Trademark Clearinghouse Dispute Resolution Procedures

March 2013

Contents

1.    Introduction

1.1.     Background and objectives

1.2.     Scope

1.3.     Updates and changes

1.4.     Participants and roles

2.     Correction process

2.1.    Introduction

2.2.    Procedure

3.     Clearinghouse Dispute Resolution Process

3.1.     Introduction

3.2.     Disputes related to rejected Trademark Records

3.3.     Disputes related to accepted Trademark Records

3.4.     Third party dispute based on new information

EXHIBITS A, B, C

1. Introduction

1.1. Background and objectives

An important function of the Trademark Clearinghouse is to accept and verify different types of trademark data. Any and all mark data (a “Trademark Record”) submitted to the Clearinghouse will be verified by Deloitte (the “Verification Provider”).  The Verification Provider’s role is to confirm that the information submitted by a Trademark Holder or Trademark Agent (on behalf of a Trademark Holder) is accurate and that the Trademark Record meets the eligibility requirements for inclusion in the Clearinghouse (as indicated in the Clearinghouse Guidelines available on the Clearinghouse website (the “Verification Services”).  A team of employees of the Verification Provider (the “Verification Agents”) will perform the Verification Services in accordance with established requirements. In no event, however, will the Verification Provider or the Verification Agents provide any legal advice or legal opinion concerning a Trademark Record.

In addition to the eligibility requirements, ICANN has requested that the Verification Provider implement mechanisms to address disputes related to the Verification Services (“Disputes”). These Trademark Clearinghouse Dispute Resolution Guidelines (these “Guidelines”) provide an overview of the types of Disputes that can be introduced by a Trademark Holder, a Trademark Agent or a Third Party (as such terms are defined below) in relation to the Verification Services.

These Guidelines also discuss a mechanism through which Trademark Holders and Trademark Agents may correct or modify any information in a Trademark Record when they submit a Trademark Record to the Clearinghouse (the “Correction Process”).  This Correction Process is being implemented in order to limit the number of Disputes and potential additional costs involved in processing the Disputes.

1.2.  Scope

The Dispute Resolution Process will only cover three types of disputes:

1. Disputes brought by Trademark Holders or Trademark Agents alleging that the Clearinghouse incorrectly rejected a Trademark Record;
2. Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record; and
3. Disputes brought by Third Parties alleging that a Trademark Record is no longer valid based on new information (i.e. information not available to the Verification Provider at the time it reviewed the Trademark Record).

Fees will apply to any of these types of disputes, as described in further detail below.

1.3. Updates and changes

These Guidelines are subject to change as the Clearinghouse further develops. It will be the obligation of Trademark Holders, Trademark Agents and Third Parties to regularly check the most recent version of these Guidelines and comply with such version going forward pursuant to the terms of the Terms and Conditions for Trademark Holders or Terms and Conditions for Trademark Agents.  For the avoidance of doubt, the applicable version will be published on the Clearinghouse Website: www.trademark-clearinghouse.com.

1.4. Participants and roles

1.4.1.   Review Panel

Deloitte has identified an internal group of individuals (the “Review Panel”) who will examine each Dispute submitted to the Clearinghouse.  The Review Panel is a group which will be independent from the Verification Agents, and will not have participated in the Verification Services related to the applicable Dispute, as their sole role with respect to the Clearinghouse is their role on the Review Panel.  The Review Panel will examine all Disputes submitted to the Clearinghouse pursuant to these Guidelines.

1.4.2.   Trademark Holder

“Trademark Holders” are the individuals or entities and their designees (such as licensees or assignees) that have, or desire to have, their Trademark Records included in the Clearinghouse. A Trademark Holder can submit a Trademark Record directly through a Trademark Agent.

1.4.3.   Trademark Agent

“Trademark Agents” are entities or individuals that act on behalf of Trademark Holders in order to submit and manage Trademark Records in name and on behalf of the Trademark Holders.

1.4.4.   Third Parties

“Third Parties” are parties wishing to challenge a decision of the Verification Provider.  For the avoidance of doubt, a Third Party may be a Trademark Holder or Trademark Agent.

2. Correction process

2.1. Introduction

In order to limit the number of Disputes and potential additional costs involved, a Correction Process will be implemented by the Clearinghouse free of charge.  Once the Verification Provider has completed the Verification Services on a Trademark Record, the Correction Process will entitle Trademark Holders and Trademark Agents to correct or modify any information that was included in the original submission of such Trademark Record to the Clearinghouse for the first time after the Verification Provider has completed the Verification Services on such Trademark Record.  The Correction Process is limited to one correction attempt per Trademark Record submission and must be initiated within twenty (20) calendar days from the date a Trademark Record has been changed to the status incorrect by the Clearinghouse.

