Promising a rapid expansion in domain name classes beyond existing types such as .com, .info and .net, ICANN's new gTLD programme will boost the potential for representing brands in web addresses. With that in mind, ICANN has proposed that the clearinghouse could act as a verifier for new domains by retaining copies of trademark ownership records.

First mooted in mid-2009, the clearinghouse soon became a bone of contention between two branches of ICANN's infrastructure. The group's Special Trademark Issues (STI) team advised that the facility should not include data from countries that did not undertake 'substantive review' of trademark applications – ie, countries that were not as rigorous in their approach as others. However, ICANN's Intellectual Property Constituency (IPC) 'vigorously' objected, arguing that the scope of trademark examinations in national jurisdictions was 'not something that a registry operator or ICANN should interfere with'.

As envisaged in ICANN's new proposals, the two main standards for inclusion in the clearinghouse would be a) nationally or multi-nationally registered 'text mark' trademarks from all jurisdictions (including countries where there is no substantive review), and b) any text mark that has been validated through a court of law or other judicial proceeding. Clause a) demonstrates that ICANN has taken on board the IPC's objection and is prepared to vouch for any mark backed by a national authority, regardless of the examination methods that legitimised it.

The clearinghouse concept originated from ICANN's Implementation Recommendation Team (IRT) – a body created to safeguard the interests of rights holders during the sunrise of new gTLDs and ensure that the landrush for branded domains would not be marred by a spate of infringement.

'Domains,' said the IRT, 'should be trusted signs that assist all of us to navigate the internet, whether we type them straight into a browser or sift a search engine listing for that domain name we recognise.

'However, the day-to-day experience of most internet users is not as it should be. Lurking in the darkest corners of cyberspace are the unscrupulous, the dishonest and the dangerous who prey on the unwary. Malicious behaviours like spamming or phishing abound [but] for most of us, it is a reasonable assumption that the owner of a trademark in the real world that you rely on to provide authentic goods or services is also the owner of a website that you find under the corresponding domain name.'

ICANN proposes that the clearinghouse should be managed by an independent entity. If approved and established, the facility will take the shape of a quick-reference database that domain registration authorities will be able to access around the clock.

Dominic Speller, domains manager at leading IP and legal services outsourcing company CPA Global, told IP Review Online that efficiency would be the key factor in implementing the initiative. 'If it is operated fairly and cost effectively, and is well-publicised to rights holders,' he said, 'I believe that the clearinghouse could be a strong solution to providing global trademark data to new registries, enabling them to recognise IP Rights more easily in their processes.

'It will also work towards reducing the repetitive effort that rights holders are currently beholden to when protecting their trademarks in new TLDs. It remains to be seen whether the clearinghouse proposal can give brand owners confidence that the cost of protecting their rights will not increase with the launch of the new gTLD programme.' Speller added that a range of concerns have yet to be addressed – including the logistics of updating the clearinghouse – and stressed that brand owners will still need to follow the Uniform Domain Name Dispute Resolution Policy (UDPR) and the Sunrise Dispute Resolution Policy (SDRP), and act on registrars' alerts of pre-launch conflicts.

Speller also highlighted the facility's potential cost impacts. 'The latest proposal,' he said, 'recommends that trademark holders submitting marks to the clearinghouse from non-substantive-review countries should be offered an additional validation process by the facility itself, or its agents, "to determine whether the trademark holder has used the registered trademarks in connection with the goods and services applicable to the registration". As all the costs of the clearinghouse would be carried by those who utilise it – including the additional validation step for those relevant jurisdictions – I can foresee that rights holders in non-substantive-review countries will incur higher costs. If this becomes the case, questions could be asked about the equality of the process. It would be up to the clearinghouse to ensure that the costs are fair for all applicants, regardless of their domicile.'

The proposals are open for public comment. Download a PDF of the document and register your thoughts with ICANN.