Trademark Clearinghouse fees to be capped at $150

Submitting your trademarks to ICANN’s forthcoming Trademark Clearinghouse will cost a maximum of $150 per mark, according to ICANN CEO Fadi Chehade.
In a new blog post, Chehade provides an update to its contract talks with IBM, which will provide the Clearinghouse back-end, and Deloitte, which will be the first submission agent.
It’s shaping up to mimic the registry-registrar model, mapped to the trademark world, and Chehade has confirmed that Deloitte will most likely have competition at the ‘registrar’ level:

Deloitte’s validation services are to be non-exclusive. ICANN may add additional validators after a threshold of minimum stability is met.

The fee for Deloitte to validate trademarks for inclusion in the Clearinghouse will be capped at $150, Chehade said, with discounts for multiple trademarks and multi-year registrations.
IBM will charge Deloitte and gTLD registries for database access on a per-API-call basis, but prices there have not yet been disclosed.
Chehade also provided an update on the so-called “straw man” solution to the trademark community’s unhappiness with the current strength of new gTLD rights protection mechanisms.
For the most part, the update is merely a procedural defense of the changes that ICANN wants to make to the Sunrise and Trademark Claims processes, such as the creation of a “Claims 2” service.
The argument is, essentially: “This isn’t policy, it’s implementation.”
ICANN “policies” have to go through community processes before becoming law, whereas “implementation” is somewhat more flexible. Things are often classified as implementation when there are pressing deadlines.
The one change identified by Chehade as possibly needing community work is the extension of Trademark Claims from trademarks only to trademark+keyword or typo registrations.
He said he plans to publish the full straw man model, which has been developed behind closed doors with selected members of the GNSO, later this week.

Straw man proposed to settle trademark deadlock at secretive ICANN meeting

Trademark interests seem to have scored significant concessions in their ongoing battle for stronger rights protection mechanisms in new gTLDs, following a second closed-doors ICANN meeting.
Following a two-day discussion of the Trademark Clearinghouse in Los Angeles late last week, ICANN CEO Fadi Chehade has published a “straw man” proposal for further discussions.
The straw man — if it is ultimately adopted — would grant the Intellectual Property Constituency and Business Constituency some of the things they recently asked for.
Crucially, they’d get the right to add keywords to the trademarks they list in the Trademark Clearinghouse, making them eligible for the Trademark Claims service.
There would be a test — a UDRP or court win concerning the string in question — for inclusion, and a limit of 50 brand+keywords or misspellings per trademark in the Clearinghouse.
The idea here is to help brand owners quickly respond to the registration of — but not preemptively block — domains such as “brand-industry.tld” or “brand-password-reset.tld”.
The Trademark Claims service would be extended from 60 to 90 days, under the straw man model.
Chehade’s blog post also outlines a “Claims 2” process that would run for six to 12 months after the launch of each new gTLD and would require trademark owners to pay an additional fee.
This Claims 2 service would not necessarily give registrants the same information about trademarks related to the domains they want to registry. Why not is anyone’s guess.
Here’s how Chehade described it:

Rights holders will have the option to pay an additional fee for inclusion of a Clearinghouse record in a “Claims 2″ service where, for an additional 6-12 months, anyone attempting to register a domain name matching the record would be shown a Claims notice indicating that the name matches a record in the Clearinghouse (but not necessarily displaying the actual Claims data). This notice will also provide a description of the rights and responsibilities of the registrant and will incorporate a form of educational add-on to help propagate information on the role of trademarks and develop more informed consumers in the registration process.

I’ve long been of the opinion that Trademark Claims service will not prevent most cybersquatting (determined bad actors will click through the notices as easily as you or I click through a software license agreement) and “Claims 2” appears to be a diluted version of the same lip service.
Claims 2 and the extension of the Clearinghouse to brand+keyword strings appears to be a step in the right direction for trademark owners, but I can’t see the changes substantially reducing their costs.
There’s also already opposition to the ideas from the Non-Commercial Stakeholders Group, according to this analysis of the straw man from NCSG chair Robin Gross.
The LA meeting rejected the notion of a preemptive cross-TLD trademark block list along the lines of the ICM Registry’s Sunrise B for .xxx, which is among the IPC/BC proposals.
The only change to Sunrise proposed in the straw man model is a mandatory 30-day notice period before the mandatory 30-day Sunrise kicks off, to give brand owners time to prepare.
In summary, the straw man proposal appears to create some marginal benefit for trademark owners at the expense of some additional cost and complexity for registries and registrars.
It would also create an entirely new rights protection mechanism — Claims 2 — out of whole cloth.
While no firm decisions appear to have been made in LA, it’s impossible for us to know for sure what went down because the meeting was held behind closed doors.
ICANN even enforced a Twitter ban, according to some attendees.
The meeting was the second private, invitation-only TMCH discussion in recent weeks.
While we understand there were remote participation opportunities for invited guests unable to attend in person, there was no opportunity to passively listen in to the call.
DI was told by ICANN there was no way for us to follow the talks remotely.
According to a number of attendees on Twitter, participants were also asked by ICANN not to tweet about the substance of the discussions, after complaints from trademark interests present.
The same attendees said that ICANN plans to publish a transcript of the meeting, but this has not yet appeared.
Considering that the issues under discussion will help to shape the structure of the domain name industry for many years to come, the lack of transparency on display is utterly baffling.

Trademark Clearinghouse “breakthrough” at private Brussels meeting

ICANN’s various stakeholder groups reached a “breakthrough” agreement on the Trademark Clearinghouse for new gTLDs, according to attendees at a closed-doors meeting last week.
The meeting in Brussels evidently saw attendance from members of the Business Constituency and Intellectual Property Constituency, in addition to the registries and registrars that have been involved in the development of the TMCH implementation model to date.
It was a discussion of nitty-gritty implementation details, according to attendees, rather than reopening the policy discussion on matters such as the mandatory Trademark Claims service period.
Crucially, ICANN appears to have dropped its strong objection to a community-developed proposal that would put the TMCH in the “critical path” for domain registrations.
The community proposal requires a centralized Clearinghouse serving Trademark Claims notices live rather than in a batch fashion, meaning up-time would be paramount.
Senior ICANN executives including chief strategy officer Kurt Pritz were adamant that this model would create an unacceptable single point of failure for the new gTLD program.
But CEO Fadi Chehade, who in Toronto last month appeared to disagree with Pritz, does not appear to have shared these concerns to the same deal-breaking extent.
In a blog post reviewing the meeting’s conclusions last night, Chehade wrote that the community has settled on a “hybrid” solution:

Participants reviewed the features of possible centralized and decentralized systems, and agreed to support a “hybrid” system for Trademark Claims. In this system, a file of domain name labels derived from the trademarks recorded in the Clearinghouse (and hence subject to a Claims Notice) would be distributed to all registries and updated on a regular basis, and a live query system would be used to retrieve the detailed data from the Clearinghouse when necessary to display the Claims Notice to a prospective registrant.

This description appears to closely match the community proposal (pdf) developed by the registries.
ARI Registry Services CTO Chris Wright, one of the key architects of the community TMCH proposal, made no mention of a “hybrid” solution in his update following the Brussels meeting.
According to Wright, “ICANN has tentatively agreed to proceed with the community-developed Trademark Clearinghouse”.
The meeting also concluded that there’s no way to provide blanket privacy protection for trademark data under Trademark Claims, something that has been worrying trademark holders for a while.
At a session in Toronto last month registries observed that the whole point of Trademark Claims is to provide information about trademarks to potential registrants.
That means it can be mined in bulk, and there’s not a heck of a lot registries can do to prevent that even with technical solutions such as throttling access.
Chehade blogged:

There was discussion on implementing an appropriate framework for access and use of the data. The group considered whether measures were necessary specifically to address potential mining of the Clearinghouse database for purposes other than to support the rights protection mechanisms. Given that the Trademark Clearinghouse is designed to provide trademark data for particular purposes, there was agreement that most controls would be ineffective in attempting to control data elements once provided to other parties.

So, how much community support do the Brussels agreements have?
The meeting was not webcast and there does not appear to be a recording or transcript, so it’s difficult to know for sure who was there, what was discussed or what conclusions were reached.
Concerns were expressed by members of the Non-Commercial Stakeholders Group, as well as the Internet Commerce Association, about the fact that ICANN did not widely publicize the meeting, which was first reported in an ICA blog post last week.
The ICA’s Phil Corwin also questioned whether key members of the IPC and BC — based on the US Eastern seaboard — would be able to attend due to Hurricane Sandy’s impact on air travel.
While there seems to be a feeling that solid progress on the Clearinghouse is definitely a positive development for the new gTLD program, the fact that the consensus was apparently reached behind closed doors does not appear to be in lockstep with Chehade’s commitment to increase transparency at ICANN.

