Leveraging the New Trademark Clearinghouse Protecting Marks Under the ICANN gTLD System

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THURSDAY, APRIL 25, 2013

Presenting a live 90-minute webinar with interactive Q&A

Paul D. McGrady, Jr., Partner, Winston & Strawn, Chicago

Ellen Shankman, Principal, Ellen B. Shankman & Associates, Rehovot, Israel

Lorna Gradden, Valideus, London, England

J. Scott Evans, Head of Global Brand, Domains & Copyright, Yahoo!, Sunnyvale, Calif.

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Leveraging the New Trademark Clearinghouse April 25, 2013

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Presenters:

Ellen Shankman, Ellen Shankman & Associates, Rehovot, Israel

J. Scott Evans, Yahoo!, Sunnyvale, California

Lorna Gradden, Valideus, London, United Kingdom

Paul McGrady, Winston & Strawn, Chicago, Illinois

Ellen B. Shankman, Esq. Ellen B. Shankman, Esq. has more than twenty years of experience practicing

Trademark, Internet, Licensing and Copyright Law. Formerly a partner and the head of the trademark department with one of the largest intellectual property firms in Israel, she established Ellen B. Shankman and Associates as a boutique intellectual property firm specializing in global branding strategy, trademark and domain name counseling, clearance, protection and enforcement, including the development and management of international trademark and domain name portfolios for technology and other companies. The firm proactively counsels company legal, marketing and business development departments, with creative cost-effective strategies to achieve marketing goals. Her clients include a wide range of companies from representation of Fortune 10 companies to small start-ups.

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Recent member of the Board of Directors of INTA

Represents the Israel ISOC, the administrative body responsible for Domain Name allocation under the .IL ccTLD.

Former Chair of INTA Internet Committee and currently chair of ccTLD Subcommittee.

Member of the ICANN Implementation Recommendation Team (“IRT”).

Former member of the Policy Council of the Generic Domain Name Supporting Organization of ICANN representing the Intellectual Property Constituency.

Former member of the Nominating Committee of ICANN.

She is the recipient of the 2002 INTA’s first ever Volunteer Service Award for the Advancement of the Association for her work in the Internet area.

Contributed sections on Israel trademark and Internet law, as well as the chapters on ccTLDs for number of publications.

ellen@ellenshankman.com

J. Scott Evans J. Scott serves as a Senior Legal Director –Head of Global Brand,

Domains & Copyright at Yahoo! Inc.

He received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville.

J. Scott served on the five member drafting committee that assisted the staff at the Internet Corporation for Assigned Names and Number (ICANN) with the drafting of the Uniform Dispute Resolution Policy (UDRP) and the Rules of Procedure for the UDRP. He also served as member of the Implementation Recommendation Team charged with proposing possible solutions for brand protection in new gTLDs.

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J. Scott is an active member of the International Trademark Association, where he serves as Treasurer, is a member of the Board of Directors and he serves on the Executive Committee. J. Scott also currently serves on as a member of the U. S. Legislation Sub-Committee at INTA. Additionally, J. Scott is a Past-President of the Intellectual Property Constituency (“IPC”) the body that participates on behalf of trademark and copyright owners in the ICANN policy process. J. Scott has twice been voted as one of the 50 Most Influential People in IP by Managing Intellectual Property magazine. J. Scott frequently lectures on trademark and Internet policy issues.

jscottevans@yahoo.com

Lorna Gradden

Lorna co-founded Net Searchers with Nick Wood in 1995,

offering domain name management services to the

corporate market. Following Net Searchers’ sale to

Register.com, she worked on domain name consultancy

projects before joining VeriSign DBMS in 2003 as head of

client management for EMEA, managing teams in

Sweden, Norway, France and Germany.

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In 2005, she and Nick started Com Laude, where she continues to work as

Operations Director, overseeing order fulfillment, registry relationships and

information systems. She is a frequent speaker at conferences and training

events. She holds a degree in law.

lorna.gradden@comlaude.com

Paul D. McGrady Jr.

