United States: Update On The New gTLD Trademark Clearinghouse "Strawman Solution"

Last Updated: April 3 2013
Article by Brian J. Winterfeldt

With the first delegations of new generic top-level domains (gTLDs) potentially just weeks away, organizations should be continuing to consider how to best protect their valuable trademarks and brands in the expanding Internet space. Although ICANN included several new rights protection mechanisms in the new gTLD program, most notably the Trademark Clearinghouse (TMCH) and Uniform Rapid Suspension System (URS), brand owners have been expressing concerns that the proposed mechanisms are still not adequate to address the potential for significant increases in online infringement as a result of the growth in the number of Internet registries.

In late 2012, following discussions with brand owners and other ICANN community stakeholders over the course of several months, ICANN proposed its Trademark Clearinghouse Strawman Solution for improved rights protection mechanisms for new gTLDs, and held a public comment period. After consideration of the public comments, ICANN announced that it intends to implement three of the five original Strawman proposal elements. The three components, explained below, are:

  1. A 30-day notice requirement for Sunrise periods
  2. A 90-day period for Trademark Claims
  3. Trademark Claims protection for previously abused names

In addition, ICANN encouraged the Generic Names Supporting Organization (GNSO), the body that develops global policy for the domain name system, to proceed with work in the area of Limited Preventative Registration (LPR). Please find below background information on the Trademark Clearinghouse (TMCH) program, a discussion of the improved rights protection mechanisms and the practical implications for rights holders, and an update from the ICANN CEO on the gTLD program schedule and contract negotiations.

Background on the Trademark Clearinghouse

The TMCH will allow a brand owner to submit its trademark details into a centralized database and enable the rights holder, after verification, to participate in the Sunrise program and Trademark Claims service across all eligible new gTLDs. The Sunrise program will provide a rights holder the opportunity to register domain names corresponding to its trademark before registration in the gTLD is open to the general public. The Trademark Claims service will provide a rights holder the option to be notified when someone else registers a domain name in the gTLD that matches its record in the TMCH. ICANN has announced that the TMCH will open for submissions on March 26, 2013 and that it plans to be delegating the first new TLDs in April 2013.

Proposals to be Implemented and Practical Implications

  • Sunrise Notice Requirement: ICANN intends to require all new gTLD operators to publish the Sunrise dates and requirements at least 30-days in advance of the Sunrise period. The implementation of this proposal will allow rights holders to anticipate and prepare for upcoming TLD launches.
  • Extended Claims Period: ICANN intends to extend the current Trademark Claims period, as described in the Applicant Guidebook, from 60-days to 90-days. During this period, anyone attempting to register a domain name matching a TMCH record must first acknowledge a notice display of the mark before the registration may proceed. If the potential registrant proceeds, the rights holder will receive notice of the registration. The implementation of this proposal will help inform consumers on the presence and role of trademarks.
  • Claims Protection for Previously Abused Names: ICANN intends to allow rights holders to include up to 50 domain labels to its TMCH records that were found to be the subject of abusive registrations. The implementation of this proposal will provide rights holders greater protection for trademarks that they have successfully enforced in disputes under court proceedings or the Uniform Domain-Name Dispute-Resolution Policy (UDRP). While it is too early to speculate on the precise details for additional abused names, we suspect they will be considered "Additional Domains" for the purposes of the TMCH pricing structure.

Proposals Not to be Implemented at this Time

  • Additional "Claims 2" Period: ICANN announced that it does not intend to implement a proposed "Claims 2″ service that would have allowed trademark owners, for an additional fee, to receive Trademark Claims alerts for a further six to twelve months after the Claims period concludes.
  • Limited Preventative Registration: While ICANN announced that it does not intend to implement the LPR proposal at this time, it encourages the GNSO to proceed with work in the area. The LPR mechanism would have allowed rights holders to temporarily defensively register non-resolving domains across all new gTLDs for a one-time flat fee.

Strawman Analysis and Updates on ICANN's Schedule and Contract Negotiations

ICANN has published a full summary and analysis of public comments on the Strawman Solution and a video of ICANN CEO Fadi Chehadé discussing milestones and deadlines related to new gTLDs, the Strawman, and related topics. In the video, Mr. Chehadé states that ICANN is on track to begin publishing the first results of new gTLD initial evaluations this Friday, March 22, but mentioned that ICANN might miss its April 23 target for approving the first new gTLDs if applicants and registrars do not agree on the proposed Registrar Accreditation Agreement and Registry Agreement. Mr. Chehadé encouraged all parties to work together to find common ground on the agreements.

Conclusion and Next Steps

There will be many developments in 2013 concerning protection and enforcement of trademarks and brands on the Internet. With the launch of the new TLDs an impending reality, it is important for brand owners to begin careful consideration of how to adapt their current Internet enforcement strategies to prepare for this new landscape. The TMCH is one important mechanism that will contribute to the protection of trademark and brand owners' rights as ICANN embarks on an aggressive plan to expand the Internet with a thousand or more new TLDs. With the TMCH opening for submissions very shortly, and the first new gTLD delegations also approaching in the near future, all brand owners should assess their trademark portfolios to determine priorities for TMCH registrations and potential participate in sunrises. The TMCH has released its Guidelines for Submission detailing the information that will need to be submitted to enter trademark registrations into the TMCH, although please note that this guide will soon be updated to include several improved rights protection mechanisms described above.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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