Chehade sets out 12-point plan for next six months

ICANN CEO Fadi Chehade has set out his goals for ICANN over the next six months in an open letter to the community.
The ambitious 12-point to-do list includes finishing off the next Registrar Accreditation Agreement, finalizing the Trademark Clearinghouse, and launching “a community effort” to address the Whois debate.
The document was described by Chehade at the close of the Toronto meeting last month as his “scorecard” for “what I plan to prioritize and do between now and Beijing”.
The next big ICANN meeting is in Beijing next April.
The letter states that “operational excellence”, something the organization was frequently criticized for its lack of under its previous leadership, is ICANN’s “highest priority”.
The new gTLD program is naturally a big part of that. Chehade said that ICANN plans to:

Deliver on every aspect of the new gTLD program launch next year, meeting obligations and securing the necessary resources and personnel to lead the transition from what has been a policy-driven effort to implementation of a responsive and reliable operation. As a first step, we are working to advance the dialogue on implementation of the Trademark Clearing House. We must also execute the prioritization draw, evaluations, and pre-delegation tests flawlessly.

As part of that effort, a new gTLD services department will be created. Part of its task will be to monitor policy work to make sure the policies being created are “implementable”.
Chehade said that the divisive Whois issue, which he controversially referred to as an “easy” problem to solve during remarks in Toronto, will be subject to a new review:

To strengthen our commitment to the public interest, we will launch a community effort addressing the WHOIS debate in a strategic way, to resolve the longstanding open items in this area.

On the RAA, Chehade said that ICANN “will plan to reach consensus on a solid and enforceable Registrar Accreditation Agreement that is fair and balanced.”
The full letter, which also sets out goals for internationalization and the evolution of the multi-stakeholder model, can be downloaded here.

Trademark protection stalemate follows ICANN 45

Trademark interests and new gTLD applicants are at odds about trademark protection — again — following the ICANN meeting in Toronto two weeks ago.
In a welcomed, not-before-time show of cooperation, the Intellectual Property Constituency and Business Constituency submitted to ICANN a bulleted list of requests for improved rights protection mechanisms.
The list is, for the most part, not particularly egregious — calling for a permanent Trademark Claims service and a Uniform Rapid Suspension service that meets its cost goals, for example.
But the New TLD Applicants Group (NTAG), an observer component of the Registries Constituency, has dismissed it out of hand, anyway, saying that the time for policy changes is over.
Here’s the IPC/BC list:

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.
2. Extend the TMCH and Claims Notices for an indefinite period; ensure the process is easy to use, secure, and stable.
3. Complete the URS as a low cost alternative and improve its usefulness – if necessary, ICANN could underwrite for an initial period.
4. Implement a mechanism for trademark owners to prevent second-level registration of their marks (exact matches, plus character strings previously determined to have been abusively registered or used) across all registries, upon payment of a reasonable fee, with appropriate safeguards for registrants with a legitimate right or interest.
5. Validate contact information for registrants in WHOIS.
6. All registrars active in new gTLD registrations must adhere to an amended RAA for all gTLD registrations they sponsor.
7. Enforce compliance of all registry commitments for Standard applications.
8. Expand TM Claims service to cover at least strings previously found to have been abusively registered or used.

Most of these requests are not entirely new, and some have been rejected by the ICANN policy-development process and its board of directors before.
The NTAG points out as much in a letter to ICANN management last week, which says that new gTLD applicants paid their application fees based on promises in the Applicant Guidebook, which should not be changed.

Many of the BC & IPC proposed policy changes have been considered and rejected in no fewer than four different processes and numerous prior Board decisions. Indeed, many go far beyond the recommendations of the IRT, which was comprised almost exclusively of trademark attorneys. These last-minute policy recommendations amount to just another bite of the same apple that already has been bitten down to its core.
The new gTLD policy development process is over. Applicants relied on the policies in the final Guidebook in making business decisions on whether to apply. At the time that ICANN accepted applications and fees from applicants, ICANN and applicants entered into binding agreements. ICANN should not change these agreements unilaterally without extraordinary reason and especially not when it would materially harm the counterparties to the agreements.

