As internet use spread and more and more companies brought their businesses online, the availability of domain names with classic domain endings like .com quickly declined. In order to confront the inevitable saturation of the market for domain names, ICANN (the organization that manages and regulates domain name delegation on the internet) has been progressively introducing hundreds of new, generic domain endings (also known as gTLDs, for “generic top-level domains”) since 2013, giving businesses the ability to more precisely target their markets.
The launch of these new domains made the protection of intellectual property back at the heart of debates: how can you protect your trademarks from cybersquatting with such a wide number of domain endings available? ICANN responded by creating the Trademark Clearinghouse (TMCH), a database in which trademark owners can register their trademarks and thereby gain access to a priority registration phase when new domain endings are launched.
As part of our small- and medium-sized business solution, we let you entrust us with registering your trademark with TMCH in order to take advantage of its protections and allow you to focus on what’s essential: your trademark strategy.
Why are domain names so important for a business’s image?
In order to understand the necessity to protect your domain names, you need to understand what role they play. A domain name is the address used by internet users to access a website. In a way, it’s the front window of your online business, and it contributes to your business’s credibility and its image online. But a domain name is also a central hub for all of your digital services, like for example, email addresses. So, it brings together all aspects of your online business.
In parallel, absent restrictions implemented by registries, the registration of domain names is open to anyone and everyone. Starting at just a few dollars, anyone is free to register the domain name of their choosing, whether it’s the intellectual property of someone else or not, so long as it’s available. This makes domain names easy prey for cybercriminals who want to make a profit off of a well-known brand through malicious activity, and consequentially, tarnish your brand’s image.
That’s why you should consider domain names, just like your brandnames, as strategic intellectual property assets that you need to protect, particularly using the TMCH service.
Protect your business from cybersquatting with priority registration of domains in new domain endings
Even today, dozens of new domain endings are set to be released on the market, to which will almost certainly be added more in a future new gTLD program in the coming years, posing a real threat to businesses. The main advantage of registering a trademark with the TMCH is that it will protect you from this threat by guaranteeing priority access for registering the corresponding domain name.
Generally, with each launch of a new domain ending, there are three phases:
- An obligatory, 30-day minimum phase called “Sunrise,” during which only those who have registered a trademark with the TMCH can register a domain name
- A “Landrush” or “Early Access Period (EAP)” phase that can follow different rules depending on the registry (including different eligibility requirements, first come first served registration vs. based on examining applications, or even based on auctions among all the requestors), during which it’s generally possible to register a domain name in priority, for a higher fee
- A final “general availability” phase starting on the “GoLive” date, during which domain names can be registered at their standard price with standard conditions
By registering your trademark with the TMCH, then registering the corresponding domain name during the Sunrise release phase for each new domain ending, you can protect yourself from cybersquatting on that domain before it becomes available to the general public.
TMCH acts like a monitoring service on your domain names
Another advantage of registering a trademark with the TMCH is that it lets you benefit from Trademark Claims. This notification system, mandated by ICANN, acts like a monitoring service on all new generic domain endings (gTLDs). If a third party registers a domain name exactly matching your trademark, you will be automatically informe, letting you take the necessary measures to protect yourself from cybersquatting. Since August 2020, this notification system has been extended to registrations of .com domains using trademarks protected by the TMCH.
What’s more, during new domain launch phases (besides Sunrise) and for 90 days following the GoLive date, if a third party tries to register a domain name that matches your trademark, they will be informed before completing the process that you hold the rights to that trademark. Choosing to proceed with registration despite this warning can help make the case that they were acting in bad faith, should you have to go through extra-judiciary proceedings to reclaim the domain name.
Opting for the TMCH service, then, means actively protecting your trademarks online.
How do you register your trademark with TMCH?
Registering your trademark with TMCH is an administrative prodecure available to:
- Trademarks registered at a national or regional level
- Trademarks validated by a court ruling
- Trademarks protected by a law or treaty
As part of our dedicated small- and medium-sized businesses solution, our team takes care of everything: you provide us all the documents linked to your ownership of the trademark and we’ll take care of the trademark registration procedure with Trademark Clearinghouse—a simplified process that lets you focus on the essential: your trademark strategy.