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• Mr. McGrady represents large brand owners, including new gTLD applicants in their domain name and Internet matters. His experience includes domain name disputes, domain name transactions, the creation of new top level domain names, CAN-SPAM disputes, Computer Fraud & Abuse Act disputes, online copyright and brand identity disputes, and transactions and counseling related to intellectual property aspects of social/mobile media.

• Mr. McGrady has successfully handled more than 300 proceedings under the Uniform Domain Dispute Resolution Procedure (UDRP). Mr. McGrady has also handled multiple litigations brought under the Anti-Cybersquatting Consumer Protection Act (ACPA) and successful actions under foreign domain name dispute policies.

• Prior to working in a private practice, Mr. McGrady was in-house counsel for a Fortune 500 retailer practicing in trademarks, franchising, advertising, and shareholder/member relations.

• pmcgrady@winston.com

• Paul D. McGrady is a partner in Winston & Strawn’s Chicago office and chair of the firm’s trademark, domain names, and brand enforcement practice. He has taught Advanced Trademarks and Cyberlaw at DePaul Law School. Mr. McGrady is the author of McGrady on Domain Names, the three-volume definitive treatise on domain name law, which is published by LexisNexis and is now in its thirteenth release. He is also the author of McGrady on Social Media which was published by LexisNexis and is now in its second release.

• Mr. McGrady works with clients in the adoption, prosecution, licensing and enforcement of trademarks in the United States and throughout the world.

What is the Trademark Clearinghouse?

• ICANN, which administers the domain name system is running a process that will see the creation of nearly 1400 new registries.

• As part of the process, it has mandated the creation of a Trademark Clearinghouse (TMCH).

• The TMCH is a database of verified eligible trademark data designed to reduce costs for rights owners, who need to protect their marks.

• ICANN has appointed Deloitte as validator and IBM as the technical operator of the TMCH.

• Allows mark owners to deposit trademark data with one centralised source for one fee, rather than with each of potentially hundreds of new gTLD registries.

• It will facilitate sunrise periods and a trademark claims service, which are mandatory rights protection mechanisms under the new gTLD programme.

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Why should I register?

• Registration in the TMCH is important for brand owners because it is the central platform for cost-effective participation in:

1. Sunrises (a period during which a trademark owner can apply to a new gTLD registry to obtain a domain name matching its trademark) and;

2. Trademark Claims Service (whereby a trademark owner is notified by the TMCH of any registrations matching its marks in any new gTLD).

• When the new gTLD registries launch, they must link to the TMCH for a minimum period of 30 days for the Sunrise and for a minimum of 90 days for the Trademark Claims service.

• The TMCH does not prevent registrations or block others registering trademarks as domain names.

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Eligibility Requirements

The TMCH will accept word marks which are:

1. Nationally or regionally registered ▫ Trademark must be registered in accordance to the national laws at the time of

verification.

2. Court-validated ▫ Unregistered trademarks, well-known protected marks.

3. Statute or treaty-protected ▫ Geographical indications, designation of origin, names relating to the International

Olympic Committee and the Red Cross/Red Crescent.

▫ Statute or treaty must be in force before or on 3 June 2008.

4. Some other mark constituting intellectual property (IP) ▫ ICANN has indicated that ‘other marks’ may also be included provided that they can

be represented within and verified by the TMCH.

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What marks won’t the TMCH accept?

1. Any mark starting with a DOT (.) or containing a Dot.

2. Any intellectual property rights which cannot be represented within the technical limitations of the Domain Name System (e.g. patents & designs)

3. Any mark not of national effect. (e.g. State marks)

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TMCH: Use in Sunrises

• Limited to marks for which ‘proof of use’ has been demonstrated to the TMCH.

• Trademark owners can purchase domain names before the general public.

• It does not mean you can automatically register in every new gTLD. However, it saves you from having your mark validated by registry after registry. You must meet the eligibility requirements of each registry.

• A Sunrise will last for at least 30 days (Minimum requirement), with a 30-day “advance notice” period.

