Over half a million Trademark Claims notices served

Kevin Murphy, March 25, 2014, Domain Services

The Trademark Clearinghouse has delivered over 500,000 Trademark Claims notices and prevented over 475,000 trademarked names from being registered, according to the TMCH.

The 500,000 number announced in a press release today seems to refer to pre-registration warnings that the name about to be registered matches a trademark in the TMCH database.

Three weeks ago the TMCH said it had served 17,500 post-registration notices to trademark owners in just one month. I’m inferring that this number is now up to over 25,000.

Half a million appears to be an awfully big number, especially when compared to the number of active domain names in new gTLDs, which today stands at just over 347,000.

The TMCH said today that 95% of these notices led to the name not being registered, which it said shows the success of the Claims system.

It could also mean that it’s having the “chilling effect” predicted by opponents of the process, with legitimate registrants being scared away from non-infringing uses of registered marks.

There are plenty of dictionary words in the Clearinghouse — some that match legitimate brands, some which are simply attempts to game sunrise periods and obtain potentially valuable names.

There are currently over 28,000 marks in the TMCH database.

Full TMCH database published by registry?

Kevin Murphy, March 17, 2014, Domain Policy

DotBerlin seems to have published the full list of trademarks and other strings protected by the Trademark Clearinghouse.

The list, published openly on nic.berlin as the .berlin new gTLD went through its sunrise period, contains 49,989 .berlin domain names that the registry says are protected.

Neither the TMCH nor DotBerlin have yet responded to a request for comment, so I can’t be 100% certain it’s the TMCH list, but it certainly appears to be. You can judge for yourself here (pdf).

UPDATE: DotBerlin told DI that it is “not the full list but part of a registry-reserved names list” that was published “accidentally” and has now been removed from its web site.

The DotBerlin web site calls the list “MarkenSchutzEngel-Domains” which I believe translates to something like “Trademark Guardian Angel Domains”.

While the TMCH says it has 26,802 listed marks, the document published by DotBerlin seems to also include thousands of strings that are protected under the “Trademark +50″ rule.

That allows companies that have won UDRP complaints to have those domains’ second-level strings added to their TMCH records. I see plenty of UDRP’d domains on this list.

The list also seems to include hundreds, possibly thousands, of variant strings that put hyphens between different words. For example, Santander appears to have registered:

a-bank-for-your-ideas
a-bank-for-yourideas
a-bank-foryour-ideas
a-bank-foryourideas
a-bankfor-your-ideas
a-bankfor-yourideas
a-bankforyour-ideas
a-bankforyourideas

I spotted dozens of examples of this, which is permitted under ICANN’s TMCH rules.

There are 2,462 internationalized domain names on the list.

I gather that the full TMCH list today is over 50,000 strings, a little larger than the DotBerlin document.

I took the liberty of comparing the list to a dictionary of 110,000 English words and found 1,941 matches. Strings such as “fish”, “vision”, “open”, “jump” and “mothers” are all protected.

A listing in the TMCH means you get the right to buy a domain matching your mark during new gTLD sunrise periods. Anyone else trying to register a matching name will also generate a Trademark Claims notice.

According to some registries I’ve spoken to today, the TMCH forbids the publication of the full database under the contract that all new gTLD registries must sign.

I’ve no idea whether the publication of a list of .berlin names means that DotBerlin broke its contract.

While the TMCH rules were being developed, trademark owners were adamant that the full database should not be published and should not be easily reverse engineered.

They were worried that to publish the list would reveal their trademark enforcement strategies, which may leave them open to abuse.

(Hat tip to Bart Mortelmans of bNamed.net for the link.)

TMCH sends out 17,500 Trademark Claims notices in a month

Kevin Murphy, March 3, 2014, Domain Services

Wow.

Just four weeks after the first new gTLDs went into general availability, the Trademark Clearinghouse has already sent out over 17,500 Trademark Claims notices to trademark owners.

A Claims notice is a warning that is generated whenever somebody registers a domain name that exactly matches a trademark listed in the TMCH’s database.

The 17,500 number refers to post-registration notices sent to trademark owners, not pre-registration warnings delivered to would-be registrants.

Considering that there are somewhere in the region of 180,000 domain names in new gTLDs today, 17,500 represents a surprisingly high percentage of the market (high single figures).

Of course, not all of these will be due to cybersquatting attempts.

There are plenty of marks in the TMCH that are acronyms or dictionary words, either because they match a genuine brand or because somebody obtained trademarks on generic terms in order to game sunrise periods.

I’d count those as false positives, personally, but it’s impossible to know without access to TMCH data how many of the 17,500 alerts delivered to date can be accounted for in that way.

There are 26,802 marks in the TMCH, according to the company.

TMCH sees cybersquatting in 1&1′s pre-reg requests

Kevin Murphy, February 6, 2014, Domain Registries

Would-be cybersquatters have pre-registered new gTLD domains matching many famous brands, according to the Trademark Clearinghouse.

According to a bit of TMCH PR fluff coming out tomorrow, there are pre-registrations in .web for 40 out of the 50 most-valuable British brands.

I gather that the data came from 1&1, the most aggressive registrar in its pursuit of new gTLD leads, which has reported over three million pre-regs.

In what appears to be outreach to drum up additional trademark registrations, the TMCH said:

According to the Trademark Clearinghouse’s data, unknown entities have already pre-reserved their interest in registering the domain names of 80 per cent of the UK’s 50 most valuable under the .WEB domain name. Similarly, third parties have attempted to pre-order 78 per cent of the UK’s top 50 most valuable brands under the .ONLINE domain name, 72 per cent under .APP, 70 per cent under .SHOP and 68 per cent under .BLOG.

It doesn’t seem to be a problem peculiar to new gTLDs, however. The TMCH also said that 54% of these brands have holes in their defensive registration portfolio across existing TLDs such as .biz, .net and .co.

There were roughly 23,000 marks in the TMCH database as of January 21.

UPDATE: 1&1 has asked me to clarify that the company took no part in this research. TMCH says it obtained the numbers through searches on the 1&1 web site.

Trademark Clearinghouse using .uno to plug new gTLDs to Spanish markets

Kevin Murphy, January 24, 2014, Domain Registries

New gTLD registry Dot Latin has scored an early anchor tenant win, as the Trademark Clearinghouse has agreed to use two .uno domain names to market rights protection mechanisms in Spanish-speaking markets.

The TMCH, run by Deloitte and IBM, will use trademark-clearinghouse.uno and tmch.uno. The non-hyphenated version of the longer domain has not been delegated.

Both domains currently redirect to the Spanish-language version of the TMCH’s main .com site.

It’s a nice awareness-raising move for Dot Latin, potentially (depending on how well the TMCH markets it) getting its gTLD’s brand in front of major Spanish trademark-owning eyeballs.

The company signed its ICANN Registry Agreement in mid-September, so its 120-day waiting period before it was allowed to hand out second-level domains is already up.

The .uno sunrise period is due to end February 7.