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June 15, 2013 Vol. 68 No. 11 Back to Bulletin Main Page

Trademark Clearinghouse Opened—But Is the Red Carpet Really Rolled Out?

On March 26, 2013, ICANN officially opened the doors of the Trademark Clearinghouse (TMCH) in anticipation of its impending introduction of new generic top-level domains (gTLDs). The TMCH was proposed to serve as a repository of trademark rights information to support the provision of trademark protection services within all new gTLDs.

In 2012, more than 1,900 applications for new gTLDs were submitted to ICANN. This number included a total of 1,409 unique gTLDs, which could be classified into various types of domains:

  • Brands: for example, .microsoft, .volvo, .mcdonalds
  • Internationalized domain names (IDNs): for example, 點看 (transliteration of .com in Chinese)
  • Generics: for example, .news, .food, .app
  • Geographics: for example, .amsterdam, .africa
  • Community: for example, .gay, .latin

The more than 1,900 applications exceeded ICANN’s initial estimates, with the vast majority filed by applicants from the most-developed countries and approximately only 100 applications filed for IDNs. A full list of applied-for gTLDs can be found on ICANN’s website.

The Launch
ICANN is projecting to launch new gTLDs later this year after it addresses community feedback, including from its Government Advisory Committee (GAC). The first batch of new gTLDs to come online will consist of IDN strings (non-Latin-based gTLDs). ICANN will then introduce more new gTLDs on a rolling basis, with a maximum of 1,000 new gTLDs in a calendar year. By the end of this process the number of gTLDs will have grown exponentially, from the current set of 22 to hundreds, representing a multifold increase in the gTLD space. Demand for registrations of second-level domain names under new gTLDs and overall adoption rates by Internet users of new gTLDs remain uncertain, and will depend on a variety of factors.

Since policy development surrounding the current expansion of new gTLDs began in 2005, INTA has consistently advocated for policies designed to ensure that the legitimate rights of trademark owners can be adequately protected in a drastically expanded Domain Name System (DNS). The INTA Internet Committee’s New gTLD Registry Issues Subcommittee has been monitoring and participating in the new gTLD process to help ensure consideration of the importance of trademarks and consumer trust on the Internet.

In response to concerns raised by INTA and the Internet community, ICANN is mandating that each new gTLD registry implement a basic minimum set of two Rights Protection Mechanisms (RPMs). These RPMs consist of a “Sunrise Period” and a “Trademark Claims Service,” which are described in more detail below. More recently, in light of the unanticipated volume of new gTLD applications, INTA advised ICANN to enhance protections offered through the Sunrise Period and Trademark Claims Service. Several of the proposed enhancements have been approved for implementation; when incorporated in the TMCH, they should provide some further level of protection for trademark owners seeking to protect their consumers in the expanded Internet space.

The Trademark Clearinghouse Explained
The TMCH is the online platform with which all new gTLD registries must interface, and where trademark owners can deposit trademark rights data directly or through their domain service provider or other authorized agent. The deposited information will be independently validated by a third-party “validation provider,” currently Deloitte, before it is accepted into the TMCH. This central repository of rights information was designed to eliminate the need for trademark owners to submit the same data to potentially hundreds of distinct databases, with the overall intention of reducing the considerable time and resources this would require of trademark owners. However, the costs associated with this defensive registration and brand enforcement remain a major concern, especially for trademark owners, which continue to face a variety of severe online threats, including a deluge of domain name and website infringements.

When selling second-level domain names, all new gTLD registries are required to interface with the TMCH to confirm whether any applied-for domain corresponds with a trademark that has been submitted and verified by the TMCH, in order to minimize possible instances of infringement. It should be noted, however, that inclusion of a trademark in the TMCH cannot serve as proof of any right in other proceedings, nor does it create any legal rights.

Requirements for Inclusion in the TMCH
Inclusion in the TMCH requires a valid trademark registration and proof of use if the trademark owner intends to take part in a Sunrise Period registration process. A word mark, as defined by ICANN, must be registered via a national, international or regional (CTM, Benelux, OAPI) registration. The TMCH has indicated that pending applications for trademarks can submitted, but they will not be eligible for either RPM until the applied-for trademark has been registered and subsequently verified. Similarly, ICANN staff has indicated that registered trademarks that are within an opposition period can be submitted to the TMCH, but they will not be eligible for either RPM until the opposition period has passed.

In addition to registered trademarks, marks that are validated by a court, marks that are protected by statute or treaty and other marks that constitute intellectual property are eligible for inclusion and can be validated by the TMCH.

For word marks, the “matching criteria” are clear and an identical match between mark and domain name is easy to establish. However, it becomes more difficult to ascertain matching rules with registered marks that include punctuation symbols and characters. Some symbols and characters (for example, “&”) can simply be left out, and the application will be accepted by the TMCH, whereas marks including, for example, a dot (“.”) will simply be refused. For a trademark registration that consists of a combined word and device mark to serve as a basis for entry into the TMCH, the following criteria apply:

1.    The word elements should be predominant.
2.    The word elements should be clearly separable or distinguishable from the device element.
3.    All predominant characters should be included in the trademark record submitted to the TMCH in the same order as they appear in the mark.

