Revision as of 18:46, 4 March 2014

"The Trademark Clearinghouse is one of several important enhanced rights protection mechanisms that have been built into the New gTLD program. The Trademark Clearinghouse will accept and authenticate rights information, and will support both trademark claims and sunrise services, required in all new gTLDs ... the Trademark Clearinghouse mechanism functions by authenticating information from rights holders and providing this information to registries and registrars. Benefits of registering a trademark with the Clearinghouse include access to Sunrise registration with new gTLD registries and notification from the Clearinghouse when a domain matching your trademark has been registered. - ICANN"

Overview and Synopsis

• The simple and easy way for Trademark Holders to register and protect their brands with NewTLDs
• Trademark Holders will be able to submit their trademark information to a single and centralized repository
• Upon verification of a trademarks credentials, Trademark Holders will be able to protect their brands through a Sunrise Service and a Trademark Claims Service
• Verified trademarks will be be able to register their respective domain name during the pre-registration period of any NewTLD (Sunrise period)
• Additionally, Trademark Holders will also have the option to be notified if someone or another entity registers a domain name that matches their record in the Clearinghouse.

HEXONET TRADEMARK CLEARINGHOUSE (TMCH) SERVICES

• Resellers can process TMCH applications through HEXONET via API or Control Panel
• RegistrarOC clients can submit TMCH applications through HEXONET API
• Individual clients can submit TMCH applications through HEXONET

Benefits for Trademarks Registered with the Trademark Clearinghouse

Sunrise Services - TMCH

Sunrise is an initial period of at least 30 days where domain names are offered to Trademark Holders before they domains are offered to the general public. A Sunrise Period is mandatory for all new gTLDs and those with a validated trademark entry in the Clearinghouse can register their branded domain.

• Trademark holders will have ample time to register their IP rights using a user-friendly web interface, or an agent of their choice
• Register once with the Clearinghouse and register any or all corresponding domain names for any new gTLD
• Greatly reduce the administrative burden and associated costs for Trademark Holders

Claims Service - TMCH

The Trademark Claims service helps Trademark Holders after the Sunrise period is over. It is a notification service, mandated by ICANN for all new gTLDs, warns both domain name registrants as well as trademark holders of possible infringements. The service works as follows:

• A potential domain name registrant gets a warning notice when attempting to register a domain name that matches a trademark registered in the Clearinghouse.
• If, after receiving and accepting the notice, the domain name registrant continues to register the domain name, the trademark holder with the corresponding mark will receive notification of the domain name registration, so they can take any appropriate action.
• This service is available within the first 90 days of a General Availability.

TMCH Instructions

Registration of Trademark - Trademark Holder/Client

• Read Guidebook - TMCH Guidelines 1.1
• Determine the type of Trademark to be registered (Acceptable Trademarks)
• Ensure that the Trademark meets all acceptable conditions and exclusions (Acceptable Trademarks)
• Download the correct respective Trademark Application form and supplementary documentation (Trademark Applications)
• Submit Application and supporting documents via API or Control Panel
• Monitor application status through the Control Panel
• If application is approved an SMD file will be available through the Control Panel under Trademark List

Registration of Trademark - Reseller

• Read Guidebook - TMCH Guidelines 1.1
• Determine the type of Trademark that your customer will be registering (Acceptable Trademarks)
• Confirm with your customer that the Trademark meets all acceptable conditions and exclusions (Acceptable Trademarks)
• Your client should download the correct respective Trademark Application form and supplementary documentation (Trademark Applications)
• Reseller submits Application and supporting documents via API or Control Panel
• Monitor application status through the Control Panel
• If application is approved an SMD file will be available through API or Control Panel under Trademark List

Acceptable Trademarks

Registered Trademarks

A registered trademark is a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register in the mark’s jurisdiction. This means that the trademark in question must have national effect and be registered at the time it is submitted for verification.

The following are not considered registered trademarks and will not be eligible for inclusion in the Clearinghouse:

• Trademark applications;
• Trademarks registered by a city, state, province, or sub-national region;
• International trademark applications made via the Madrid system unless the underlying basic trademark registration has national effect;
• Registered marks that were subject to successful invalidation, cancellation, opposition, or rectification proceedings.

