In this webinar, Anna Bertrands and Maaike De Ridder of the Trademark Clearinghouse joined our own Shane Layman to discuss the Trademark Clearinghouse, its services, and how it helps keep your brand protected online, especially in the domain name space.

Editor’s Note: The following transcript has been edited for clarity.

Introduction: 0:00

We hope that you’re able to get some great information from today’s webinar on the Trademark Clearinghouse.

Today’s Presenters, 0:06

Our presenters today are Anna Bertrands, Account Manager at the Trademark Clearinghouse, Maaike De Ridder, also an Account Manager at the Trademark Clearinghouse, and Shane Layman, Manager of Global Industry Relations here at Markmonitor.

Agenda, 0:25

Speaking: Shane Layman

Today, we’re fortunate enough to have some wonderful guests from the Trademark Clearinghouse (TMCH) who are going to explain more about what the Trademark Clearinghouse is and why it matters, and then explain the services that it offers.

We’ll touch on how to register your mark with the Trademark Clearinghouse to better protect your brand online. We’ll discuss the Signed Mark Data file, or SMD file, and how it works with domain blocking and also with regard to comprehensive brand protection, then move into some preparations for the next round — namely, what you need to be aware of.

And then we will end by discussing active Trademark Clearinghouse management to ensure your marks don’t lapse in coverage, and how Markmonitor can help you with your TMCH management.

And with that, over to Maaike to discuss what the Trademark Clearinghouse is.

What Is the Trademark Clearinghouse?, 1:13

Speaking: Maaike De Ridder

Thank you, Shane, for the agenda. So, I’ll kick off the webinar with answering one of the main questions, “What is the Trademark Clearinghouse exactly?”
We can basically summarize the Trademark Clearinghouse in 3 pillars:

  1. The Trademark Clearinghouse is a Rights Protection Mechanism that was built into the New gTLD Program by ICANN to enable trademark owners to protect their rights during the expansion of the Domain Name System.In the Trademark Clearinghouse, we basically verify trademark information, and then we store this data in a centralized database that is connected to all of the new gTLDs that have launched and will launch. I will explain this in a bit more detail in a second.
  2. The Trademark Clearinghouse offers a set of privileged services that are only available to trademark owners who have their trademark verified in the TMCH. These services will really allow you to better protect your brand online and to not only do this reactively but proactively.
  3. The Trademark Clearinghouse offers comprehensive protection. Our services will help you to protect your brands within every extension of the new GTLD program — and as we will discuss later on, it also gives you access to some of the essential domain blocking products that are currently on the market.

History of the Trademark Clearinghouse, 2:46

So as I already mentioned, the TMCH was mandated by ICANN to act as a Rights Protection Mechanism in the New gTLD Program.

For those of you who do not know, ICANN is a nonprofit multi-stakeholder organization that helps to regulate the Internet. In 2012, they launched New GTLD Program that expanded the domain name space with over 1000 new top-level domains.

This expansion meant that instead of only having domain names with .com or.org, names could now also be registered in new top-level domains such as .shop, .link, .music and many, many more.

To make sure that intellectual property was adequately protected in this expansion, ICANN worked with various IP experts and community stakeholders to really understand their needs. All of these conversations eventually led to the creation of the Trademark Clearinghouse to protect trademark owners from having their trademarks infringed upon in the domain space.

Now, Anna will explain why exactly the Trademark Clearinghouse matters and how your trademarks could be at risk in the expanded Domain Name System.

Why the Trademark Clearinghouse Matters, 3:55

Speaking: Anna Bertrands

Thank you, Maaike. Let’s talk about why the Trademark Clearinghouse, or TMCH, matters, and also look the various risks that are associated with online abuse.