2.2. Procedure

In the event that a Trademark Record cannot be verified due to incorrect or incomplete information, the status of a Trademark Record will be changed to incorrect.  Upon accessing the account, the Trademark Holder or Trademark Agent will be able to see that the relevant Trademark Record’s status is <incorrect>, meaning that either the trademark information is incorrect, incomplete or does not meet the established eligibility requirements.  Upon clicking on such Trademark Record, the Trademark Holder or Trademark Agent will be able to see that Verification Agent has provided an explanation as to why the Trademark Record is incorrect or incomplete and is thus <incorrect>.  The Trademark Holder or Trademark Agent may, within twenty (20) calendar days of the date the notification was sent, correct the information at no additional cost.

Upon receipt of the edited information, the status of the Trademark Record will change to <corrected> and the provided information will be re-verified.  If the edited information enables the Trademark Record to be verified, the Trademark Record will be activated and will receive the status <verified>.  In the event that the edited information cannot be verified for any reason, including due to the fact that the information provided is again incorrect or incomplete, the Trademark Record will receive the status <invalid>.  If the Trademark Holder or Trademark Agent does not respond within twenty (20) calendar days, the Trademark Record will receive the status <invalid>.  Once a Trademark Record has received the status <invalid>, no changes can be made to that Trademark Record.  However, a Trademark Holder or Trademark Agent may thereafter file a request to dispute the decision of the Verification Agents as described below, or may submit a new Trademark Record.

3. Clearinghouse Dispute Resolution Process

3.1. Introduction

There are three types of Disputes allowed under the Dispute Resolution Process:

1. Disputes brought by Trademark Holders or Trademark Agents alleging that the Clearinghouse incorrectly rejected a Trademark Record;
2. Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record; and
3. Disputes brought by Third Parties alleging that a Trademark Record is no longer valid based on new information.

3.2. Disputes related to rejected Trademark Records

3.2.1.   General

These Disputes can be introduced by the Trademark Holder or Trademark Agent, as applicable, who submitted the Trademark Record and has been notified that the Trademark Record has received the status <invalid> and wishes to challenge this determination.

3.2.2.   Procedure for Trademark Agents or Trademark Holders to submit a Dispute

The Dispute must be filed with the Clearinghouse within a period of sixty (60) calendar days after the Trademark Record has been deemed <invalid>.

Disputes must be lodged via submission of the appropriate form of dispute request available on the Clearinghouse website to dispute-tmch/@/trademark-clearinghouse/./com (a “Dispute Request”).  A form of the Dispute Request for Trademark Holder and Trademark Agents is attached hereto as Exhibit A.

When submitting a Dispute, the Trademark Holder or Trademark Agent must provide the following information:

1. Trademark Record identification number;
2. Name of the Trademark Record in Dispute;
3. Name of the Trademark Holder or Trademark Agent associated with the Trademark Record;
4. Detailed explanation of the reason for the Dispute.

The fee for such Dispute is US$200. This fee is only due when the Review Panel upholds the determination of the Verification Agents.  The Trademark Holder or Trademark Agent will not be charged if the Review Panel overturns the determination of the Verification Agents.  After Examination, in the event that the Trademark Holder or Trademark Agent was unable to successfully challenge the verification process, an invoice will be sent to the Trademark Holder or Trademark Agent requesting payment of the invoice within five (5) calendar days of receipt of the invoice.

3.2.3.   Examination of the Dispute

Once all the required information has been provide, within seven (7) calendar days (or if during the “Early Bird Registration Period” (as defined in the Fee Schedule), fifteen (15) calendar days), the Review Panel will review and come to a determination of the Dispute.

 The Review Panel will determine whether the Verification Agents correctly determined that the Trademark Record was <invalid>. A summary of the steps taken and the decision of this panel will be provided to the Trademark Holder or Trademark Agent through the Clearinghouse. For example, information provided to the Trademark Holder or Trademark Agent may include:

1. Date of review determination;
2. The steps taken by the Review Panel; and
3. The determination of the Review Panel.

In the event the Review Panel concludes that the Verification Agents were correct in determining that the Trademark Record did not meet the eligibility requirements, the Review Panel will, notify via email the Trademark Holder or the Trademark Agent of this determination and provide them the reasons for the determination.  The Trademark Record will thereafter remain <invalid>.  The Trademark Holder or Trademark Agent will then be issued an invoice as described above.

If the Review Panel concludes that an error was made by the Verification Agents, it will notify the Trademark Holder or Trademark Agent through the Clearinghouse.  The Trademark Record will then be updated to the status <verified>.

3.3. Disputes related to accepted Trademark Records

These Disputes can be introduced by a Third Party wishing to challenge a decision of the Verification Provider that a Trademark Record was valid on the grounds that the Trademark Record has been incorrectly verified.  For example, if two Trademark Holders have the same Trademark Record, one may receive a Sunrise Notification when the other registers a domain name in the Sunrise Period causing the non-registrant to want to contest the registrant’s Trademark Record.

3.3.1.   Procedure

Disputes must be lodged via submission of the appropriate Dispute Request available on the Clearinghouse website to dispute-tmch/@/trademark-clearinghouse/./com. A form of the Dispute Request is attached hereto as Exhibit B.

