Trademark Clearinghouse: Difference between revisions
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The '''Trademark Clearinghouse''' ('''TMC''' or '''TMCH''') is a database of trademarks | The '''Trademark Clearinghouse''' ('''TMC''' or '''TMCH''') is a database of trademarks, established by [[ICANN]] in order to enhance the protection of [[Intellectual Property|intellectual property]] on the Internet.<ref>[http://techdailydose.nationaljournal.com/2010/03/icann-to-create-trademark-clea.php techdailydose.nationaljournal.com]</ref> The main role of TMCH is to serve as a central repository for the information related to the rights of trademark owners to be stored, authenticated and distributed.<ref>[http://www.v3.co.uk/v3-uk/news/1971874/icann-creates-trademark-clearinghouse v3.co.uk]</ref><ref>[http://www.infolawgroup.com/tags/trademark-clearinghouse/ infolawgroup.com]</ref> When a customer attempts to register a new domain and the domain matches up with a trademark existing in the TMCH, the customer will receive a warning that the creation of the domain may be considered [[cybersquatting]].<ref>[http://domainincite.com/trademark-clearinghouse-coming-in-october/ Trademark Clearinghouse coming in October, domainincite.com]</ref> Use of the TMCH is required for all new [[gTLD]] [[Registry|registries]].<ref>[http://www.icann.org/en/topics/new-gtlds/draft-rfp-clean-12nov10-en.pdf Draft Applicant Guidebook, November 12, 2010; Retrieved June 1, 2011]</ref> | ||
ICANN | ICANN originally estimated that the TMCH would become operational in October 2012. It was announced that 9 applicants were being vetted to provide services.<ref>[http://www.icann.org/en/minutes/board-briefing-materials-4-05jan12-en.pdf New gTLDs: Trademark Clearinghouse Implementation, ICANN Board minutes, 1/5/12]</ref> On June 8, 2012, ICANN announced that it had selected [[Deloitte]] and [[IBM]] to serve as the managers of the TMCH. Deloitte Enterprise Risk Services will serve as provider of the Trademark Clearinghouse’s authenticator/validator services. IBM will provide technical database administration services. Both companies are expected to subcontract [[IPClearingHouse]] (CHIP) in order to facilitate theses services.<ref>[http://www.natlawreview.com/article/icann-s-trademark-clearinghouse-update ICANN’s Trademark Clearinghouse: An Update, natlawreview.com]</ref> | ||
The most recent launch date for the TMCH is March 26th, nearly a month ahead of when the [[ICANN Board]] is set to recommend the first New gTLDs for implementation.<ref>[http://domainincite.com/11980-trademark-clearinghouse-to-open-march-26 Trademark Clearinghouse to Open March 26, DomainIncite.com] Retrieved 25 Feb 2013</ref> | |||
== Structure == | == Structure == | ||
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==Pricing== | ==Pricing== | ||
A preliminary cost model was announced in June, 2012. According to this model, trademark owners would be able to submit a trademark to the clearinghouse for $150 per mark, although more complicated marks may require a higher cost. Annual renewal fees would cost some percentage of the original submission fee. The anticipated setup fee for registries to use the TMCH is $7,000-$10,000. The fee would cover Sunrise and Trademark Claims processes, as well as assistance in integration and testing.<ref>[http://www.natlawreview.com/article/icann-s-trademark-clearinghouse-update ICANN’s Trademark Clearinghouse: An Update, natlawreview.com]</ref> | A preliminary cost model was announced in June, 2012. According to this model, trademark owners would be able to submit a trademark to the clearinghouse for $150 per mark, although more complicated marks may require a higher cost. Annual renewal fees would cost some percentage of the original submission fee. The anticipated setup fee for registries to use the TMCH is $7,000-$10,000. The fee would cover Sunrise and Trademark Claims processes, as well as assistance in integration and testing.<ref>[http://www.natlawreview.com/article/icann-s-trademark-clearinghouse-update ICANN’s Trademark Clearinghouse: An Update, natlawreview.com]</ref> | ||
In January 2013 a full pricing model was released. It differentiates between small trademark holders that are protecting a limited number of marks and large trademark holders or their agents who may represent many clients. The former are able to pay via credit card while the latter must prepay and have a volume discount available to them, with the lowest one year registration dropping to $95 from the initial $145. The original $145 price allows you to protect 10 related domain names, so typos, hyphens, and variations may be protected, should the holder wish to protect more each additional domain protected costs $1 per registration year.<ref>[http://www.trademark-clearinghouse.com/pdf/TMCH_fee_structure_21-01-2013.pdf TMCH Fee Structure, Trademark-Clearinghouse.com]Retrieved 23 Jan 2013</ref> | |||