The Applicant Guidebook, as it happens, asks applicants to explicitly acknowledge that ICANN may make “reasonable
updates and changes” to the rules, even after the application has been submitted.
But if applicants reckon changes would create a “material hardship”, ICANN is obliged to “work with Applicant in good faith to attempt to make reasonable accommodations in order to mitigate any negative consequences”

ICANN 45: Super-Fadi targets Trademark Clearinghouse and RAA talks

There can be no denying that ICANN’s new CEO was well received at the Toronto meeting last week.
From his opening speech, a sleeves-rolled-up address that laid out his management goals, and throughout the week, Fadi Chehadé managed to impress pretty much everybody I spoke to.
Now Chehadé has turned his attention to the formative Trademark Clearinghouse and the Registrar Accreditation Agreement talks, promising to bring the force of his personality to bear in both projects.
“I’m coming out of Toronto with two priorities for this year,” he said during an interview with ICANN’s media relations chief, Brad White, last Friday.
“The first one is obviously to get the Trademark Clearinghouse to work as best as possible, for all parties to agree we have a mechanism that can satisfy the interests of the parties.”
“The second one is the RAA,” he said. “Without question I’m going to be inserting myself personally into both these, including the RAA.”
These are both difficult problems.
Work on the TMCH hit a snag early last week when ICANN chief strategy officer Kurt Pritz told the GNSO Council that the “community consensus” implementation model proposed by registries presented a big problem.
The “live query model” proposed for the Trademark Claims service, which would require the TMCH to sit in the live domain registration path, should be taken “off the table”, he said.
ICANN is/was worried that putting a live database of trademark checks into the registration model that has functioned fairly well for the last decade is a big risk.
The TMCH would become a single point of failure for the whole new gTLD program and any unanticipated downtime, ICANN has indicated, would be hugely embarrassing for ICANN.
“I’m personally concerned that once you put the Clearinghouse in the path for that it’s very difficult to unring the bell, so I’d rather proceed in a way that doesn’t change that,” Pritz said.
His remarks, October 14, angered backers of the community model, who estimated that the live query model would only affect about 10% to 15% of attempted domain registrations.
“Taking it off the table is a complete mistake,” said Jeff Neuman of Neustar, one of the authors of the alternative “community” TMCH model.
“It is a proven fact that the model we have proposed is more secure and, we believe, actually looks out much more in favor of protecting trademark holders,” he said.
He noted that the community model was created in a “truly bottom-up” way — the way ICANN is supposed to function.
NetChoice’s Steve DelBianco, in a rare show of solidarity between the Business Constituency and the registries, spoke to support Neuman and the centralized community model.
“The BC really supports a centralized Trademark Clearinghouse model, and that could include live query,” DelBianco said. “I’m disturbed by the notion that an executive decision took it off the table.”
“My question is, was that the same executive decision that brought us the TAS and its glitches?” he added. “Was it the same executive decision process that gave us Digital Archery that couldn’t shoot straight?”
Pritz pointed out the logical flaw in DelBianco’s argument.
“The group that brought you TAS and Digital Archery… you want to put that in the critical path for domain names?” he said. “Our job here is to protect trademark rights, not change the way we register domain names.”
But Neuman and DelBianco’s dismay was short-lived. Within a couple of hours, in the same room, Chehadé had told the GNSO Council, in a roundabout sort of way, that the live query model was not dead.
Chehadé’s full remarks are missing from the official transcript (pdf), and what remains is attributed to GNSO Council chair Stephane Van Gelder, but I’ve taken a transcript from my own recording:

The very first week I was on the job, I was presented with a folder — a very nice little folder — and little yellow thing that said “Sign Here”.
So I looked at what I’m signing, as I normally do, and I saw that moving forward with a lot of activities related to the Trademark Clearinghouse as really what I’m being asked to move forward with.
And I’ll be frank with you, my first reaction was: do all the people who will be affected by this agreement… did we hear them all about this before we sign this? Are they all part of the decision-making that led us here?
And the answer was muddled, it was “Yes… and…”. I said: No, I want to make sure that we use the time we have in Toronto make sure we listen to everybody to make sure before I commit any party — any party — to anything, that this party is very much part of the process and part of the solution.

I know I wasn’t the only person in the room to wonder if the anecdote described an incident in which an ICANN executive attempted to pull a fast one on his new, green boss.
A day later, after private discussion with ICANN board and staff, supporters of the community TMCH model told me they were very encouraged that the live query model was still in play.
The problem they still face, however, is that the Intellectual Property Constituency — ostensibly representing the key customers of the TMCH — is publicly still on the fence about which model it prefers.
Without backing from the IPC, any TMCH implementation model would run the risk of appearing to serve contracted parties’ cost and risk requirements at the expense of brand owners.
Getting the IPC to at least take a view will likely be Chehadé’s first priority when it comes to the TMCH.
Finding common ground on the Registrar Accreditation Agreement could be an even more complex task.
While the bulk of the work — integrating requests from certain law enforcement agencies and the Governmental Advisory Committee into the contract — has been completed, Whois remains a challenge.
European registrars claim, in the light of correspondence from a EU privacy watchdogs, that implementing ICANN’s demanded Whois data re-verification and retention rules would make them break the law.
Registrars elsewhere in the world are less than impressed with ICANN’s proposed ‘opt-out’ solution, which would essentially create a two-tier RAA and may, they say, have some impact on competition.
Privacy advocates in Toronto told ICANN that if certain governments (largely, I suspect, the US) want their own local registrars to retain and re-verify Whois data, they should pass laws to that effect, rather than asking ICANN to enforce the rule globally.
The GAC told ICANN’s board of directors last Tuesday that the privacy letters emerging from the EU did not represent the views of the European Commission or the GAC, and nothing more was said on the matter.
How ICANN reacts to the European letters now seems to be rest with ICANN’s executive negotiating team.
While everyone at ICANN 45 seemed to be super-impressed by Chehadé’s competence and vision for sorting out ICANN, the other recurring meme is that actions speak louder than words.
During his first 40 days in the job he managed to persuade India into an about-face on its support for an intergovernmental replacement for ICANN, an impressive feat.
Can he chalk up more early wins by helping resolve the TMCH and RAA deadlocks?
“There’s frankly universal agreement that if I participate personally in these activities I would help these activities come to hopefully a reasonably conclusion that we can bank on,” he said in the White interview.

Strickling urges ICANN to bolster trademark protection for all gTLDs

US Department of Commerce assistant secretary Larry Strickling has called on ICANN to create more trademark protection mechanisms across new and existing gTLDs.
In a letter to ICANN yesterday, Strickling, head of the National Telecommunications and Information Administration, also expressed concerned about the slow progress on implementing the Uniform Rapid Suspension and Trademark Clearinghouse systems.
The URS has run into a problem because no provider ICANN has approached to date wants to run it for the $300 to $500 filing fee.
Meanwhile, the way ICANN plans to implement the Clearinghouse has been hit by criticism from registries, registrars and new gTLD applicants, many of which believe it is too inflexible.
Strickling told ICANN that “it is imperative that all fees associated with the URS remain low”, and suggested that cost savings could be achieved through integration with the Clearinghouse.
But he also called for stronger trademark protections in general, above and beyond what the ICANN community has already decided to implement.

Industry stakeholders have presented a variety of suggestions to reduce the cost of defensive registrations (e.g. trademark blocking mechanisms) and others have suggested enhanced safeguards for new gTLDs targeted at creative sectors.
While not taking a position in support of any specific proposal at this time, NTIA does believes that ICANN should continue and open and transparent dialogue between all actors in order to find solutions to these issues which have come into clearer focus since the release of the 1,930 applications this past June.

The letter was sent due to NTIA’s meeting with the 30-odd so-called “brand summit” companies — almost all household names — last month.
Among other things, they want the Clearinghouse to alert them whenever somebody registers a domain name containing their trademarks, instead of just exact matches.
The counter-argument from the domain industry is that such a proposal would create millions of false positives, due to dictionary words, run-ons and acronyms.
An example recently aired by attorney John Berryhill is the Yellow Pages trademark on “YP”, which would be triggered in the Clearinghouse whenever PayPal registered its brand as a domain name.
The brand summit companies also want a blanket trademark blocking system based on ICM Registry’s .xxx Sunrise B process, under which they pay a one-off fee to block their mark in a gTLD forever.
Opponents point out that such systems may be appropriate in single TLDs, but problems could arise when applied to all TLDs. Different companies have rights to the same strings in different fields.
Strickling appears to be aware of the problems that could be caused if the trademark community gets everything it wants. In the letter, he urges mutual understanding, writing:

Whatever process ICANN follows, trademark holders should provide clear, fact-based descriptions of the challenges they encounter in the global DNS and registries and registrars should clarify issues relating to the technical feasibility and costs of implementing any additional protections.

