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TMCH extends Trademark Claims indefinitely, kinda

Kevin Murphy, December 11, 2013, 15:45:02 (UTC), Domain Services

The Trademark Clearinghouse is to give the intellectual property lobby something that it’s been crying out for for years — an indefinite extension of parts of the Trademark Claims service.
And it’s going to be free.
Trademark Claims is a mandatory service for all new gTLD operators, sending pre-registration warnings to registrants and post-registration alerts to mark owners whenever a domain matching a trademark is registered.
But it only runs for 90 days, per the ICANN new gTLD contracts, which TMCH project director Jan Corstens said is IP owners’ “number one complaint” about the system.
So the TMCH is going to extend the post-registration alerts half of the service indefinitely.
When the first new gTLDs officially end their Claims periods next year, the TMCH will continue to send out alerts to mark owners (or, in 90% of cases, their registrar “agents”) when matching domains are registered.
Would-be registrants will only receive their pre-registration warnings for the original 90-day period.
Corstens said that the pre-registration side of Claims would only be possible with the cooperation of registries and registrars, and that there’s a lot of reluctance to help out.
“A lot of them are not really interested in doing that,” he said. “I understand it takes work, and I understand they think it could demotivate potential registrants.”
Trademark owners that have directly registered with the Clearinghouse, rather than going through an agent, will get the extended service for no added charge.
However, Corstens made it clear that the TMCH is not trying to compete with registrars — such as MarkMonitor and Melbourne IT — that already offer zone file monitoring services to trademark owners.
“We know the market exists,” he said. “It’s not our intention to become a monopoly. We will deliver it to them, of course, and assume they can integrate with it.”
Agents will be able to plug the service into their existing products if they wish, he said.
There are a few initial limitations with the new TMCH service such that its registrar agents may not find it particularly labor-saving.
First, only domains that exactly match labels in the Clearinghouse will generate alerts.
By contrast, brand-monitoring registrars typically generate alerts when the trademark is a substring of the domain. To carry on doing this they’ll need to carry on monitoring zone files anyway.
Second, the TMCH service only currently covers new gTLDs applied for in the 2012 round. It doesn’t cover .com, for example, or any other legacy gTLD.
Corstens said both of these limitations may be addressed in future releases. The first Trademark Claims period isn’t due to end until March, so there’s time to make changes, he said.
He added that he hopes the extension of Claims will lead to an uptick in the the number of trademarks being registered in the TMCH. Currently there are about 20,000.

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Comments (7)

  1. Reg says:
    December 11, 2013 at 8:18 pm

    “And it’s going to be free.” To whom? Registries are required to pay every time they ping the TMCH during sunrise. Do they not have to pay outside of sunrise (truly free, but unlikely since I doubt that the TMCH is doing this out of the kindness of their hearts)? Or is it “free” only to markholders?

    Reply
    • Kevin Murphy says:
      December 11, 2013 at 8:27 pm

      My understanding is that the registries don’t need to do anything. I believe TMCH is scraping zone files for this and that the revenue opportunity is in increased trademark submissions. I might be wrong, but that’s currently my take.

      Reply
      • Reg says:
        December 13, 2013 at 7:56 pm

        Thanks for the extra legwork on this. It’ll be interesting to see whether or not this gets more people to register in the TMCH.

        Reply
        • Kevin Murphy says:
          December 13, 2013 at 8:02 pm

          I’m currently much much more convinced that my initial take was correct. TMCH wants more trademark submissions and is not trying to bilk registries.

          Reply
  2. Siemen Roorda says:
    December 11, 2013 at 8:33 pm

    From TMCH: “The service will only be available to trademark holders recording marks into The Trademark Clearinghouse and comes at no additional cost.”
    Right – no *additional* cost. Additional to the annual renewal of the TMCH registration maybe. A good way to ensure revenue after the 90-days claims period of the last TLD is over.

    Reply
  3. Eric Talaska says:
    March 22, 2014 at 12:23 am

    If someone registers a domain name in general availability that has a trademark notice, can that trademark holder tell ICANN or the Registrar they decided they now want it within 60 days and then the original owner loses the domain??

    Reply
    • Rubens Kuhl says:
      March 22, 2014 at 3:07 pm

      Nope, the trademark holder will need to file an UDRP if that’s applicable considering all UDRP criteria, not only “this is my mark”.

      Reply

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