The full breakdown of pricing and fee structuring can be seen [http://www.trademark-clearinghouse.com/pdf/TMCH_fee_structure_21-01-2013.pdf here]. | |||
===Lowered Price=== | |||
A new pricing structure was announced in March 2013. The basic fees of $145 to $94 per mark remain the same but discounts were made more accessible. The changes were to the "status points" program that accumulate with the more trademarks submitted, the five tiers of discounts were brought down; for example, the first discount tier is now accessible at 1,000 status points rather than 3,000.<ref>[http://domainincite.com/12339-trademark-clearinghouse-lowers-prices Trademark Clearinghouse Lowers Prices, DomainIncite.com] Published March 21 Retrieved March 30 2012</ref> | |||
==Feedback== | ==Feedback== | ||
In October, 2012, NTIA Assistant Secretary, [[Larry Strickling]] wrote to ICANN regarding its recent successes but also to implore it to continue to work on the Trademark Clearinghouse and the [[URS]]. Larry Strickling noted that ICANN had issued an update on the clearinghouse and a request for information searching for a URS services provider. NTIA encouraged ICANN to continue to allow stakeholders to evaluate and provide input on the the information presented by the applicants. It stressed that the URS was originally envisioned as an effective and low-cost alternative to the [[UDRP]], and encouraged ICANN to ensure that cost concerns were kept in mind throughout their evaluation process. NTIA also encouraged ICANN to not stop working on the [[Intellectual Property]] mechanisms as is, but continue to explore other ways of ensuring that trademarks and brands remain safe within the landscape of current and new TLDs.<ref>[http://www.icann.org/en/news/correspondence/strickling-to-crocker-04oct12-en Strickling to Crocker, ICANN.org]</ref> | In October, 2012, NTIA Assistant Secretary, [[Larry Strickling]] wrote to ICANN regarding its recent successes but also to implore it to continue to work on the Trademark Clearinghouse and the [[URS]]. Larry Strickling noted that ICANN had issued an update on the clearinghouse and a request for information searching for a URS services provider. NTIA encouraged ICANN to continue to allow stakeholders to evaluate and provide input on the the information presented by the applicants. It stressed that the URS was originally envisioned as an effective and low-cost alternative to the [[UDRP]], and encouraged ICANN to ensure that cost concerns were kept in mind throughout their evaluation process. NTIA also encouraged ICANN to not stop working on the [[Intellectual Property]] mechanisms as is, but continue to explore other ways of ensuring that trademarks and brands remain safe within the landscape of current and new TLDs.<ref>[http://www.icann.org/en/news/correspondence/strickling-to-crocker-04oct12-en Strickling to Crocker, ICANN.org]</ref> | ||
On Decmeber 12th, 2012, [[ICANN]] Ombudsman [[Chris LaHatte]] called for feedback from community members to support his investigation of closed-door Trademark Clearinghouse talks in Brussels and Los Angeles. At the two meetings, the [[IPC|Intellectual Property Constituency]] and the [[BC|Business Constituency]] met with ICANN CEO [[Fadi Chehadé]] to discuss changing the Trademark Clearinghouse; they were invitation-only and were not broadcast live, unless most ICANN meetings. The use of social media was also discouraged.<ref>[http://domainincite.com/11294-ombudsman-probing-secretive-trademark-clearinghouse-meetings http://domainincite.com/11294-ombudsman-probing-secretive-trademark-clearinghouse-meetings], DomainIncite.com. Published 12 December 2012.</ref><ref>[http://domainincite.com/11193-if-the-gnso-is-irrelevant-icann-itself-is-at-risk-guest-post If the GNSO is irrelevant, ICANN itself is at risk], DomainIncite.com. Published 1 December 2012.</ref> | On Decmeber 12th, 2012, [[ICANN]] [[Ombudsman]] [[Chris LaHatte]] called for feedback from community members to support his investigation of closed-door Trademark Clearinghouse talks in Brussels and Los Angeles. At the two meetings, the [[IPC|Intellectual Property Constituency]] and the [[BC|Business Constituency]] met with ICANN CEO [[Fadi Chehadé]] to discuss changing the Trademark Clearinghouse; they were invitation-only and were not broadcast live, unless most ICANN meetings. The use of social media was also discouraged.<ref>[http://domainincite.com/11294-ombudsman-probing-secretive-trademark-clearinghouse-meetings http://domainincite.com/11294-ombudsman-probing-secretive-trademark-clearinghouse-meetings], DomainIncite.com. Published 12 December 2012.</ref><ref>[http://domainincite.com/11193-if-the-gnso-is-irrelevant-icann-itself-is-at-risk-guest-post If the GNSO is irrelevant, ICANN itself is at risk], DomainIncite.com. Published 1 December 2012.</ref> | ||
