Trademark Clearinghouse

The Trademark Clearinghouse (TMC or TMCH) is a database of trademarks that will be established by ICANN in order to enhance the protection of intellectual property on the Internet. 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. 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. Use of the TMCH is required for all new gTLD registries.

ICANN estimates that the TMCH will become operational in October 2012. Currently there are five companies out of nine original applicants in the running for TMCH operator; ICANN expects to make its final decision in February. On June 8, 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.

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.

Structure

The Trademark Clearinghouse is divided into two branches.

Validation Centre

The Trademark Clearinghouse's Validation Centre authenticates intellectual property rights (IPR) claims through research. The TMCH also helps applicants to rectify mistakes made in their IPR validation request. Each IPR validation request is assigned with a unique case number. Cases may be awarded with the status of "Verified," in which case the case is transferred to the Data Centre using EPP/XML. The validation centre also periodically revalidates already-verified cases stored in the data centre.

The TMCH is unbiased in its researching, and does not reject IPR validation requests simply on the basis that the same term is already owned in their system by another party.

Data Centre

The Data Centre holds all "Verified" IPR cases. A reference number is applied to each case that works as an identification number for the term and owner. The Data Centre also saves copies of all cases in escrow and operates in a database known as the ‘WhoHas,’ in which third parties can access the Data Centre's records. It also supports accredited registrars by providing them a case reference number to be used in a registration request. It also provides registries a list of the "Verified" cases that meet the eligibility requirements of for registry. It also supports the IP Claims process by sending out the necessary information whenever a third party applies for a "Verified" term that is stored in the Data Centre. The Data Centre doesn’t award the domain name registration, nor does it prioritize any 'Verified' case over the others.

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.

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.

Uniform Domain Name Dispute Resolution Policy