Trademark Clearinghouse: 500,000 claims notices delivered with 25,000 domains registered

Trademark Clearinghouse (TMCH) send out a press release today claiming that over 500,000 claims notices have been delivered. TMCH is providing protection to over 10,000 brands and businesses and over 28,000 trademarks have been recorded within its database.

The Trademark Clearinghouse (TMCH) revealed that over 500,000 Claims Notices (CNIS) have been delivered, of which 95% of the queries for trademark terms are not being followed through to a live registration.

Neither is a surprise to me but these numbers don’t tell the truth. Most of the 28,000 trademarks are for dictionary words like gold, smart, blue, cloud, next, sport or even single letters. And multiple notices are delivered when more than 1 trademark exists for a term. And multiple people ordering the same domain each get a notice.

I myself must have produced more than a 1000 claims just by making multiple orders on different registrars for the same domain name, when I start an order and then stop and restart, when my pre-order fails, or just by checking if a domain name has a trademark for research.

5% is 25,000 domain name registrations that have a trademark associated with them. That is not a small number but I guess that 99% of these 25,000 registrations are for dictionary terms.

If all these 25,000 domain name registrations were all infringing on trademarks then you would be seeing more than the 20 URS complaints that have been filed so far.

So no, I wouldn’t say that there is deterrent effect of the Clearinghouse as they claim.

Here is the press release:

The deterrent effect of the Clearinghouse

As key stakeholders in the domain name world turn their attention to the  ICANN Singapore meeting this week, the Trademark Clearinghouse (TMCH) can reveal that over 500,000 Claims Notices (CNIS) have been delivered, of which 95% of the queries for trademark terms are not being followed through to a live registration.  Notices issued by the TMCH are sent as a warning to anyone attempting to register a domain name which matches a trademark term recorded in the TMCH and this metric clearly shows the deterrent is working.

So far, less than 70 of the 1,300 applied for Top-Level Domains (TLDs) are both live and in the phase of accepting registrations from the general public, yet the number of warnings issued by the TMCH clearly indicates a high level of interest in trademarked terms from third parties.

The data is revealed in conjunction with a key TMCH milestone – the first anniversary since opening for submission of trademarks. To date, the TMCH is providing protection to over 10,000 brands and businesses and over 28,000 trademarks have been recorded within its database. Since its inception, the TMCH has worked continually to raise awareness of its critical function and to maximise the benefits it offers to trademark owners.  Crucially, by now it provides an ongoing notification service which is not time limited, as well as protection for previously abused terms.

Jan Corstens, Worldwide Project Director at Trademark Clearinghouse and Partner at Deloitte commented, “Our  firm message is to encourage any trademark holders who have yet to record their marks with the TMCH to come forward as soon as possible – it’s not too late to benefit. The TMCH remains the only universal rights protection system across the entire new gTLD programme and by recording protected terms in the TMCH, trademark owners are being offered the best protection available as more new domains are deployed. Together with the URS and UDRP, the TMCH completes ICANN’s right protection toolbox and is the first line of defense and the most cost efficient way before taking any litigating step.”, Corstens continued.

Sold.Domains

About Konstantinos Zournas

Konstantinos studied Computer Engineering and Computer Science in London and lives in Athens, Greece. He loves domains and building websites. He is online since 1995, learned about html in 1996 and got into domains in 2002. He started the OnlineDomain.com blog in 2012.

6 comments

  1. “I myself must have produced more than a 1000 claims just by making multiple orders on different registrars for the same domain name, when I start an order and then stop and restart, when my pre-order fails, or just by checking if a domain name has a trademark for research.”

    Based on what has happened with one of my customers that has a trademark registration, they are only notified when someone actually registers a domain that uses their trademark, not when someone searches or starts and order.

    • Joe this is not how this works. When you start an order and click on “agree” a notice is send. Your customer is not exactly a large sample. Simple searches don’t send notices though.

      • I just did a test now on Godaddy – added a domain to cart with their trademark, accepted the trademark notice, and no e-mail notification came through.

        I also just checked and saw that the only e-mails that have ever come through for trademark notifications are when a domain is registered:

        “You have received this Notice of Registered Name because the following domain name(s) matching your Trademark Clearinghouse record(s) have been registered.”

        Also just checked the Trademark Clearinghouse Website:

        “If, after receiving and accepting the notice, the domain name registrant does continue to register the domain name, the trademark holder with a corresponding mark in the Clearinghouse receives a notification of the domain name registration, so they can take any appropriate action if they would like to.”

      • I am sorry. My article is correct but I was out of the office and it appears that Trademark Clearinghouse is using the same term for 2 different things.

        A trademark “claim notice” is the notice that a registrant receives when attempting to register a domain. (no email send to trademark holder)
        Thus the 500,000 notices.

        But Trademark Clearinghouse also uses the same term(“claim notice”) sometimes for the “claim notification” that is the email that is send to the mark owner after the domain is actually registered.

        The email should have used the term notification instead of notice so we can easily distinguish between the two:
        “You have received this Notice of Registered Name because the following domain name(s) matching your Trademark Clearinghouse record(s) have been registered.”

  2. So what is next step, what is the suggestion, if we see a trademark notice should we buy it or not and what is protection so when the person who has trademarks receives the email, can he recover the domain from us. So is there a point in buying the domain with new gTLD if there is already a trademark mark for that domain name and I can see the notice. I want to know how is the trademark registerar is protected when he receive emails, can he claim back from me for free

    • If your domain is something like wedding.cake and someone has a trademark on wedding (which there is) I would just ignore it.

      The trademark holder can file a URS, UDRP or other legal proceedings but it doesn’t mean they will win.

Leave a Reply

Your email address will not be published. Required fields are marked *

This site uses Akismet to reduce spam. Learn how your comment data is processed.