ICANN58 is well underway and there have already been several meetings of the Generic Names Supporting Organization (GNSO) and its various working groups. One issue that has come up repeatedly is whether or not the Trademark Clearing House (TMCH) database should be publicly available or should remain private. Rights holders have expressed concern that if the data within the TMCH database becomes a public list, potential “bad actors” will be able to extrapolate from the database which marks rights holders have prioritized, and will be able to act accordingly. As we all saw from the .sucks kerfuffle of last year, the desire of some to profit off of brands in the domain name space remains unabated.
It is true that the cost of maintaining trademarks in the TMCH database—which is variable but is generally around $150 per mark per year—forces many trademark owners (especially those with large trademark portfolios) to prioritize which marks they will maintain in the database. Such a decision may indicate to a potential cybersquatter or other bad actor that the mark owner relies heavily on the marks that are in the TMCH database (and less so on its other marks). Or the new addition of an older mark in the owner’s portfolio to the TMCH database may indicate that the mark owner has made a business decision to begin capitalizing on that mark.
The information gleaned from maintenance of some marks or additions of other marks to the TMCH database can either show cybersquatters and other bad actors that certain domains could lead to a more valuable pay-out from trademark holders, or it can show cybersquatters that the other marks in the trademark owner’s portfolio may not be as stringently enforced due to resource limitations. Thus, a typosquatter may choose to focus domain registrations on the “less important” marks knowing that it may take longer for the mark owner to learn about those registrations.
At first glance, one of the more facially compelling arguments for a public TMCH database seems to be that ICANN has a general preference for transparency. Ironically, many of those making this argument as a basis of disclosure of TMCH data are the same who, in the very next session, will argue against disclosure of WHOIS information in order to see who is the registrant of a particular domain name. Although transparency certainly should be a priority of ICANN’s governance, the purpose of the multi-stakeholder model is to take into account the needs and desires of a variety of interested parties when making policy decisions. Here, the TMCH database was designed in order to facilitate protection of consumers by providing an efficient mechanism for the lodgment of trademark rights. Altering the TMCH rules would only serve to deter rights holders from making use of the TMCH, thus increasing the burden on consumers who will be more likely to be defrauded. It will also likely increase the number of dispute resolution filings further enhancing the significant financial burden on brand owners.
Importantly, anyone who attempts to register a domain name during the Claims Notice period (a short window following the launch of a new registry) will receive specific information about any corresponding trademark rights in the TMCH. Thus, it is assured that the party with standing to object to a trademark which is, in their view, inappropriately lodged in the TMCH, has the information they need to object. Likewise, any party that attempts to register a domain name that was taken in the Sunrise Period (the time period before general registrations are allowed) is also able to deduce that a corresponding mark was in the TMCH and has the information that they need to object. As a result, everyone who has standing already has access to the information that they need. This call for “transparency”—resulting in disclosures which can harm consumers as described above—clearly has some other motivation. We will keep you up to date as this debate continues here in Copenhagen and in working groups afterward.