Protecting your brand(s) online has become more crucial than ever given the numerous threats that exist. Here are some of the key risks:

  1. The first one is domain squatting. This occurs when malicious actors register domain names that are similar to your brand with the intent to profit from either reselling those domains or using them in ways that can harm your brands.
  2. The next one is phishing. I think this is the most well-known one. Phishing means that malicious actors are creating web addresses that mimic legitimate ones, and their goal is to trick users into disclosing sensitive information or downloading malware, posing a serious threat to both your brand and your customers.
  3. We also have consumer/brand confusion. With so many similar looking websites, consumers often struggle to identify the legitimate ones. This confusion can lead to a loss of consumer trust and uncertainty about the authenticity of websites that bear your brand’s name.
  4. Another important one is brand impersonation or brand dilution. So, third parties might register domain names under new gTLDs for the purpose that is inconsistent with your brand’s image or values. This not only misleads consumers but can also dilute the strength of your brands.
  5. And finally, we have trademark infringement, which overall means the unauthorized use of your trademark online by third parties. This can cause significant harm because it can erode your brand’s reputation, confuse your customers, and potentially leads to financial losses.

The TMCH helps mitigate all of these risks by providing a centralized database of verified trademarks. This enables proactive protection and enforcement of your trademark rights. So understanding all of these risks underscores the importance of leveraging the TMCH as part of your comprehensive brand protection strategy.

Domain Squatting, 6:21

So now let’s take a closer look at a real world example of domain squatting — imagine a famous airline that is well known globally, discovering that their brand name was registered as a domain under the new gTLD .xyz. The entity that that has registered this domain is actually a malicious reseller who is now demanding 10,000 dollars to sell the domain back to the airline. This situation is not only frustrating but also potentially damaging to the airline’s brand image. Had this airline registered their trademark with the TMCH beforehand, then they would have had the opportunity to register the .xyz domain during the Sunrise Period. Sunrise is a special time frame during which trademark holders can secure domain names that match their trademarks before the general public has access.

After this incident, the airline took the proactive step of registering their trademark with TMCH. By doing so, they are now better equipped to stay ahead of any future infringements.

Phishing, 7:33

Now let’s turn our attention to another significant threats in the online landscape, which is phishing. So as we all know, phishing attacks are becoming increasingly sophisticated and they often exploit new gTLDs to deceive users.

As you can see here, these three headlines of real life articles make it clear that phishing is a persistent and evolving threat, especially with the introduction of new gTLDs. Phishing attacks not only put consumers at risks but also jeopardize their reputation and trustworthiness of brands.

Consumer Confusion/Brand Impersonation & Dilution, 8:12

Next, let’s discuss the issue of consumer confusion and brand impersonation, which are significant threats to your brand’s integrity and consumer trust.

To illustrate this, we’ll look at a recent example involving a large scale fraud operation. As you can see on the slide, this article highlights a sophisticated fraud operation by a group known as Feng Xiao, which has created over 42,000 fraudulent websites to impersonate legitimate brands. As you can see in the graph on the right, the most commonly exploited TLDs by this group are .cn, .cu and .xyz.

Consumers visiting these websites can easily be misled into believing they are interacting with the legitimate legitimate brands, leading to a loss of trust and potential financial harm. So brand impersonation not only confuses consumers, but also dilutes the value of and reputation of your brands.

Trademark Infringement, 9:19

Let’s now address the issue of trademark infringement and also the tools available to combat it. Specifically, we’ll compare the Uniform Domain Name Dispute Resolution Process, or easier said the UDRP, to the Trademark Clearinghouse.

UDRP is a defensive recourse for brand holders whose marks are infringed upon. It allows brand owners to file a complaint against the domain name that they believe infringes on their trademark. However, the UDRP process can be quite lengthy and costly, and additionally, the outcome of the arbitration may not may not always be in your favor, and this can cause a significant risk. On the other hand, TMCH acts as an offensive Rights Protection Mechanism and it helps prevent and mitigate infringement before it occurs by providing trademark holders with early access to domain registration periods and TMCH also alerts about potential infringing activities. By leveraging TMCH, you can proactively protect your brand and avoid the need for any lengthy or expensive proceedings.

