The Trademark Clearinghouse is a database of validated and registered trademarks established by ICANN to assist trademark holders prevent infringing behavior in the Domain Name System. In combination with the Uniform Rapid Suspension System (URS), it is the second significant attempt by ICANN to handle the "Trademark Dilemma". The first attempt was the Uniform Domain-Name Dispute-Resolution Policy. The Trademark Clearinghouse is not a trademark office. Rights holders who register their marks with the Trademark Clearinghouse must still register with their country's trademark office. The primary purpose of the Trademark Clearinghouse is to maintain a global database of verified trademarks for the Domain Name System. The Trademark Clearinghouse is strictly for second-level domain names. Other mechanisms exist to protect trademark in the new gTLDs themselves. All new gTLD registries are required to use the Trademark Clearinghouse and URS for protection of Second-level domains.
History One of the initial tasks of ICANN when it was formed was to deal with the so-called "Trademark Dilemma", which is determining the appropriate balance of rights between domain name holders and trademark owners. So in December 1999 ICANN launched the Uniform Domain-Name Dispute-Resolution Policy. Starting in 2008 ICANN began a new program to launch many more new Generic top-level domains. As part of this program ICANN envisioned a replacement program for the Uniform Domain-Name Dispute-Resolution Policy. On March 6, 2009 ICANN commissioned 18 intellectual property experts from around the world entitled the Implementation Recommendation Team (IRT). They produced a report on May 29, 2009 with numerous recommendations to protect intellectual property rights holders. Most importantly, the report recommended an Intellectual Property Clearinghouse be created in concert with a Uniform Rapid Suspension System (URS). The recommendation of the Intellectual Property Clearinghouse became the basis for the Trademark Clearinghouse and together with the URS eventually replaced the Uniform Domain-Name Dispute-Resolution Policy. On May 28, 2010 ICANN published the Trademark Clearinghouse Proposal. The proposal emerged from an ICANN meeting held in Nairobi between the 7th and 12 March 2010. In the proposal both the Trademark Clearinghouse and the Universal Rapid Suspension program were proposed as possible replacements for the Uniform Domain-Name Dispute-Resolution Policy. In November 2012 ICANN organized meetings in Los Angeles and Brussels to consider the implementation of the Trademark Clearinghouse for new top level domains. The outcome of these meetings was a straw man proposal for the Trademark Clearinghouse. In March 2013 the Trademark Clearinghouse launched.
Controversy The new gTLD program initially faced heavy criticism from many brand owners. Specifically, the Association of National Advertisers created an organization called Coalition for Responsible Internet Domain Oversight (CRIDO) and began lobbying ICANN to halt the new gTLD rollout. The brand owners saw the creation of more gTLDs as a further cost to protect their trademarks from cybersquatting. They wanted strong trademark protections built into the new gTLD program. Milton Mueller, a professor at Syracuse University and frequent critic of ICANN, argues that the creation of the Trademark Clearinghouse was entirely hijacked by the advertising and intellectual property stakeholders, primarily by groups like the Association of National Advertisers (ANA). He argues that ICANN staff ignored its established bottom up processes when it did not suit them, and instead implemented the straw man proposal against the wishes of the Generic Names Supporting Organization (GNSO), Noncommercial Stakeholders Group (NCSG), and numerous other stakeholders. DNS news site DomainIncite.com has also been critical of the Trademark Clearinghouse development process.
Brussels and Los Angeles meetings Many non-commercial observers have criticised ICANN for the way in which the Trademark Clearinghouse was developed. Most of this criticism has stemmed from a lack of openness concerning the proceedings at the Los Angeles and Brussels meetings. In response to this criticism ICANN's Ombudsman opened a probe into the closed door nature of these meetings in December 2012. Robin Gross, chair of ICANN's Noncommercial Stakeholders Group (NCSG) claimed that the NCSG was largely ignored during the proceedings, while the Business Constituency and Intellectual Property Constituency were overly represented. Using ICANN's Documentary Information Disclosure Program (DIDP) process, ICANN's version of a FOIA request, the NCSG requested all information concerning the Los Angeles and Brussels meetings. In response, the NCSG received no new information The NCSG criticised the Brussels meeting immediately prior to it. In response, Fadi Chehade, CEO of ICANN, explained the purpose of the meeting in Brussels as simply an informal white board brainstorming session. After the meeting Chehade wrote a blog post detailing what happened at the Brussels meeting.
Red Cross / Red Crescent On June 25, 2014, ICANN's Governmental Advisory Committee (GAC) issued a comminuque entitled, "Protection of Red Cross / Red Crescent Names". The communique exempted the 'terms and names associated with the Red Cross and Red Crescent' from trademark protection while still affording them protected status. The communique advised that the names not be subject to policy considerations relating to trademark, because they cannot receive adequate treatment under trademark law. Instead the permanent protection of these names should be confirmed. In response, ICANN's Generic Names Supporting Organization (GNSO) suggested the names simply be added to the Trademark Clearinghouse. The matter is still being debated.
Protection services The Trademark Clearinghouse is not a rights protection mechanism itself. Instead, additional mechanisms coupled with the Trademark Clearinghouse help trademark owners protect their rights. There are two special time periods where trademark holders are given special treatment, ongoing notification services, and the URS. There are also differentiated services offered by specific registries. These build on the Trademark Clearinghouse to afford special treatment to trademark holders with verified trademarks in the Trademark Clearinghouse.
… excerpt ends here. Continue reading the full article.
