New gTLDs and the Trademark Clearinghouse

As of December 3, 2013, you can place orders for the first of the New Generic Top-Level Domains (gTLDs). The first batch of gTLDs include .bike, .camera, .clothing, .equipment, .estate, .gallery, .graphics, .guru, .holdings, .lighting, .photography, .plumbing, .singles, and .ventures.

All of these gTLDs begin their launch with a Sunrise phase for trademark owners. During this period, anyone who owns a registered trademark can apply to register the domain name associated with their trademark before registrations are available to the general public. The Sunrise period lasts for 60 days.

Important: Before submitting an order for one of these TLDs during the Sunrise period, the trademark has to be registered with the Trademark Clearinghouse (TMCH). When the Trademark Clearinghouse approves a trademark registration and adds it to their database, they return a Signed Mark Data (SMD) file that must be submitted with the Sunrise order. Each trademark only needs to be submitted once to the TMCH and can then be used in multiple Sunrise registrations.

Currently, trademarks are submitted to the TMCH through the Trademarks section of the OpenSRS Control Panel, and Sunrise orders are also submitted through the Control Panel.

What is the Trademark Clearinghouse?

The Trademark Clearinghouse (TMCH) has been established by ICANN to protect the rights of trademark holders during the launch of the new gTLDs; it serves as a centralized database of trademarks. The Clearinghouse accepts records of registered trademarks, validates these records, and then adds them to their trademark database. Only those who have trademarks registered with the TMCH will be able to participate in the Sunrise phase of the launch.

The following types of trademarks can be submitted:

  • Registered Trademark--Trademark is a nationally or multi-nationally registered trademark. This means that the trademark in question must have national effect and be fully registered at the time it is submitted for verification.
  • Court Validated Mark--Trademark has been validated by a court of law or other judicial proceeding at the national level, such as unregistered (common law) marks and/or well-known marks.
  • Mark Protected by Statute or Treaty--The relevant statute or treaty must be in effect at the time the mark is submitted.

Submitting and registering a trademark in the Clearinghouse is a chargeable service that you can offer to your clients through OpenSRS.

What are labels?

A label is a set of characters and/or numbers, based on the words in the trademark name, that can be registered as a domain name; the labels that you can use are determined by the Trademark Clearinghouse. For example, if your trademark is "Franks Pizza", the following two labels would be available for this trademark:

  •    frankspizza
  •    franks-pizza

In this case, you would be able to register and in the .menu Sunrise phase.

Trademark Claims and Sunrise Services

When you complete the TMCH order form in the OpenSRS Control Panel, you have the option to select Sunrise service, Trademark Claims service, or both.

Sunrise service allows trademark holders to register domain names that correspond to their marks during the Sunrise period, before the names are generally available to the public. New gTLD registries are required to offer a Sunrise period that lasts at least 30 days.

Trademark Claims service begins after the Sunrise period and runs for at least the first 90 days of the General Availability of each new gTLD. During the Trademark Claims period, if someone tries to register a domain that matches an entry in the TMCH, they will receive a warning that the corresponding trademark has been registered with the Trademark Clearinghouse and that if they register the domain, they could be violating intellectual property rights. If they continue and complete the domain registration, a notification will then be sent to the trademark holder, informing them of the domain registration and they can then decide whether they want to take action.  You cannot enable Contact Privacy for domains that match marks in the Clearinghouse.

What information do I need to provide when registering my mark in the Clearinghouse?

You need to provide contact information for the trademark holder, and indicate whether the contact is the trademark owner, someone representing the trademark owner, such as a law firm, or someone to whom the trademark has been licensed or assigned.

You need to provide the information about the trademark itself, including the class of goods or services, the jurisdiction where the trademark is registered, and other relevant information depending on the type of trademark being submitted.

You will also need to submit proof of use for the trademark.

Depending on the type of mark, the Clearinghouse may also request additional documents, such as a copy of the trademark certificate, a copy of the trademark holder's Business License, or the renewal request for the trademark.

What is proof of use?

Proof of use is a sample that shows that the trademark holder has communicated with consumers in a way that distinguishes their products or services from those of another. The sample could be an advertisement, a website, a brochure, a branded product, or some other example showing the mark in use. It can be uploaded to the registration form as a .jpg or .pdf file. The sample must match the trademark exactly.

Proof of use is required if you want to use the Clearinghouse record so that you can register domain names during a Sunrise period.

TMCH registration process

Typically, Resellers collect the required trademark data from their clients and submit it to OpenSRS through the Trademarks section of the Control Panel.

Important: Before you register any trademarks, you must enter a billing contact. In the Trademarks section, choose Trademark Settings from the Actions menu, click Edit, and enter the billing contact information.

To register a trademark

  1. In the Trademarks section of the Control Panel, click the plus sign (+).
  2. In the Mark Name field, enter the name of the trademark that you want to register, select the type of trademark and the jurisdiction where the trademark is protected, and then click Next.
  3. Complete all the fields in the trademark registration form, upload the required documents, and submit the form.

We review the applications and, if required, notify the Admin contact specified in the order if they need to update an application or provide additional documents. There can be multiple reviews and updates in this internal, pre-validation stage.

Once we believe that the application will be accepted, we will submit it to the TMCH.

The TMCH will then validate the trademark. If the TMCH finds data to be incomplete or incorrect, they will request an update to the pending application before they finally accept or deny the application.

If the TMCH accepts the application, a Signed Mark Data (SMD) file is issued. This file will be used to apply for domain names during the Sunrise periods.

Placing Sunrise orders

Domain applications that are submitted during the Sunrise period are not granted on a first-come first-served basis. Instead, applications will be collected throughout the Sunrise period and processed at the end of the period. At the end of the Sunrise phase, all names that have only one application will be assigned and registered. If there is more than one valid application for the same domain name, the name will go to an online auction. This auction is not operated by OpenSRS.

To apply for a domain name during the Sunrise period

In the Control Panel

1. In the OpenSRS Control Panel, click Domains, and then click the icon that show the plus sign above a rising sun.
The Add Sunrise Domain form appears.

2. In the Step 1 section, click Add file and browse to the SMD file that was issued by the TMCH.

3. In the Step 2 section, select the label that you want to use.

4. In the Step 3 section, click a radio button to select the TLD. The cost of the registration is displayed below this section.

5. Click Next.

In the RWI

1. On the RWI main page, under Sunrise/Landrush Order Management, enter the name you want to register in the Sunrise Orders (New gTLDs) text field, and click Apply Now.
The Sunrise Application Form appears.

2. Complete the application form.
The Sunrise form is similar to the standard domain name registration form, except that SMD information is required. In the Notice section of the form, click Browse, and upload the SMD file that was provided by the Trademark Clearinghouse.

3. From the Action drop-down at the bottom of the page, choose Apply Now or Save Order.

4. Click Submit.

Note: The Sunrise application fee is non-refundable.

For more information on the new gTLDs, see the New TLDs section of the OpenSRS website.

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