It’s a nice idea, but attempts to reach a sane solution have so far been unsuccessful.
Melbourne IT’s HARM proposal, which would give special rights to particularly vulnerable brands, was shot down by trademark owners as too limited during a meeting in Washington DC last month.

IP interests should join the Trademark Clearinghouse meeting on Tuesday

ICANN is to hold a webcast and teleconference next week to discuss alternative models for the new gTLDs Trademark Clearinghouse.
It will be the last time the community gets to discuss the issue before ICANN 45 kicks off in Toronto next weekend.
Neustar, ARI Registry Services, Verisign and Demand Media have jointly proposed two models for the mandatory new gTLD Sunrise period and Trademark Claims service that differ from ICANN’s.
While the proposals are enjoying general murmurs of support from the domain name industry side of the community, the trademark lobby has yet to have any substantial presence in the talks.
Most of the discussions to date have been hindered by this lack of input, and by a frustrating lack of hard feedback from ICANN and its two contractors, IBM and Deloitte.
Tuesday’s meeting might be a good opportunity for members of the Business Constituency and IP Constituency to brush up on the issues before Toronto.
The meeting will start at 9am US Eastern time, according to Neustar vice president Jeff Neuman, who provided the following information:

The documents are posted at:
http://newgtlds.icann.org/en/about/trademark-clearinghouse/sunrise-model-26sep12-en.pdf
http://newgtlds.icann.org/en/about/trademark-clearinghouse/claims-model-26sep12-en.pdf
http://newgtlds.icann.org/en/about/trademark-clearinghouse/model-issues-26sep12-en.pdf
The call-in information is:
Conference ID: 93759
Dial-in numbers for each country: http://www.adigo.com/icann/
Adobe Connect Room at: http://icann.adobeconnect.com/tmch/

Tonkin says better new gTLD trademark protections could come in the first round

Groups pushing for stronger new gTLD trademark protection mechanisms could get some of their wishes if they present a unified, coherent position to ICANN.
That’s according to Melbourne IT chief strategy officer and ICANN vice chairman Bruce Tonkin, speaking to DI today about the company’s trademarks summit in Washington DC last week.
Tonkin said that the event identified five rough areas of consensus about changes to rights protection mechanisms, at least two of which could be made before new gTLDs start to go live (which he expects to happen in the fourth quarter of 2013).
The Business Constituency, IP Constituency and so-called “brand summit” are now talking about their areas of common ground and are expected to continue the conversation at the ICANN meeting in Toronto next month.
One area of apparent agreement is an extension to the Trademark Claims service – which alerts trademark owners when somebody registers a domain matching their mark – beyond the 60 days mandated by the Applicant Guidebook.
Trademark interests want the service made permanent, because cybersquatters don’t suddenly stop registering infringing domain names 60 days after a TLD hits general availability.
ICANN has resisted this change, as CEO Fadi Chehade explained last week, largely because several companies already offer commercial trademark watch services.
Many registries and registrars are also against such a move due to the potential cost considerations.
However, Tonkin does not appear to be convinced by either argument.
“Even though a single gTLD might be for 60 days, gTLDs will launch at a range of different times over a number of years. Registries and registrars will have to support that process over a couple of years,” he said. “The cost to industry to extend it over 60 days isn’t that high.”
While supporting the extension may seem like an own goal for Melbourne IT – one of the companies already selling brand monitoring services – Tonkin is not too concerned about losing business.
The value of such services is in the added intelligence, such as monitoring the usage of infringing domains and recommending recovery strategies, he said, not just supplying lists of domains.
“Just that raw data isn’t especially beneficial,” he said.
There’s also no service on the market today that, like Trademark Claims, alerts registrants about third-party trademark rights at the point of registration, Tonkin noted.
Extending Trademark Claims could be seen as a matter of implementation, rather than policy, and may be one of the easiest goals for the trademark community to achieve.
“With enough community support, GNSO advice or ALAC advice could be presented to the board, which could make changes to the Applicant Guidebook,” Tonkin said.
“But I think the board would be reluctant to do that unless it saw very clear support from the community,” he added.
A faster, cheaper Uniform Rapid Suspension system is something that could also be made to happen via “implementation” tweaks, he indicated.
Trademark owners are looking for URS to be priced in the $300-$500 range, which WIPO and the National Arbitration Forum don’t think is feasible the way it is currently structured.
ICANN plans to issue a Request For Proposals soon, according to chief of strategy Kurt Pritz, in order to see if any other provider can do it more cheaply, however.
Another request from trademark holders, to do registrant identity checking — such as email authentication — could be handled via the ongoing Registrar Accreditation Agreement talks, Tonkin suggest.
But other emerging consensus areas would be more suited to a full GNSO Policy Development Process, he said.
The IP community wants the Trademark Clearinghouse to include not only exact matches of their trademarks, but also mark+keyword records (such as googlesearch.tld or paypalpayments.tld).
While there’s agreement in principle among these constituencies, there are still some differences in the details, however.
Some say that the keywords should be limited to words included in the trademark registration, while others believe that mark+keywords won in UDRP cases should be included.
If the former approach is used, domains such as paypal-support.tld, to borrow the example repeatedly used at last week’s summit, would probably not be protected.
Tonkin said that last week’s summit seemed to produce agreement that an algorithmic approach would be too complex, and would generate far to many false positives, to be effective.
A PDP would also be likely be required to find agreement on a mandatory “blocking” system, along the lines of what ICM Registry created for its Sunrise B, Tonkin said.
The problem with PDPs is that they take a long time, and it’s very unlikely that they could produce results in time for the first new gTLD launches.
Tonkin, however, suggested that moving forward with a PDP would create a strong incentive for new gTLD registries to create and adhere to voluntary best practices.
He pointed out that many applicants plan to bring in stronger rights protection mechanisms than ICANN requires already.
While Tonkin is vice chairman of ICANN’s board, he’s not involved in any new gTLD decisions or discussions due to his conflict of interest as a senior executive at a major registrar.

