TMCH extends Trademark Claims indefinitely, kinda

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.

Almost 15,000 trademarks registered in TMCH

The new gTLD program’s Trademark Clearinghouse has almost 15,000 trademarks registered, according to a spokesperson.
We’re told today that there’s an average of about two labels for each registered mark, and that about half of all the marks have been registered for multiple years.
The TMCH offers registrations for one, three or five years.
Trademarks in non-Latin scripts currently account for just 3% (so roughly 450) of the registrations, which may be a cause for concern given that IDNs gTLDs will be many of the first to launch Sunrise periods.
The TMCH spokesperson added that registrations of “previously abused labels”, under what we used to call the Trademark+50 policy, are currently “low” because the service was only recently launched.

Trademark Clearinghouse: early bird pricing ends tomorrow

Trademark owners take note: you have less than 24 hours to get your marks registered in the Trademark Clearinghouse if you want to take advantage of early bird discounted pricing.
A TMCH spokesperson told DI today that the early bird offer ends at 1200 UTC November 5. Its “agents” (registrars) were notified a week ago and today were given a final 24-hour grace period, she said.
This may come as something of a surprise to mark owners who haven’t been paying attention.
When the Clearinghouse went live in March, the TMCH said that the early registration offer would end when the first Sunrise period for the first new gTLD went live.
At the time, ICANN rules stated that registries would have to give 30 days notice before launching a Sunrise.
But these rules recently changed, giving registries the ability to launch immediately as long as the Sunrise runs for at least 60 days rather than the original 30.
And with dotShabaka Registry, one of the first four new gTLDs to go live, opting for the 60-day Sunrise, that means early bird pricing is ending sooner than might have been expected.
Rather than direct discounts, the early bird offer instead awards extra “status points” that can be accumulated to secure lower bulk registration prices.
Trademark owners would have to submit quite a lot of trademarks, or use an agent that is passing the discounts on to its customers, in order to qualify for the lower prices.

Trademark+50 costs $75 to $200 a pop

The Trademark Clearinghouse has started accepting submissions under the new “Trademark+50” service, with prices starting at about $76.
It’s now called the Abused DNL (for Domain Name Label) service.
It allows trademark owners to add up to 50 additional strings — which must have been cybersquatted according to a court or a UDRP panel — to each record they have in the TMCH.
To validate labels found in court decisions, it will cost mark owners $200 and then $1 per abused string. For UDRP cases, the validation fee is $75.
If you’re on the “advanced” (read: bulk) fee structure, the prices drop to $150 and $50 respectively.
To add a UDRP case covering 25 domains to the Abused DNL would cost $100 in the first year and $25 a year thereafter, for example.
Adding a trademark to the TMCH costs between $95 and $150 a year, depending on your fee structure.

First-come, first-served sunrise periods on the cards

New gTLD registries will be able to offer first-come, first-served sunrise periods under a shake-up of the program’s rights protection mechanisms announced a week ago.
The new Trademark Clearinghouse Rights Protection Mechanism Requirements (pdf) contains a number of concessions to registries that may make gTLD launches easier but worry some trademark owners.
But it also contains a concession, I believe unprecedented, to the Intellectual Property Constituency that appears to give it a special veto over launch programs in geographic gTLDs.
Sunrise Periods
Under the old rules, which came about following the controversial “strawman” meetings late last year, new gTLD registries would have to give a 30-day notice period before launching their sunrise periods.
That was to give trademark owners enough time to consider their defensive registration strategies and to register their marks in the Trademark Clearinghouse.
The new rules give registries more flexibility. The 30-day notice requirement is still there, but only for registries that decide to offer a “Start Date” sunrise period as opposed to an “End Date” sunrise.
These are new concepts that require a bit of explanation.
An End Date sunrise is the kind of sunrise we’re already familiar with — the registry collects applications for domains from trademark owners but doesn’t actually allocate them until the end of the period. This may involve an auction when there are multiple applications for the same string.
A Start Date sunrise is a relative rarity — where registrations are actually processed and domains allocated while the sunrise period is still running. First-come, first-served, in other words.
This gives more flexibility to registries in their launch plans. They’ll be able to showcase mark-owning anchor tenants during sunrise, for example.
But it gives less certainty to trademark owners, which in many cases won’t be able to guarantee they’ll get the domain matching their mark no matter how wealthy they are.
Under the new ICANN rules, only registries operating a Start Date Sunrise need to give the 30 days notice. These sunrise periods have to run for a minimum of 30 days.
It seems that registries running End Date Sunrises will be able to give notice the same day they start accepting sunrise applications, but will have to run their sunrise period for at least 60 days.
Launch Programs
There was some criticism of the old RPM rules for potentially limiting registries’ ability to run things such as “Founders Programs”, getting anchor tenants through the door early to help promote their gTLDs.
The old rules said that the registry could allocate up to 100 names to itself, making them essentially exempt from sunrise periods, for promotional purposes.
New gTLD applicants had proposed that this should be expanded to enable these 100 names to go to third parties (ie, “founders”) but ICANN has not yet given this the green light.
In the new rules, the 100 names still must be allocated to the registry itself, but ICANN said it might relax this requirement in future. In the legalese of the Registry Agreement, it said:

Subject to further review and analysis regarding feasibility, implementation and protection of intellectual property rights, if a process for permitting registry operators to Allocate or register some or all of such one hundred (100) domain names (plus their IDN variants, where applicable) (each a “Launch Name”) to third parties prior to or during the Sunrise Period for the purposes of promoting the TLD (a “Qualified Launch Program”) is approved by ICANN, ICANN will prepare an addendum to these TMCH Requirements providing for the implementation of such Qualified Launch Program, which will be automatically incorporated into these TMCH Requirements without any further action of ICANN or any registry operator.

ICANN will also allow registries to request the ability to offer launch programs that diverge from the TMCH RPM rules.
If the launch program requested was detailed in the new gTLD application itself, it would carry a presumption of being approved, unless ICANN “reasonably determines that such requested registration program could contribute to consumer confusion or the infringement of intellectual property rights.”
If the registry had not detailed the program in its application, but ICANN had approved a similar program for another similar registry, there’d be the same presumption of approval.
Together, these provisions seems to give registries a great deal of flexibility in designing launch programs whilst making ICANN the guardian of intellectual property rights.
Geo gTLDs
For officially designated “geographic” gTLDs, it’s a bit more complicated.
Some geographic gTLD applicants had worried about their ability to reserve names for the governments backing their applications before the trademark owners wade in.
How can the .london registry make sure that the Metropolitan Police obtains police.london before the Sting-fronted pop group (or more likely its publisher) snaps up the name at sunrise, for example?
The new rules again punt a firm decision, instead giving the Intellectual Property Constituency, with ICANN oversight, the ability to come up with a list of names or categories of names that geographic registries will be allowed to reserve from their sunrise periods.
It’s very unusual — I can’t think of another example of this happening — for ICANN to hand decision-making power like this to a single constituency of the Generic Names Supporting Organization.
When GNSO Councillors also questioned the move, ICANN VP of DNS industry engagement Cyrus Namazi wrote:

In response to community input, the TMCH Requirements were revised to allow registry operators the ability to submit applications to conduct launch programs. In response to the large number of Geo TLDs who voiced similar concerns, the IPC publicly stated that it would be willing to work with Geo TLDs to develop mutually acceptable language for Geo TLD launch programs. We viewed this proposal as a way for community members to work collectively to propose to ICANN a possible solution for an issue specifically affecting intellectual property rights-holders and Geo TLDs. Any such proposal will be subject to ICANN’s review and ICANN has expressly stated that any such proposal may be subject to public comment in which other interested community members may participate.

While ICANN is calling the RPM rules “final”, it seems that in reality there’s still a lot of work to be done before new gTLD registries, geo or otherwise, will have a clear picture of what they can and cannot offer at launch.

Registrars given access to Trademark Clearinghouse

Accredited registrars on older contracts can now get access to the Trademark Clearinghouse for testing purposes, ICANN announced last night.
Previously, ICANN was only handing out credentials to registrars on the new 2013 Registrar Accreditation Agreement, but many registrars complained that this didn’t give them time to evaluate the TMCH and the RAA at the same time.
ICANN had originally argued that the restriction made sense because the TMCH is used only for new gTLDs, and registrars must have signed the 2013 RAA to sell new gTLD domains.
But feedback from registrars has helped it change its mind. ICANN said:

all ICANN accredited Registrars, not just those that have signed the 2013 Registrar Accreditation Agreement (RAA), will be able to request registration tokens and start testing their systems with the Trademark Clearinghouse database before it must begin its authenticating and verifying services for trademark data.

Instruction for signing up for TMCH testing can be found here.