Chehadé emerged from the meetings with a "straw man" proposal, which would allow the IPC and BC to add keywords to trademarks they list in the Trademark Clearinghouse that would allow for eligibility in the Trademark Claims service and an extension of the service from 60 to 90 days. Additional changes include a "Claims 2" process that would extend trademark protection an additional six to twelve months. Opponents include the [[NCSG|Non-Commercial Stakeholders Group]] (NCSG).<ref>[http://domainincite.com/11064-straw-man-proposed-to-settle-trademark-deadlock-at-secretive-icann-meeting Straw man proposed to settle trademark deadlock at secretive ICANN meeting], DomainIncite.com. Published 19 November 2012.</ref> | Chehadé emerged from the meetings with a "straw man" proposal, which would allow the IPC and BC to add keywords to trademarks they list in the Trademark Clearinghouse that would allow for eligibility in the Trademark Claims service and an extension of the service from 60 to 90 days. Additional changes include a "Claims 2" process that would extend trademark protection an additional six to twelve months. Opponents include the [[NCSG|Non-Commercial Stakeholders Group]] (NCSG).<ref>[http://domainincite.com/11064-straw-man-proposed-to-settle-trademark-deadlock-at-secretive-icann-meeting Straw man proposed to settle trademark deadlock at secretive ICANN meeting], DomainIncite.com. Published 19 November 2012.</ref> | ||
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==Implementation== | ==Implementation== | ||
On November 27 2012, ICANN CEO [[Fadi Chehadé]] posted to his blog that the Trademark Clearinghouse would be implementable for $150 per mark, or less. [[IBM]] is to maintain the database, while [[Deloitte]] will accept marks and provide validation services. The latter's services are non-exclusive, will be monitored by [[ICANN]] to ensure a reasonable amount is being charged, and can be subject to discounts for multiple marks and multiple year registration. The entire system mimics the separate [[registry]] and [[registrar]] model. <ref>[http://blog.icann.org/2012/11/a-follow-up-to-our-trademark-clearinghouse-meetings/ A Follow Up to Our Trademark Clearinghouse Meetings, Blog.ICANN.org]Published & Retrieved 27 Nov 2012</ref> | On November 27 2012, ICANN CEO [[Fadi Chehadé]] posted to his blog that the Trademark Clearinghouse would be implementable for $150 per mark, or less. [[IBM]] is to maintain the database, while [[Deloitte]] will accept marks and provide validation services. The latter's services are non-exclusive, will be monitored by [[ICANN]] to ensure a reasonable amount is being charged, and can be subject to discounts for multiple marks and multiple year registration. The entire system mimics the separate [[registry]] and [[registrar]] model. <ref>[http://blog.icann.org/2012/11/a-follow-up-to-our-trademark-clearinghouse-meetings/ A Follow Up to Our Trademark Clearinghouse Meetings, Blog.ICANN.org]Published & Retrieved 27 Nov 2012</ref> | ||
==Strawman Solution== | |||
The so called "Strawman Solution" is an expansion of the TMCH and related IP and trademark protections being floated and created by the leadership within ICANN and members of the Business and IP communities. On November 15-16 2012, following its [[ICANN 45|45th public meeting]], ICANN leadership met with invited representatives of the [[IPC|Intellectual Property Constituency]], the [[BC|Business Constituency]], and other prominent members and representatives of the [[Registrar]], [[Registry]], and related communities. Participants were asked not to immediately disclose the discussion, and ICANN went so far as to request that nobody tweet about the meeting either.<ref name="SM Meeting">[http://domainincite.com/11064-straw-man-proposed-to-settle-trademark-deadlock-at-secretive-icann-meeting Strawman Proposed to Settle Trademark Deadlock at Secretive ICANN Meeting]Published Nov 19, 2012, Retrieved Jan 18 2013]</ref> | |||
