Trademark Clearinghouse (TMCH) and Uniform Rapid Suspension (URS) System to impact newgTLD schedule?

In August 2012 ICANN held a meeting in Brussels regarding the technical details of the Trademark Clearinghouse (TMCH). ICANN has awarded the TMCH contract to Deloitte and IBM. Deloitte will be responsible for trademark validation and authentication while IBM will maintain the database and administer Sunrise and Trademark Claims. Both are expected to subcontract IPClearingHouse BVBA (CHIP) in order to facilitate these services.

Although trademark inclusion in the database is scheduled to begin in October 2012, including a test phase in early October, there are still serious issues to resolve. Registries and trademark owners favor different implementation models. In particular, trademark owners are concerned that the content of the TMCH database may fall into the wrong hands and is then used for cybersquatting. A safe solution, i.e. an implementation model that protects the TMCH database from abuse, will make this service complicated and expensive for registries and registrars. No matter which model or compromise will prevail, the task is difficult and may delay the New gTLD program even further. It is important that the TMCH provides the promised trademark protection but at the same time the TMCH has to be usable for registries and registrars.

This is not the only problem ICANN is facing. Problems regarding other Rights Protection Mechanisms (RPMs) loom ahead. The Uniform Rapid Suspension (URS) System still lacks a service provider that is capable of operating the service at US$ 300-500. WIPO, which is certainly capable of rendering these services has declined already.

The addition of several new Rights Protection Mechanisms (RPMs) to existing RPMs such as UDRP was a key issue for trademark owners. It has taken a long time to find a balance between the interests of trademark owners and the remaining stakeholders. The questions remains how these issues will affect ICANN’s timeline.