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Over half a million Trademark Claims notices served

Kevin Murphy, March 25, 2014, Domain Services

The Trademark Clearinghouse has delivered over 500,000 Trademark Claims notices and prevented over 475,000 trademarked names from being registered, according to the TMCH.

The 500,000 number announced in a press release today seems to refer to pre-registration warnings that the name about to be registered matches a trademark in the TMCH database.

Three weeks ago the TMCH said it had served 17,500 post-registration notices to trademark owners in just one month. I’m inferring that this number is now up to over 25,000.

Half a million appears to be an awfully big number, especially when compared to the number of active domain names in new gTLDs, which today stands at just over 347,000.

The TMCH said today that 95% of these notices led to the name not being registered, which it said shows the success of the Claims system.

It could also mean that it’s having the “chilling effect” predicted by opponents of the process, with legitimate registrants being scared away from non-infringing uses of registered marks.

There are plenty of dictionary words in the Clearinghouse — some that match legitimate brands, some which are simply attempts to game sunrise periods and obtain potentially valuable names.

There are currently over 28,000 marks in the TMCH database.

TMCH sends out 17,500 Trademark Claims notices in a month

Kevin Murphy, March 3, 2014, Domain Services

Wow.

Just four weeks after the first new gTLDs went into general availability, the Trademark Clearinghouse has already sent out over 17,500 Trademark Claims notices to trademark owners.

A Claims notice is a warning that is generated whenever somebody registers a domain name that exactly matches a trademark listed in the TMCH’s database.

The 17,500 number refers to post-registration notices sent to trademark owners, not pre-registration warnings delivered to would-be registrants.

Considering that there are somewhere in the region of 180,000 domain names in new gTLDs today, 17,500 represents a surprisingly high percentage of the market (high single figures).

Of course, not all of these will be due to cybersquatting attempts.

There are plenty of marks in the TMCH that are acronyms or dictionary words, either because they match a genuine brand or because somebody obtained trademarks on generic terms in order to game sunrise periods.

I’d count those as false positives, personally, but it’s impossible to know without access to TMCH data how many of the 17,500 alerts delivered to date can be accounted for in that way.

There are 26,802 marks in the TMCH, according to the company.

New gTLD launches: registrar coverage at less than 40% of the market

Kevin Murphy, January 7, 2014, Domain Registrars

Registrars representing less than 40% of the gTLD market are ready to offer new gTLDs during their launch phases, according to the latest stats from ICANN.

ICANN released yesterday a list (pdf) of the just 21 registrars that have signed the 2013 Registrar Accreditation Agreement and have been certified by IBM to use the Trademark Clearinghouse database.

Signing the 2013 RAA is a requirement for registrars that want to sell new gTLDs. Almost 150 registrars are currently on the new contract.

But being certified for the TMCH is also a requirement to sell names during the first 90 days of each new gTLD’s general availability, when the Trademark Claims service is running.

Together, the 21 registrars that have done both accounted for 59 million registered gTLD domain names (using August’s official numbers), which translated to 39.5% of the gTLD market.

It’s a high percentage due to the presence of Go Daddy, with its 48.2 million gTLD names. The only other top-10 registrar on the list is 1&1.

Twelve of the 21 registrars on the list had fewer than 40,000 names under management. A couple have fewer than 100.

Only one new gTLD, dotShabaka Registry’s شبكة., is currently in its Trademark Claims period.

The second batch, comprising Donuts’ first seven launches, isn’t due to hit until January 27, giving just a few weeks for the certified list to swell.

There’ll be 33 new gTLD in Claims by the end of February.

The rate at which new registrars are being certified by IBM is not especially encouraging either. Only four have been added in the last month.

Some registrars may of course choose to work via other registrars, as a reseller, rather than getting certified and doing the TMCH integration work themselves.

TMCH extends Trademark Claims indefinitely, kinda

Kevin Murphy, December 11, 2013, 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.

Trademarks still trump founders in latest TMCH spec

Kevin Murphy, August 7, 2013, Domain Registries

New gTLD applicants and ICANN seem to have failed to reach an agreement on how new registries can roll out founders programs when they launch.

A new draft of the Rights Protection Mechanism Requirements published last night, still appears to make it tricky for new gTLD registries to sell domain names to all-important anchor tenants.

The document (pdf), which tells registries what they must do in order to implement Sunrise and Trademark Claims services, is unchanged in many major respects from the original April draft.

But ICANN has published a separate memo (pdf) comprising a handful of asks made by applicants, which highlight where differences remain. Both are now open for public comment until September 18.

Applicants want text adding to the Requirements document that would allow them to give or sell a small number of domains to third parties — namely: anchor tenants — before and during Sunrise periods.

Their suggested text reads:

As set forth in Specification 5 of the Agreement, Registry Operator MAY activate in the DNS up to one hundred (100) names necessary for the operation and promotion of the TLD. Pursuant to these Requirements, Registry Operator MAY register any or all of such domain names in the TLD prior to or during the Sunrise Period to third parties in connection with a registry launch and promotion program for the TLD (a “Qualified Registry Launch Program”), provided that any such registrations will reduce the number of domain names that Registry Operator MAY otherwise use for the operation and promotion of the TLD as set forth in Specification 5.

The base new gTLD Registry Agreement currently allows up to 100 names to be set aside before Sunrise only on the condition that ownership stays in the hands of the registry for the duration of the registration.

Left unaltered, that could complicate deals where the registry wants to get early registrants through the door to help it promote its gTLD during the critical first few months.

A second request from applicants deals with the problem that Sunrise periods also might interfere with preferred allocation programs during the launch of community and geographic gTLDs.

An example given during the recent ICANN Durban meeting was that of the .london registry giving first dibs on police.london to the Metropolitan Police, rather than a trademark owner such as the Sting-fronted band.

The applicants have proposed to allow registries to request “exemptions” to the Requirements to enable this kind of allocation mechanism, which would be offered in addition to the standard obligatory RPMs.

Because these documents are now open for public comment until September 18, that appears to be the absolute earliest date that any new gTLD registry will be able to give its mandatory 30-day pre-Sunrise warning.

In other words, the hypothetical date of the first new gTLD launch appears to have slipped by a couple of weeks.