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Trademark Clearinghouse IRT Recommendation Staff Proposal Staff Rationale STI Notes Different name suggested to reflect the fact Question whether Common Law Call it the Trademark that only trademarks and not other forms of Rights are to be included; 1 Call it an IP Clearinghouse. Clearinghouse. intellectual property such as copyrights or Concern that TC should not patents are the subject matter. change any existing rights; Not necessary because the Clearinghouse Holders would grant a license is storing information. It should be clear that Relationship between ICANN/ to ICANN to use the data and No licenses to ICANN to use 2 in so storing that no rights to use the data Clearinghouse-- is it a contract ICANN would sublicense that data. exist separate and apart from the purpose or an accreditation right to the Clearinghouse. of the Clearinghouse. It is difficult to develop uniformly acceptable Maintenance of and The provision for a GPML is not standards can be developed - it might lead dissemination of information Should the GPML be 3 included in this set of to the creation of new rights. It would create related to Globally Protected considered or is it out of scope? recommendations only marginal benefits because it would only Marks List. apply to a relatively small number of names. While combining the functionality of the Information (Clearinghouse) URS and Clearinghouse presents repository to interact with opportunities for efficiency, they remain Pre-registration complaint 4 URS such that marks separate for now - in order to avoid process in URS not included. registered in Clearinghouse additional complexity in considering the are pre-vetted in the URS. proposals. The efficiency can be introduced later. Regional Clearinghouses v. Two providers, each global, one Single global provider Public comments pertaining to sole source One centralized Clearinghouse; charged with database performing both the providers suggest this approach to prevent Naming of the database 5 administration (including IP validations and clearinghouse abuse - such as removing an incentive to function – should it be a claims and sunrise services), operating roles. falsely validate trademark claims. ―database‖ or a ―repository‖ one with data validation. Should it be separated by The detriments of establishing of regional script/language? Separation of There were suggestions that clearinghouses seem to outweigh the risks: functions: Should separation of regional clearinghouses be set a single database can be made secure and the verification function be up to avoid risks associated with restricted; multiple clearinghouses might regional to allow for local a single database and to increase costs, result in inconsistent expertise on the validity of the address local cultural issues decisions and lead to forum shopping. rights A renewable license or accreditation is preferred to a contract (a relationship akin to that between ICANN and a UDRP provider) to limit ICANN's participation or involvement Contract between ICANN and Specific term nor form of in operational aspect of the clearinghouse. 6 provider of five years association not proposed Some sort of instrument will be required as recommended there will be one clearinghouse at any one time and an approach is needed so that if the service provider is not performing adequately a successor can be found. Holders of common law rights can also gain entry to the Clearinghouse upon the Specific standards for appropriate showing of use. The criteria Standards (not be based on the Registered rights: should acceptance into the selected are a balance of the need to weed 7 laws of any particular national, state and/or provincial clearinghouse were not out fraudulent applications without jurisdiction) include: rights be included specified. burdening the verification process while insuring that only true trademark "use" can be admitted to the Clearinghouse. Definition of match or identical a) ownership of a valid is different between the Staff trademark registration from an proposal and the IRT proposal- entity authorized to grant such Will there be semantic or registrations and that verifies the meaning matches or language validity of the trademark; or translations? b) in the absence of a registration, evidence of continuous use of the mark in connection with the bona fide offering for sale of goods or services for a period of five years prior to the application for membership. Specific recommendations as to how to validate data in connection with b) including copies of labels, tags, promotional materials, and invoices. How we make this determination--- a subjective decision on a country's process would need to be made—two types of processes—1- Same, except registrations that Examination based upon on include top-level extensions not absolute basis - looking at the Clearinghouse will validate included so that "ICANN" could Deters second-level registrations made for mark and determining if it is a any registered mark issuing 8 be registered but not the purpose of establishing trademark rights trademark capable of having from a jurisdiction that "ICANN.org," even if it was filings. trademark significance; and 2- conducts substantive review. registered in some jurisdiction Comparison on relative grounds- conducting substantive review. examiner looks at it and looks at the database and looks to see if it is similar to other names in the database; Not all countries follow this two pronged approach; Minimizing Chilling Effects- language for the IP Claim Process and how can it be drafted to minimize chilling effects; Should it provide clear IP Clearinghouse to be used guidance to help protect the for IP Claims Service, Trademark Clearinghouse to be registrant both of what rights 9 Sunrise Registrations, URS, used for IP Claims Service, and exist and rights they might have; GPML, and Trademark Sunrise Registrations Whether to clarifying the goods Watch Notices and services in the notice?Will the notice be translated into other languages? Will there be a Use of the IP Clearinghouse after initial launch?
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