The debate over the proposed changes to the Trademark Clearinghouse model, known as the ‘straw man solution’, is intensifying. Ben Anderson looks at the best way to cut through the confusion.
ICANN published the ‘straw man’ model for the Trademark Clearinghouse (TMCH) for public comment on November 30, 2012, and with well over 80 comments submitted by early January the classic battle line through the Internet community is clearly apparent once again.
As a participant at the TMCH implementation meetings in Los Angeles last year it was clear to me then that the community would become divided over this key component of the new generic top-level domain (gTLD) programme. The arguments and rationale for and against the existing model are coherent and sensible and this Mexican standoff was inevitable.
The debate surrounding the straw man solution is one of policy versus implementation rather than practicality. Privately, many see the extension of the TMCH service as common sense but are worried that last-minute changes fundamentally threaten the ICANN model and open up back door challenges and pressure to agreements already made through the often lengthy ICANN policy development process (PDP).
Policy development needs to be initiated by the Generic Names Supporting Organisation (GNSO) and can take years, whereas implementation is simply that, and can be approved by the ICANN board and put into action quickly. Many brand owners see the additional functions of the TMCH as implementation, while many of the registrars and registries argue that this is a matter of policy.
The straw man solution proposes the following additional requirements to address concerns of affected stakeholders within the community. These include:
- A requirement for 30 days’ notice in advance of each new gTLD sunrise period;
- An extension of the required trademark claims service to the first 90 days of general registration;
- A lightweight ‘Claims 2’ period of six to 12 months that is an additional fee-based option for rights holders; and
- Inclusion of domain names previously determined to have been abusively registered or used in both trademark claims services.
The comments made on the straw man solution have come from some of the world’s largest brands and it is good to see many beginning to take a more active involvement in the ICANN process.
The Intellectual Property Constituency (IPC) within ICANN has represented the views of rights holders for many years and it is becoming apparent that these views may not be completely representative of the community the IPC is supposed to give a voice to. The TMCH model has been debated for a few years now and the model was agreed through consensus by the ICANN community.
While reviewing the comments on the straw man solution it has become clear that there is still some education required on what the TMCH actually is and what its core functions are.
In previous TLD launches such as .eu, .co and .xxx, the registries would open with an initial ‘sunrise’ period. The sunrise period is a limited period of time in which trademark owners can secure their corresponding domain name before a particular extension becomes open to the public. Per extension a registry would appoint a third party (usually an IP specialist) to check the following:
- Does the trademark owner correspond with the domain name applicant?
- Is the trademark an exact match with the domain name applied for?
- Does the trademark fulfil the condition as set out in the applicable sunrise policy? For example, some sunrise policies state that a trademark needs to be registered before a certain cut-off date.
With potentially more than 700 open gTLDs launching, this established model clearly does not scale to the new gTLD programme. Under ICANN’s supervision the TMCH was created as a central repository for information to be authenticated, stored and disseminated, pertaining to the rights of trademark holders.
The other TMCH functions still provide a robust service to brand owners by notifying them of domain registrations identical to their mark registered in the TMCH as well as notifying the potential registrant of the domain where the prior rights are registered.
By having a central database of verified trademark data for each sunrise launch the TMCH offers great value to brand owners that choose to approach this expansion strategically. Once your rights are validated in the TMCH you may re-use those rights in any new gTLD string launch as long as your rights remain registered in the TMCH and meet the requirements of the registry. This will lead to quicker registration of domains in sunrise launches and reduce the administrative burden of submitting applications to registrars.
The other TMCH functions still provide a robust service to brand owners by notifying them of domain registrations identical to their mark registered in the TMCH as well as notifying the potential registrant of the domain where the prior rights are registered.
The registration notice will need to be accepted by the registrant and a warranty will need to be electronically acknowledged by the registrant. The notices will deter registrations by enterprising individuals attempting online cybersquatting and will make even seasoned squatters think twice.
“BY HAVING A CENTRAL DATABASE OF VERIFIED TRADEMARK DATA FOR EACH SUNRISE LAUNCH THE TMCH OFFERS GREAT VALUE TO BRAND OWNERS THAT CHOOSE TO APPROACH THIS EXPANSION STRATEGICALLY.”
The warranty itself will prove useful when disputing a registration either through the established Uniform Dispute Resolution Policy (URDP) or the yet to be created Uniform Rapid Suspension System (URS). As both of these mechanisms are mandatory under all new gTLDs it will potentially make dispute action a lot swifter and cheaper for brands that find their rights infringed. Acknowledgement of the warranty will also provide in some cases evidence of bad faith, which is one of the three key tests in any UDRP proceeding.
These two notification mechanisms are the basis of the debate over the straw man proposal as the period in which they operate is restricted to 60 days. Many want the 60 days extended to 90 days or, in some cases, indefinitely under all new gTLDs and the existing gTLDs such as .com and .net.
There will no doubt be an increase in cybersquatting activity in these virgin name spaces, and it is simply not feasible, either defensively or pro-actively, to register the domain strings in approximately 700 TLDs that will be open for registration.
This is the conundrum facing brand holders: the next two years will prove to be an intense period of confusion and will divert many from their normal work. The big questions are ‘what domains should I register?’, ‘which trademarks should I protect?’ and ‘how should I monitor for infringements to my brand?’.
Whether the TMCH functions are extended or not, the simple fact for brand owners is that they must start planning for new gTLDs now. The TMCH will not prevent infringing registrations, it merely delays them from happening, and it does not provide a protection mechanism to those that have registered their rights within it. Its main purpose has always been to provide a simpler way of verifying rights for gTLD registrations in the sunrise periods.
Selection of rights to register in the TMCH should be driven by the trademarks or strings you anticipate registering in any one of the gTLD launches. The difficulty comes in deciding what gTLDs are attractive to your business and how they can be used.
As a corporate domain registrar but also a brand owner, our approach to this expansion is one of caution and defined selection. As an example, netnames.pharmacy is clearly an illogical combination for our brand and the term pharmacy has no association to the business activities we undertake; we would clearly not register the term NetNames in the .pharmacy registry. The issue for us and for everyone else is that we would not like anyone else to do so either.
In this situation we would look to the registry to see if it provides a blocking service through which we could block or reserve the term for registration for the next 10 years, in much the same way that ICM, the registry operator for .xxx, offered. If blocking were not available we would then elect to monitor that registry instead and ensure we are notified immediately of the registration if it were to occur.
There is a clear difference however with netnames. download; the gTLD itself has meaning and in the future we may use that specific domain to allow customers to access secure application downloads or materials that may be of interest to them. In this case we will ensure that we participate in the .download registry sunrise period and make sure we have submitted our trademark for NetNames into the TMCH in good time prior to the launch.
The bad news is that brand owners cannot sit back and ignore this new Internet gold rush. It should be viewed as an opportunity to acquire terms meaningful for your business that perhaps are now unavailable under established TLDs, but it should also prompt brand owners to review their domain registration strategies and attempt to reset the mistakes of the past.
NetNames' advice is not to rush into the expansion with a feeling that you need to register every term associated with your business under every new gTLD that launches. Instead, opt for a more sophisticated approach of targeted registration, defensive blocking and advanced technology monitoring. Once you have the balance right you will most definitely be one step ahead of your competition and the criminals that are seeking to take advantage of the confusion ahead.
Ben Anderson is product director for new gTLDs at NetNames, overseeing strategy, product and fulfilment for all NetNames brands. He can be contacted at: ben.anderson@groupnbt.com
This article was first published on 01 February 2013 in World IP Review
Trademark Clearinghouse, straw man solution, ICANN, gTLDs
