<html>
<head>
<meta http-equiv="content-type" content="text/html; charset=ISO-8859-1">
</head>
<body text="#000000" bgcolor="#FFFFFF">
<h2 class="posttitle"> ICANN Trademark Clearinghouse:
Preregistration Rights Only For Those Who Pay? </h2>
<small>Published on 26 March 2013 @ 3:01 am</small>
<p class="postmetadata"> <span class="st_facebook_buttons"
st_title="ICANN Trademark Clearinghouse: Preregistration Rights
Only For Those Who Pay?"
st_url="http://www.ip-watch.org/2013/03/26/icann-trademark-clearinghouse-preregistration-rights-only-for-those-who-pay/"
displaytext="share"></span><span class="st_twitter_buttons"
st_title="ICANN Trademark Clearinghouse: Preregistration Rights
Only For Those Who Pay?"
st_url="http://www.ip-watch.org/2013/03/26/icann-trademark-clearinghouse-preregistration-rights-only-for-those-who-pay/"
displaytext="share"></span><span class="st_email_buttons"
st_title="ICANN Trademark Clearinghouse: Preregistration Rights
Only For Those Who Pay?"
st_url="http://www.ip-watch.org/2013/03/26/icann-trademark-clearinghouse-preregistration-rights-only-for-those-who-pay/"
displaytext="Email"></span><span class="st_sharethis_buttons"
st_title="ICANN Trademark Clearinghouse: Preregistration Rights
Only For Those Who Pay?"
st_url="http://www.ip-watch.org/2013/03/26/icann-trademark-clearinghouse-preregistration-rights-only-for-those-who-pay/"
displaytext="Share"></span> <span class="printthis"><a
href="http://www.ip-watch.org/2013/03/26/icann-trademark-clearinghouse-preregistration-rights-only-for-those-who-pay/print/"
title="Print This Post" rel="nofollow"><img
class="WP-PrintIcon"
src="cid:part1.08050902.02020308@gmail.com" alt="Print This
Post" title="Print This Post" style="border: 0px;"></a> <a
href="http://www.ip-watch.org/2013/03/26/icann-trademark-clearinghouse-preregistration-rights-only-for-those-who-pay/print/"
title="Print This Post" rel="nofollow">Print This Post</a>
</span> </p>
<p>By <a href="http://www.ip-watch.org/author/william/"
title="Posts by William New" rel="author">William New</a>,
Intellectual Property Watch</p>
<p>Starting today, trademark owners from around the world will be
able to have their rights recorded in the Trademark Clearinghouse
of the Internet Corporation for Assigned Names and Numbers
(ICANN). Designed to help trademark owners manage the flood of new
internet domains being launched by ICANN, it’s an open question
whether they will be satisfied with it. <span id="more-27607"></span></p>
<p>The <a
href="http://newgtlds.icann.org/en/about/trademark-clearinghouse"
target="_blank">Trademark Clearinghouse</a> (TMCH), active on 26
March at California-based ICANN, was created in an effort to
prepare for a wave of new top-level domains (TLDs) expected to go
live over the coming years. More choice for users from hundreds of
new address zones like .web, .paris or .xinwen could result in
chaos for trademark owners, Jan Corstens, partner at Deloitte, the
chosen provider for the TMCH, told <em>Intellectual Property
Watch</em>.</p>
<p>Having their data recorded in the Clearinghouse, Deloitte
consultant Jonathan Robinson explained to <em>Intellectual
Property Watch</em>, “does not secure them their name in every
single registry. Every single registry will have its own policy.”
