Preparing for New gTLDs: An In-Depth Look at the Trademark Clearinghouse

Elisa Cooper Director of Product Marketing, MarkMonitor Matt Serlin VP Domain Operations, MarkMonitor

Preparing for New gTLDs: An In-Depth Look at the Trademark Clearinghouse §  Speakers

Elisa Cooper Director of Product Marketing, MarkMonitor Matt Serlin VP Domain Operations, MarkMonitor

Agenda

§  About MarkMonitor §  New gTLD Landscape §  Trademark Clearinghouse Overview §  New gTLD Rights Protection Mechanisms §  MarkMonitor Services and Solutions §  Recommended New gTLD Best Practices

About MarkMonitor

§  Largest and oldest corporate-only domain registrar •  ICANN-accredited since 1999 •  1+ million domain names under management including

all 5 of the worlds most highly-trafficked websites •  First to combine Domain Management with Brand Protection

§  Long-standing participation with ICANN •  Chair of Registrars Constituency •  Officer in the Business Constituency

§  Committed to serving the needs of brand owners

§  Acquired by Thomson Reuters in 2012

New gTLD Landscape

New gTLD Landscape

§  New gTLD Program significantly changes the Internet landscape

§  New TLD types •  Brands •  Community-based •  Geographical •  Open Generics •  Closed Generics

“Reveal Day” Statistics

§  1930 Applications (1409 Unique Strings) •  1179 Uncontested Applications •  751 Contested Applications (Representing 230 strings)

§  652 .Brand Applications •  40% of Fortune 100 applied

§  116 .IDNs (Internationalized Domain Names)

§  Geographical distribution of applicants •  911 from North America •  675 from Europe •  303 are from Asia-Pacific •  24 from Latin America and the Caribbean •  17 from Africa

Total Applications by Type

Standard,  1144,  59%  

Brand,  652,  34%  

Community,  68,  4%  

Geographical,  66,  3%  

652 .Brand Applications

7

20

22

24

26

35

36

43

46

49

56

71

72

77

0 10 20 30 40 50 60 70 80 90

“Apparel”

“Luxury”

“Pharma”

“CPG”

“Travel”

“Retail”

“Insurance”

“Auto”

“Services”

“Online”

“Manufacturing”

“Financial”

“Media”

“Technology”

Number of Applications

Sec

tor

Most Highly Contested Strings

Number of Applications

App

lied-

for g

TLD

.

0 2 4 6 8 10 12 14

.DESIGN

.MOVIE

.MUSIC

.BLOG

.BOOK

.LLC

.SHOP

.ART

.HOME

.INC

.APP

Top 10 Applicants N

umbe

r of A

pplic

atio

ns

307

101

76 70 54

26 26 14 14 13 13 13

0

50

100

150

200

250

300

350

New gTLD Timeline

New gTLD Timeline

Trademark Clearinghouse Overview

Trademark Clearinghouse (TMCH)

§  Central repository of authenticated trademark information •  Primarily used to support pre-launch Trademark Claims and Sunrise

Registrations and Dispute Resolution Policies

§  The standards for inclusion are as follows: •  Nationally or regionally registered word marks from all jurisdictions •  Any word mark that has been validated through a court of law or

other judicial proceeding •  Any word mark protected by a statute or treaty in effect at the time

the mark is submitted •  Other marks that constitute intellectual property

Trademark Clearinghouse Purpose

§  Enables Trademark Owners To:

•  1) Receive notification (Claims Service) when exact-match domain name registrations are made for first 60/90 days of general availability

•  2) Register their trademarks as domain names during so-called Sunrise Periods

§  Does NOT:

•  Prevent registrations or block

others from registering trademarks as domain names

Benefit 1 of TMCH: Trademark Claims Service

§  If a domain is submitted for registration and is an identical match to a mark in the TC, the Trademark Claims service will provide notification to the prospective registrant that: •  The mark is included in the Trademark Clearinghouse •  The prospective registrant understands this •  The use of the requested domain name will not be infringing

§  Applicable in the first 60/90 days of general registration only

§  If the domain is registered, the rights owner is notified

Benefit 2 of TMCH: Sunrise Registrations

§  Sunrise registration periods provide rightsholder with priority registration

§  Assuming that eligibility requirements are met, Sunrise Registrations must be made available to all trademark holders in the Trademark Clearinghouse •  Must show “Proof of Use” to qualify

§  Additionally, notices will be provided to all trademark holders

in the Trademark Clearinghouse if someone is seeking a sunrise registration •  Conflicts that arise may be subject to a Sunrise Dispute Resolution

Policy (SDRP)

Trademark Clearinghouse Data

§  Required data: •  Mark •  Holder •  Holder Type •  Mark Type •  Jurisdiction •  Application Number •  Registration Number •  Application Date •  Registration Date •  Expiration Date •  Goods and Services Class Number •  Goods and Services Description •  Uploaded Documents

Matching Rules

Acceptable Examples of “Proof of Use”

§  Labels, tags, or containers from a product •  This provides a physical indication that a product is available for

use or access by consumers

§  Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials) •  This is meant to show that the rights holder is communicating to

consumers that a product or service has a particular source

§  Links, copies, or photographic submissions will be acceptable

Unacceptable Examples of “Proof of Use” §  Inclusion of a mark in a domain name •  Registration of a domain name does not provide an indication that

there is a good or service being offered to consumers

§  Email messages •  Private communications do not provide evidence of a product or

service generally available to consumers

§  Licenses to use a mark or applications for business licenses that include the mark as part of the business name •  These would provide an indication that an entity is preparing to

use the mark, but does not constitute a demonstration that the mark is being used

§  Business cards •  Business cards for an individual do not provide an indication that

there is a good or service being offered to consumers in connection with the trademark

