ICANN to Protect Trademark Owners Ahead of New gTLD Program Launch
ICANN is currently seeking an operator for the Trademark Clearinghouse (TMCH), a trademark clearinghouse that will play a critical role in protecting brands following the launch of new gTLDs.
The Request for Information (RFI) released last week stated that ICANN was seeking a sole contractor, but did not rule out the possibility of splitting the responsibilities between two companies – one to handle trademark rights verification, and the other to manage the database.
TMCH is a database of verified trademarks that registrars and registry administrators must coordinate their actions with. This coordination will be an integral part of the launch of any new gTLD.
Registries are required by ICANN rules to initiate a Sunrise Period and provide time for trademark owners to file claims (Trademark Claims Service). Both of these conditions are mandatory elements of the domain registration process.
To pass the preliminary check when registering new gTLDs, each new domain administrator and trademark owner will only need to provide proof of trademark rights in the TMCH database.
According to preliminary estimates, the cost of the contract for managing the TMSN base is several million dollars per year.
If we look at the experience of the Sunrise period of the .XXX domain, then in the first year the number of requests to the TMSN database for checking trademarks can be from 30 to 40 thousand.
One potential TMCH database administrator stated that the expected price for such an initial request would be $100, and for a repeat check in subsequent years, $70.
ICANN also does not rule out the possibility that a successful TMCH administrator could provide additional services. At the same time, the organization strives to ensure that the cost of TMCH checks does not impede the development of the trademark registration industry.
Currently, there are two companies that meet the requirements for a database manager: IProta and the Clearinghouse for Intellectual Property (CHIP).
Belgium-based CHIP arguably has more organizational experience. It managed Sunrise periods for the Somali domain .SO, the Asian IDN .ASIA, several pseudo-gTLDs from providers like CentralNic (DE.COM, US.ORG, etc.), and signed a contract to manage the Sunrise period for the .SX domain.
Its principal founder, Bart Lieben of the law firm Crowell & Moring, is also well known in the industry for his work on sunrise policy.
IProta is a younger company, founded this year in London by Jonathan Robinson, an industry veteran and best known co-founder of the corporate domain registrar group Group NBT.
The company is currently managing the Sunrise period of the .XXX domain, which is considered the largest launch since the launch of registrations for the .EU domain in late 2005.
"IPRota is very well positioned based on our recent and past experience, and so I think we will almost certainly be able to participate in the competition and meet the requirements," Robinson said.
Domain registrars may also be considered candidates based on their experience with databases and high transaction volumes, as well as their familiarity with the EPP protocol.
Applications for TMSN database managers are open until November 25, 2011. ICANN intends to announce the winner of the competition on February 14, after the start of accepting new gTLD applications.
