- ICANN's Selected Providers Publish Guidelines for Using the Trademark Clearinghouse
- March 12, 2013
- Law Firm: Crowell Moring LLP - Washington Office
ICANN has foreseen mandatory rights protection mechanisms (RPMs) for New gTLDs aimed at limiting abusive domain name registrations. These include the use of the Trademark Clearinghouse (TMCH), aimed at providing trademark holders with more extensive and cost-effective opportunities to protect and safeguard their trademarks in New gTLDs.
The TMCH is expected to be active as from 26 March 2013. It will be a central repository of trademark related data which is used in order to technically support and streamline some of the mandatory RPMs for New gTLDs. Trademarks will need to be validated by the TMCH for trademark holders to participate in Sunrise Phases of New gTLDs or to benefit from the so-called Trademark Claims service. A Sunrise Phase is a period before domain names become available to all eligible registrants during which trademark holders (who meet the eligibility requirements) must be given the opportunity to register or block domain names corresponding to their validated trademark. The Trademark Claims service is a service whereby (i) a prospective registrant of a domain name will be provided notice of the existence and the scope of a validated trademark and that corresponds to the requested domain name and whereby (ii) the holders of a validated trademark will receive a notification that a domain name that corresponds to their reported trademark has been registered.
The main working principles of the TMCH are established in a Policy that is published in ICANN's Applicant Guidebook. ICANN has contracted with Deloitte, IBM and CHIP to perform the TMCH functions.
The TMCH operator's latest communication
On a website controlled by Deloitte and CHIP, Guidelines on the TMCH have now be published.
The Guidelines provide an overview of the eligibility requirements and explain what type of marks may be accepted for inclusion in the TMCH. Deloitte and CHIP warn prospective users of the TMCH that this document is still subject to change.
In fact, the document provides a guideline only. They supplement the ICANN requirements and the TMCH Validation Terms and Conditions (T&C's) that will be made available at a later stage. Nevertheless, the Guidelines provide valuable insight on how the TMCH will validate trademarks for inclusion and on how Sunrise Phases and Trademark Claims services will be supported. For example, the Applicant Guidebook only mentions word marks for protection via the TMCH. Nevertheless, the Guidelines explain how combined marks (word + design) will be validated by the TMCH. Does this mean that validated combined marks will automatically qualify for Sunrise registration or Trademark Claims services? This may be a welcome clarification or change for trademark holders to ICANN's existing requirements. It remains a possibility however that the TMCH will only support such protection at the request of specific registries. This conundrum will probably become clearer once the TMCH T&C's are made public.