[governance] ICANN Trademark Clearinghouse: Preregistration Rights Only For Those Who Pay?

Tue Mar 26 02:09:12 EDT 2013

    ICANN Trademark Clearinghouse: Preregistration Rights Only For Those
    Who Pay?

Published on 26 March 2013 @ 3:01 am

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By William New <http://www.ip-watch.org/author/william/>, Intellectual 
Property Watch

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.

The Trademark Clearinghouse 
<http://newgtlds.icann.org/en/about/trademark-clearinghouse> (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 /Intellectual Property Watch/.

Having their data recorded in the Clearinghouse, Deloitte consultant 
Jonathan Robinson explained to /Intellectual Property Watch/, "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.

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.

Clearinghouse No Fix for Mismatch

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.

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.

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.

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.

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.

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."

Obliged to Pay for Trademark Protection?

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.

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.

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.

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.

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.

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.

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.

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.

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