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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.

Almost 15,000 trademarks registered in TMCH

Kevin Murphy, November 4, 2013, Domain Services

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

Kevin Murphy, November 4, 2013, Domain Services

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

Kevin Murphy, October 15, 2013, Domain Services

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

Kevin Murphy, October 7, 2013, Domain Registries

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.