What is the Claims Notice?

The Trademark Claims Notice informs the domain name registrant that a company or individual claims trademark rights to the term being registered. However, the Claims Notice  does not prevent the registrant from registering the domain name.

The section below outlines what the claims notice is, who receives the notice and why, what the receiver of the notice can do when receiving a notice and what the implications are.

1. Domain Name Registrants in New Generic Top Level Domains (New gTLDs) may receive a “Trademark Claims Notice” when they try to register a domain name.

As a potential registrant, you may see a Trademark Claims Notice when you seek to register a domain name if your domain name matches a mark recorded in the TMCH.

The Trademark Claims Notice explains that a company or individual claims trademark rights to the term you’re trying to register, but this doesn’t necessarily mean you can’t register and use the domain name. The Trademark Claims Notice includes the name of the entity that’s making the claim, the jurisdiction, the class of goods, and the contact information for the entity.

After a close review of the Notice, you may choose to go ahead with your domain name registration, or not.

If you do register the domain name, the trademark holder listed on the Trademark Claims Notice will receive a notification of your domain name registration.

Please note that there is a difference between the Claims Notice and Claims Notification:

Claims Notice:

• A Claims Notice is shown to a domain name registrant when they attempt to register a domain name that matches a trademark recorded in the TMCH.
• It warns the registrant that the domain they are trying to register matches a trademark record in the Clearinghouse.
• The registrant can still proceed with the registration but must acknowledge the notice.
• The Claims Notice is provided by the Trademark Database (TMDB).

Claims Notification:

• A Claims Notification is sent to the trademark holder if a domain name that matches their trademark is registered during the claims period.
• This notification informs the trademark owner that someone has registered a potentially infringing domain name.
• The Claims Notification is provided by the Trademark Clearinghouse (TMCH).

In essence, the difference between the Claims Notice and Claims Notification is who the information is send to.

2. Reasons you may want to go forward with your domain name registration.

Your domain name registration may not infringe the rights of the trademark holder, even if there is a total or partial match with the domain name.

Examples of gTLD domain names that may not infringe the rights of the trademark holder include:

• Geographical Limitations:
  Example: A trademark is registered in the Republic of Korea (ROK) but not in any Latin American countries. If the domain name is intended for use in Latin America and does not target South Korea, it may not infringe the trademark rights in South Korea.
• Different Goods or Services:
  Example: If a trademark is registered for a specific category of goods (e.g., electronics), then it may not necessarily cover a different category (e.g., clothing). If you are using your domain name for  different goods and services not covered by the trademark, it may not be considered an infringement.
• Generic Expressions in Mixed Trademarks:
  Example: In the case of generic expressions registered as trademarks in mixed marks (with a logo), the protection applies to the mixed mark as a whole and not to the expression (domain name to be requested) in isolation. For example, a mixed mark that includes a generic term like “ice cream” in a logo does not necessarily prevent the registration of the domain name “icecream.com” if the domain name does not use the logo design.
• Non-Commercial Use:
  Example: A domain name registered for personal, educational, or non-commercial use that matches a trademark registered for commercial purposes. If there is no intention of commercial competition, the use of the domain name may not be considered an infringement. If I want to register my last name as a domain name for a website aimed at explaining my family history, there should be no preference given to a trademark sharing the same word.

3. Things you should consider before moving forward with your domain name registration.

If your domain name matches a trademark recording in ICANN’s Trademark Clearinghouse, the trademark holder will receive a notification as soon as you finish your domain name registration.

The trademark holder may then evaluate your new registration and use of the domain name, and consider whether it is infringing of their trademark. If the trademark holder believes that the domain name has been registered and is being used in bad faith, they may seek to transfer the domain name to themselves via ICANN’s Uniform Domain Name Dispute Resolution Policy, or seek to suspend the domain name via ICANN’s Uniform Rapid Suspension (URS) System.

If the trademark holder believes there is infringement on their trademark, they may file another type of legal action, including a court case in the jurisdiction of their trademark registration.

What to do if you receive a Claims Notice?

If you have received a Trademark Claims Notice and are seeking more information, we recommend referring to the trademark office of the relevant jurisdiction or the relevant decisions made under the Uniform Domain-Name Dispute Resolution Policy (UDRP).

UDRP Providers:

• Asian Domain Name Dispute Resolution Centre
• National Arbitration Forum
• The Czech Arbitration Court Arbitration Center for Internet Disputes
• WIPO

4. Lawyers and Legal Clinics Might Help

If you are considering registering a domain name that matches a trademark recorded in ICANN’s Trademark Clearinghouse (or in your own country’s national trademark organization), you may want to consult with legal counsel who specializes in intellectual property, free expression, and domain name issues. Legal counsel can provide guidance on the potential risks and legal implications associated with your registration. Legal clinics at some law schools around the world may also be able to help, such as the Universidad Católica del Norte in Chile.

Additionally, you should be aware of the terms and conditions of the domain name registrar you choose, as they may have specific policies related to trademark disputes and domain registrations.

Looking for more information? See below helpful links to relevant information published on the TMCH provider’s website.

• What is the Trademark Clearinghouse?
• Sunrise services
• Trademark Claims services

Trademark Offices per jurisdiction: