Trademark Clearinghouse: five questions for brand owners


Confused by the coming Internet storm? Then you are not alone. Stuart Fuller from NetNames considers five questions every brand owner should know the answers to.

Based on recent conversations with some major brand holders, both current and hopefully future clients, the forthcoming addition of over 1,200 new domain suffixes is far from clear.

ICANN’s new Chief Executive Officer recently said of the plan “it is good for the consumer, it’s good for innovation and it’s good for competition”.

No mention of the poor brand holder though. My conversations have been with senior intellectual property counsels, hardly your industry novices. They not only question the need for such a radical change (increasing the number of TLD strings from around 300 today by five-fold in two years).

Some of the applications will be genuinely good for the Internet. Geographic applications such as .london, .paris and .nyc will foster business growth with a common purpose; transliterations will at last bring the global web into local language – as one major bank has been fond of saying for years, “think globally, act locally”. But without careful management, the new world Internet order could become utopia for those who profit from the misfortune of others.

There are still many unanswered questions as the clock ticks down towards the the launch of the first of many new suffixes, potentially as early as next month. Clarity is not something that has been too forthcoming in the past twelve months from ICANN, but we are where we are. The Internet will change forever and brand holders need to make choices about their domain name strategy before they miss this opportunity.

There are five questions that every brand holder should be asking themselves right now.

Do you intend to protect any of your trademarks in the new domain name world?

By protect I mean register or block others from using. If the answer is yes, then you need to register your trademarks in the Trademark Clearinghouse when it opens on 26 March 2013 . Once your trademarks have been validated then you are able to use the sunrise periods to claim what is rightfully yours. There is no value in registering your trademark if you have no intention of using the TMCH to protect your digital assets.

What defensive strategy will you take in relation to potential brand damaging names?

There have been some raised eyebrows regarding the launch of suffixes such as .sucks and .reviews in terms of the damage they could do to a brand. Whilst there are still some decisions to be made by ICANN on who will run every single TLD registry, it is fair to say that brand holders will not want a .sucks to fall into the wrong hands. Alternatively, brands may decide to use the .sucks (or similarly bad sentiment domain suffixes) as parody websites, taking a light hearted look at themselves. The .review domain suffix could also be valuable for certain brands, especially those such as hotels or restaurants that now heavily rely on customer recommendations to grow their business. The .review suffix could allow them to interact with consumers to gain positive sentiment.

When will I be able to make applications for the new gTLDs I want?

While ICANN made the prioritisation draw back in December, the actual order by which the new domain suffixes will be available is dependent on a number of factors. For starters, the whole issue of contention still needs to be resolved by fair means or foul. There were eleven applications for app for example, and seven for .shop. Only one registry can be the winner and we should expect this process to be lengthy, costly and full of dispute and debate.

Secondly, companies are still getting cold feet today about their applications. In the past few weeks we have seen brands like Hasbo (.transformer unfortunately), General Motors and American Insurance Group all withdraw applications. They weren’t the first and they certainly will not be the last. This all has an impact on the prioritisation order.

Also, each new domain name has essentially 12 months to start its operation from the moment delegation into the root of the Internet has happened. So while you may have worked out that you can apply for your .ninja technically in 2014, the .ninja has 12 months to make use of its TLD.

How can you protect important brand names that do not have a trademark?

The Trademark Clearinghouse is a massive step forward for brand owners, allowing for the first time a direct link between domain name registrations and trademarks, and thus creating a strong defensive measure in protecting a brand’s online digital assets. However, it has some major limitations. Firstly, it will only cover direct trademark matches. So if you own the trademark NetNames (as we do!) then we can ONLY apply for domains in the sunrise period directly relating to NetNames. So, no, or Just NetNames.

Not all brands are able to own trademark variations of their name and so there are immediate limitations to the TMCH. The good news is that there is a solution for brand holders. The NetNames TMCH service will extend the monitoring of brand violations to partial matches of the trademark for as long as the service is live.

Why should I bother at all?

Just think of the conversations going on at the moment of the buyers of ($16m) and ($11m). How do you think they feel when they realise if they would have waited a while longer they could have picked up a .hotel (or .hotels) for a few dollars?

This is happening; an opportunity for those companies who weren’t lucky enough to be around when the original landgrab happened in the .com world back in the mid-eighties. Savvy brand holders have already started to work with NetNames on their domain name strategy, understanding which are the key new TLDs to register and which to steer clear of.

With potentially 20 new TLDs being launched on a weekly basis from May 2013 now is the time for brand holders to stop and think about their domain strategy once more. Without all the facts, it is enough to confuse the most savvy of domain name experts. NetNames considers new gTLDs to be so strategically important to brands’ future online strategy that it will provide you with a free analysis of your current portfolio, a recommended registration strategy and where the new gTLDs fit into your domain name registration strategy.

The Trademark Clearinghouse is a critical component for brand owner protection, therefore NetNames has worked hard to be the first registrar to have completed its integration with the Trademark Clearinghouse and is ready to place registrations on behalf of brand owners as soon as it opens. NetNames understands that budgetary planning is also a crucial component for brand owner success under New TLDs and provides a potential timeline for when the registrations that are key to your brand are due to be delegated and what the costs will be.

So fear not. Whilst the world is changing all around us, a cool head and a clear perspective is all you need to ensure you stay one step ahead of the game.

This article was first published on 07 March 2013 in World IP Review

Trademark Clearinghouse, NetNames, gTLDs, ICANN

Trademarks and Brands Online