Think of the new gTLD space as one of those board games in which your goal is to control the most territory. Each square is a potential domain name relevant to your trademark. How can you expand your zone of control? ICANN created the Trademark Clearinghouse (TMCH) to help, and many Corsearch clients are using it. We’d like to share some tips with you about how to use the TMCH as effectively as possible.
About 1,200 new gTLDs have been applied for, not counting ‘.brand’ TLDs which are restricted to the applicant (e.g., .YAHOO, .IBM, etc.). Others are restricted (to a profession, for example) so that they are irrelevant to you. For simplicity’s sake, let’s say that “only” (!) 1,000 TLDs are of any interest to you. That gives the TMCH registrant some degree of preference over 1,000 potential domains. That’s why you registered in the TMCH.
But are you aware of ‘abused’ labels? Those old UDRPs gathering dust in your file cabinet can be used to add an abused label to your TMCH mark. If your UDRP shows that someone once abused, for example, a .com domain with a typo of your brand, you can protect that variant in new TLDs as well at a fraction of the cost of the original TMCH registration. If you add a single abused label, your “zone of control” extends over another thousand potential domain registrations; if you add 10 labels, 10,000. You can add up to 50 abused labels (though you would not want to use up your entire allotment on one mark). Granted, most of those domains would not be registered anyway, and many you might not ever care if they are, but some of them will be important.
Another tool is the DPML (Domain Protected Marks List) block. These are offered by the bigger registries to prevent registration of domains matching TMCH marks in all that registry’s TLDs (unless the block holder chooses to register, of course). The exact number of TLDs changes as contested TLDs are awarded to one applicant or another. Industry leader Donuts’ DPML currently covers over 100 TLDs and they anticipate coverage in 200. Rightside Registry is number two, with 30 TLDs and counting. Rival Minds + Machines will offer a DPML for its 100-odd TLDs as soon as ICANN gives its blessing. Well over 300 potential domain names could be blocked by a single TMCH registration plus three DPMLs. That’s a lot of potential domains that can never see daylight, clutter your inbox, or demand your time!
Many Corsearch clients have already used blocks, but not all of them are aware of a lesser-known aspect of DPMLs. It is widely assumed that the block works exactly like the TMCH (i.e., only for exact matches, plus exceptions for blank spaces and abused labels). But you can use a TMCH registration to get a block that includes your exact match plus other terms. For example, SMITH in the TMCH can be used to block mySMITH & SMITHtoys — but not SMIIIITH because it is not an exact match. This does not override other TMCH registrants’ rights, of course, if your extended block conflicts with another TMCH registration. But it will serve to stop registrants without a TMCH mark.
The new gTLDs still represent a steep learning curve and a potential headache, but we hope we’ve shown you some ways to cope. (Just in time for ICANN to announce the schedule for the second round of new TLD applications next year…)
In September, Corsearch will present a webinar on best practices for using the TMCH. We’ll also discuss the state of the new gTLD space — the least and most successful TLDs, examples of real-world new gTLD domains in use, and coming trends. Keep an eye out for the date, which we’ll announce soon. If you’re interested in learning more, please let us know at NewGTLDs@wolterskluwer.com.