Infringers Beware! .Com gTLDs Now Supported by Trademark Clearinghouse
In the ever-raging battle against trademark infringers gobbling up domain names for squatting purposes, trademark owners received a new tool in their arsenal, thanks to a recent update with the Ongoing Notification Service of the Trademark Clearinghouse (TMCH).
The TMCH is a centralized database of verified trademarks, built into the Internet Corporation for Assigned Names and Numbers’ (ICANN) program for new generic Top-Level Domains (gTLD). Among its other responsibilities, ICANN oversees the introduction of new gTLDs, or as we more commonly know them, internet domain name extensions—e.g., .biz., .net, .edu, etc. Since October 2013, ICANN’s gTLD program has enabled hundreds of new gTLDs to gain usage on the internet. With the introduction of each new gTLD, however, there comes a risk that third parties will register domain names that infringe trademark rights, whether intentionally for squatting purposes, or unintentionally. To protect trademark owners, the TMCH database provides trademark owners with information helpful to enforcing their rights against infringing domain names when they are registered on a gTLD. For instance, if a trademark owner registers their trademarks in the TMCH database, whenever someone registers a domain name that matches the trademark records in the TMCH, the new domain name registrant is alerted that there are existing trademark rights in the database that it may be infringing. The new registrant then has to affirmatively acknowledge the trademark owner’s rights prior to completing the registration. If the domain name registration is completed, the TMCH notifies the trademark owner that a domain name was registered. This is an immediate flag of possible trademark infringement.
In the past, the TMCH supported most internet domain name extensions—.de, .net, .pro, etc.—but to the frustration of trademark owners, it did not support the most common one of all: .com. Therefore, anytime a new .com domain name was registered, registered trademark owners would not be notified if that new domain contained potentially infringing terms.
As of late August 2020, however, the TMCH began alerting its subscribers whenever a potentially infringing .com domain name is registered. With that change, the TMCH became even more useful for trademark owners.