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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions