Trademarks and new extensions

This year, as you probably know, will see the arrival of the first set of new top-level domain name (TLD) extensions. Over 500 new registries are forming, which collectively will service over 1500 of these additional extensions. This huge expansion in the name space of domains will not be possible without creating some branding conflicts, and this is where the Trademark Clearinghouse (TMCH) comes in. 

 

What is the TMCH?

The Trademark Clearinghouse is an institution that provides centralized brand management.

ICANN has anticipated the need for a single point of contact for all trade and service mark registrations, and has created the TMCH for this purpose. It is managed by IBM, who is taking care of the technical side, and Deloitte, who will handle the validation of registered trademarks. Together, they will enable the the holders of valid, registered trademarks to gain priority in the registration of domains that are comprised of these marks. Companies registering with TMCH can defensively register domains (during the sunrise period for a given TLD) or be notified of registrations that match registered trademarks during the 90-day window following the sunrise.

 

Who can register a trademark?

Domain names containing registered trademarks can be registered any natural or legal person with proven rights to a given brand, either regional, national or international. We have found that there are limitations to the use of a trademark as a domain name, however. For example, brands containing a period (.) or special marks can’t be parsed by the DNS system and will not be accepted. Spaces and other punctuation marks included in a brand may be replaced by a dash, and if the mark contains the @ or & characters they can be translated into the language corresponding to the jurisdiction of the brand (e.g. “at” and “and” in English).

 

How can Gandi help?

Gandi Corporate Services can manage the registration of your mark, and send you any alerts you may get.

If you want to become a Gandi Corporate Services customer, you can! To use the TMCH service, just subscribe for a one-year term by sending your request to tmch@gandi.net or corporate-team@gandi.net.

 

Once you are subscribed, we will help you register your trademarks in the TMCH and monitor alerts regarding potential infringing registrations. Our prices for this service are as follows:

 

• Registration of a brand for one year: $250 (including the $145 fee assessed by TMCH), and $250 for renewal (which is useful in protecting your mark for as-yet-unreleased extensions).
• Registration of a brand for three years: $690 (including the $435 TMCH fee)
• Registration of a brand for five years: $1090 (including $725 TMCH fee)

 

ICANN estimates that the first extensions will be openly available by June, so a 3-year or even 5-year registration makes sense, especially considering that the rate of introduction may be as high as 1000 new extensions a year. We offer volume pricing for large customers.

 

If you are interested in our offer or want specific details, please contact us at tmch@gandi.net.