{"id":15091,"date":"2017-02-03T19:30:29","date_gmt":"2017-02-03T14:00:29","guid":{"rendered":"https:\/\/blog.resellerclub.com\/?p=15091"},"modified":"2026-05-13T13:42:42","modified_gmt":"2026-05-13T13:42:42","slug":"how-the-trademark-clearinghouse-can-protect-your-company-from-infringement","status":"publish","type":"post","link":"https:\/\/www.resellerclub.com\/blog\/how-the-trademark-clearinghouse-can-protect-your-company-from-infringement\/","title":{"rendered":"How the Trademark Clearinghouse Can Protect Your Company from Infringement"},"content":{"rendered":"

In recent times, we\u2019ve seen  a major shift in the domains industry. With .COM names becoming scarce, the new gTLDs have gained a lot of popularity, to say the least. .XYZ has taken the market by storm, nTLDs like .ONLINE and .TECH have made a record number of registrations. As a reseller, you\u2019re probably all too familiar with gTLDs and the rise. But the rise of these 1,800+ new TLDs has opened up the risk for trademark infringement. How does a brand safeguard its name on the newer extensions?<\/span><\/p>\n

Enter Trademark Clearinghouse.<\/span><\/p>\n

What is Trademark Clearinghouse?<\/b><\/span><\/p>\n

To address the very issue we just spoke about, ICANN, the governing body for the Internet has set up a centralised system to verify the existing trademark rights for all new gTLDs. <\/span><\/p>\n

Benefits of registration under TMCH:<\/b><\/p>\n

Brands or trademarks with their records in the TMCH<\/span><\/p>\n

    \n
  1. Can register identical domain names during the Sunrise Period<\/span><\/li>\n
  2. Will be notified in case of violation of their trademark name on a new gTLD<\/span><\/li>\n
  3. Will be notified if the identical name is registered<\/span><\/li>\n<\/ol>\n

    In an <\/span>article we wrote in 2015, we mentioned what the TMCH was, the terms associated with it and the iconic cases like the CANYON.BIKE and SPEEDTEST.ORG. In this article, I want to throw some more light on its importance and the more recent domain disputes involving the new gTLDs.<\/span><\/p>\n

    Why is this important?<\/b><\/span><\/p>\n

    As I mentioned earlier, the new gTLDs have opened up brands and trademarks to infringement. There\u2019s no doubt about it. According to <\/span>WIPO<\/span><\/a>, new gTLDs accounted for 10.% of WIPO\u2019s UDRP caseload in 2015, which included a total of 4364 domain names! .CLUB, .EMAIL and .XYZ were the most common ones. Country-code TLDs accounted for 13.7% of all filings with WIPO in 2017. <\/span><\/p>\n

    In 2015, the top 3 industries filing complaints for cybersquatting were fashion, banking & finance & Internet & IT. You can see the full infographic <\/span>here<\/span><\/a>.<\/span><\/p>\n

    \"top<\/a><\/p>\n

     <\/p>\n

    The Trademark Clearinghouse registration gives brand owners a verified record in the global database. Because the benefit of this is three-fold as I mentioned above, it\u2019s an opportunity for trademarks to protect themselves (saving time & money) as well as take appropriate action against violators. <\/span><\/p>\n

    Cases of Cybersquatting<\/span><\/strong><\/p>\n

    BMW<\/b><\/p>\n

    In 2015, car company, BMW won the rights to b.mw. MW being a ccTLD for Malawi. BMW fought the case on the grounds of belief that the domain was registered deliberately and in bad faith. Especially since the domain registrant was reportedly selling the domain for $1 million!<\/span><\/p>\n

    The defendant didn\u2019t respond to the allegations. He in fact, also owns a a.mw, c.mw and could have perhaps won the case since it was not a stand-alone registration. <\/span><\/p>\n

    Hugo Boss<\/b><\/p>\n

    German luxury brand, Hugo Boss won the case and the rights to hugoboss.site in June last year. The fashion brand argued that the domain name could cause confusion with it\u2019s Hugo Boss\u2019 trademark and that the owner was using it in bad faith. The registrant did not reply to the complaint.<\/span><\/p>\n

    Hugo Boss registered its brand as an international trademark in April 1987. WIPO panelist, Ian Lowe said the brand had \u201cundoubted, uncontested rights\u201d to the domain owing to the brand name \u2018Hugo Boss\u2019.<\/span><\/p>\n

    LEGO<\/b><\/p>\n

    LEGO has filed 236 cases under the Uniform Dispute Resolution Policy since 2006 and has reportedly never lost a single case! The company either wins the case or the case is terminated before the investigation.<\/span><\/p>\n

    Strategy for Protecting your brand from Cybersquatting<\/span><\/strong><\/p>\n