Another step along the long road of ICANN expanding the number of sanctioned top-level web domain names, so that TLDs such as .pepsi, .food and .app can join the usual suspects of .com, .org, .net and so on. ICANN has launched a Trademark Clearing House (TMCH) to create a “foundation mechanism for brands to protect their trademarks against potential infringement”. If you’re opening the Pandora’s box of allowing almost .anything to become a TLD — and ICANN has been criticised for the entire endeavour – creating and maintaining “a single database of validated trademarks” to provide a “rights protection mechanism” for tracking trademark ownership and claims was always going to be unavoidable.
ICANN started accepting applications from companies and organisations for customised or generic TLDs at the start of last year. The full list of businesses that had applied was released in June, with ICANN saying it would take it between nine and 12 months to consider the applications before the new TLDs can go live.
ICANN said the TMCH is aimed at helping to allay brands’ concerns about how their trademarks can be protected when the new TLDs are launched. However brands will have to pay for the privilege of protecting what’s theirs: recording trademarks with the TMCH costs between $95 to $150 per year per trademark record per year “depending on the number of trademarks submitted and their registration period in the TMCH”.
This yearly fee buys brands two things: firstly the “pre-launch opportunity” to proactively register domain names which match their trademarks ahead of wider public availability of the new TLDs. And secondly, they get access to a trademark claims service – which will mean they receive a warning when anyone else registers domain names that match their marks.
Any trademark holder — private individual or company — can apply to register their marks with the TMCH. Only registered trademarks that are already owned by businesses may be recorded — so the service will not apply to generic TLDs (such as .food and .books) unless a company owns the term as a trademark.
The TMCH is operated by Deloitte. “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,” said Jan Corstens, Partner, Deloitte in a statement.