Trevor Little

With a new survey suggesting that nearly half of large companies intend to apply for a ‘.brand’, trademark dispute resolution mechanisms for the gTLD space take on more importance. However, while an announcement had been expected on the trademark clearinghouse provider, at ICANN’s Costa Rica meeting it was revealed that a decision has not yet been made.

The trademark clearinghouse will authenticate, store and provide to registries information pertaining to rights of trademark holders, and it has been the subject of some scrutiny by brand owners. ICANN had been expected to secure the provider by the end of February but, speaking to the Intellectual Property Constituency at this week’s meeting, ICANN’s Kurt Pritz admitted that the organisation is currently negotiating a bridge agreement with one service provider, to allow it to further negotiate operating details before a long-term agreement is established to run the clearinghouse. However, the organisation is not ready to identify the selected party “because then we would lose leverage, including leverage in price for registering trademarks. It’s not clear that this will be the only entity with whom we contract. We might contract with this entity to be the validator or we might contract with this entity to be the validator and the database administrator”.

The bridge agreement is expected to be in place in two weeks, meaning that a public announcement on the specific provider is still some way off. In the meantime, ICANN is continuing to work on the rules, procedures and processes the clearinghouse will apply. Once agreed, Pritz added that there will be “a long testing period and implementation period”.

The operator of the clearinghouse had initially been expected to be unveiled this month, yet it is clear that there is some way to go until the processes are established and details on the specific processes are similarly proving hard to obtain. Karen Lentz, director, operations and policy research, ICANN, did explain that the process will be administratively focused: “So their job [the clearinghouse operator] is not to provide legal determinations. Their goal is to review the documentation that’s submitted and make sure that it meets the requirements.”

Yet on questions surrounding the validation of proof of use and the question of data aggregation and integrity, she added that “those issues have been discussed quite a bit and we have those in mind”, but little detail was provided.

Mike Rodenbaugh, principal of Rodenbaugh Law, then moved the discussion to likely costs charged by the clearinghouse, arguing that it was important for those drafting applications and considering both charges for registries making a query against the database and the cost of registering a trademark right. 

Pritz responded that potential clearinghouse providers had been weighed on global reach, ability to perform, the bandwidth, “and the cost to the trademark owners who register trademarks and the registries who will use the clearinghouse services”, but he did not have specific figures to hand.

In the absence of cost projections, focus turned to appeals against trademark clearinghouse decisions. Lentz admitted that, while the applicant guidebook stated that “the clearinghouse would be the one hearing the challenges, we had a bit of discussion about whether that was the right model or not”, before outlining a graduated process in which questions about administrative decisions become a “customer service issue” between the complainant and the operator, with different procedures required for sunrise challenges.

The detail will be important for brand owners, whether considering applying or looking to resolve potential trademark clashes in an expanded online space. And while the exact degree of online expansion is still unknown, a survey conducted by registry services provider Afilias, released this week, predicted that 44% of large companies intend to submit a ‘.brand’ application.

The survey, conducted in the United States and United Kingom, also found that 82% of major brands are aware of the opportunity to apply for a gTLD (meaning almost a fifth are still in the dark about the new online space). While a significant number, almost half of the businesses aware of the opportunity did not know about the upcoming application deadline. More details of the survey are available here.

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