee of U.S.$ 25.000 per year, excluding the amount of money necessary to pay for the technical management of an extension which must most certainly be in the tens of thousands of dollars per year.

This is why ICANN has appointed Deloitte, one of the worldwide leaders in the areas of audit, consulting and legal and tax expertise, to run a service called the Trademark Clearinghouse or TMCH whose opening has been officially scheduled for 26 March 2013.

Through this service, trademark owners or their agents, such as Trademark Attorneys, may submit their trademark information to a centralized repository and thus:

  • be informed of the opening of new sunrise periods related to any new gTLD to possibly register the domain names matching that trademarks in that new extension;
  • and also be notified when someone registers a domain name that matches their recorded trademarks in the Clearinghouse so that they can take appropriate measures and actions to safeguard or protect their interests, especially via the alternative dispute resolution procedure still currently elaborated.

The benefits of the Trademark Clearinghouse service cannot be disregarded by trademark owners. The TMCH offers a simple and secure solution for them to be alerted, almost on a real-time basis, of any possible infringement of their trademark rights by third parties attempting to create new gTLDs, the number of which is potentially unlimited.

Moreover, the TMCH’s service is a very cost-effective solution. Indeed the alternative dispute resolution procedure enabling to oppose the creation of a  new gTLD will no doubt be much cheaper than what a trademark owner should pay for the judicial recovery of a domain name in most of countries.

INSCRIPTA is at your side to work on and implement the best protection strategy for your trademarks portfolio.

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