Determining What to Submit

§  Must submit •  Any trademark where at least one sunrise registration may be

desired

§  Others to consider •  Trademarks where notification of registration (during the first 60 /

90 days) as a domain is desired

MarkMonitor Trademark Clearinghouse Services

§  Streamlines the process of collecting, entering and submitting required trademark data to the Trademark Clearinghouse

§  Leverages Thomson Reuters’ access to trademark data worldwide

§  Captures and manages all Sunrise codes to enable future domain name registrations as new gTLD registries launch beginning later this year

MarkMonitor Trademark Clearinghouse Manager

§  Easy-to-use management console to view all submitted trademark data and current status of submissions •  Search, sort and/or filter capability •  Validity status updated frequently •  All data exportable for review or audit

Benefits of Using MarkMonitor for Submission

§  Streamline the process of collecting, submitting, and managing submissions to the Trademark Clearinghouse

§  Ensure accuracy of submissions with trusted experts and access to proprietary data sources

§  Rely on MarkMonitor to manage all Sunrise Codes and enable future Sunrise registrations

§  Centralized billing and management

§  Obtain visibility into trademark submissions and current status

§  Protect against expiration with automated notifications

Rights Protection Mechanisms

Rights Protection Mechanisms

§  Uniform Rapid Suspension (URS)

§  Uniform Dispute Resolution Policy (UDRP) §  Post-Delegation Dispute Resolution Procedure (PDDRP) •  Top Level •  Second Level

§  Registry Restriction Dispute Resolution Procedure (RRDRP)

Uniform Rapid Suspension (URS)

§  Intended to be a cost-effective, expedited process to address issues of TM infringement and abuse •  Form complaints of no more than 500 words •  Fees in the range of USD 300 per proceeding

§  A limited “loser pays” model has also been adopted •  Complaints listing 15 or more disputed domain names will be

subject to a Response Fee which will be refundable to the prevailing party

§  Domains are only suspended for the remainder of their term, or for an additional year at current market registration rates

§  After suspension ends however, domains become available again for registration

Uniform Domain Name Dispute Resolution Policy (UDRP) §  Designed for disputes concerning an alleged abusive registration

of a domain name

§  Abusive registrations are those that meet the following criteria: •  The domain is identical or confusingly similar to a trademark or

service mark in which the complainant has rights •  The domain name registrant has no rights or legitimate interests •  The domain name has been registered and is being used in bad faith

Post-Delegation Dispute Resolution Procedure (PDDRP) – Top Level §  Complaint procedure for strings to the “right of the dot”

§  Rightsholders have the ability to file a complaint if the gTLD string (to the “right of the dot”) is identical or confusingly similar to the complainant’s mark and the registry is •  (a) taking unfair advantage of the distinctive character or the

reputation of the complainant's mark; or •  (b) impairing the distinctive character or the reputation of the

complainant's mark; or •  (c) creating a likelihood of confusion with the complainant's mark

Post-Delegation Dispute Resolution Procedure (PDDRP) – Second Level §  Complaint procedure for strings to the “left of the dot”

§  Rightsholders may file complaints against registries who have acted in bad faith with the intent to profit from the systematic registration of infringing domains at the second level (to the “left of the dot”).

§  Examples of infringement include registries which: •  Have a pattern or practice of actively and systematically

encouraging registrants to register domain names and to take unfair advantage of the trademark to the extent and degree that bad faith is apparent

•  Have a pattern or practice of acting as the registrant or beneficial user of infringing registrations, to monetize and profit in bad faith

Registry Restriction Dispute Resolution Procedure (RRDRP) §  Complaint procedure for community-based gTLDs

§  Complainant asserts that it is “a harmed established institution as a result of the community-based gTLD registry operator not complying with the registration restrictions set out in the Registry Agreement” •  TLD operator violated the terms of the community-based

restrictions in its agreement •  There is a measureable harm to the Complainant and the

community named by the objector

MarkMonitor New gTLD Offerings

§  New gTLD Application Database •  Provided at no-cost to quickly identify problematic applications •  Enables users to quickly search, sort and export

§  Objection Filing and Response Referral Services

§  .Brand Registrar Services •  Enables registrations for newly acquired .Brand Registries

§  New gTLD Registration Services •  Guidance with where and when to register

§  Trademark Clearinghouse Services

§  Brand Protection •  Identify and take action against infringing domain names across all

new gTLD Registries using the industry’s leading Brand Protection solution

Recommended New gTLD Best Practices

§  Prepare for submission of data to Trademark Clearinghouse •  Identify marks for inclusion •  Submit and manage Sunrise Codes

§  Rationalize portfolios •  Pare-back portfolios •  Assess based on traffic and defensive value

§  Revise domain policies to account for new gTLDs •  Defensive registration practices must be realigned

§  Actively begin policing for brand abuse across all New gTLDs •  Watch for abusive registrations •  Leverage Uniform Rapid Suspension (URS)

Q&A §  Speakers

Elisa Cooper Director of Product Marketing, MarkMonitor Matt Serlin VP Domain Operations, MarkMonitor

Thank You! §  For information on MarkMonitor solutions, services and

complimentary educational events:

•  Contact via email: marketing@markmonitor.com •  Visit our website at: www.markmonitor.com

•  Contact via phone: US: 1 (800) 745 9229 Europe: +44 (0) 203 206 2220

©2012  MarkMonitor,  Inc.  All  rights  reserved.  MarkMonitor®  is  a  registered  trademark  of  MarkMonitor  Inc.,  part  of  the  Intellectual  Property  &  Science  business  of  Thomson  Reuters.  All  other  trademarks  included  herein  are  the  property  of  their  respecFve  owners.