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”.
The result
So how does the Trademark Clearinghouse work in practice? Let’s go through a few examples.
Texas
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.
Fire! Fire!
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.
Fire.plumbing, anyone?
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.
Gaming
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.
What you are talking about in this article is what respondents to many UDRP’s have bene putting up with for years. Many Complainants have knowingly “gamed” the trade mark/UDRP system to turn a strictly 1 class 1 jurisdiction trade mark into a worldwide total 100% monopoly by using UDRP.
Where are you getting access to the data from? Is it available for anybody to download?
No, you can only find it when you search for a domain and get a trademark claims notice. This is one of the biggest problems with the system as it makes it harder to scrutinize entries.
…and can you tell us what site/tool you use to search for domain and get a tm notice?
Mike, any registrar that is offering new TLDs has to show the notice when you add one of the domains to cart (or during the checkout process). GoDaddy shows them immediately when proceed to the cart.
In other words, you aren’t going to answer his question.
I did answer it.
…would be nice to see a screenshot of such warning. I was searching on GoDaddy and I haven’t experience any such notice. Only “Sorry, xxxxx is already taken.” or “Good news, this domain is available”.
I registered a one word new TLD generic term at 101domain and had the warning appear. With some investigation it turns out the ‘mark’ was registered in a European country to a different TLD applicant company from the US under a class that had very little to do with the generic name I applied for and the TLD I was registering it under. Additionally the mark holder’s own TLD applications are also unrelated to the term. Where’s the gain for them here?
I assume you’re referring to What Box?
Good deduction & yes, that is correct.
My take is it’s just a domainer-type play. You’re right, the domains have nothing to do with What Box’s applications. In .luxury’s case, they appear to have only gone after .lux and .luxury.
add “internet” also, i got the notice when i got internet.clothing
“internet”. go figure. added it.
Thanks Page.
I got just “Sorry, internet.clothing is already taken.”. Do I need to be signed in to see any notices? Strange!
That’s because someone already registered internet.clothing. You need to search for internet under something else that hasn’t been registered but is generally available.
I have perused this post and the Trademark Clearinghouse website, and because I am not well versed in this topic, I am still confused. Can someone tell me how/if the Clearinghouse would apply to the following hypothetical situation:
I purchase the angrydog.clothing domain during the normal registration period and encounter no trademark infringement messages. Later, I learn that there is a brand called AngryDog who isn’t crazy about my purchase. Can they still take some sort of action against me?
I apologize in advance for such a novice question!
Yes, they can use the URS or UDRP to attempt to suspend or transfer the domain (respectively). They have to meet certain requirements to do this. If they are a clothing company and have a trademark for this term, you may as well hand the domain over.
It is not as simple as for URS and UDRP the complaining party must provide evidence that the domain was registered in bad faith, which is not the case in your example. But in the case of big companies like Google, I guess an army of lawyers will always find a way to recover the domain…
Also, the Trademark Claim service has been extended indefinitely (beyond the original 90 days period) : http://trademark-clearinghouse.com/content/extended-claims-service
Angrydog.clothing was an example, not the actual domain. It could be the case in his example.
And FYI, this is the type of email you’ll get if your domain has been registered by a third party :
Dear XXX,
You have received this Notice of Registered Name because the following domain name(s) matching your Trademark Clearinghouse record(s) have been registered.
Mark Name Registration number: Registered Domain Name Registration Date
xxx xxx 06.02.2014 12:15
For additional information, please refer to the Whois record for the domain name at the applicable registry. A list of gTLD registries is available at http://www.icann.org/en/resources/registries/listing.
If you encounter any issues, then please do not hesitate to contact our customer support under [email protected].
We thank you for your trust.
XXXXX
Official Trademark Clearinghouse Agent
This is an authentic e-mail notification from the Clearinghouse Verification Provider, a part of the Trademark Clearinghouse: the central repository for verified brands for the purpose of protecting brands in ICANN’s new gTLD program.
Mike, here’s screenshot
https://domainnamewire.com/2014/01/30/trademark-claims-notice/
“Apparently the IP community requested that the database remain private.”
Another HUGE CLASS ACTION IS ON THE WAY HERE.
Only to better clarify: keeping the TMCH secret is good under some points, but It prevents everyone to see how many generic words commonly used in the world the large corporations are trying to steal to all human beings.
That is the reason for the class action (other 12 class actions will be started, so they are 13 so far….)
“keeping the TMCH secret is good under some points”
All of the TM registration data is public data. I have never encountered a good argument for why the TMCH should not be open to inspection, but I have encountered several lame arguments.
The POINT of trademark registration is to provide public notice of trademark claims.
And, Andrew, add “domains” – that one is a real turd. It is the subject of a Czech trademark registration for “training programs”, but the trademark registration is owned by a domain registrar.
That’s just pure bullshit right there. The IP community clearly wanted to keep people from finding out the full extent of the games they are playing with dictionary words registered as arbitrary trademarks, for the purpose of rolling up generic domain names.
In the decision to keep the TMCH data “secret” (although a dictionary algorithm run through a registrar interface can readily reconstruct much of the database), there was no weight or consideration whatsoever given to the public interest in keeping an eye on the shenanigans the IP folks are attempting to pull off here.
The TMCH is also allowed to offer ancillary services, so I imagine keeping in private helps it retain more opportunities for the future.
And people thought the .MUSIC trademark which was heavily used in commerce for half a decade was “gaming”. While we never asked to “win” the gTLD because we had a trademark in the cases involving the TMCH the goal is the allocation of a valuable domain because of a generic trademark.
I remember warning the ICANN Board about this happening giving the example of the .EU launch where generics like music.eu, sex.eu and a whole bunch of others were registered in Sweden under the classes of coconut oil.
Constantine
.MUSIC