ICANN’s Trademark Clearinghouse opens its doors for registration

Jan Corstens

In the end of March,the Trademark Clearinghouse (TMCH) was opened, the foundation mechanism for brands to protect their trademarks against potential infringement, ahead of the entry of multiple generic Top-Level Domains (gTLDs) into the Internet later this year. The TMCH is a single database of validated trademarks, and is the only officially authorised solution from The Internet Corporation for Assigned Names and Numbers (ICANN), the body that oversees domain names on the Internet.

Online brand protection in the era of new domains

Operated by Deloitte, who perform the verification services and IBM, as the database provider, the TMCH provides two unique services and recording trademarks in the TMCH is the minimum requirement for brands to benefit from these as new TLDs comes to market. First, recording marks provides brands with the pre-launch opportunity to proactively register domain names which match their trademarks ahead of wider public availability, during the ‘Sunrise’ period of every new TLD – something almost six out of ten of major consumer brands have expressed an interest in doing.

Second, following the launch of each new web extension, for a period of 90 days, trademark holders will receive a warning when anyone else registers domain names that match their marks. This Trademark Claims Service is currently demanded by 60 per cent of major consumer brands. As the cornerstone of the rights protection mechanism built into ICANN’s new gTLD program, the launch of the TMCH will provide assurance to the 96 per cent of major consumer brands that feel that the new domains present a new level risk to Intellectual Property (IP) online.

In fact, almost nine out of ten of major consumer brands have stated they are willing to submit their trademarks to the TMCH. The results are revealed in an independent survey, commissioned by Deloitte and conducted by Vanson Bourne, of 200 global consumer-facing businesses with 3,000-10,000+ employees – regarding their IP provisions in light of the new domain initiative.

Mitigating risks and opening opportunities

While new domains present both risks and new possibilities for businesses, almost 8 out of 10 of brands polled believe that the introduction of the TMCH will help protect their IP online across the new gTLDs moving forward. The assurance that the TMCH provides means that businesses can now focus on the new opportunities the domains offer, such as improved online marketing opportunities and improved customer engagement – a benefit outlined by 8 out of 10 of the brands polled. The research reveals that more than half of the brands (52 per cent) are interested in securing domains relating to their trademarks for geographic domains, such as .SCOTLAND or .AFRICA and the opportunity to reach international communities via international domains (domains presented in foreign language scripts) are an attraction to 6 out of 10.

The results of the survey show that businesses are gearing up the launch of the TLDs in order to benefit from the advantages they offer, however they also need to ensure they have adequate protections in place to defend their brand online. It is remarkable that one in five of top 200 brands still have little or no awareness of the new domains, which also means they are unnecessarily exposing themselves to trademark infringement. Recording marks into the TMCH is the most effective way to ensure that IP is appropriately safeguarded across all of the new web extensions that will go live this year.

The TMCH is open to any trademark holder – whether a private individual or company – and is without geographical limitation. Trademark holders will only have to submit marks once, which will then give access to the rights protection mechanism across all of the new domains being launched. Prices range from US$95 to US$150 per year per trademark record per year, depending on the number of trademarks submitted and their registration period in the TMCH.

For more information please visit the TMCH website at www.trademark-clearinghouse.com  

About the author

Jan Corstens is Partner at Deloitte.

About the Trademark Clearinghouse

The Trademark Clearinghouse is the centralized repository of validated trademarks for the purpose of protecting brands in ICANN’s new gTLD program. The Trademark Clearinghouse consists of two primary functions: the authentication of contact information and verification of Trademark Records and the storage of such Trademark Records in a database in order to provide information to the new gTLD registries to support the providing of Notifications of Registered Name (NORN). The Trademark Clearinghouse is operated by Deloitte and IBM, in accordance with ICANN policy.

About ICANN

ICANN’s mission is to ensure a stable, secure and unified global Internet. To reach another person on the Internet you have to type an address into your computer – a name or a number. That address has to be unique so computers know where to find each other. ICANN coordinates these unique identifiers across the world. Without that coordination we wouldn’t have one global Internet. ICANN was formed in 1998. It is a not-for-profit public-benefit corporation with participants from all over the world dedicated to keeping the Internet secure, stable and interoperable. It promotes competition and develops policy on the Internet’s unique identifiers. ICANN doesn’t control content on the Internet. It cannot stop spam and it doesn’t deal with access to the Internet. But through its coordination role of the Internet’s naming system, it does have an important impact on the expansion and evolution of the Internet. For more information please visit: http://www.icann.org.

About Deloitte

A leading audit and consulting practice in Belgium, Deloitte offers value added services in audit, accounting, tax, consulting and financial advisory services.

In Belgium, Deloitte has more than 2,600 employees in 11 locations across the country, serving national and international companies, from small and middle-sized enterprises, to public sector and non-profit organisations. The turnover reached 334 million euros in the financial year 2012.

The Belgian firm is a member of the international group Deloitte Touche Tohmatsu Limited, an organisation of independent member firms devoted to excellence in providing professional services and advice.

We are focused on client service through a global strategy executed locally in more than 150 countries. With access to the deep intellectual capital in the region of 200,000 people worldwide, our member firms (including their affiliates) deliver services in various professional areas covering audit, tax, consulting, and financial advisory services. Our member firms serve over one-half of the world’s largest companies, as well as large national enterprises, public institutions, and successful, fast-growing global companies. In 2012 DTTL’s turnover reached over 31.3 billion dollars.

Deloitte refers to one or more of Deloitte Touche Tohmatsu Limited, a UK private company limited by guarantee, and its network of member firms, each of which is a legally separate and independent entity. Please see http://www.deloitte.com/about for a detailed description of the legal structure of Deloitte Touche Tohmatsu Limited and its member firms.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s