TMCH Individual Proposal #7

Context: 

Rationale provided by the Proponent: 

1. Transparency is essential in order to monitor for abusive registrations, as well as to facilitate broader oversight over how the database is operating.

Throughout our review process, among the key challenges that this Working Group has faced has been a lack of data regarding what, exactly, is in the TMCH. What little information we have has come from the small number of journalists who are engaged enough on this issue to take a “trial-and-error” approach to dig up some particularly egregious registrations, as well as general information provided by Deloitte regarding their overall approach to vetting marks. 

Neither of these very limited insights into the TMCH database provides anything close to a complete picture of how the TMCH is operating, and the overall landscape of marks which it contains. This lack of information makes effective oversight vastly more difficult, both by this Working Group and by interested third parties who otherwise might be keen to audit the operations of the TMCH, such as academics and civil society watchdog groups. Accountability would be vastly improved by a shift to a transparent database. 

It is also worth noting that transparency is fundamental to ICANN’s broader legitimacy as steward of a global public resource. Article 3 of ICANN’s bylaws, which focuses specifically on transparency, opens with a statement that “ICANN and its constituent bodies shall operate to the maximum extent feasible in an open and transparent manner”. Maintaining the TMCH as a secret database is incongruent with the organization’s broader commitment to and interest in promoting transparency and openness in its operations. 

2. The commercial information contained within the TMCH is already effectively public.

In order to register a mark in the TMCH, it must already be registered in a national trademark database, almost all of which are open by default. In other words, trademarks are not secret or commercially confidential information, since the companies have already publicly identified their commercial interest in the marks by submitting them to a national database. Any party who is interested enough to track a party’s commercial strategy will already be able to obtain a complete picture of their portfolio by studying registrations in major national databases. However, while it is relatively easy to obtain information about a particular company through surveying the different databases, these databases do not provide a complete or consolidated picture of the state of trademark claims in the domain name space. For example, existing public information would not allow a potential new entrant to differentiate between claims which are not actively enforced online. In other words, while the commercially sensitive aspects of this data are minimal, there is a significant utility in its publication for legitimate uses.

3. There are important public interest reasons why trademark databases are open.

Beyond merely promoting accountability, there are important public interest reasons why trademark databases are kept public which apply equally to the TMCH. For starters, letting the public see which marks have been “claimed” builds greater reliability and consistency into the system, allowing start-ups to build their brand in a way that will avoid future conflicts. A trademark database which is kept secret also defeats one of the core purposes of trademark law, namely in allowing consumers to associate a particular product with its commercial source. The public nature of this association is the entire point, as there would be little consumer benefit from a “secret” trademark.

Working Group Deliberation: The Working Group had sharply diverging opinions on whether the TMCH Database should remain confidential or become open and searchable. Several Working Group members noted that, while general transparency and openness may be beneficial to good faith actors (e.g. informing them what domain names they should avoid registering ahead of receiving a Claims Notice), they also thought that rights-holders may have legitimate reasons for wanting to keep the TMCH Database closed, including the risk of thereby disclosing commercially sensitive information such as trademark value and brand strategies. 

On the other hand, Working Group members who supported this proposal thought that allowing the TMCH Database to be searchable could yield information that may be used to flag trademarks that ought not to have been included, e.g. via objection proceedings initiated with the TMCH Validation Service Provider.