Not Registered Trademarks but Possible Inclusion under Another Type of Trademark

• Well-known or famous trademarks, unless they are also registered;
• Unregistered (including common law) trademark;
• Court-validated marks;
• Marks protected under statute or treaty;
• Other marks that constitute intellectual property

Not Acceptable by Applicant Guidebook

• A registered trademark that includes a top level extension, for example, trademarks such as “icann.org” or “.icann”
• Any registered trademark starting with or containing a “dot” (.) (e.g., the trademark “deloitte.” will not be accepted)
• Any registered trademark that does not contain any letters, words, numerals or DNS valid characters.

Marks Protected by Statute or Treaty

For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to geographical indications and designations of origin. Also, for purposes of sunrise eligibility, a mark must be specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.

• Please note - The following marks are not considered marks protected by statute or treaty and will not be eligible for inclusion in the Clearinghouse:
  • Trademark applications or applications for protection of a mark;
  • Well-known or famous trademarks, unless also protected by a statue or treaty;
  • US state trademarks;
  • International trademark applications made via the Madrid system
  • Registered trademarks that were subject to successful invalidation, cancellation, opposition or rectification proceedings;
  • The following are not considered marks protected by statute or treaty but might be eligible for inclusion in the Clearinghouse under another type of trademark:
    • Registered trademarks;
    • Unregistered (including common law) trademarks;
    • Court validated marks;
    • Other marks that constitutes intellectual property
  • The following will not be accepted by the Clearinghouse, even if protected by statute or treaty:
  • Any mark protected under statute or treaty that includes a top level extension such as “icann.org” or “.icann” as a mark;
  • Any mark protected under statute or treaty starting with or containing a “dot” (.) (e.g., the mark “deloitte.” will not be accepted);
  • Any mark protected under statute or treaty that does not contain any letters, words, numerals, or DNS-valid characters; and
  • Any mark protected under stature or treaty of which the statute or treaty is only applicable to a certain region, city or state.

Court Validated Marks

Court validated marks refer to a mark that has been validated by a court of law or other judicial proceeding at the national level, such as unregistered (common law) marks and/or well-known marks. In the case of a mark validated by judicial proceedings, the judicial authority must have existed as a competent jurisdiction as of the date of the order or judgment. Any referenced authority must have the indicia of authenticity and must on its face confer the specified rights (i.e., the documentation must be sufficient to show validation of the mark without the need for the Clearinghouse to consult outside resources).

• Please note - The following marks are not considered court-validated marks and will not be eligible for inclusion in the Clearinghouse:
  • Trademark applications;
  • US state trademarks;
  • International trademark applications made via the Madrid system
  • Registered trademarks that were subject to successful invalidation, cancellation or rectification proceedings
  • The following are not considered court-validated marks but might be eligible for inclusion in the Clearinghouse under another type of trademark:
    • Registered trademarks;
    • Marks protected under statute or treaty;
    • Other marks that constitute intellectual property
  • The following, even if court-validated, will not be accepted by the Clearinghouse:
    • Any court validated mark that includes a top level extensions such as “icann.org” or “.icann”;
    • Any court validated trademark mark starting with a “dot” (.) or containing a “dot” (.);
    • Any court validated mark that does not contain any letters, words, numerals, or DNS valid characters; and
    • Any state or city court-validated mark

TMCH Application Forms

Please use the respective TMCH application form provided below to submit a trademark. Also, please see the additional documentation requirements if special situations apply to the application:

Downloadable Application Forms

• Declaration of Use - Download
• Declaration of Use to Trademark Agents - Download
• License Declaration for License Holders (License Declaration for Registered Trademarks) - Download

The license declaration for registered trademarks is a template declaration which needs to be provided when the  Trademark Holder of a registered trademark has indicated that he/she is the licensee of a trademark and the license of the trademark has not been recorded with the relevant trademark office. This      license declaration for registered trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.

• License Declaration for Marks Protected under Statute or Treaty - Download

The license declaration for marks protected under statute or treaty is a template declaration which needs to be provided when the Trademark Holder of a mark protected under statute or treaty has indicated that he/she is the licensee of a mark protected under statute or treaty. This license declaration for registered trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.

