Trademark Clearinghouse to protect brands as top-level domains proliferate

By Alexander Garcia | Aug 31, 2015

From counterfeit products to phishing schemes, unauthorized domain name registrations can create security and safety issues, damaging a brand owner's reputation and lowering consumer confidence in the affected brand. With an expansion of the generic top-level domain (gTLD) system, the opportunity for abusive and fraudulent conduct has expanded, creating new challenges for brand owners.

The Internet landscape has changed, as a new generation of gTLDs has emerged. A gTLD is the string of characters to the right of the "dot." Traditionally, these gTLDs consisted of approximately a dozen variations, such as .com, .net, .edu, .info, etc. However, an expansion of this gTLD system now allows approved domain name registries to operate gTLDs that consist of almost anything to the right of the "dot", with corporations and Internet speculators filing more than 1,900 applications to operate these new gTLD variations. From brand names such as .PEPSI and .AETNA to generic terms such as .ENGINEERING and .EQUIPMENT, close to 600 new gTLDs are already active.

These new gTLD extensions amplify the risks for brand owners, creating more opportunities for fraud and abuse. For example, registrants can now secure domain names such as CAT.EQUIPMENT, CAT.HELP, or [YOUR BRAND].ENGINEERING. Unfortunately, given the number of new gTLDs, it would be impossible for companies, even those with vast trademark resources, to register their trademarks within every new gTLD. In response to this heightened opportunity for improper use of these domain names, a coordinated strategy is required to reduce the risk of online infringement.

For this purpose, the Trademark Clearinghouse (TMCH) was created as a central repository for collecting trademark information and is intended to coordinate early access to domain name registrations for brand owners and to monitor for infringing domain name registrations.

When brand owners record their trademarks with the TMCH, they receive the following benefits:

  • Sunrise Service: For each new gTLD launch (e.g. .EQUIPMENT), if brand owners opt in, subject to certain requirements, they have the opportunity for early registration of second-level domain names, which correspond to their recorded trademarks (e.g. [YOUR BRAND].EQUIPMENT).
  • Notification Service: Brand owners will receive notification if domain name registrations are an identical match to a recorded trademark.

The cost to record a trademark with the TMCH is minimal, usually an annual fee of $100 to $200 per trademark, depending upon the vendor.

However, it is also important to understand the TMCH's limitations. gTLD operators are not obligated to deny domain name registrations, simply because the domain name could conflict with a brand owner's recorded trademarks; the only obligation is to provide notice to the brand owner of identical domain name registrations. Instead, for a company's most valuable brands, a commercial domain name watch service may be a better option for monitoring for potentially infringing domain names.

Brand owners should evaluate their most valuable trademarks and identify gTLDs for proactive registration, e.g. .ENGINEERING, .EQUIPMENT, .HELP, etc. Developing an action plan for which domain names to proactively register and when to enforce against domain name infringement will allow brand owners to maximize their brand protection efforts and to reduce the risk created by these new gTLDs.

Alexander Garcia is in the Trademark & Copyright Group at Perkins Coie, LLP.