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Full TMCH database published by registry?

Kevin Murphy, March 17, 2014, 17:02:46 (UTC), Domain Policy

DotBerlin seems to have published the full list of trademarks and other strings protected by the Trademark Clearinghouse.

The list, published openly on nic.berlin as the .berlin new gTLD went through its sunrise period, contains 49,989 .berlin domain names that the registry says are protected.

Neither the TMCH nor DotBerlin have yet responded to a request for comment, so I can’t be 100% certain it’s the TMCH list, but it certainly appears to be. You can judge for yourself here (pdf).

UPDATE: DotBerlin told DI that it is “not the full list but part of a registry-reserved names list” that was published “accidentally” and has now been removed from its web site.

The DotBerlin web site calls the list “MarkenSchutzEngel-Domains” which I believe translates to something like “Trademark Guardian Angel Domains”.

While the TMCH says it has 26,802 listed marks, the document published by DotBerlin seems to also include thousands of strings that are protected under the “Trademark +50” rule.

That allows companies that have won UDRP complaints to have those domains’ second-level strings added to their TMCH records. I see plenty of UDRP’d domains on this list.

The list also seems to include hundreds, possibly thousands, of variant strings that put hyphens between different words. For example, Santander appears to have registered:

a-bank-for-your-ideas
a-bank-for-yourideas
a-bank-foryour-ideas
a-bank-foryourideas
a-bankfor-your-ideas
a-bankfor-yourideas
a-bankforyour-ideas
a-bankforyourideas

I spotted dozens of examples of this, which is permitted under ICANN’s TMCH rules.

There are 2,462 internationalized domain names on the list.

I gather that the full TMCH list today is over 50,000 strings, a little larger than the DotBerlin document.

I took the liberty of comparing the list to a dictionary of 110,000 English words and found 1,941 matches. Strings such as “fish”, “vision”, “open”, “jump” and “mothers” are all protected.

A listing in the TMCH means you get the right to buy a domain matching your mark during new gTLD sunrise periods. Anyone else trying to register a matching name will also generate a Trademark Claims notice.

According to some registries I’ve spoken to today, the TMCH forbids the publication of the full database under the contract that all new gTLD registries must sign.

I’ve no idea whether the publication of a list of .berlin names means that DotBerlin broke its contract.

While the TMCH rules were being developed, trademark owners were adamant that the full database should not be published and should not be easily reverse engineered.

They were worried that to publish the list would reveal their trademark enforcement strategies, which may leave them open to abuse.

(Hat tip to Bart Mortelmans of bNamed.net for the link.)

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Comments (13)

  1. Benny says:

    The link to the PDF are now dead.. !

  2. John Berryhill says:

    “I gather that the full TMCH list today is over 50,000 strings, a little larger than the DotBerlin document.”

    Given that the TMCH includes duplicates due to concurrent trademark registrations by different parties, or by parties who submitted the same mark in different jurisdictions, one would expect a list of unique TMCH strings to be smaller than the number of TMCH entries.

    However, I do not know .Berlin’s sunrise implementation. If .Berlin were to reserve all unique strings in the TMCH against registration, and if .Berlin were to publish its reserved domain list, that is not a “publication of the TMCH”. It is a publication of registry-reserved names.

    • Kevin Murphy says:

      Well, I did say 50,000 “strings” not “marks”, which would take the dupes into account.

      It does appear from the DotBerlin site that the company, as you say, has reserved the TMCH list from registration now that it’s going to GA — above and beyond the regular RPM protections.

      • John Berryhill says:

        In which case, and as noted in a comment below, it is inaccurate to say that DotBerlin has published a “TMCH string list”.

        As everything on the list ends in “.berlin”, the list appears to be a proposed domain reservation list. Publication of its own reserved name list would be something a registry is clearly allowed to do.

  3. Tom Barrett says:

    This is probably the list of strings eligible for trademark claims.

    • Kevin Murphy says:

      I think the “Guardian Angel” thing is different — DotBerlin seems to have reserved these names for three months.

  4. We have deleted the file from our server since it was not intended to publish it at this time. We were discussing ways to extend trademark protection in light of the dismal acceptance of the TMCH so far, both internally and with registrars, and accidentally published the drafts of part of a registry-reserved names list we prepared. We decided not to pursue this idea any further. Sorry for the confusion.

    • John Berryhill says:

      Whether or not .berlin proceeds with “MarkenSchutzEngel” domains, I for one look forward to falling in love again with DerBlaueEngel domains.

    • Accidentally or not, the document is still available on the link in the article. Furthermore, all of our TMCH applications plus labels are included, many of which have no particular reason to be reserved by dotBerlin at all, unless it is related to the TMCH.

  5. John Berryhill says:

    It would be interesting to know how many of these names are not even registered in .com.

  6. Jim says:

    No surprise, but holy crap are some of those “trademarks” ridiculous.

    Someone really thinks they have the exclusive right to use the words “Joy and Happiness”?

    It’s like some kind of parody.

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