Three Myths About the New Web Domains Coming This Fall

Brands Must Act Quickly to Protect Trademarks with the Trademark Clearinghouse

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Later this year, the internet will commence its biggest transformation yet with the launch of hundreds of new "dot-something" web domains. Beyond the traditional .com and .org, brand-specific and geographic domains like .google and .nyc will start popping up. While this transformation opens myriad doors for competition and innovation, some brand owners remain concerned about the risks that the new domains present.

But safeguards are in place to help CMOs protect the interests of the brands within their organizations. This is why in March the Internet Corporation for Assigned Names and Numbers (ICANN) established the Trademark Clearinghouse, to help brand owners and their agents defend their rights during the expansion of web domains. But even with over 10,000 Trademark Clearinghouse registrations as of this month, uncertainty remains surrounding the submission process.

Proper use of the Trademark Clearinghouse depends on a firm understanding of its key features, without allowing a few common myths to derail you.

Myth #1: This will take forever. More than 1,000 new domains will launch. Won't I need to submit each one separately?

The Trademark Clearinghouse offers a one-stop global source of registered trademarks. This includes trademarks written in multiple languages and even non-Latin scripts. In the past, brands had to individually record trademarks with each domain. Now they can make just one submission to the Trademark Clearinghouse.

Myth #2: I see no benefit to submitting my trademarks to the clearinghouse. There is no way of telling if I will be protected.

Here is how brands will be protected:

The Sunrise Period. Before the open launch of any new domain name space to the general public, a "sunrise period" will give brand owners a chance to secure domain names that match their trademarks ahead of everyone else.

Trademark Claims System. After each new web extension launches, trademark holders will receive alerts warning them if someone else registers a domain name that matches their mark or marks. Brand owners can then deal with trademark infringement early on, and on the sure footing that the domain-name registrant was warned of the existence of the relevant trademark/s before registering.

Myth #3. The first new domain hasn't launched yet, so there is no rush to enter my trademarks.

While there is no deadline for submitting a trademark to the Clearinghouse, brands should submit their trademarks as early as possible, ensuring time for dealing with potential administrative issues, including delays that could lead to missing out on one or more "sunrise" periods. You don't get charged until the first sunrise.

For a further breakdown of the Trademark Clearinghouse, visit this step-by-step guide to its key features.

Jan Corstens is a partner at Deloitte, operators of the Trademark Clearinghouse.
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