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Trademark Clearinghouse fees to be capped at $150

Kevin Murphy, November 27, 2012, Domain Policy

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

Kevin Murphy, November 19, 2012, Domain Policy

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

Kevin Murphy, November 8, 2012, Domain Tech

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

Kevin Murphy, November 5, 2012, Domain Policy

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

Kevin Murphy, October 30, 2012, Domain Policy

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”