Trademark Clearinghouse (TMCH) for NewgTLDs
As part of its program of new Internet extensions ("NewgTLDs"), ICANN has established mechanisms to protect trademark rights.
The principle of "Trademark Clearinghouse" also known by the acronym "TMCH" was approved in 2009 by ICANN. Following a call for tenders in 2011, the joint proposal from Deloitte and IBM was chosen in 2012 to operate the global base of registered trademarks. Each applicant for a "NewgTLD" is committed to integrate the TMCH in its launch process.
Missions of the TMCH
The Trademark Clearinghouse is a global database that will check the information of the brands that will be registered. National, regional or international brands are eligible. Trademark registrations in the TMCH began March 26th, 2013. To be validated trademarks holder have also to prove the use of the trademark by signing a Declaration of Use (DOU) and providing a Proof of Use (POU).
The registration of a mark in the TMCH has two main interests :
- Be able to register domain names identical to the trademark in priority during the phase called "sunrise period"
- Be alerted during a period of 90 days after the launch of each new extension (NewgTLD) if a third party if registering a domain name identical to your trademark
In order to launch a NewgTLDs, registries will have to respect a first registration period called "sunrise period" with a minimum of 60 days. During this period only trademarks registered in the TMCH will be allowed to register a domain name in the NewgTLD via a unique identification number called "SMD" for "Signed Mark Data".
The registration of a domain name during the "sunrise period" is more expensive. Rates vary according to each registry that sets its own rules and rates. Registration of domain names made during the sunrise period of the most recent extensions (eg .ASIA, .CO, .U.S, .MOBI, .XXX...) ware in average charged 150 euros.
"Trademark Claims Services"
Once the period of priority registrations is closed by the registry, the registartion of your brand in the TMCH will enalble you to be alerted when a third party try to registrater a domain name identical to your trademark in a NewgTLD.
This notification service, entitled "Trademark Claim Services" is in place for a minimum period of 90 days.
The third party who wishes to register a domain name identical to a trademark registered in the TMCH will also be informed of its existence. It will then confirm that the registration of the domain name does not infringe the rights of the trademark. No verification will be done to confirm this.
By being alerted, the trademark holder may, if desired, oppose to the registration through a process of rapid dispute resolution called "URS" for "Uniform Rapid Suspension".
Keep Alert Services & ProDomaines related to TMCH
ProDomaines is an ICANN registrar and official TMCH agent. The registration of a trademark within the TMCH via ProDomaines includes:
- Regulation of annual subscription fee to the TMCH operator ( Deloitte & IBM ) in the amount of $ 150 / year
- Check of the eligibility of your marks to be entered in the TMCH by experienced teams and graduates in Law and Intellectual Property
- Transmission of the signed declaration of use
- Collection of evidence of use of the mark (eg marketing or advertising proofs)
- Actual registration of your marks in the TMCH and transmission of the SMD
- Warning of " trademark claims"
- Access to an extranet to manage your registrations in the TMCH
- Automatic expiration notice by email 75 days then 45 days before the end of your TMCH subscription
- Free email and phone support from 9am to 18pm on weekdays
- Free Subscription to the newsletter of domain names and intellectual property related to Internet
And advanced exclusive services:
- Highlight relevant NewgTLDs in the field of brand protection (principle of specialty) based on the Nice Classification. Eg . RESTAURANT for a trademark in Class 43 .
- Highlight relevant NewgTLDs by area of brand protection (principle of territoriality) . Eg . PARIS for a French brand.
- Further advice deposits generic NewgTLDs . Ex : WEB .
- Provisional timetable for the launch of new extensions recommended to adapt your budget in three to five years. Eg . GREEN (12/ 2013).
" Trademark Claims Extended"
The period of "trademark claims" to be alerted by a registration of your brand in an identical domain name on a NewgTLD is only 90 days.
Keep Alert proposes to extend the alert for all the new Internet extensions that will be introduced by ICANN from late 2013 until 2016.
Monitor your brand to detect identical, containing and confusingly similar domain names in the newGTLDs.
Extensions in non-Latin characters (IDN TLDs) are also covered by Keep Alert technology.
Keep Alert detect registrations:
- Identical to the trademark (eg iphone.mobile)
- Containing the trademark. This examination reveals all domain names containing strictly the brand (eg iphone-pascher.app). It can detect registration like"Dot Squatting" with the www at the begining of the brand and other popular prefixes or suffixes often associated with brands (eg buy, my, country...)
- Approaching the trademark (typosquatting). This study covers all registration confusingly similar to the trademark but not strictly identical to the brand (eg armano.luxe).
If the monitoring generates too much false positive results, we can establish exclusions (eg FORD exclude OXFORD ) at anytime during your subscription period .
This monitoring on domain names alert you of new registered domain names, the one that became available, that had a change in the content (exclusive) or WHOIS among all new extensions selected. Our unique tracking feature modification is very useful because it allows you, for example :
- Be alerted if an unreachable website or landing page becomes active
- Be advised when a parking page disappears
- Have access to the history of the domain name to each relaunch carried out with a screenshot stamped
- Take notice of the change in ownership, administrative contact, registrar, the subscription renewal or termination of a name .All the WHOIS are archived and are subject of a detailed comparison
The results detected by Keep Alert are available on your interface and are subject to:
- Screenshot stamped
- Implementation of automatic labels qualifications: parking page, registrar landing pages, redirection groups, inactive page, online store, pornsquatting
- The addition of a comment to domain names that have been in a similar case
- Link with qualified arbitration center
- Creation of report with your recommendations
- Export excel
Contact a Keep Alert expert to advise you.
+33 (0)5 35 54 34 00