One registry policy might limit registration in a zone to entities
based in Africa, for instance, while another might only be open to
a certain language or community group.</p>
<p>At the same time, where registration is open to everybody, a
rights owner might face a long list of records in the TMCH for the
same mark. Auction, the experts say, might in the end be the
fairest way to decide about who will be able to register the name
during what is called the sunrise phase.</p>
<p>Clearinghouse No Fix for Mismatch</p>
<p>Sunrise phases were introduced for the first launches of new TLDs
10 years ago to allow trademark owners to run first and stem the
tide of domain grabbers and name pirates – but it came at a huge
difficulty for the registries inexperienced in checking the
validity of marks. Deloitte has trained over a hundred experts to
be able to check the validity of marks in (nearly) every country
on earth, Corstens said, though, “Will I get marks in Urdu and
from Ethiopia in different scripts?,” he did not know.</p>
<p>Checking the validity of the mark and allowing nationally or
internationally (and court-) registered trademarks to sit in a
global database which is managed under a separate contract by IBM
is the core service of the TMCH. The Clearinghouse “does not
create new rights,” Robinson underlined. It is, so to speak, no
fix for the fundamental mismatch between the domain name system
which secures universality for one domain name owner only and the
trademark system that allows for protection in national or
regional areas and under different classes.</p>
<p>What the Clearinghouse offers is validation and additional
services in a special environment which do not come with classical
trademark rights, Corstens said. Besides the sunrise service,
there is a trademark claims service – a kind of early warning
system to a registrant aiming at registering a trademarked name
not taken earlier.</p>
<p>The registrant after acknowledging he has been notified – with a
dispute ongoing if IP addresses for this session can be stored by
the registrars under strict EU data protection legislation – can
still continue with registration, but cannot claim anymore to not
be aware of the protection. If the domain is registered, the right
owner is notified and can choose what to do, the experts said.</p>
<p>Trademark owners would have liked to extend this kind of service
indefinitely, but ICANN CEO Fadi Chehade just announced that while
ICANN will extend the claims service 90 days into the general
registration phase, the organisation would let go an extended
“Claims 2” provision.</p>
<p>A possible result, said Torsten Bettinger, domain and trademark
law expert and WIPO Uniform Dispute Resolution Procedure (UDRP)
panellist: “Violation of the trademark right will then happen
after 90 days.” Bettinger expects no further changes in the short
run, if not governments will step up for more protection yet
again. Changes to trademark services in the future are possible,
said Robinson, who also acknowledged that some trademark owners
might never be fully satisfied “to that extent that there is a
group of people who always want more.”</p>
<p>Obliged to Pay for Trademark Protection?</p>
<p>Reaction to the TMCH services from rights owners is not yet
clear. How many will record their marks and pay US$145 per domain?
Starting from 1000 trademarks or three-year registration a
discount is offered. Robinson said that the records are obligatory
to be eligible for sunrise pre-registration.</p>
<p>It is still up to interpretation, said Johannes Lenz-Hawliczek,
spokesman for dot.berlin, if registries could also acknowledge
pre-registration rights for non-TMCH recorded marks. “We think you
can provide for that in your registration policy,” he wrote in
reply to questions from Intellectual Property Watch.</p>
<p>On the other hand, the registration policy also could make TMCH
validation a pre-condition for sunrise rights, Bettinger argued.
“The whole issue is, ICANN left it to the registries, what they
will do,” he said.</p>
<p>A question also addressed down the road will be whether ICANN
will allow trademark owners to choose from a variety of Trademark
Clearing Services and have competition in the field. ICANN’s
management retroactively settled for a hard split between the
service provider (Deloitte) and the database provider (IBM),
negotiating a separate contract with IBM. With the database of
recorded trademarks under direct contract, ICANN has paved the way
for opening up competition on the service level, even if it is
still very much open if the organisation will go for it.</p>
<p>Deloitte Partner Corstens points to the need to first evaluate
the potential impact on consistency of validation and integrity of
data if there is are more validating agencies. Also the currently
capped flat-rate pricing would have to be reconsidered, Corstens
said. If another provider for example only offered services to an
easy-to-validate niche, Deloitte could be compelled to reduce the
price in the developed countries, and raise the price for more
cost-intensive developing countries, something ICANN tried to
avoid in the first place.</p>
<p>In the short run, all parties seem to be looking for some
stability in the ever-moving target of the new gTLD process.
Chehade appealed to the community not to challenge the latest
proposals he made with regard to the process, including a 30-day
notice period before sunrise and the extension of the trademark
claim service to abuse names. With the first 30 non-Latin TLDs
just through the ICANN’s general evaluation report, the first TLDs
could go be introduced to the root zone in early summer, according
gTLD Director Christine Willet.</p>
<p>So will a lot of TLDs start their sunrise phase soon? Yes, said
Willet, if there are no competing applications and the string is
“in contention,” if it does not have any objection and if it was
not a recipient of GAC advice, they could go on to pre-delegation
testing and contracting with ICANN. These are some ifs to
consider.</p>
<p>What an “if” could look like can be seen in the first list of the
“Legal Rights Objection” that is addressed at the WIPO Arbitration
and Mediation Centre where the globally operating pharmaceutical
companies Merck KGaA (Germany) and Merck & Co. (US) try to get
their names as a TLD respectively.</p>
<p> </p>
</body>
</html>