Trademark owners that have acquired previously abused domains based on a successful UDRP or national court case can add up to 50 previously abused domain labels to their TMCH registration.
Multiple UDPRs or court cases can be verified for a single TMCH registration. Deloitte Belgium which is the trademark validator will conduct a verification process for each filing including validating the UDRP case number, labels, and service provider.
The domains (or labels) that are added to the existing TMCH record will not be eligible for Sunrise registrations and will not be included as labels in the signed mark data (SMD) file.
A label is the domain name version of a trademark.
This relatively late addition as an additional rights protection mechanism (RPM) was approved by the Internet Corporation for Assigned Names and Numbers (ICANN) and was part of the “Straw man solution” presented by the intellectual property constituency.
Previously abused labels that are added as part of this plus 50 service are added to the list of domain name labels subject to the TM claims process.
According to the final RPM requirements published by ICANN, all new gTLD registries are required to provide a minimum 90-day TM claims period following its Sunrise period during the initial launch. During the claims period, prospective registrants will see a TM claims notice when trying to register a domain name that is an exact match of a verified mark in the clearinghouse. If the notified party proceeds with the registration, the relevant rights holders will be notified.
This post was written by Tommy Ho, CSC’s Digital Brand Services Product Manager. For more information on CSC’s Digital Brand Services and the Trademark Clearinghouse, please contact our Brand Advisory Team or visit cscglobal.com.