There are currently less than 25 generic top level domain (gTLDs) names such as .com, .net and .org. However, this number is expected to increase dramatically to over 1000, with the addition of extensions such as .shop, .bank, .jewellery and many more.

According to Alissa Nayanah, candidate attorney at intellectual property law firm Adams & Adams - the largest intellectual property law firm in the Southern Hemisphere - the new domain name spaces create a breeding ground for cyber squatters and are a potential nightmare for trade mark holders. For this reason the Internet Corporation for Assigned Names and Numbers (ICANN) has created a trade mark clearing system known as the Trademark Clearinghouse (TMCH).

“The TMCH is a global, centralised trade mark database, devised to protect brands and trade mark holders’ rights. Trade mark holders can register their trade marks with the TMCH. Registration of trade marks is not mandatory, but offers two essential benefits,” says Nayanah.

“Firstly,” says Nayanah, “all new domain registries will be required to launch a Sunrise Period which allows trade mark holders to register domain names corresponding to their marks before names are generally available to the public. Registration with the TMCH gives trade mark holders easier access to the Sunrise Periods of all the new domain spaces.”

The second advantage is that, the new registries are required to offer a Trade Mark Claims Service for a minimum period of 60 days from the start of the public registration. “In terms of the service, the registry is obliged to notify any person attempting to register a domain name which matches a trade mark registered with the TMCH, of the trade mark holder’s rights. If after such notification, such party proceeds with the registration, the registry will notify the trade mark holder of such registration,” elaborates Nayanah.

A trade mark can be registered for a one-year, three-year or five-year period. “Registration with the TMCH will not prevent trade mark infringement or put an end to cyber-squatting. However, it provides a mechanism or network which makes cyber-squatting preventable to an extent and administratively easier to manage”.

Registration with the TMCH officially opened on 26 March 2013. Adams & Adams is able to assist all trade mark holders who wish to register with the TMCH.