In the whole context of the gTLD’s conundrum, one of the commitments of the ICANN was to set up relevant mechanisms to protect trademark owners from infringements and cybersquatters. That is why the Trademark Clearinghouse which is supposed to be a worldwide trademark database was created. TMCH is supposed to be a tool for the Sunrise period. Lately, the ICANN released that it picked out Deloitte and IBM as service providers for the Trademark Clearinghouse. One tricky question remained unanswered which revolves around the price of the service offered by the TMCH. The ICANN announced[1] that the cost to beneficiate from the safe haven of the TMCH is of less than 150$. Our observations are as follows:

-This price, which seems low at first sight, is to be reconsidered for owners of huge trademark portfolios. Actually, trademark owners must pay 150$ for each trademark they want to integrate in the TMCH. There is no denying that the process can become costly and heavy for trademark owners. It is of utmost importance for a company to make an audit of the trademarks portfolio in order to assess the trademarks which are worth to declare.

-The mechanism of the TMCH has many loopholes. Among them the most salient being the fact that it only detects domain name registrations matching identically with the trademark which was declared before it. Given the sneakiness of cybersquatters who are prone today to register typosquats and trademarks plus generic or geographic names, many domain names will slip through the net without any pain;

-Even if a trademark owner receives a notification pointing out that its trademark was registered as a domain name, there is no mechanism to prevent cybersquatters or third parties to register it.

The Dreyfus lawfirm can advice you at any time on the best strategy to adopt pertaining to the declaration of trademark before the TMCH.

[1] Preliminary Cost Model, on the ICANN’s website, for further information http://newgtlds.icann.org/en/about/trademark-clearinghouse.