IP Clearinghouse Recommended for New gTLD Trademark Protection

The fear trademark holders have about having to spend significant amounts of time and money countering cybersquatting upon the introduction of new gTLDs has been addressed by the Implementation Recommendation Team (IRT) formed by ICANN as a result of discussions at their last meeting in Mexico City in March.The IRT has published a draft report recommending the implementation of an IP Clearinghouse, for which ICANN is accepting comments for 30 days. The IRT’s draft report recommends that ICANN create an IP Clearinghouse to support new gTLD registries in operating cost-effective rights protection mechanism of all kinds that would not place a heavy financial or administrative burden on trademark owners.The IRT says this would be the most appropriate platform for ensuring conformity to their objectives as well as satisfying the IRT checklist. In developing their recommendations, the IRT rejected a single Trademark Reserved Names List as a universal protective mechanism due to the difficulties and limitations such a list would entail.The IP Clearinghouse would hold information on rights of all kinds including both registered rights and unregistered rights, and would be suitable for internationalised domain names (IDNs).For trademark holders, they would pay a fee to the IP Clearinghouse and submit data on their trademarks. Upon validation the information is accurate, the data would be made available to registries or registrars to ensure trademarks were not infringed. Services supported could include:

  • a Watch Service to notify of domain names registered that infringe on their trademark
  • an IP Claims Service that would notify applicants and trademark holders when an application is made for a domain name that infringes on a trademark right
  • a Uniform Rapid Suspension System for domain names that infringe IP rights or that support malicious behaviors
  • a Globally Protected Marks List which blocks applications for such terms at the top and the second level
  • the submission of data to registries during Pre-Launch rights protection procedures (the IP Clearinghouse removes the pressure on and cost to trademark owners of submitting the same data over and over again for verification at multiple registries, and ensures consistency of validation).

As a result of the issues raised by the IRT and other issues impacting on the introduction of new gTLDs, it now appears ICANN will be delaying any new gTLDs further with the third edition of the Draft Applicant Guidebook now expected, according to ICANN, in early September. This would mean ICANN would not expect comments to close until after the Seoul meeting in late October given there is normally a 45 day comment period on each version of the Guidebook.The final report is expected to be published by 24 May 2009 with an additional opportunity for discussion at the Sydney ICANN meeting in late June as well as public consultations conducted by ICANN to be announced in the near future.The IRT draft report with more detailed information is available from:
icann.org/en/topics/new-gtlds/irt-draft-report-trademark-protection-24apr09-en.pdfICANN’s call for comments on the IRT report is available from: