Dear All,

 

As you all know that Trademark protection is a major issue for launch of new gTLDs.

 

The concern:

There is a concern that the IP clearing house (the way its developing in the Special TM Implementation-STI Working Group which is supposed to send recommendations to the GNSO for being placed before the ICANN Board) may be an eyewash/placebo. 

 

It doesn’t address any of the pre-launch concerns of Trademark Mark Holders (TM Holders) such as defensive registrations. 

 

But it is being presented as a great compromise/favour and ‘Christmas gift’ to TM Holders. 

 

Here are some of the aspects that may be useful for you to know and provide views on:

 

 

Who pays:

TM Holders have to PAY ANNULLAY to be in the TM Clearinghouse – (Registry’s suggest that only TM Holders pick up the cost even though Registry’s get a windfall cost saving for pre-launch for sunrise and pre-launch IP claims)

 

 

What is included in it:

The IP Clearinghouse ONLY includes Nationally Registered Marks (NO common law marks can be included nor any other types of protected names)

 

 

With what does my brand match:

One would expect that as in Mark Monitor and even self-searches not only the brand name but variants would be matched. 

 

NO. 

 

The match is defined as ONLY IDENTICAL/EXACT match  i.e. If the brand is “Yahoo”, the only time a match for the services mentioned below would be triggered is if someone tried to register the domain name “yahoo.TLD” – and that’s it.

 

However,  “yahoos.TLD”, “yahoosearch.TLD” or “yahoosports.TLD” or “searchyahoo.TLD” etc. would NOT be matched.

 

 

What is this database used for:

For only PRE-LAUNCH (so it serves no purpose to be in the Clearing house POST-launch):

 

Sunrise – for which a TM Holder may have to PAY for dispute resolution in case another TM holder’s rights conflicts with theirs – AND – forcing TM Holders to defensively PAY for registering domain names as abundant caution to ensure that registrants don’t get them once the gTLD is launched – remember, however, the match is only for IDENTICAL

 

Or

 

IP Claims Notice– this is nothing more than a notice provision to people attempting to register the IDENTICAL domain as the brand in PRE-LAUNCH ONLY.   In Pre-launch, if someone tries to register ‘yahoo.TLD’, then they get a notice telling them that their application matches with a brand in the IP Clearinghouse.  They are asked if they affirm that they will only use this for legitimate purposes (paraphrase) – they accept by clinking ‘affirm’ and they get the domain name.  The TM holder only gets a notice that such a registration has been allowed once the new gTLD has launched to then decide whether to file a UDS, UDRP or Court case.  No notices, however, in case someone tries to register “yahoosearch.TLD”.

 

 

How can this be gamed:

 

As a bad actor I wait and don’t register any domains with are EXACT matches in PRE-LAUNCH such as “yahoo.TLD” and wait for the first 30 seconds of the new gTLD being launched and register then to CIRCUMVENT the entire “WHITE ELEPHANT” for which as Brand holder I am being forced to PAY to keep it running.

 

But as a bad actor I can register “yahoos.TLD”, “yahoosearch.TLD” or “yahoosports.TLD” or “searchyahoo.TLD” etc. in PRE-LAUNCH and POST-LAUNCH and I won’t get a notice and the Brand holder won’t get a notice.

 

 

One advantage is that there will be one registration of TM (ANNUALLY PAID FOR RENEWALS) for Sunrise and so all new Registry’s won’t have to spend money on Consultancy/Admin etc. for Sunrise – so it’s really a SUNRISE CLEARING HOUSE for cutting Registry costs.

 

 

My opinion: This doesn’t help small businesses nor does it help developing country Brand owners since they probably won’t be participating in Sunrise and pre-launch.

 

This IP CLEARINGHOUSE is being presented as a great compromise by Registries, Registrars and Non-Commercials.  One even described it offline as a ‘Christmas Gift’ to Trademark Holders.

 

Options:

 

We state our objections but let it go through.  This then becomes for the Board a solution for defensive registrations by TM holders and so seemingly, for the record, addresses Brand holders’ concerns in Pre-Launch and defensive registrations.

OR

We state clearly that we as TM Holders don’t want this solution since it fails to address/solve the real problems identified by Brand Holders.

 

 

 A thought:  would not being in the IP CLEARINGHOUSE be seen as not being vigilant in protecting your brand name thus creating a legal imperative to forcibly have to register and PAY to be in it?  I don’t know.

 

 

Just as background.  This Clearing house was an adjunct and ancillary piece of technology/database to facilitate the Globally Protected Marks List (GPML).  Now that the GPML has been jettisoned,  this ancillary to GPML (byproduct) is still being proposed by the Board & Staff as a solution for Trademark protection in for new gTLDs.

 

A Solution looking for a problem to solve?

 

 

This is my humble and very quick attempt to try and simplify the issue and would welcome any additions or clarifications or corrections.  The STI is supposed to have a conference call on this in 2 days.

 

Hope this helps and looking for feedback.

 

 

 

 

 

 

Best regards,

 

 

Zahid Jamil

Barrister-at-law

Jamil & Jamil

Barristers-at-law

219-221 Central Hotel Annexe

Merewether Road, Karachi. Pakistan

Cell: +923008238230

Tel: +92 21 5680760 / 5685276 / 5655025

Fax: +92 21 5655026

www.jamilandjamil.com

 

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