• Limited to exact matches of a domain name to an eligible trademark.

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TMCH: Trademark Claims Service

• No proof of use is required.

• Notice sent to a potential domain name registrant indicating a potential conflict between the domain name and an existing TMCH-deposited trademark.

• If notified, a registrant must attest to non-infringement.

• If registered, a notice is sent to the TM owner (for possible remedial action).

• The claims period will last for a minimum of 90 days from registry launch.

▫ Some registries may choose to run the service for longer and/or indefinitely.

• Limited to exact matches of a domain name to an eligible trademark.

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Proof of Use

• In order to receive Trademark Claims notifications, no proof of use has to be submitted.

• To participate in Sunrises, a trademark owner must provide proof of use.

• You must provide a signed declaration and upload a sample of use.

• Proof of use will be re-verified once every 5 years.

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Acceptable Unacceptable

Labels

Tags

Containers from a product

Advertising and marketing

materials (including brochures,

pamphlets, catalogues, product manuals,

displays or signage, press releases, screen

shots, or social media marketing

materials)

Inclusion of a mark in a domain

name

Email messages

Licenses to use a mark

Business cards

Cost: Entry into the TMCH

Entry into the TMCH has two costs:

1. The official fees charged by Deloitte for placing one trademark in the TMCH using an agent - $145 for 1 year, $435 for 3 years and $725 for a 5 year registration.

2. Any fee charged by a registrar for filing and managing your trademark.

• Com Laude will charge $140 plus Deloitte fees to input and manage one trademark in the TMCH. If you have an existing relationship with Com Laude please contact your Client Manager for further information on our prices based upon your existing terms.

• Deloitte will charge as much as another $145 per annum for renewing an expiring registration in the TMCH.

• The costs for utilising the TMCH for either Sunrise and/or Trademark Claims are the same.

Please note these costs are either estimated or subject to change and Com Laude make no assertions as to their accuracy.

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What trademarks should I register?

• The TMCH is now accepting submissions.

• We suggest that you select the trademarks that you put into the TMCH based on the

following considerations:

Which marks are registered and in force in your key markets? Consider primary

and secondary brands.

Which marks are vital to your online presence and will be useful for marketing

purposes in a new gTLD?

Which marks are sensitive to infringement and/or abuse in these markets?

Consider the registry requirements for Open Restricted registries you are

interested in.

Review the terms you frequently register across existing TLDs and identify those

which you want to protect.

We can assist you to identify the right marks to submit into the TMCH. For more

information please contact tmch@comlaude.com

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Act now to analyse registries

• Review applications by your competitors and those relevant to your industry.

• Examples for an online technology company: .APP x 11, .COMPUTER and any other Internet/Online/IT related.

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Other benefits of the TMCH

• New gTLD registries have stated they will extend the trademark claims period beyond 90 days. ▫ E.g. Google – willing to implement trademark claims service of ‘indefinite

length’.

• There may be scope to ‘reserve’ terms, similar to .XXX. ▫ E.g. Donuts have indicated they will create a Domain Protected Marks List.

• A validated Trademark in the TMCH will streamline the URS process.

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What can I register as a domain name?

• A domain registration is limited to exact match of a domain name to an eligible trademark.

• During the trademark’s registration in the TMCH, the TMCH will automatically generate a list of matching domain names based on ICANN’s Domain Name Matching Rules.

• As is customary in Sunrises, spaces and punctuation such as asterisks or exclamation marks in the trademark may be omitted or replaced with hyphens in the domain name. In addition, the ‘&’ and ‘@’ symbols may be transcribed as ‘and’ or ‘at’ in the language(s) of the relevant trademark jurisdiction.

• Up to 10 permitted matching domain names are included in the price of a trademark registration in the TMCH. For each additional domain name, an additional fee will be charged by Deloitte. The fees are as follows: $1 for 1 year, $3 for 3 years and $5 for 5 year registrations.

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ICANN Matching Rules

CHI-#2737346-v1 22

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Benchmarking: WWYD?

(What will Yahoo! Do?)