Trademark clearinghouse — Brilliant, right?

Up on the roof

Arbitrary splash of color; notional opportunity for far-fetched “domain” pun waived

Domain-name stuff makes me dizzy.  It could be all those acronyms. Or it could be the troubling way disputes are handled under the UDRP, at least as described by my friend Paul Raynor Keating.  If you do UDRP work all the time, you already know about the Trademark Clearinghouse.  But if you rely on LIKELIHOOD OF CONFUSION® for all your trademark learning — in which case, we have to talk — it’s time to catch up.  This sounds like a pretty good idea, no?:

[O]ver 1400 new generic top-level domains (gTLDs) should become available on the Internet starting [April] 2013. More than half will be open to register domain names. Given this situation, companies must carefully consider how to adapt their digital strategy and prepare for the new landscape.

The Trademark Clearinghouse (TMCH): what is it?

The TMCH is a centralized database of registered trademarks where rights owners can submit their eligible trademarks prior to and during the launch of new gTLDs.

The TMCH has two distinct functions in the new gTLD program: the Sunrise service and the Trademark Claims service. …

The Sunrise service is a period of at least 30 days that must be offered by all new gTLD registries during which eligible trademark owners can register domain names matching their trademarks before domain names are offered to general public. In order to benefit from the system, trademark owners have to provide proof of use of their trademarks.

The Trademark Claims service is a notification service that provides notice to a potential domain name registrant that a domain name registration matches a trademark in the TMCH. Such notification is not blocking but alerts the applicant that it could infringe trademark. In case of litigation, proof of bad faith by the applicant is facilitated as it will not be in a position to allege that it was unaware of the existence of the trademark’s right. If the registration is completed after all, the trademark owner is notified of said registration during at least the first 60 days of the general registration period of any new gTLD.

At least in theory, it sounds smart, provide not only monitoring but a way to systematically address some of the ridiculous games that end up getting played concerning a domain registrant’s knowledge and bad faith in UDRP proceedings.  As to the Sunrise service,  you can just see the land-rush possibilities afoot here, but the official take on this is the service is being tailored narrowly:

These two services only apply to identical matches that is to say domain names, which consist of complete and identical textual elements of the trademark. The matching rules are strict. Only spaces, punctuations or other IDN-impermissible characters (!, +, =) may be omitted or replaced by hyphens. The signs @ and & may be replaced by a hyphen, omitted or translated into the applicable language(s) corresponding to the language of the trademark’s right jurisdiction.

It’s never really all that simple, though, is it?  The way the Trademark Clearinghouse works, naturally, has been the subject of some debate.   Criticsim from the domain registry “community” seems to be well represented in the material collected and discussed by Chris White in this article.  Then, in November, there’s this dramatic action described by Robin Gross, Chair of ICANN’s Noncommercial Stakeholders Group (NCSG), coming from, well, the “stakeholders” — i.e., people who have trademarks and want more control over the domain registration process:

DISSECTING THE STRAWMAN: ICANN’S 11TH HOUR TRADEMARK POLICY NEGOTIATIONS

On November 15-16 2012, ICANN organized a meeting in Los Angeles to consider the implementation of the Trademark Clearinghouse for new top level domains. Pressure by trademark and business interests, however, expanded the scope of the meeting to consider 8 demands to strengthen trademark protections in new top level domains. The letter with the 8 demands was sent to the ICANN board and senior staff on 16 October, 2012.

The good news is that the most dangerous proposal was defeated.  The IPC-BC’s proposal to block Internet domain name registrations based on trademarks was unequivocally rejected by the meeting participants.  Given the lack of any support outside the IPC-BC proponents, the participants did not include the blocking mechanism as a possible policy at this time. . . .

But there’s bad news, and ugly news, too — you have to read the article and also know a lot of domain-world inside baseball and, yes, acronyms, to follow.  The last third of the article, though, can be followed even by a simple schoolboy, such as LIKELIHOOD OF CONFUSION®, who promises to prove that real soon.  Naturally, anything this funky in trademarks is going to have a Mike Masnick post to go with it, right?  Of course right; his piece features the usual coy hint as to where he’s going buried deep within the title, which in this case is “ICANN Boss: We’re Not Ready To Launch These Half-Baked New gTLDs, So Let’s Launch Them“:

We’ve talked about the fact that the whole “generic top level domain” (gTLD) process was hopelessly corrupt, as it was more or less driven by those who sought to profit from the system — folks who ran (or hoped to run) domain registration offerings. And, the entire thing seemed based around getting a ridiculous amount of money to launch these new TLDs and then run around convincing companies they need to pay up for new domains before someone else snaps them up.

Did I say something about “sounds like a good idea”?  Don’t listen to me.  I’m the guy who predicted five years ago that, with the advent of powerful content searching, domain names would be irrelevant by now.  And I’m not still sure why I was wrong.  Or if I am.

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Author:Ron Coleman

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