The fact that the meeting was even taking place and that ICANN executives were signaling that they would implement policy outside of standard [[PDP|Policy Development Processes]], which would demand consensus created within the [[GNSO]], was troubling to many in the community.<ref name="IGP Strawman">[http://www.internetgovernance.org/2012/11/18/dissecting-the-strawman-icanns-11th-hour-trademark-policy-negotiations/ Dissecting the Strawman ICANNs 110th Hour Trademark Policy Negotiations]Published 18 Nov 2012, Retrieved 18 Jan 2013</ref><ref name="DI SM Split">[http://domainincite.com/11619-new-gtld-strawman-splits-community New gTLD Splits Community, DomainIncite.com]Published 16 Jan 2013, Retrieved 18 Jan</ref> This significantly added to the import of the recent debate in ICANN over [[ICANN#Implementation vs. Policy Development|implementation vs. policy development]].<ref name="race">[http://www.bna.com/race-toward-new-b17179871911/ Race Toward New, BNA.com]Published 17 Jan 2013, Retrieved 18 Jan</ref> | |||
The process was started after a letter sent from the [[IPC|Intellectual Property Constituency]] to [[Kurt Pritz]] made 8 specific demands to expand rights protections. While certain more powerful measures, such as universal registration blocking of trademarks across all TLDs, did not proceed, the resulting Strawman Solution proposal includes 5 expansions of trademark related mechanisms, which include:<ref name="IGP Strawman"></ref><ref name="DI SM Split"></ref><ref name= "TMCH Public Comments">[http://www.icann.org/en/news/public-comment/tmch-strawman-30nov12-en.htm TMCH Strawman, ICANN.org]Retrieved 18 Jn 2013</ref> | |||
* All new gTLD operators will publish the dates and requirements of their sunrise periods at least 30 days in advance. When combined with the existing (30-day) sunrise period, this supports the goal of enabling rights holders to anticipate and prepare for upcoming launches. | |||
* A Trademark Claims period, as described in the Applicant Guidebook, will take place for 90 days. During this “Claims 1″ period, a person attempting to register a domain name matching a Clearinghouse record will be shown a Claims notice (as included in the Applicant Guidebook) showing the relevant mark information, and must acknowledge the notice to proceed. If the domain name is registered, the relevant rightsholders will receive notice of the registration. | |||
: ''This measure expands upon the current version of the applicant guidebook by an additional 30 days'' | |||
* Rights holders will have the option to pay an additional fee for inclusion of a Clearinghouse record in a “Claims 2″ service where, for an additional 6-12 months, anyone attempting to register a domain name matching the record would be shown a Claims notice indicating that the name matches a record in the Clearinghouse (but not necessarily displaying the actual Claims data). This notice will also provide a description of the rights and responsibilities of the registrant and will incorporate a form of educational add-on to help propagate information on the role of trademarks and develop more informed consumers in the registration process. | |||
: ''Represents significant policy development outside of accepted and traditional processes, according to the [[NCSG|Non-Commercial Stakeholders Group]] (NCSG)''<ref name="IGP Strawman"></ref> | |||
* Where there are domain labels that have been found to be the subject of previous abusive registrations (e.g., as a result of a UDRP or court proceeding), a limited number (up to 50) of these may be added to a Clearinghouse record (i.e., these names would be mapped to an existing record for which the trademark has already been verified by the Clearinghouse). Attempts to register these as domain names will generate the Claims notices as well as the notices to the rights holder. | |||
: ''Represents significant policy development outside of accepted and traditional processes, according to the [[NCSG|Non-Commercial Stakeholders Group]] (NCSG)''<ref name="IGP Strawman"></ref> | |||
The “Limited Preventative Registration” mechanism, or the aforementioned universal registration blocking across all gTLDs, was discussed at the meeting and while not part of the Strawman Solution it "remains a high priority item for the [[IPC]]/[[BC]]. Consequently, ICANN sought public comment on it separate from the Strawman Solution.<ref name="TMCH Public Comments"></ref> ICANN received about 85 emails and letters in response to the solution.<ref>[http://forum.icann.org/lists/tmch-strawman/ TMCH Strawman, Forum.ICANN.org]Retrieved 18 Jan 2013</ref> | |||
