Holder-agency interface aims for Q1 2013 opening
In 2013, the Internet will welcome new generic top-level domains (gTLDs). What does this mean? We may eventually type domains like dot-apple, dot-acer and dot-accountant as well as today’s dot-com, dot-ca and dot-edu. Proponents claim these gTLDs may open the door to greater economic opportunity and choice.
Other people claim they may lead to trademark disputes. For instance, who should “own” the dot-apple domain? A co-operative of apple growers? The Apple that made your iPhone? Apple Auto Glass? Another Apple entirely?
To prevent as many disputes as possible, Internet Corp. for Assigned Names and Numbers (ICANN) is creating a trademark clearinghouse. Mark holders (or their agents) will submit marks for the clearinghouse to verify.
Once marks are verified, the clearinghouse provides rights protection measures. It will alert registered mark holders should a gTLD application match the mark. Also, registry operators can check new second-level domain applications with the clearinghouse marks database.
Holders of verified marks can also access dispute resolution services, customer support (a hotline and web ticketing tool) and other services yet to be determined.
ICANN claims this clearinghouse eliminates the need for trademark holders to register their marks in multiple databases as TLDs are launched. In effect, the clearinghouse should serve as a one-stop trademark infringement prevention shop.
Just like the emergence of gTLDs, the clearinghouse is clearly a work in progress. An Oct. 17 ICANN meeting in Toronto called “Trademark Clearinghouse Implementation Update” left attendees with as many questions as answers.
ICANN enlisted consulting firm Deloitte to create the clearinghouse, which was demonstrated at the meeting. It consisted of a series of forms in which holders or agents can enter a trademark at a time for ICANN to verify. (A “bulk upload” mechanism is under development.)
Once a user clicks “Add Mark,” the verification process begins, and once the mark is verified, the user receives both sunrise notifications and trademark claim notifications.
While few people expect the clearinghouse to fully prevent fraud, the meeting panel made mention of two teams of people who will review all applications.
The cost to run the clearinghouse will be split among mark holders, agents and registrars. Although specific fees weren’t mentioned, mark holders were advised to budget a maximum of $150 per mark registration.
Jeremiah Johnston hopes the clearinghouse works as intended. “People don’t waste their time on domains that don’t make them money,” said Johnston, general counsel for domain marketplace Sedo Holding Group. “If you eliminate the opportunity and incentive and ability for them to make money with the name, your brand won’t get targeted.”
Experts temper such hope with specific criticisms. Karen Monteith, a Clark Wilson trademark agent, points out the lack of a “defensive blocking mechanism” associated with the clearinghouse. “Brand owners would like to see defensive blocking at the second level for new gTLDs,” she says.
Monteith sees the limitation to exact marks and registered marks as a drawback. “If you have a pending application, it might not issue the registration before the sunrise period for a gTLD that you think is applicable,” she says.
“As a brand holder, you’ll still need some sort of domain watch for marks that aren’t exact matches.”
Chris Bennett figures the sunrise periods will give Canadian trademark holders pause. “You have to file a declaration of use and provide evidence of use,” says the Vancouver-based Davis LLP intellectual property lawyer. “That isn’t required in Canada even to get a trademark registered.”
“I can get a mark registered in Canada based on a foreign registration,” Bennett continues, “without the mark having been either used or registered in Canada. That’s the case in other countries as well.”
Important questions also remain. “If a term is a strong trademark in America but is a trademark elsewhere for a completely unrelated company, how will those concurrent rights get resolved?” Johnston wonders.
The October release of an alternate trademark clearinghouse proposal questions parts of ICANN’s design. For instance, the proposal pans the sunrise codes that ICANN’s clearinghouse will generate. “They want instead to see a model that uses public key infrastructure (PKI) encryption certificates instead,” says Monteith. The rationale: mark holders would need one PKI certificate per mark instead of one sunrise code per mark per TLD.
Such technical details may come to pass, since the clearinghouse is still months from completion. Notes from the Oct. 17 session mention a first-quarter, 2013 go-live date for the trademark holder/agent interface. No go-live date was given for the registry interface.
ICANN plans to provide training sessions for clearinghouse users. In the meantime, more information can be found at trademark-clearinghouse.com. The gTLD applicant guidebook (a free download from newgtlds.icann.org) explains the clearinghouse’s roles in context of the full gTLD initiative. This site also offers the Alternate Trademark Clearinghouse Proposal for download. Regular news updates appear at MyICANN.org.
This article originally published in Lawyers Weekly Magazine. For a PDF of the print version, see below.
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