Domain attorney Doug Isenberg explains what the proposed $150 fee will get you at ICANN’s trademark clearinghouse
As we reported earlier, ICANN has selected IBM & Deloitte as providers of trademark clearinghouse services for the new gTLD’s. Today, Doug Isenberg, a veteran domain name attorney and founder of The GigaLaw Firm has decided to chime in on the matter. He explains in detail what the proposed TMCH service actually provides at his blog, Isenberg On Domains.
Doug also feels that there are still a few unaddressed issues with the latest announcement: “it remains unclear whether the trademark clearinghouse will, despite ICANN’s assurances, truly provide much protection for trademark owners amid the gTLD expansion” said Doug in his latest post.
He explains that the purpose of the trademark clearinghouse is to serve as a central repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holder according to ICANN’s new gTLD applicant guidebook. By registering their marks in the trademark clearinghouse:
- Trademark owners will obtain certain advantages and notifications during “sunrise” periods that will apply to registrations of second-level domain names within new gTLDs as they are launched; and
- Registrants of second-level domain names will receive (at least during the first 60 days after a new gTLD is open for general registration) notifications of trademarks that are an identical match to their newly registered domain names.
Many have questioned whether these systems will do anything to combat cybersquatting and trademark abuse in the new gTLDs. Doug points out below that while the recently announced $150 fee may seem like a low price to pay for any type of trademark protection online, trademark owners need to keep a number of factors in mind as they decide whether or not, or to what extent, they want to participate in the trademark clearinghouse service.
- The $150 fee is per trademark. Therefore, a company with a large portfolio of different trademarks could face a substantially higher fee if it elects to register all of its trademarks at the Clearinghouse.
- To the extent that participation in the Trademark Clearinghouse provides trademark owners with any meaningful protection, that protection will be limited to instances of only identical matches between trademarks and second-level domain names.
- Participation in the Trademark Clearinghouse will not prevent cybersquatters or anyone else f rom registering any domain name.
Doug wrapped up the post by saying: “in addition, a number of outstanding questions remain about mechanical issues relating to the Trademark Clearinghouse. Hopefully, these will be answered quickly, to give trademark owners time to fully consider their options before deciding whether even a $150 expense is a worthy investment.”
About domain attorney Dough Isenberg
Doug Isenberg has represented clients in domain name disputes for more than 16 years according to his website, including the largest filing ever under the Uniform Domain Name Dispute Resolution Policy (UDRP). In addition, he serves as a domain name panelist for the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), the Czech Arbitration Court (CAC) and the British Columbia International Commercial Arbitration Centre (BCICAC).
Isenberg is also the author of the book The GigaLaw Guide to Internet Law (Random House, 2002) and the publisher of GigaLaw.com, a website that provides daily updates about Internet legal news. Doug has represented Wikipedia, Holiday Inn, Hilton and Boy Scouts of America amongst others in domain disputes and cybersquatting cases. The GigaLaw Firm represents clients with intellectual property law needs, especially with respect to the Internet. Their services include: domain name disputes and transactions, copyright disputes, trademark advice and enforcement, intellectual property licensing and other contracts.
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