• License Declaration for Court Validated Trademarks - Download

The license declaration for court validated trademarks is a template declaration which needs to be provided when the Trademark Holder of a court validated mark has indicated that he/she is the licensee of a court validated mark. This license declaration for court validated trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.

• Transfer Declaration for Assignees

An assignee declaration should be provided when 1) the Trademark Holder or Trademark Agent has indicated that he/she is an assignee of a trademark and 2) the assignment of the trademark has not yet been recorded by the trademark office.

• Transfer Declaration for Registered Trademarks - Download
• Transfer Declaration for Marks Protected under Statute or Treaty - Download
• Transfer Declaration for Court Validated Trademarks - Download

Extra Documentation for Special Circumstances

• Opting In to Sunrise Services at the Point of Registering a Trademark
  • Verification of proof of use which must contain two elements:
  1. A signed Declaration of Use (to confirm the validity of the trademark data)
  2. A single sample of proof of use. (digital proof that the trademark is in use (e.g. picture of label, marketing material, product information etc.). Note: Physical copies of samples are not required.
• Trademark Registered in Jurisdiction with NO ONLINE DATABASE
  • Copy of an official trademark certificate

In most cases, the information provided in a Trademark Record is verified against the official trademark office’sonline database. If the trademark is registered in a jurisdiction where such online database is not accessible, the Trademark Holder or Trademark Agent must submit a copy of the official trademark certificate related to that specific trademark. An overview of the jurisdictions for which an online database is available will be provided inan addendum to these Guidelines.

• Expiring Trademark
  • Copy of the renewal request of the trademark

A copy of the renewal request for a trademark must be provided when the trademark registration period will expireduring the term for which a Trademark Record is submitted to the Clearinghouse.

API Documentation

The API commands for the Trademark Clearinghouse are listed below:

• Create Trademark - CreateTMCHMark
• Trademark Status - StatusTMCHMark
• Query Trademark List - QueryTMCHMarkList

• CreateTMCHMark

[COMMAND]
command = CreateTMCHMark

marktype = <TEXT>| <NULL>
markname = <TEXT> | <NULL>

goodsandservices = <LONGTEXT> | <NULL>
goodsandservices# = <LONGTEXT> | <NULL>

trademark-jurisdiction = <COUNTRY> | AP | BX | EM | EP | EU | GC | IB | OA | OT | QZ | WO | <NULL>
trademark-class# = <INT> | <NULL>
trademark-registrationnumber = <INT> | <NULL>
trademark-registrationdate = <DATE> | <NULL>
# trademark-expirationdate = <DATE> | <NULL>

period = <INT> | <NULL>

label# = <TEXT> | <NULL>
label0smdinclusion = <INT> | <NULL>
label0claimsnotify = <INT> | <NULL>
label1smdinclusion = <INT> | <NULL>
label1claimsnotify = <INT> | <NULL>
label2smdinclusion = <INT> | <NULL>
label2claimsnotify = <INT> | <NULL>
label3smdinclusion = <INT> | <NULL>
label3claimsnotify = <INT> | <NULL>
label4smdinclusion = <INT> | <NULL>
label4claimsnotify = <INT> | <NULL>
label5smdinclusion = <INT> | <NULL>
label5claimsnotify = <INT> | <NULL>
label6smdinclusion = <INT> | <NULL>
label6claimsnotify = <INT> | <NULL>
label7smdinclusion = <INT> | <NULL>
label7claimsnotify = <INT> | <NULL>
label8smdinclusion = <INT> | <NULL>
label8claimsnotify = <INT> | <NULL>
label9smdinclusion = <INT> | <NULL>
label9claimsnotify = <INT> | <NULL>


holder0entitlement = owner | co-owner | assignee | <NULL>
holder0organization = <TEXT> | <NULL>
# holder0name = <TEXT> | <NULL>
holder0street = <TEXT> | <NULL>
holder0city = <TEXT> | <NULL>
holder0state = <TEXT> | <NULL>
holder0zip = <TEXT> | <NULL>
holder0country = <COUNTRY> | <NULL>
holder0phone = <PHONE> | <NULL>
holder0fax = <PHONE> | <NULL>
holder0email = <EMAIL> | <NULL>

