Trademark Clearinghouse: meet the agents

18-09-2018

Trademark Clearinghouse: meet the agents

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Five years after the launch of the Trademark Clearinghouse, which is used to protect rights in the new generic top-level domains, WIPR speaks to three companies that use the service about its impact on brand protection.

The Trademark Clearinghouse (TMCH) was set up as one of the main rights protection mechanisms (RPMs) for the new generic top-level domain (gTLD) programme. The Internet Corporation for Assigned Names and Numbers (ICANN) published applications from the first round in 2012.

With the centralised TMCH, which launched in 2013, brands have been able to submit their trademarks for validation and then access multiple sunrise periods without having to have individual gTLD registries validate their rights.

The TMCH also allows brands to receive notifications about anyone intending to register (and then registering) domains matching their marks. Since 2018, trademark owners have had an extra tool: the Trademark Registry Exchange (TREx).

As a further part of the brand protection puzzle, the Uniform Rapid Suspension (URS) System offers a streamlined tool for resolving domain name disputes.

WIPR caught up with three trademark agents, which are entities that submit trademark rights to the TMCH on behalf of rights owners, to find out more about the brand protection landscape.

IP Twins: Sylvain Hirsch

Sylvain Hirsch, president of online brand protection company IP Twins, says there have been three major impacts of the new gTLD programme on clients, the first being a supplementary burden in the form of more registrations and time to dedicate to “an issue often seen as marginal and not profitable enough”, mostly by law firms.

He adds that the programme is seen by some corporations as an interesting innovation but one which is “used by others”, and also as a powerful new communication tool.

"The biggest benefits of the TMCH include the centralised sunrise service and the trademark claims service."

To address new brand protection challenges, the company has used face to face presentations, video calls, newsletters, and other information sources. It has also stressed the importance of TMCH recordals and adapted its domain monitoring reports “to the consequences of the incoming flow of new gTLDs”.

For IP Twins, the TMCH is an important element of brand protection strategy, together with tools such as the Domains Protected Marks List (DPML), an RPM that can be used to protect trademark terms across TLDs owned by domain name registry Donuts.

The biggest benefits of the TMCH include the centralised sunrise service and the trademark claims service, he adds.

In the wider protection landscape, Hirsch suggests a modification of the URS, to allow for the transfer of the contested domains to the complainant, and the creation of a centralised DPML blocking service.

He believes the biggest future changes will be coping with the challenges of the post-GDPR Whois era and developing artificial-intelligence based brand protection services.

MarkMonitor: Brian King

Brian King, director of internet policy and industry affairs at online brand protection company MarkMonitor, says the new gTLD programme has had mixed results for the company’s customers.

“Many brands did not welcome the programme because of the required additional budget to ‘play defence’ and defend their brands across a much broader landscape,” he explains.

On the other hand, he adds, some clients have taken advantage of short, memorable, keyword-rich domain names, while others are availing themselves of the myriad benefits of owning their own ‘dot brand’ TLD.

Asked how the company addressed the brand protection challenges that the gTLD programme has created, King says MarkMonitor immediately upgraded its monitoring services to cover new gTLDs and, without providing legal advice, it regularly consults with clients on the new RPMs available, including the TMCH.

“Advocating for our customers, we encouraged the TMCH to expand its notifications past the first 90 days,” he says of the notification service. “Going forward, we are engaged with the ICANN RPMs Working Group to safeguard the continued availability of, and potentially improve, these RPMs.”

"While it’s not a block per se, data suggest that pre-registration notifications to would-be cybersquatters have proved to be an effective deterrent.”

The TMCH is an important part of the brand protection strategy MarkMonitor suggests to clients, along with strategic registration, blocking, monitoring, and enforcement, King explains.

“In fact, the TMCH helps with registration, blocking, monitoring, and enforcement as well.”

Since many blocking programmes allow the blocks to be overridden in some cases, sunrise registrations based on trademarks in the TMCH are the best way to guarantee that clients’ brands are not registered by a third party, according to King.

“The most popular blocking programmes require a TMCH registration. While it’s not a block per se, data suggest that pre-registration notifications to would-be cybersquatters have proved to be an effective deterrent.”

Despite their benefits, the RPMs can of course be improved, King says, explaining that MarkMonitor and its clients would like stronger URS remedies, including longer-term or near-permanent suspension of domains, if not recovery.

He adds: “We would like more certainty around blocks, and would eliminate overrides or have blocks include a right of first refusal to register the domain over the new registration request. Generally, we would always like to see lower cost for RPMs, and policies that are not unduly burdensome on brand owners.”

Over the next five years, the online brand protection landscape is likely to be more affected by privacy issues, King predicts.

“Privacy laws are already making online brand protection much more challenging. While MarkMonitor continues to have increasing success with our brand protection and enforcement services notwithstanding General Data Protection Regulation (GDPR)-related Whois changes, we are working hard on the Expedited Policy Development Process currently under way to facilitate sufficient access to Whois information for entities that need it for legitimate purposes.

“The internet also needs commonsense Uniform Domain-Name Dispute-Resolution Policy (UDRP)/URS policy in light of privacy-related access challenges, which may require changes to the complainant’s burden of proving lack of rights and registration in bad faith, especially in the case of an anonymous registrant,” he concludes.

Brandma: Jeff Yeh

According to Jeff Yeh, vice president of product at corporate domain registrar Brandma, the new gTLD programme’s biggest impact on clients has been making it more difficult to protect their names across the whole domain name system. 

However, clients have been able to submit an application for a TLD and stand out from the competition, he says.

While the programme has increased the costs of brand protection, the TMCH has allowed companies to secure important domains during sunrise periods, while also being able to adopt the TREx service, Yeh adds.

"The new gTLD programme’s biggest impact on clients has been making it more difficult to protect their names across the whole domain name system."

Yeh says the TMCH is a very good new mechanism in the domain name protection sphere.

Looking ahead, he identifies the GDPR as a challenge in online brand protection, as most Whois data is no longer reachable. He concludes that he will be watching to see whether ICANN launches a second round of TLD applications. A second round timetable has not yet been confirmed.

Trademark Clearinghouse, trademark, brand protection, TMCH, Sylvain Hirsch, IP Twins, Brian King, MarkMonitor, Brandma, Jeff Yeh

WIPR