The Trademark Clearinghouse for new TLDs is giving some people first dibs on domains like realestate.guru and pizza.restaurant.
The .info domain name got seriously gamed when it had its trademark sunrise period in 2001.
There was no pre-verification mechanism to determine if trademarks used to claim a .info domain met requirements. As a result, 20,000 sunrise registrations were later deemed invalid. Many more were accepted under rather lax standards.
The same thing happened with .eu. Enterprising domainers filed for questionable trademarks in “loose” jurisdictions and used these to get .eu domain names before they were generally available.
(In the case of .eu, the last laugh went to the registry. For all the work and money domainers put forth, they ended up losing their shirts because the domains they got weren’t worth much.)
So when the new top level domain program was debated, there was a call to tighten up the rules around sunrise eligibility and to standardize requirements across all registries. The Trademark Clearinghouse (TMCH) was created to validate trademark submissions and syndicate this information out to each domain registrar.
Yet when Donuts’ first sunrise period ended, I noticed that a lot of seemingly common words were registered: Wedding.guru. Money.ventures. Cloud.holdings.
I started to dig into it and found many more common words in Trademark Clearinghouse database: auto, bank, finance, hotel, party, pizza, realestate…the list goes on. (See embed below for a list of some of the terms I’ve discovered in the TMCH.)
After spending a week analyzing the terms, reviewing the TMCH rules and talking to people on many sides of the domain ecosystem, I’ve come to this conclusion: for the most part, the common words were applied for by well-meaning companies that are only trying to protect their brands. A handful, however, were registered by people trying to game the system. Unfortunately, the actions of both the well-meaning and the gamers will affect the everyday Joe looking to register a domain name.
How the TMCH works
The TMCH serves two purposes for trademark holders.
First, by submitting a mark to the database, a trademark owner can register the matching second level domain in new top level domain sunrises.
Second, for 90 days after a new TLD launches, anyone who tries to register a domain matching a registered mark will see a Trademark Claim notice. If they proceed to register the domain anyway, the trademark owner will be notified.
The notice to potential registrants includes most of the pertinent information about the registration, including who owns it, its fields of use, jurisdiction, and contact information. You can see an example here. (If you pre-order a domain that matches a trademark, you might also receive an email like this.)
Vicky Folens, World Wide Project manager for the Trademark Clearinghouse, told me last week that there are currently 25,000 entries in the database. This does not include so-called “abused labels” or TM+50 that trademark holders can submit if a similar domain including the trademark was the subject of a dispute (e.g. UDRP) in the past. But the number of abused labels is much smaller than the 25,000 number.
The challenges of global trademark law
The idea behind the TMCH was to provide a reasonably priced, universal way for trademark holders to protect their brands. ICANN would create guidelines and Deloitte, which manages the validation process, would follow them.
But it’s not that simple in practice.
Case in point: the new TLD guidebook specifically mentions that word marks will be accepted for the database.
It turns out there’s no global qualification of what constitutes a word mark. A trademark that qualifies as a word mark in one jurisdiction might be classified as a design/image mark in another.
Thus, it was determined that terms could be submitted if they’re part of an image mark but the words are “predominant” and “clearly separable or distinguishable from the device element.”
A hypothetical example might help explain this.
In the U.S. I could never get a trademark for “domains” for a field of use related to domain names. But I could get a trademark for a logo with the word “domains” in it, even though I’d have to disclaim rights to “domains” by itself. I’d essentially be trademarking my design, not “domains”. Under the TMCH rules, this could qualify for an entry for “domains”.
So how does the Trademark Clearinghouse work in practice? Let’s go through a few examples.
I’m going to pick on my alma mater for a minute here.
The University of Texas has an entry in the database for “Texas”. While the trademark field of use is for education, the registration effectively gives the university first right of refusal on texas.TLD across all TLDs during sunrise. (There are ways for registries to deny such registrations, as I’ll explain more below).
I can understand the university wanting to register texas.university or texas.college. But texas.camera?
In this case–as with many other cases–the trademark filer doesn’t appear to be snagging domains to keep them out of distribution. The University of Texas didn’t register texas.camera in sunrise, for example.
But should it be able to register Texas.college when there’s an actual educational institution in Texas called Texas College? To be fair, Texas College could also participate in sunrise if it has a trademark for Texas, too. But a trademark for “Texas College” would not work: trademarks in the TMCH do not “span the dot” by default. A trademark for “Texas College” would not give you sunrise rights to Texas.college, only “Texas” would. Uniregistry is one registry offering a spanning the dot sunrise.
Amazon.com has registered a number of brand names in numerous sunrises so far. One of these is Fire for its Kindle Fire. This is an example where a company is registering the seemingly common word in just about every sunrise, even if the domain has nothing to do with the product.
If you own a restaurant called Fire and want to register Fire.restaurant, you’ll have to get into the TMCH and go to auction with Amazon.com.
Other “legitimate” filings
Some other common words in the database that seem to have been filed for “legitimate” purposes include “kilt” by the Tilted Kilt restaurant chain, “Texans” by the NFL team, and “City” by Rogers Broadcasting.
A Chilling Effect
OK, so the Houston Texans NFL team probably isn’t going to come after you for registering Texans.plumbing for your plumbing business. Tilted Kilt probably didn’t file its mark in order to stop you from starting a clothing site at kilt.clothing.
But if you’re a plumber or clothing store trying to register a domain and you suddenly see a Trademark Claims notice filled with legalese, what are you going to do? Freak out and stop registering the domain?
That’s possible. Even some sophisticated domainers have sent me messages about seeing these notices thinking they couldn’t register the domain because of the notice, or just decided it’s not worth the potential hassle.
This is where having common words in the database creates a problem.
The number of generics I’ve discovered in the database is relatively small. There are surely more, but the database isn’t public. Records are only open to scrutiny when you discover a Trademark Claims notice while trying to register a domain at a registrar. Apparently the IP community requested that the database remain private.
Although the number of trademark entries that appear to be purely a way to snag good domains in sunrise appears limited, there are plenty of examples.
I wrote previously about new TLD applicants What Box and .Luxury, who along with their lawyer, managed to get second level domains of finance, luxury, realestate, cloud and money in the first round of Donuts’ sunrise. There are other questionable entries as well.
There is a way to challenge an entry in the TMCH, but it costs money.
How registries can respond to the “holes” in the TMCH
Even if it has the best intentions, the TMCH can’t keep out game players and can’t prevent a computer company with a trademark from over-asserting itself by registering domains in .plumbing or .clothing.
But there are a few ways for registries to handle these issues.
1. Registries can “registry reserve” some of the popular and valuable terms to prevent them from being claimed in sunrise.
2. Although open to interpretation, it seems that registries can add additional requirements for sunrise registrations. For example, they can require that the field of use for the trademark must be related to the top level domain topic.
That would prevent the person with a trademark on “pizza” for “Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials” from being able to claim pizza.food in sunrise.
3. Perhaps the most innovative solution is an anti-gaming clause in the registration agreement. Uniregistry has a clause that prevents a domain registered in sunrise from being transferred to another registrant. Domains can only be transferred if the entity that registered the domain is sold or assumed. This doesn’t hurt legitimate trademark holders, but prevents someone who filed a mark in the TMCH to game sunrise from ever selling the domain (unless it sells the entire company along with it).
What this means for registrants
A key takeaway for potential domain name registrants is this: don’t let a trademark claims notice scare you.
Often times the rights being claimed are limited. They’re limited in jurisdiction and fields of use.
Read the claim. Think about if you will actually infringe on the rights. Then go ahead and register the domain.
Oh, and if you do this and subsequently get a cease & desist letter, please send it my way.