New gLTD Trademark Clearinghouse: Now is the Time
Brand owners and other stakeholders have been watching the rollout of new gTLDs with a dose of skepticism as posted deadlines have been pushed off again and again. However, ICANN has recently begun delegating gTLDs, and the “sunrise period” has opened for .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures. Thus, for brand owners who have been waiting to register in the Trademark Clearinghouse until the landscape is clearer, the time has come. ICANN has begun delegating gTLDs, and the “sunrise period” will be closing shortly for the first set of new gTLDs. Entry in the Trademark Clearinghouse does not necessarily block third parties from registering a mark in a gTLD. Rather, as we explained in our last client alert on this topic, registration in the Trademark Clearinghouse provides two primary benefits:
First, it allows brand owners to register during the “sunrise period” of any gTLD open to the general public. For example, if Acme Car Sales owns a trademark registration for the term ACME and enters that registration in the Clearinghouse, as the anticipated .cars registry launches, Acme Car Sales would be able to register acme.cars before others have that opportunity.
Second, Clearinghouse registrants will receive notice if anyone tries to register domain names that match their marks. Thus, to take the prior example, if Acme Car Sales decides not to register acme.cars, but a third party proceeds to do so, Acme Car Sales will receive notice of the registration and then can contest it if appropriate.
Where multiple entities own trademark registrations for the same mark (e.g., Acme Car Sales and Acme Music Company might both own a registration for ACME), the individual registries can determine how to resolve those potential disputes. Donuts, Inc., the registry operator for .camera, .clothing, .equipment, .guru, .holdings, .lighting, .singles, .ventures and .voyage, will be using an auction in those circumstances to determine which Clearinghouse registrant to reward with domain names applied for during the sunrise.
There is no hard deadline to enter the Clearinghouse, but as more gTLDs come online and corresponding "sunrise periods" open and close, entering the Clearinghouse becomes less and less useful. Thus, in order to take full advantage of the Clearinghouse, mark owners should be entering now.