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Domain attorney Doug Isenberg explains what the proposed $150 fee will get you at ICANN’s trademark clearinghouse

June 4th, 2012 Comments off

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.

Doug Isenberg GigaLaw Firm

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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ICANN selects Deloitte + IBM for implementation of trademark clearinghouse

June 2nd, 2012 Comments off

In an official press release on it’s website, ICANN has announced that it is working with Deloitte and IBM on implementation of trademark clearinghouse services. According to ICANN, both providers are highly qualified, with significant experience, technical capacity, and proven ability to manage and support processes.

New information has also been released about the anticipated pricing for the trademark clearinghouse services. In a separate document/update, ICANN released details on the preliminary cost model that covers services to rightsholders, services to registries and ancillary services.

The trademark clearinghouse will function as an information repository, offering authentication and validation services for trademark data. Trademark holders and gTLD registry operators will rely on the clearinghouse to support rights protection mechanisms for the new gTLD domain space. The clearinghouse is designed to be available globally, with capabilities for validating trademark data from multiple regions worldwide.

gTLD Trademark Clearinghouse

The authentication and database administration functions of the clearinghouse are separated. Upon the anticipated execution of final agreements, Deloitte Enterprise Risk Services (a department of Deloitte Bedrijfsrevisoren BV ovve CVBA) will serve as the authenticator/validator service provider, and IBM (International Business Machines of Belgium sprl / bvba) will provide technical database administration services. Both Parties are going to sub-contract IPClearingHouse BVBA (aka CHIP) in order to facilitate these services.

Deloitte has already been involved in multiple gTLD and ccTLD initial launches/re-launches. Deloitte’s validation team has managed successful sunrise validation processes for .ASIA, .TEL, .ME, .CO and .SO just to name a few. This time around things are likely to get a lot more complex, so it’s smart on ICANN’s part to be working with somebody who has the experience and industry know-how.

IBM and Deloitte will also take part in the public discussion refining technical and operating specifications. Information about the trademark clearinghouse, including the current implementation model and estimated fees is available right here. ICANN plans to update the newly launched trademark clearinghouse page on a regular basis to track progress towards the actual launch.

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