TMCH and DPML: Smart Brand Protection

The floodgates for new TLDs are now open. ICANN has already delegated over 100 new TLDs and many of those have already commenced their sunrise registration phases. And over the next year, we will see hundreds of more new TLDs introduced into the domain name space. So what does this mean for brands and trademark holders?  While the new TLDs may be used as an additional marketing, sales, and support channel, they also expose brands and trademarks to additional risk.

To protect brands, included in the roll-out process of new TLDs, ICANN has mandated the creation of the Trademark Clearinghouse (TMCH).  The Clearinghouse is designed to serve as the centralized database for the protection of trademark holders' rights during the launch of the new gTLDs. HEXONET is pleased to offer the TMCH to its resellers and customers.

HEXONET’s TMCH service, available via the Control Panel or API, is intended to save clients time as a “one-stop-shop” solution, making it easier to submit various trademark applications across multiple TLDs at once.  

How TMCH Works:

• Trademark holders submit their trademark information to a centralized repository, which goes through verification.

• Once verified, only the trademark holder holding a special password (SMD file) can register domains with the trademark during the Sunrise (special period before general availability reserved for trademark holders) registration period for any new TLD.

• Additionally, after verification, trademark holders can optionally notified if a matching registration with their trademark is submitted to the Clearinghouse. This is known as the Trademark Claims service.

TMCH Trademark Claims

Trademark Claims are a component of the Trademark Clearinghouse that monitors registered marks for Trademark Holders. Whenever a third party attempts to register a domain with a verified trademark, both the domain name registrant and trademark holder will be warned of possible infringements.

Trademark Claims Highlights:

• After General Availability of a new TLD (Go-Live), any attempt to attempt to register a domain name that matches a trademark in the Clearinghouse will display a warning (this warning is presented to the person during their attempt to register the domain). 
• If a domain is registered even after the warning notice has been displayed, the trademark holder will receive notification directly from the TMCH so they can take any appropriate action.
• This service is available within the first 90 days of General Availability. Following the 90 day Trademark Claims Period for each new gTLD, the Trademark Clearinghouse offers an extended claims service. Trademark holders will be notified of potential intellectual property infringement indefinitely, beyond the original 90 day period at no additional cost. The service is non-mandatory, leaving each trademark holder to decide whether they wish to activate it.

DPML: Security in Bulk!

Domains Protected Marks List (DPML) is a new protection program offered by Donuts Inc. (holder of the largest portfolio of new gTLDs to be released in 2014). This program was designed to help companies protect their brands and IP rights by blocking all second level registrations (only accross all Donuts TLDs) with one simple submission into the DPML.  Again, with one trademark submission, brand and trademark owners can prevent cybersquatting across all Donuts TLDs at a fraction of the cost (compared to defensively registering all domain across all Donuts TLDs individually).

Benefits for Trademarks Registered with DPML

• Brand owners not only protect their primary trademark, but also keywords that contain the trademark.

• Using the DPML is more cost effective than the alternative of defensively registering multiple domain names

• Single DPML registration covers ALL of Donuts' new gTLDs.

• Convenient 5-year term reduces the headaches of having to renew each year (longer terms available).

• DPML block can be removed (on a per TLD basis) should the trademark holder decide to register the domain themselves for eventual use (resolve).

Click here to view the complete list of Donuts' TLDs.

Please note that HEXONET's wiki contains more details, including FAQs and the required documentation for the TMCH and DPML service:  https://wiki.hexonet.net/index.php/Trademark_Clearinghouse

Should you require any additional help, please do not hesitate to contact us at:  [email protected].