The fee for such Dispute is US$250. This fee is only due when the Review Panel upholds the determination of the Verification Agents.  The Third Party will not be charged if the Review Panel overturns the determination of the Verification Agents.  After Examination, in the event that the Third Party was unable to successfully challenge the verification process, an invoice will be sent to the Third Party requesting payment of the fee within five (5) calendar days of receipt of the invoice.

The Third Party must provide the following information when submitting a Dispute Request:

1. Name of the Third Party;
2. Address of the Third Party;
3. VAT number if applicable;
4. Email address of the Third Party;
5. Trademark Record identification number;
6. Name of the Trademark Record in Dispute;
7. Name of the Trademark Holder associated with the Trademark Record in Dispute; and
8. Reason the Dispute (three options available):

• The Trademark Record is not in full force and effect;
• The Trademark Holder specified in the Trademark Record is not the holder of the underlying trademark; or
• The Trademark Record does not meet the eligibility requirements for inclusion in the Clearinghouse.

3.3.2.   Examination of the Dispute

Upon receipt of the Dispute, the Review Panel will examine the Dispute and make a decision within ten (10) calendar days. (or if during the Early Bird Registration Period, within fifteen (15) calendar days)

The Review Panel will determine whether the Verification Agents correctly determined that the Trademark Record was <verified>.  A summary of the steps taken and the decision of this panel will be provided to the Third Party by e-mail. For example, information provided to the Third Party may include:

1. Date of review determination;
2. The steps taken by the Review Panel; and
3. The determination of the Review Panel.

In the event the Review Panel concludes, based on the information provided to the Clearinghouse, that the Verification Agents were correct in determining that the Trademark Record met the eligibility requirements, the Review Panel will, , notify the Third Party by email of this determination and provide them the reasons for the determination.  The Trademark Record will thereafter remain <verified>.  The Third Party will then be issued an invoice as described above.  The applicable Trademark Holder or Trademark Agent will be notified of this decision through the Clearinghouse within five (5) calendar days.If the Review Panel concludes that an error was made by the Verification Agents, it will notify the Third Party thereof.  The Trademark Record will then be deemed <invalid>.  The applicable Trademark Holder or Trademark Agent will be notified of the change to its Trademark Record from <verified> to <invalid> through the Clearinghouse within three (3) calendar days.

3.4. Third party dispute based on new information

These Disputes can be introduced by a Third Party wishing to challenge the validity of Trademark Record based upon the existence of new information (i.e. information not available to the Verification Provider at the time it reviewed the Trademark Record).

3.4.1.   Procedure

Disputes must be lodged via submission of the appropriate Dispute Request available on the Clearinghouse website, to dispute-tmch/@/trademark-clearinghouse/./com.  A form of the Dispute Request for Third Parties is attached hereto as Exhibit C.

The fee for such Dispute is US$300.  This fee is only due when the Review Panel upholds the determination of the Verification Agents.  In the event of a successful dispute, an invoice will be sent for US$200 (75% of the initial dispute fee).  After Examination, an invoice will be sent to the Third Party requesting to pay the applicable fee within five (5) calendar days of receipt of the invoice.

The Third Party must provide the following information when submitting a Dispute Request:

1. Name of the Third Party;
2. Address of the Third Party;
3. VAT number if applicable;
4. Email address of the Third Party;
5. Trademark Record identification number;
6. Name of the Trademark Record in Dispute;
7. Name of the Trademark Holder associated with the Trademark Record in Dispute, if available;
8. Reason for the Dispute (two options available):
   • The Trademark Record is no longer in full force and effect; or
   • The Trademark Holder specified in the Trademark Record is no longer the holder of the underlying trademark.
9. The new information.

3.4.2.   Examination of the Dispute

Upon receipt of the Dispute, the Review Panel will review the Dispute and will notify the Trademark Holder or Trademark Agent associated with the Trademark Record in Dispute.The Trademark Holder or Trademark Agent will then have five (5) calendar days following receipt of such notice to respond.

After the five (5) day period for the Trademark Holder or Trademark Agent to respond expires, the Review Panel will examine the Dispute and make a decision within ten (10) calendar days (or if during the Early Bird Registration Period, within fifteen (15) calendar days).

The Review Panel will determine whether the information provided by the Third Party and the information provided by the Trademark Agent or Trademark Holder has an impact on the determination of the Verification Agents.

In the event the Review Panel decides, based on the provided information, that the Trademark Record remains <verified>, the Review Panel will notify the Third Party of this determination and provide them the reasons for the determination.  The Trademark Record will thereafter remain <verified>.  The Third Party will then be issued an invoice as described above.  The Third Party will then be issued an invoice for US$300.

If the Review Panel concludes that the information provided by the Third Party has an impact on the determination of the Verification Agents, the Third Party will be notified thereof and the Trademark Record may be deemed <invalid>.  The Third Party will then be issued an invoice for US$200.  The Trademark Holder or Trademark Agent will also be notified.  The applicable Trademark Holder or Trademark Agent will be notified of the change to its Trademark Record from <verified to <invalid> through the Clearinghouse within three (3) calendar days.