Trademark Protection in New gTLDs

Rights Protection Mechanisms (RPMs)

The expansion of new gTLDs created increased risk of trademark infringement and cybersquatting. ICANN implemented several Rights Protection Mechanisms (RPMs) to help trademark holders protect their brands across the expanding domain namespace.

Trademark Clearinghouse (TMCH)

What is the TMCH?

The Trademark Clearinghouse is a centralized database of verified trademarks that provides protection services across all new gTLDs. Operated by Deloitte, it serves as the authoritative source for trademark claims and sunrise registrations.

How to Register Your Trademark

• Submit trademark registration certificate or court validation
• Provide proof of use in commerce (if required)
• Pay registration fee (approximately $150/year per trademark)
• TMCH validates submission within 1-2 weeks
• Once validated, receive Signed Mark Data (SMD) files

TMCH Services

• Sunrise Registration: Priority registration period in new TLDs
• Claims Notices: Warnings to potential registrants about trademark conflicts
• Alerts: Notifications when someone registers a matching domain

Sunrise Periods

What is Sunrise?

Sunrise is a mandatory phase before general availability where trademark holders can register matching domains before the public. Each new gTLD must offer a sunrise period of at least 30 days.

How Sunrise Works

Sunrise Costs

• Sunrise registration often costs 3-10x standard registration
• Application fees are non-refundable even if you don't win allocation
• Must be registered in TMCH ($150/year per mark)

Trademark Claims Period

How Claims Work

After sunrise, registries implement a Claims period (minimum 90 days). When someone tries to register a domain matching a TMCH trademark:

• Registrant receives a Claims Notice warning of trademark conflict
• Registrant must acknowledge notice to proceed
• Trademark holder receives notification of registration
• Trademark holder can then pursue dispute resolution if needed

Dispute Resolution Mechanisms

Uniform Rapid Suspension (URS)

URS is a faster, cheaper alternative to UDRP for clear-cut trademark infringement:

• Filing Fee: $300-500 (much cheaper than UDRP)
• Timeline: Decision within 3-4 weeks
• Standard: Clear and convincing evidence of infringement required
• Remedy: Domain suspended (not transferred), displays notice page
• Appeal: Limited appeal options

Uniform Domain-Name Dispute-Resolution Policy (UDRP)

UDRP remains the primary mechanism for trademark disputes (applies to both legacy and new gTLDs):

• Filing Fee: $1,500-5,000+ depending on panel size
• Timeline: Decision within 60-90 days
• Requirements: Prove identical/confusingly similar mark, no legitimate interest, bad faith
• Remedy: Transfer or cancellation of domain
• Appeal: Can appeal to courts