Teething troubles for TMCH testing

With the first new gTLD delegation likely just a matter of weeks away, registries and registrars are reporting problems getting access to the Trademark Clearinghouse for testing purposes.
ICANN launched an OT&E (operational test and evaluation environment) for companies to test their systems against the IBM-run TMCH back-end last week, but few have so far managed to get in.
Some registrars have been denied access because they have not yet signed the 2013 Registrar Accreditation Agreement.
While that’s a prerequisite for selling new gTLD domains, some say it should not also be a barrier to testing their TMCH implementation before they decide to sign on the dotted line.
At least one registrar that has actually signed the 2013 RAA also says it has been denied access.
Meanwhile, several back-end applicants and back-end registry providers have reported that they too have been told they can’t access the OT&E until they’ve signed the 2013 RAA.
Registries are of course not obliged to sign any RAA in order to act as registries.
Others say they’ve received the credentials needed to access the OT&E but that they don’t work.
ICANN has blamed a mix-up in its workflow for the registries getting blocked, something it expects to get fixed quickly. It’s also looking into the complaints from registrars.
The TMCH is the database that registries and registrars will use to validate trademarks during sunrise periods, and to check for possible cybersquatting during the first few months of launch.

dotShabaka Diary — Day 2

This is the second in DI’s series following the progress of شبكة. applicant dotShabaka Registry as it prepares to be one of the first new gTLD registries to launch.
The following journal entry was written by dotShabaka general manager Yasmin Omer:

Date: Saturday 10 August 2013
It has been nearly a month since we signed our Registry Agreement with ICANN and we are still confused about TMCH Integration Testing, which is a concern given it’s now seven weeks out from ICANN’s first delegation date.
Whilst we have access to the Sandbox LORDN file test environment, ICANN happened to mention that the ‘OT&E environment’ is available in this week’s webinar. That’s new information.
We still have no idea what the process is for TMCH integration testing or how we access the environment. Are there test cases? What’s the schedule?
The lack of information is a concern as we need to pass TMCH Integration to provide Sunrise notice. Let’s hope it’s not as complicated as PDT.
In other news, we received an email from Wendy Profit (Registry Product Manager) yesterday. It’s the first formal email we have received since signing our contract nearly a month ago.
The email contained a copy of the contract and a spreadsheet for contact details. Not sure if Wendy is indeed our account manager or if we even have one. We have sent an email asking her the same. Clearly we have a few questions for an Account Manager once we get one.

You can read past and future entries in this series here.

dotShabaka wants to be the first new gTLD to launch, but big problems remain

Having been the first to sign a contract with ICANN two weeks ago, new gTLD registry dotShabaka is also desperate to be the first to launch, but faces big obstacles.
The company, International Domain Registry, is a spin-off of AusRegistry, with many of the same directors and staff, but executives insist it is an entirely separate entity and will become more so with time.
It was awarded, uncontested and unobjected, the Arabic TLD شبكة., which means “.web” and transliterates to “.shabaka”. It will do business under the trading name dotShabaka Registry.
According to the Registry Agreement published by ICANN last week, it was signed on July 13, one day before the other three registries to so far get contracts.
“It was a lot of work to make sure we were the first to sign, and we intend to be the first to delegation,” general manager Yasmin Omer told DI last week.
“The best-estimate timeline published by ICANN in Durban is our timeline, that’s our target,” she added.
The timeline she’s referring to (pdf) is the one that says the first new gTLD could hit the root as early as September 5, with the first Sunrise period kicking off a month later.
Omer is slightly less optimistic about the timing, however, saying that “mid-September” is looking more likely, due to the requirements of the Pre-Delegation Testing period that dotShabaka is currently in.
The company is doing preliminary PDT work right now and expects to start testing properly in the first week of August.
But PDT is not the only thing standing in dotShabaka’s — and other new gTLD applicants’ — path to delegation.
Right now, the Trademark Clearinghouse and the 2013 Registrar Accreditation Agreement are the big barriers, Omer said.
TMCH requirements not ready
The TMCH is a problem because ICANN has still not finalized the TMCH’s RPM Requirements document, a set of rules that each new gTLD registry must adhere to in their Sunrise and Trademark Claims phases.
“A group within NTAG and the Registries Stakeholder Group has been negotiating this document with ICANN for some time now, going back and forth,” Omer said. “It’s all fine for those who intend on launching later on, but this document has yet to be finalized and that really harms us.”
A draft of the Requirements document (pdf) was published in April, and Omer said she expects ICANN to take a more up-to-date draft to public comment.
A standard 42-day comment period, starting today, would end mid-September.
As we reported in April, the Requirements raises questions about whether registries would, for example, be able to create lists of reserved premium domains or whether trademark owners would always get priority.
dotShabaka faces an additional problem with the TMCH because its gTLD is an Arabic string and there are been very little buy-in so far from companies in the Arabic-speaking world.
A couple of weeks ago, TMCH execs admitted that of the over 5,000 trademarks currently registered in the TMCH, only 13 are in Arabic.
In Durban, they said that the TMCH guidelines were not yet available in Arabic.
Part of the problem appears to be that a rumor was spread that the TMCH does not support non-Latin scripts, which executives said is not remotely true.
With so little participation from the Arabic trademark community, an early شبكة. launch could mean a woefully under-subscribed Sunrise period — 30 days to protect just a handful of companies.
“There’s no knowledge of the TMCH in the region,” Omer said.
“We’re currently putting our heads together to think of mechanisms to overcome this,” she said. “We don’t just want to be first to delegate and have it sit there idly, we want to be first to market as well.”
dotShabaka has been doing its own press in the region and claims to have taken thousands of expressions of interest in the gTLD, indicating that there is a market if awareness can be raised.
Registrars are a problem
Signing the 2013 Registrar Accreditation Agreement is a requirement for any registrar that want to sell new gTLDs, and that includes IDNs. Only seven registrars have publicly signed it to date.
According to Omer, the 2013 RAA’s stricter requirements are “not helping us in the region”.
Its provisions related to insurance can be “prohibitive to those located to those located in North Africa and the Middle East”, she said by way of an example.
In addition, there are only about seven accredited registrars in the region, all on older RAA versions, she said.
dotShabaka has already signed up Go Daddy and others to carry شبكة., so getting the TLD into the channel is not a problem.
But while Go Daddy will have an Arabic landing page for the TLD it will not have a full Arabic-language registration process and shopping cart ready in time for شبكة.’s planned launch window launch.
This makes me wonder whether there’s a risk that domain savvy Westerners are more likely to get a crack at the best شبكة. names before the Arab world is fully aware of the launch.
But Omer said that dotShabaka is doing its own outreach and that it’s committed to improving the “horrible” online experience for Arabic speakers that exists today.
“It’s not just about the TLD, it’s about the cause, it’s about an Arabic internet,” she said. “Yes there are issues and yes there are barriers, but we want to build more robust Arabic domain name market.”

