This is a guest post by Tom Barrett who is the founder of EnCirca, an ICANN Registrar, and TM.Biz, a brand protection platform and TM.Biz provided trademark validation services for the .XXX and .PW TLD’s and will be offering pre-validation services for users of the Trademark Clearinghouse.
We do have comments at the end of the piece but Tom’s post is unedited:
“Under the guise of implementation, ICANN has announced that Trademark Claims will be expanded to include confusingly similar strings of trademarks that have been subject to a successful UDRP.
The Trademark Clearinghouse is launching on March 26. It is intended to be a repository of validated trademarks for primarily two brand protection mechanisms:
1. Trademark Claims
2. Eligibility for Sunrise Periods
After years of debate by cross-constituency working groups within ICANN, a consensus was reached that only exact matches of trademarks would be protected by Trademark Claims and Sunrise registrations.
The trademark industry has long objected to this narrow definition since it excluded common misspellings of trademarks that were often used for so-called typosquatting. So, even after the numerous working groups and the Applicant Guidebook limited protection to exact matches only, trademark owners have continued to lobby for a more expansive protection beyond exact matches.
In a move that is creating a backlash within policy-making and working groups such as ICANN’s GNSO and Accountability & Transparency Review Team, ICANN this week decided to expand trademark protection beyond exact matches, at least for the Trademark Claims service (but not for Sunrise).
The Trademark Claim service is a message displayed to potential registrants that the domain name they are considering for registration matches a trademark that is been filed in the Trademark Clearinghouse. If the domain name is then registered, the trademark owner(s) are then notified of the event. The new rule covers up to 50 confusing similar strings that were subject to a successful UDRP or court order.
Trademark owners did not get everything they wanted here. This change does not expand the eligibility of possible strings a trademark owner may register during a Sunrise Period. While the UDRP has proven to be a boon for trademark owners in stopping trademark infringement in domain names, critics of the UDRP counter with observations that: A successful UDRP is by no means proof that any infringement actually occurred; UDRP decisions do not always consider how the domain is being used, if at all; Defaults are common, where the registrant often does not respond; and there are many cases of over-reach by trademark owners that panelists fail to reject.…
