Trademark Clearinghouse

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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 originally estimated that the TMCH would become operational in October 2012. It was announced that 9 applicants were being vetted to provide services. 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.

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.

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.

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.

The full breakdown of pricing and fee structuring can be seen 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.

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.

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 Intellectual Property Constituency and the 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.

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 Non-Commercial Stakeholders Group (NCSG).

Criticisms

Senators Patrick Leahy and Chuck Grassley and Congressional Representatives Lamar Smith and John Conyers issued an August 7 letter critizing ICANN's approach to new gTLDs. They criticized ICANN's level of New GTLD outreach, stating that "many members of the public outside the ICANN community are unaware that the New gTLD program is underway" and go on to note that those who are aware are not given adequate time and information to participate. The letter also highlighted demands from IP interests that ICANN systematically offer stronger rights protection mechanisms on the new gTLDs, such as a permanent Trademark Clearinghouse service rather than the existing policy, which only required the Clearinghouse be available the first sixty days after a registry launches. It has also been revealed that the IP community would like the Trademark Clearinghouse to include exact trademark matches as well as mark+keyword records.

On September 19, 2012, Chehadé sent a letter in return, where he said explained that the 60-day period was reached through a "multi-year, extensive process with the ICANN community" and therefore would not be in ICANN's power to unilaterally extend. He also noted that the Trademark Clearinghouse is "intended to be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights."

According to ICANN vice chairman Bruce Tonkin, if groups pushing for stronger new gTLD trademark protection mechanisms could identify five areas of consensus, at least two could be made before new gTLDs go live in 2013. According to Tonkin and Domain Incite, one area of agreement is an extension of the aforementioned Trademark Claims service, beyond the mandated sixty days. He also says that a faster and cheaper URS system could be implemented.

Alternative Model

In October, 2012 a coalition of the world's most prominent registries, Neustar, ARI Registry Services, Verisign and Demand Media jointly proposed two models for the mandatory new gTLD Sunrise period and Trademark Claims service that differ from ICANN’s. To excerpt their letter:

"This proposed model simplifies the ICANN model by decreasing the coupling between the Trademark Clearinghouse (TMCH) and registries. The model is as follows:

1. The TMCH generates and maintains a global public-private key pair and provides the public key to the registrars and registries. This can be done simply by publishing the public key on the TMCH website. This website should be provided over HTTPs using a digital certificate from a reputable certificate authority. The DNS records associated with this website should be protected using DNSSEC. We believe that there are no issues with security of the public key and anyone in the world can have access to it.
2. Once the TMCH has authenticated the trademark information provided by the trademark holder, and validated the use requirements for eligibility to participate in sunrise, the TMCH signs the sunrise (trademark) data with its private key. The digitally signed information is referred to as the ‘Signed Mark Data’ (SMD) and is provided to the mark holder. Typically, this would be in the form of a file download from the TMCH website. The SMD includes all of the domain labels (domain names) possible to be used in registrations for the validated trademark (IDN variants excluded).
3. As each TLD begins its sunrise phase, the mark holder selects a registrar and provides the registrar with the SMD as part of an application for a name within the applicable sunrise period. The registrar (or its reseller) has the ability, if it chooses to, to validate the information using the TMCH public key and then forward the information to the registry to create the application.
4. The registry verifies the signature of the SMD with the public key and verifies that one of the labels within the SMD matches the domain label being registered. The registry may also then verify any other information in the SMD to ensure it is consistent with the registry’s sunrise eligibility policies. The application, or domain name, is then created.
5. At the closure of the sunrise round, the registry operator will then make allocations of domain names.
6. The registry notifies the TMCH of the registered domain names for the purpose of notifying mark holders about the fact that a name was registered that matches their mark as well as reporting purposes. These notices will be referred to as ‘Notification of Registered Name’ notices (NORN). We believe that a daily upload of registered names to the TMCH is sufficient for the purpose of generating NORN notices.

This solution also works for those that are conducting ‘first come – first served’ style sunrise processes."

Brussels Meeting

In early November 2012, Chehadé invited a group of business, IP, and noncommercial users, along with registrar and registry stakeholder groups, to discuss Clearinghouse-related issues. At the private Brussels meeting, he seemed to have eased up a slight bit from his previous response to work with the community on many new agreements. Resolutions and decisions for ICANN which stemmed from this meeting include:

• Registration: How registration recording and verification are addressed

1. Agreeing to map out trademark submission and verification components
2. Developing a new system to offer timely and accurate information on new gTLD launches
3. Implementing seminars between implementers and various users

• Sunrise Management: How to use Sunrise data files and offer flexibility for rights holders

1. Offering model in which Clearinghouse data can be provided securely to rights holders for early sunrise registration
2. Giving details on the degree of "matching" between a Clearinghouse record and a domain name's Whois data.

• Claims Management: How new gTLDs registries and registrars will facilitate Clearinghouse records during the registration process

1. Agreeing to hybrid system of decentralized and centralized system for Trademark Claims
2. Offering trademark claims service for at least first 60 days of general registration and all new gTLD registries must offer a minimum 30-day sunrise period
3. Decided not to implement measures to address the potential mining of the Clearinghouse database for purposes not related to rights protection, on the basis that most controls would be ineffective

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.

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 45th public meeting, ICANN leadership met with invited representatives of the Intellectual Property Constituency, the 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.

The fact that the meeting was even taking place and that ICANN executives were signaling that they would implement policy outside of standard Policy Development Processes, which would demand consensus created within the GNSO, was troubling to many in the community. This significantly added to the import of the recent debate in ICANN over implementation vs. policy development.

The process was started after a letter sent from the 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:

• 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 Non-Commercial Stakeholders Group (NCSG)

• 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 Non-Commercial Stakeholders Group (NCSG)

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. ICANN received about 85 emails and letters in response to the solution.

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 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.

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.

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.