On Wednesday, October 26th a Workshop on the Trademark Clearinghouse (TMCH) was held at the ICANN meeting in Dakar. The TMCH is a key global database that will be used for both sunrise services for new gTLDs as well as trademark claims. The workshop revealed that implementation of the TMCH involves the resolution of multiple complex issues within a very short timeframe.
The PowerPoint presentation utilized during the Workshop can be found at http://dakar42.icann.org/meetings/dakar2011/presentation-tmch-26oct11-en.pdf. It includes timelines for both the development of TMCH implementation as well as its operation during new gTLD sunrise periods when trademark owners may secure domains matching their marks. The current plan is for one or more TMCH service providers to be selected by Spring 2012 and awarded initial contracts with 3-5 year terms, and for trademark owners and other rights holders to begin registering their names in the third quarter of 2012.
The full range of TMCH implementation issues can be found at http://dakar42.icann.org/meetings/dakar2011/presentation-tmch-implementation-issues-26oct11-en.pdf , along with the advantages and disadvantages of different options. Shortly after yesterday’s session, ICANN issued a call for volunteers to form an Implementation Assistance Group (IAG) (notice at http://www.icann.org/en/announcements/announcement-26oct11-en.htm ) with the goal of delivering recommendations by March 2012.
Pricing for the TMCH services have yet to be set, and there are major unanswered questions about the number of languages it will encompass and how character variances in different languages and scripts will be dealt with.
It was noted during the Workshop that no global database for global trademarks currently exists, so the task of creating one for the TMCH is daunting. On the other hand, the TMCH does provide an opportunity for global trademark standardization, a desirable objective given the Internet’s global reach.
One major unanswered question about the TMCH is whether the rights data it collects will be held solely by the service providers or will be shared with registries, registrars, or even the general public. While rights holders want comprehensive protection it also appears that they have significant concerns that creation and dissemination of comprehensive rights data could be misused by bad actors. In this regard, it is also unresolved as to whether recipients of such data will have a duty to safeguard it and face liability for any breach of that responsibility. From the perspective of domain registrants, the availability of rights information would be of major assistance in the avoidance of unintentional infringement when registering domain names.
The Workshop also raised questions regarding whether one or more TMCH providers will be able to handle a potential flood of inquiries as hundreds of new registries come online simultaneously. Despite the relatively short duration of the period during which new gTLD registries will be required to utilize TMCH services, it appears that TMCH will have to be able to withstand peak capacity demands.
The rights protection service of greatest relevance and concern to registrants is Uniform Rapid Suspension (URS), and its development is lagging several months behind that of the TMCH – in part because the TMCH must be in place during the sunrise period that precedes the launch of new gTLDs, while URS will come into play only after new gTLD domain registrations are opened to the general public. But the two are related, insofar as the listing of a mark in the TMCH for a specific line of commerce will have a direct bearing on whether a domain can be subject to suspension under URS.
Overall, the TMCH Workshop confirmed that the rights protection mechanisms promised by ICANN as a means of facilitating approval of the new gTLD program face formidable implementation challenges, particularly given the constricted timeframe in which a variety of complex issues must be resolved. ICA will continue to monitor this ongoing process to assure that the legitimate rights of domain registrants aren’t sacrificed in the hasty rush toward rights protections implementation.