Apart from a valid registration, the applicant must submit a declaration and proof of use to be eligible for Sunrise Period registration. The declaration must affirm that the data submitted are complete and accurate. The sample of use should correspond to the actual use of the trademark toward the public, and must contain the complete name of the registered trademark as recorded in the TMCH Trademark Record and as verified. Samples such as labels, tags, photos of containers and advertising and marketing materials are listed as acceptable, whereas business cards, email messages and domain names are explicitly excluded as valid samples of use.

The TMCH accepts multiple identical marks in the names of different owners but makes no decision on prioritization, because the TMCH was designed to validate existing rights, not to make determinations of substantive rights. When the owners of identical marks, each validated by the TMCH, apply to register a second-level domain name in the same new gTLD, the specific new gTLD registry will determine how to resolve this contention according to its own operating rules and procedures. For example, the new gTLD registry may resolve these contentions through an auction mechanism or through some other process, such as on a first-come, first-served basis.

Who May Submit Trademarks to the TMCH?
Trademarks may be submitted for verification to the TMCH by the trademark owner directly or via a registered agent. To become a registered agent, a US $15,000 deposit is required. Therefore, doing so may be commercially worthwhile only if one intends to act as an agent for many TMCH submissions.

Rights Protection Mechanisms
As mentioned, trademark rights data are validated and stored in the TMCH to support two RPMs that will apply to all new gTLDs, including:

1.    Enabling trademark owners to participate in the Sunrise Periods of one or more gTLDs.
2.    Being notified of later conflicting domain registrations via the Trademarks Claims Service.

Sunrise Period
The Sunrise Period is an exclusive priority period for trademark owners that enables them to register domain names that identically match their trademarks before registration opens to the general public (the “Landrush Period”). Trademark owners may be familiar with the Sunrise Periods from previous introductions of new top-level domains (TLDs), the most recent being the .XXX TLD. All new gTLD registries will be obligated to provide a 30-day notice prior to each Sunrise Period that sets forth the dates and requirements of their Sunrise Periods and provides a link to the TMCH database. The Sunrise Period is required to last a minimum of 30 days before the domain names are made available to the general public.

Trademark Claims Service
Not merely a watch service, the Trademark Claims Service provides a warning to a prospective domain registrant that has applied for a domain name that identically matches a record in the TMCH. To proceed with the registration, the prospective domain registrant must warrant that it is aware of the trademark, must understand the notice and must verify that, to the best of its knowledge, the registration and use of the domain name will not infringe on the trademark.If the prospective domain registrant proceeds to register the domain name, the trademark owner will receive a notification of the registration, and it can consider using various enforcement measures, such as the UDRP or Uniform Rapid Suspension System (URS), if necessary in order to enforce its rights. (The URS is a streamlined version of the UDRP process which is designed for clear-cut cases of trademark abuse, requires a higher burden of proof and adjudicates cases more quickly and at a lower cost than the UDRP.).

For a trademark to qualify for the Trademark Claims Service, proof of use is not required. The Trademark Claims Service will be offered for a minimum of 90 days following the Sunrise Period. Some new gTLD registries have, however, indicated in their applications (which are non-binding) that they intend to run this service indefinitely.

One of the enhancements INTA successfully advocated for was enabling trademark owners to add up to 50 domain names (which have been determined to have been previously abusively registered or used) per each Clearinghouse record. When such previously abused domain names have been deposited with the TMCH, they will trigger notifications to prospective domain name registrants and alert trademark owners if such domains are registered in new gTLDs.

As a result, not all trademark-related typos, misspellings or plurals will trigger claims notices. Thus, replacing domain name watch services or relying solely on the Trademark Claims Service is not advisable, especially in view of the finite, limited duration of the Service (90 days).

Although the Trademark Claims Service does not stop an infringing domain name from proceeding to registration, the warning provided to the prospective registrant should help to raise awareness of trademark owners’ rights and their interplay with the domain name system. Whether the Claims Service will provide trademark owners with meaningful protection under these rules remains unclear. However, the Claims Service should at a minimum educate a prospective registrant and deter potential “unintentional infringers.” Furthermore, despite speculation that this warning may have little to no deterrent impact on cybersquatting, it may strengthen a trademark owner’s case in enforcement proceedings (where intent or knowledge of the infringement is at issue).

Overall, the TMCH represents a positive step toward the protection of trademark rights within ICANN’s New gTLD program. Registration with the TMCH does, however, require careful consideration, and it may even be subject to dispute after submission.

In Part II of this series, the New gTLD Registry Issues Subcommittee will describe the TMCH’s dispute resolution process and examine the pros and cons of registering with the TMCH.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association