New ICANN chief pours cold water on new gTLD trademark protection demands

Some of the enhanced trademark protection mechanisms being discussed currently by the IP lobby seem unlikely to be adopted by ICANN any time soon, if a response to Congress from new CEO Fadi Chehadé is any guide.
In a letter published tonight, Chehadé appears to rule out both the inclusion of ‘brand+keyword’ records in the Trademark Clearinghouse and an extension of the Trademark Claims service beyond 60 days.
These are two of the common demands to emerge recently from ICANN’s Business Consituency, Intellectual Property Constituency, and the so-called “brand summit” proposal.
The Chehadé letter was sent yesterday to the chairs and ranking members of the Judiciary Committees of both the House and Senate, in response to their August 7 letter.
On extending the Trademark Claims service — which alerts trademark owners when somebody registers a domain exactly matching their mark — beyond the current 60 days, he wrote:

For the first round of new gTLDs, ICANN is not in a position to unilaterally require today an extension of the 60-day minimum length of the trademark claims service. The 60-day period was reached through a multi-year, extensive process with the ICANN community. One reason for this is that there are existing IP Watch services that address this needs. Those community members that designed the Trademark Claims process were cognizant of existing protections and sought to fill gaps, not replace existing services and business models.

While this obviously does not rule out an extension of Trademark Claims, it’s pretty clear from the letter that ICANN has no plans to do so without some form of community consent.
On the matter of brand+keyword protections, seen by the trademark community as a crucial component of a strong anti-cybersquatting regime, Chehadé wrote:

It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights.

He goes on to say that providing enhanced rights protection mechanisms is optional for new gTLD registries and may be one way that they can competitively differentiate themselves.
Indeed, large applicants such as Donuts, Uniregistry and Google say they will offer RPMs that go above and beyond what is required by ICANN.
Extended trademark claims and the brand+keyword protections are two of the changes to the current proposed mesh of mechanisms that the trademark community has found common ground on recently.
At the Melbourne IT trademark summit in Washington DC earlier this week, these two areas were among those that appeared to have the most consensus.
However, applicants for mass-market gTLDs are fervently opposed to changes being made to the Applicant Guidebook at this late stage.
Jon Nevett, co-founder of Donuts, said at the Melbourne IT event that “the Applicant Guidebook at this point should be deemed closed”.
He pointed out that, having paid ICANN about $350 million in application fees, applicants should be considered contracted parties and have their expectations respected.