To illustrate the growing challenge, let’s look at this graph showed at the right sides of the slides, which clearly shows the yearly increase in UDRP filings since 2013. The trend is clear. As online threats and new TLDs have expanded, the the number of UDRP cases has risen significantly. This increase highlights the importance of proactive brand protection measures. In conclusion, while UDRP is a necessary tool for resolving domain disputes, it is more efficient and cost effective to prevent this these issues from arising in the 1st place. Using TMCH and other proactive brand protection mechanisms can help you safeguard your brand and minimize the need for defensive actions like UDRP filings.

Now I hand the floor back to Maaike to discuss TMCH services.

Trademark Clearinghouse Services, 11:46

Speaking: Maaike De Ridder

I will now show you where the Trademark Clearinghouse services can come in to protect you as we have just heard about the various risks that your trademark faces in the expanded Domain Name System.

Let’s start by looking at the standard timeline of a new TLD launching, because our services are very much linked to these periods and they basically succeed one another.

Whenever a new TLD launches, there is a mandatory Sunrise Period. That lasts for 30 to 60 days. And after the Sunrise, the extension or TLD will open up to the general public, after which is the Claims Notifications Period that lasts for 90 days. Now during the Sunrise, if you have a verified trademark in TMCH, you will receive a sort of digital token that we call the Signed Mark Data file (SMD file) as proof of your validation in TMCH. With this token you are then allowed to register your preferred domain name in the priority registration. This means that you will be able to register your preferred domain before anyone else. Then, from the moment that the TLD opens up to the general public, you will benefit from our Claims Notifications service, which is basically a warning service that consists of two parts.

  1. If a person or a company tries to register a domain name that contains your verified trademark, we will send them a warning message to indicate that the name that they are trying to register is in fact a verified trademark, and we will ask them whether they want to proceed with the registration or whether they want to hold off.
  2. In case they will proceed with the registration, we will also notify you, the trademark owner, of this action or of this event.

And then with this information, you can start to evaluate if this website is indeed infringing your rights and what actions you could or should undertake to stop it. Then after the 90 days of the Claims Notifications Period, we have extended our offering to Ongoing Notifications, meaning that for as long as your trademark is verified in the TMCH, you will receive notifications whenever any activity is noticed on a domain name that matches your verified trademark. This is again to inform you so that you can take appropriate action when needed.

We have also extended these notifications not only to all of the new gTLDs, but also the legacy tlds such as .com, .org and so on.

You can also receive these notifications for variations that are confusingly similar to your brand. Meaning that if someone registers a domain with your trademark or verified trademark in it, but they swap out the “o” for a zero or something else of that sort, you will still receive notifications and be able to take action in time.

How to Register Your Mark with the TMCH, 14:52

How do you submit or how do you register your mark with the Trademark Clearinghouse?

There are three types of marks that are eligible for inclusion in the TMCH:

  1. We accept registered trademarks. Those are marks that are basically registered at the Trademark Office, at least on national level.
  2. We accept marks that are protected under statute or treaty, so meaning they are protected by government law.
  3. Lastly, marks which a court has decided on its validity are also included or allowed to be included in the TMCH.

We accept these marks from all regions in all languages or script, and we also accept marks that consists of numbers or special characters.

Once you have submitted your mark according to these requirements, you or your trademark will be subject to our verification procedure in which we will check that the information provided is accurate and complete. We do this based on the official trademark certificate as issued by the relevant Trademark Office. Once we have verified everything and everything is in order, you will receive a unique authentication key, the SMD file. From that moment on, you can start benefiting from all of our services.

The Signed Mark Data File (SMD file), 16:14

I’ve already mentioned the SMD file a couple of times before, so let’s dive in and see what it is exactly. The SMD file is short for the Signed Mark Data file. It is an encrypted identification key that works very similarly to a password in the sense that it allows you to identify yourself and request specific actions that require privileges to be executed.

When you’re in the possession of an SMD file, you can first of all benefit from the priority registration rights during the Sunrise phase of every new gTLD launch. You can also use your SMD file to purchase multiple blocking products that Shane will now tell you a lot more about talking about domain blocking and how the Trademark Clearinghouse works.

