Friday, November 19, 2010

ICANN’s Trademark Clearinghouse

First off, last week ICANN posted its proposed Final Draft Applicant Guidebook for a 30-day public comment period leading up to the next ICANN meeting in Cartagena. This post still concerns the prior DAG, but I already had nearly 1000 words devoted to this post. So I’m publishing this anyway. I will follow up with a post on the latest version in the near future, but the short summary is there is not a lot that has changed.

The GPML was just a portion of the Clearinghouse in the IRT’s Final Report, which also included the Pre-Launch IP Claims Service and a Sunrise Registration Process. The IRT Final Report recognized that “trademark owners face a much larger threat at the second level that at the first level,” and therefore recommended a “two-pronged approach at the second level,” one for GPMs and one for “all other marks that are the subject of trademark registrations of national effect.” Since the GPML remains unlikely to come to fruition, the Pre-Launch IP Claims Service and the Sunrise Registration Process are the topic of this post.

Under the IP Claims Service proposed by the IRT, the registry of the new top-level domain is required to provide notification to the potential registrant of a domain name that identically matches a trademark listed on the Clearinghouse and the owner of said trademark. As opposed to the trademarks listed on the GPML, the other trademarks listed in the Clearinghouse would not prevent a potential registrant from registering a domain name identical to a listed trademark, provided the potential registrant:

(i) affirmatively opts into the registration of the domain name after receiving notice; (ii) represents and warrants that it has a right or legitimate interest in that domain name; (iii) represents and warrants that it will not use the domain name in bad faith as described in the UDRP; (iv) acknowledges that the registration or use of the domain name in bad faith may result in suspension under the URS, a UDRP proceeding, and/or judicial action by the appropriate trademark owner; and (v) represents and warrants that the registrant contact information provided in support of the domain name registration is valid and accurate, and acknowledges that provision of false information may result in cancellation of the registration.

The final IRT Report also provided the alternative of a “Sunrise Registration Process in lieu of” the IP Claims Service, based on Sunrise Eligibility Requirements (SERs) verified by the Trademark Clearinghouse and a Sunrise Dispute Resolution Policy (SDRP) to protect against applied-for domain names identical to domain names listed in the clearinghouse.

The STI asserted that “[n]ew gTLD registries should provide equal protection to all trademarks in the [Trademark Clearinghouse] for their RPMs, except as follows: (i) Inclusion of a trademark in the Trademark Clearinghouse from a country where there is no substantive review does not necessarily mean that a new gTLD Registry must include those trademarks in a Sunrise or IP Claims Process.” The STI inserted the “substantive review” language due to concerns that, without this substantive review requirement, some domain name registrants seeking to register domain names incorporating generic terms could abuse the Sunrise process by first registering trademarks in the Benelux and other countries, such as what happened with some .eu domains.

In the latest version of the DAG, ICANN has proposed the IRT’s option for registries of new top-level domains to protect trademark holders’ rights: either an IP Claims Service or a Sunrise Registration Process, but the two policies protect trademark registrations differently, as recommended by the STI.

The policy related to the IP Claims Service is broader: “Registries must recognize all text marks that have been or are: (i) nationally or multi-nationally registered (regardless of whether the country of registration conducts a substantive review; (ii) court-validated; or (iii) protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

The policy related to the Sunrise Registration Process is narrower: “Registries must recognize all text marks: (i) nationally or multi-nationally registered in a jurisdiction that conducts substantive examination of trademark applications prior to registration; or (ii) that have been court- or Trademark Clearinghouse validated; or (iii) that are protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

ICANN noted that the bifurcation in the pre-launch services was intended to address the goal of the model in the STI, “as well as those that are concerned that marks in non-substantive review countries can simply be excluded by registries from pre-launch Sunrise or Trademark Claim services.”

Therefore, all nationally or multi-nationally registered trademarks should be protected by registries using an IP Claims service, but only those trademarks registered in jurisdictions that conduct a substantive examination prior to registration are covered for registries using a Sunrise Registration Process. This substantive review requirement created quite a stir in the trademark community, but the Sunrise Registration Process also covers trademarks validated by the Trademark Clearinghouse itself. And the proposed Final Draft Applicant Guidebook provides additional definition of what these terms mean. We’ll get to that next.