Trademark Claims Notifications

When someone tries to register a domain name that matches a trademark recorded in the Trademark Clearinghouse (TMCH), they receive a trademark claims notification warning them of the match. This article explains how trademark claims affect domain orders in the Reseller Web Interface (RWI) and Reseller Control Panel (RCP), how to customize and resend the claims notification, and what happens to the affected trademark holders.

About trademark claims

Since December 2013, many new generic top-level domains (gTLDs) such as .BIKE, .GURU, and .CAREERS have become available for registration. Each new TLD launches with a sunrise phase that is open to trademark holders only.

Trademark holders can record their marks with the TMCH during the sunrise period and then apply to register the matching domain name before it becomes available to the public in General Availability (GA). During GA, anyone who tries to register a domain name that matches a TMCH-recorded mark is warned that a trademark is registered against the name. If they continue, the trademark holder is notified and may choose to dispute the registration.

The trademark claims notification service runs for 90 days after each TLD enters General Availability.

How trademark claims appear in domain orders

The way a trademark claim is surfaced depends on which interface you use to place the order.

Reseller Web Interface orders

When you submit an order in the RWI for a domain that might infringe on a registered mark, a message appears at the top of the registration form advising that the name is available but has a trademark claim. Click Submit to place the order. A notice then appears at the top of the page telling you that the order requires action by the registrant before it can be completed.

Reseller Control Panel orders

When you submit an order in the RCP for a domain that might infringe on a registered mark, the domain settings section of the order form shows has claim in the trademark claim field. When there are no claims, the field shows no claim. After you submit the order, a dialog box tells you there is a trademark claim on the domain name. Click OK to continue.

Trademark information email sent to registrants

When you submit an order for a domain name that matches a registered mark, the order is saved as pending and an email is sent to the prospective registrant, telling them the name matches at least one record at the TMCH. The email contains a link the registrant must click if they still want to register the domain.

The link takes the registrant to a page that lists the matching TMCH records and warns that they may or may not be entitled to register the name. The registrant must click I agree to the terms to confirm they are aware of the trademarks and that, to the best of their knowledge, their use of the domain name will not infringe on them.

Customizing the trademark claims notifications

Some customers may hesitate to click a link that takes them to an OpenSRS page rather than one owned by their reseller. To reassure your customers, you can customize the message body, add text to the trademark notice page, set the URLs customers are sent to after they respond, and have your own hostname appear in the claims notification email.

Customize the notification message

To customize the message body to reflect your branding, update the trademark claims notification message from the Email messages tab under Messaging and confirmation in the RCP.

Customize the hostnames and URLs

1. Click Branding in the profile management section of the RWI.
2. Scroll down to the Customize claims notification hostname and URLs section.
3. In the Accepted URL field, enter the URL to send customers to when they click I agree to the terms on the trademark notice.
4. In the Rejected URL field, enter the URL to send customers to when they click Cancel on the trademark notice.
5. In the Hostname field, enter the hostname to appear in the claims notification email, then click Save.

Add text to the trademark notice page

1. Click Branding in the profile management section of the RWI.
2. Scroll down to the Customize claims notification page section.
3. Enter your text in the Section - header and Section - footer text boxes.

Resending the claims email

If you need to resend the claims notification email to your customer, you can do so through the RWI or the RCP.

• From the RWI. Display the order in progress and select the checkbox in the Resend email column for that domain, then click Submit. Alternatively, click the domain name to view the order, then in the registrant claim/trademark notification section, click Resend request to the domain owner.
• From the RCP. Display the pending order, then from the Actions drop-down, choose Resend claim review email.

Notices to trademark holders

When a registrant chooses to continue with a registration that matches a recorded mark, the TMCH notifies the affected trademark holders. Each trademark holder decides whether to take action and dispute the registration through a Uniform Domain-Name Dispute Resolution Policy (UDRP) claim or other legal means.

Next steps

• Review the new TLD launch phases to understand sunrise, landrush, and General Availability. See New TLD launch phases.
• Update your account messaging to brand the claims notification. See New account messaging.

Questions? Contact OpenSRS Support.