Domain Blocking and the Trademark Clearinghouse, 17:01

Speaking: Shane Layman

So as previously mentioned by our wonderful guests, the SMD file is kind of the foundation for for you to extend your brand protection through the domain space. And with that comes domain blocking, which is one of the best ways for brand owners to to proactively protect their brand across multiple TLDs, whether that be gTLDs or ccTLDs.

Domain blocking with with regards to the Trademark Clearinghouse prevents third parties from registering your brand in these spaces. Here, we’ll talk about some of the some of the blocking services that exist right now and how they all correlate to that SMD file that we’ve been discussing.

Domain Blocking and the Trademark Clearinghouse Continued, 17:01

So the first kind of large scale blocking service, the DPML, this one only requires an SMD file to register the the actual block and protect your name. This is across multiple top level domains, primarily gTLDs and that leads into the AdultBlock, which is a service that protects your brand name in the adult in the adult industry. The TLDS covered are .sex, .xxx, and .adult, and again, SMD file requirements are there so that trademark owners are able to protect their brand. That then moves us into Global Block, which was the first unified domain blocking service with global coverage to secure your brand across hundreds of extensions at once, both in the gTLD space and ccTLD space, which expands your coverage as a brand owner to to the next level. And there is also NameBlock, this is another service that allows you to to protect your brand online by blocking identical names across one or multiple top level domains.

And again, all of these are tied to that SMD file, which allows you access to domain blocking.

Comprehensive Brand Protection, 19:17

And now let’s touch on some brand protection aspects of the TMCH. So, when you have your mark validated through the Trademark Clearinghouse, you have access to participate in Sunrise Periods, which are part of the launch cycle for new gTLDs, which gives brand owners priority access to register their names. From there, it moves into that Claims Notification that Anna and Maaike have talked about, which allows for any name that’s going to be registered against a Trademark Clearinghouse filing, or the brand owner to receive that notification that warns them about what’s coming. And then also the Ongoing Notifications after the launch cycle has kind of completed and we’ve moved into general availability.

Again, domain blocking is that defensive protection of your intellectual property, that trademark name. Rather than registering domain names across multiple TLDs, managing a large portfolio of domain names, domain blocking gives you the ability to block these from being registered rather than having to go out and actively register multiple domain names out there. Multiple block products can be purchased using your SMD file.

Markmonitor can help you establish a comprehensive domain strategy through the use of TMCH registrations and blocking services that exist and that suit your trademark portfolio.

Prepare for the Next Round, 20:57

Let’s talk about some Next Round stuff — with regards to the Next Round of new gTLDs, we’re still waiting on some of the new gTLDs that were allocated from the first round to launch prior to the second round, so, in 2012 when the names were were allocated by ICANN, we are still waiting on some of those to launch. It’s expected that they’ll launch prior to 2026 to ensure that their sunrise and everything is participated in, which leads into the next point that the next round of new gTLDs is expected in 2026.

Currently the the prediction is over 1000 New gTLDs are expected to be approved to expand the New gTLD front. We talk a lot about proactive versus reactive brand strategies and utilizing the Trademark Clearinghouse gives you that early preparation for your brand protection strategy, and then utilizing Markmonitor services as well — we are here to help you prepare for the Next Round.

Active Trademark Clearinghouse Management, 22:07

Through Markmonitor and your Domain Portfolio Advisor or Account Manager, you have the ability to to utilize our services that can make it so managing your marks with the TMCH is pretty seamless. Sunrise follow-ups will keep track of new Sunrise registration periods and guaranteed timely priority registration for your brand. We will also assess notifications, whether they be Claims and/or Ongoing Notifications to help you optimize your brand protection strategy. We’ll help keep your trademark information updated too, as the verification process at the Trademark Clearinghouse requires information be kept up-to-date.

We can manage those services for you, and we also handle trademark renewal through the Trademark Clearinghouse.

Anna or Maaike, do you want to jump in and add anything to that?

Speaking: Maaike De Ridder

Yes, I think you covered most of it — from our experience, the easiest and most efficient way is to register your trademarks through an agent like Markmonitor. And they can monitor and manage everything for you. Like for example, what the best strategy for you is when you receive notifications from us. So we definitely recommend it.

Thank you.