Trademark Clearinghouse cutting it fine for new gTLD launches

The Trademark+50 rights protection mechanism for new gTLDs is late, potentially complicating the lives of trademark professionals.
During a session with registries and registrars at ICANN 47 in Durban today, executives from IBM and Deloitte, which are managing the Trademark Clearinghouse, laid out their go-live expectations.
The TMCH is the central repository of trademark records that will support the mandatory Sunrise periods and Trademark Claims services during new gTLD launches.
Trademark+50 is the system approved by ICANN earlier this year that will also trigger Claims notices for up to 50 strings trademark owners have won at UDRP or in court.
IBM and Deloitte said that they hope to have a Sunrise sandbox ready for registry testing by the end of July, with a production environment live by August 9 and Claims following a month later.
These were hopes, not commitments, they stressed.
When asked about Trademark+50, an IBM representative acknowledged that it had to be ready before any new gTLD started its Claims period but said it is going to take “months” to implement.
“It’ll be in time, it’ll be before Claims start,” he said.
“It’s probably going to be difficult to reach before the middle of September,” another TMCH exec said. “We know it cannot be the week before Claims starts, it cannot be two weeks or three weeks before Claims starts.”
ICANN still hasn’t finalized its set of requirements for Trademark+50, but the TMCH executives said they hope to get that settled in Durban this week, possibly this evening.
So what’s going to be impact of the expected TMCH go-live schedule? It doesn’t seem likely to delay the launch of the first new gTLDs.
ICANN doesn’t expect the first Trademark Claims period to begin until November, which gives the first registries two months to test their systems against Trademark+50. Tight, but doable.
The real impact might be on trademark owners.
ICANN’s current earliest projection for a new gTLD being delegated is September 5. On that date, the first registry could choose to give trademark owners the 30-day mandatory Sunrise warning.
So the first Sunrise period would start October 5 or thereabouts.
That’s where it starts getting tricky.
See, the TMCH’s early bird pricing ends the day the first Sunrise period begins, so there’s certain to be a mad rush by trademark owners to get their trademarks registered in the first week of October.
Even if many brands aren’t too worried about being protected in the IDN gTLDs that will launch first, they’ll want to secure the discount if they have a large portfolio of trademarks.
And history has shown most trademark owners leave Sunrise registrations to the last minute. That’s why pretty much every Sunrise period to date has been extended — the registry can’t cope with the influx.
In the case of the TMCH, however, they’re also going to be battering a Trademark+50 system that’s been in production for no more than a couple of weeks and will, software being software, likely be full of bugs.
It could get messy.
“When IP owners find out that this is not going to be in production a week or two or a few weeks before the first [new gTLD] goes into Claims, they’re going to go ballistic,” Neustar VP Jeff Neuman said at the session today.
At the very least, it looks like trademark owners will have only a brief window to add their extra strings — which could amount to hundreds in many cases — to their TMCH records before the first Sunrise.
That scenario is mostly speculation, of course, based on a first delegation date that ICANN admits is “hypothetical” and the TMCH’s tentative schedule outlined today.
IBM and Deloitte execs are expected to provided a fuller explanation of the current state of play during a dedicated session in Durban on Wednesday at 11am local time.