===Chehadé Concedes Mistake on Strawman=== | |||
In a meeting with registries and registrars in Amsterdam on January 25th 2013, ICANN CEO [[Fadi Chehadé]] claimed that the biggest mistake yet of his 4 months as CEO was convening the meetings that led to the Strawman Proposal. At that time the proposal was still open for public comments and had not been rescinded, and a complaint by [[Maria Farrell]] of the [[NCUC|Non-Commercial Users Constituency]] had been filed with the [[ICANN Ombudsman]]. He notes that the speed at which they were addressing issues at ICANN was inevitably leading to mistakes, and that in his case he seems to have admitted to not appreciating the development process to create ICANN policy.<ref>[http://domainincite.com/11732-industry-man-chehade-admits-strawman-mistake Industry Man Chehade Admits Strawman Mistake, DomainIncite.com]Published and Retrieved Jan 25 2013</ref> | |||
===Implementation=== | |||
In March 2013, Mr. Chehadé announced that a number of points of the strawman solution have been classified as "implementation" and therefore do not need to be sent back to the [[GNSO]] as policy development. These include: a mandatory 30-day notice period before sunrises begin; Trademark claims extended from 60 to 90 days; a provision to allow Trademark owners to add up to 50 confusingly similar strings to their Trademark Clearinghouse records, the strings are deemed confusingly similar if they have been proven as such via a successful [[UDRP]] complaint.<ref>[http://domainincite.com/12334-icann-to-adopt-most-of-the-new-gtld-strawman ICANN to Adopt Most of the New gTLD Strawman, DomainIncite.com] Retrieved 31 March 2013</ref> | |||
==Other Models== | |||
[[Melbourne IT]] has proposed an anti-cybersquatting plan, called Minimizing HARM (High At-Risk Marks), which was inspired by the abandoned [[Globally Protected Marks List]], [[ICM Registry]]’s Sunrise B policy, [[.CO Internet]]’s launch program, and recent proposals from the intellectual property community. The plan looks to protect trademarks from the outset, asking the Trademark Clearinghouse to flag a certain subset of trademarks meeting certain requirements as High At-Risk Marks, which would receive special protections. These protections include: | |||
* Qualification for a “Once-off Registration Fee," which, like .xxx's Sunrise B, allows trademark holders to pay a one-time fee to block their exact-match domain names. | |||
* Anyone attempting to register an exact-match domain name would have to have two sets of contact information verified before the domain name could go live. | |||
* The Trademark Claims service, which alerts trademark holders when someone tries to register a domain containing one of their brands, would last indefinitely, instead of the standard 60 days after the gTLD goes into general availability. | |||
* Rapid take down (within 48 hours) of a [[Uniform Rapid Suspension]] (URS) complaint, unless a Response Fee is paid, which would be equivalent to the URS fee paid by the complainant. | |||
Trademarks must meet the following strict requirements in order to qualify for HARM: | |||
* Proof that the company has trademark protection on the brand in three of ICANN's five geographic regions for at least five years. | |||
* The company must demonstrate that their marks are particularly at risk for phishing and cybersquatting. One way to do so would be by having a minimum of five successful [[UDRP]] complaints or suspensions of infringing domains by a "top ten registrar." | |||
* Marks will need to obtain a minimum total of 100 points, where one point is awarded for each legal protection in a jurisdiction, and for each successful UDRP, court action, or domain registrar suspension undertaken in relation to the mark. | |||
Also blocked would be dictionary words from any of the UN’s six official languages.<ref>[http://www.thedomains.com/2012/08/20/melbourne-it-suggests-special-domain-protections-for-high-at-risk-marks-in-new-gtlds/ Melbourne IT Suggests Special Domain Protections For “High At-Risk Marks” In New gTLD’s, thedomains.com]</ref><ref>[http://domainincite.com/10176-whats-wrong-with-melbourne-its-new-anti-cybersquatting-plan What’s wrong with Melbourne IT’s new anti-cybersquatting plan?, domainincite]</ref> | |||
== References == | == References == | ||
<div style="column-count:2;-moz-column-count:2;-webkit-column-count:2"> | |||
{{reflist}} | {{reflist}}</div> | ||
[[category: Glossary]] | [[category: Glossary]] | ||
[[category: ICANN Bodies]] | [[category: ICANN Bodies]] | ||
__NOTOC__ | __NOTOC__ | ||