Domain-name stuff makes me dizzy. It could be all those acronyms. Or it could be the troubling way disputes are handled under the UDRP, at least as described by my friend Paul Raynor Keating. If you do UDRP work all the time, you already know about the Trademark Clearinghouse. But if you rely on LIKELIHOOD OF CONFUSION® for all your trademark learning — in which case, we have to talk — it’s time to catch up. This sounds like a pretty good idea, no?:
[O]ver 1400 new generic top-level domains (gTLDs) should become available on the Internet starting [April] 2013. More than half will be open to register domain names. Given this situation, companies must carefully consider how to adapt their digital strategy and prepare for the new landscape.
The Trademark Clearinghouse (TMCH): what is it?
The TMCH is a centralized database of registered trademarks where rights owners can submit their eligible trademarks prior to and during the launch of new gTLDs.
The TMCH has two distinct functions in the new gTLD program: the Sunrise service and the Trademark Claims service. …
The Sunrise service is a period of at least 30 days that must be offered by all new gTLD registries during which eligible trademark owners can register domain names matching their trademarks before domain names are offered to general public. In order to benefit from the system, trademark owners have to provide proof of use of their trademarks.
The Trademark Claims service is a notification service that provides notice to a potential domain name registrant that a domain name registration matches a trademark in the TMCH. Such notification is not blocking but alerts the applicant that it could infringe trademark. In case of litigation, proof of bad faith by the applicant is facilitated as it will not be in a position to allege that it was unaware of the existence of the trademark’s right. If the registration is completed after all, the trademark owner is notified of said registration during at least the first 60 days of the general registration period of any new gTLD.
At least in theory, it sounds smart, provide not only monitoring but a way to systematically address some of the ridiculous games that end up getting played concerning a domain registrant’s knowledge and bad faith in UDRP proceedings. As to the Sunrise service, you can just see the land-rush possibilities afoot here, but the official take on this is the service is being tailored narrowly:
These two services only apply to identical matches that is to say domain names, which consist of complete and identical textual elements of the trademark. The matching rules are strict. Only spaces, punctuations or other IDN-impermissible characters (!, +, =) may be omitted or replaced by hyphens. The signs @ and & may be replaced by a hyphen, omitted or translated into the applicable language(s) corresponding to the language of the trademark’s right jurisdiction.
It’s never really all that simple, though, is it? Read More…