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February 18, 2013

ICANN introduces a clearinghouse to help trademark owners to protect their rights

This will make it easier for trademark owners to obtain information about domain name registrations that are identical to the mark in the new Top Level Domains and to be able to register domain names beforehand based on the trademark when needed.

In the Trademark Clearing House the trademark can be recorded and by doing so you gain two advantages:

  • Priority Right. When the new Top Level Domains are continuously being introduced, you will directly get information about this and will be able to register your trademark as a domain name in the gTLDs you are interested in. If you register a domain name in this early phase, it is called registering in the “sunrise” period and you use the priority right you have as trademark owner to register your trademark as a domain name. Of course it may still be in contention with others who own an identical trademark.

  • 60 days monitoring. If you don’t register the domain name, you will get information about other applicants that apply for a domain name that is identical or similar to your registered trademark. In parallel, the applicant will be informed that the domain name applied for is identical to a registered trademark. The registering will not be stopped but the trademark owner will be able to react, e.g. by filing a complaint. Note that this monitoring is only in force 60 days after the opening of a new Top Level Domain but discussions are in place which may prolong the period

 

Zacco’s recommendations

  • Consider registering your (registered) trademarks with the so called "Trademark Clearing House" . Zacco already holds all the trademark data for our clients which is needed to file a trademark in the Trademark Clearing House and will assist with the filing process as soon as the Trademark Clearing House opens. Expected opening is said to be during Q1 of 2013 so we recommend you to contact your trademark attorney soon to discuss which trademark should and can be filed.

  • If you are not already a Zacco client, please contact us for further assistance with your registration/s.

 

Questions?

Zacco closely follows the development and will provide further information of this subject.

For questions on the new Top Level Domains or domain names in general, don’t hesitate to consult Isaac Keren (Sweden), Lone Prehn (Denmark), Ane Strand Nilssen (Norway), Nils Köster (Germany) and Wim Claassen (Netherlands).

Here you can find more information on this subject:

ICANN invites public to comment on new generic top level domains matters

ICANN will now accept applications to operate new generic top level domains

ICANNs list of Early Warnings to requested new top level domains now listed

New generic top level domains are published

List of new generic top level domains -gTLDs- postponed

 

 

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