EOF

• StatusTMCHMark

[COMMAND]
command = StatusTMCHMark
id = <TEXT> | <NULL>

EOF 

• QueryTMCHMarkList

[COMMAND]
command = QueryTMCHMarkList

(optional)
markname = <TEXT> | <NULL>
marktype = <TEXT> | <NULL>
status = <TEXT> | <NULL>

first = <INT>
limit = <INT>
orderby = <TEXT>
wide = 0 | 1 | <NULL>

mincreateddate = <NULL> | <TEXT>
maxcreateddate = <NULL> | <TEXT>
minupdateddate = <NULL> | <TEXT>
maxupdateddate = <NULL> | <TEXT>
minexpirationdate = <NULL> | <TEXT>
maxexpirationdate = <NULL> | <TEXT>

EOF 

FAQs

1. When does the Expired Registration Recovery Policy (ERRP) policy become effective?

   ICANN requires ERRP policy to be effective starting on August 31, 2013

2. How many ERRP email notices will be sent out to my customers?

   Each and every EXPIRING domain must receive up to three (3) notices - approximately one month and one week before the expiration date of a domain and five (5) days after. Bulk domain notifications will be sent in the same single email if domains are expiring at approximately the same date range

3. Can I specify the sender email address on a per domain and per account basis?

   No. All notices will be sent from a generic and and non-descriptive email address but you can specify the sender name and a Reply-To email address on a per domain and per account basis

4. Can the ERRP email be branded?

   Yes. Login into the Control Panel and navigate to MANAGE ACCOUNT > MY SETTINGS > DOMAIN SETTINGS > ERRP EMAIL SETTINGS where you can set a default branding for all ERRP notices going to your customers. In addition it it also possible to set the branding on a per domain basis

5. Where should renewal fees be displayed on my website?

   On any one or all of the following pages - homepage, pricing page, or terms of use page. Some resellers will also display prices in the customer login area of their website

6. Which fees do I have to display if I sell domains as a package with hosting?

   According to the ERRP policy, the domain renewal and domain restore price must clearly be displayed. If you only offer bundles, then the bundle price must include the renewal and/or restore price

7. Will ERRP emails be sent out if the domain is in AUTORENEW status?

   Yes. ICANN requires ERRP notices to be sent until the renewal is finalized. If a domain is set to AUTORENEW only the two pre-expirey (2) ERRP emails will be sent (approximately one month and one week before the expiration date)

8. Will HEXONET park Reseller's expired domains?

   No. Though we are looking at offering Parking Services to our Resellers in the coming months

9. Will HEXONET sell Reseller's expired domain if they are in redemption or are on HOLD status?

   No. Though we are looking at offering Auction Services to our Resellers in the coming months

10. Which TLDs does the ERRP policy apply?

    Only gTLDs are affected by the ERRP policy, all ccTLDs are excluded

11. When will a domain stop resolving?

    Only for gTLDs that are set to AUTODELETE/AUTOEXPIRE, the DNS resolution will be interrupted 36 days after expiration. This is eight days before deletion

12. Can I still transfer a domain if it is not resolving any more?

    Yes. It is still possible to transfer a domain

13. Is ERRP wording required in my general terms and conditions or TLD regulations?

    Not officially, but we recommend that you do update your terms of use with the wording we provided in our notice and this wiki

14. Can I activate my domain with a simple RENEW if it stopped resolving?

    Yes. Until a domain is deleted you can simply renew it

15. How I could prevent or stop the ERRP notice from being sent out for a domain?

    If you explicitly RENEW your domain at least 30 days before the expiration date no ERRP notice will be sent out.

If you explicitly RENEW your domain at least 7 days before deletion only the first ERRP notice (approximately one month before the expiration date) will be sent out.</p>If a domain is configured to AUTORENEW or if you explicitly RENEW your domain at least one day after expiration only the two ERRP pre-expirey notices (approximately one month and one week before the expiration date) are sent out</p>