DAG4 TRADEMARK CLEARINGHOUSE COMMENTS FROM ENCIRCA

["Thomas Barrett - EnCirca" <tbarrett@xxxxxxxxxxx>]

July 21, 2010

DAG4 TRADEMARK CLEARINGHOUSE COMMENTS FROM ENCIRCA

EnCirca is an ICANN-accredited Registrar formed in 2001, and has helped
thousands of trademark customers navigate numerous sunrise periods for
TLD's.

Previously, I helped launch the IP Claims process for .biz and was chief
executive officer at NetNames, a corporate services registrar.  And even
earlier, I was with Thomson & Thomson, a leading trademark research firm,
where I was responsible for the development of large-scale research
databases and services for trademark lawyers.

The proposed Trademark Clearinghouse represents an enormous opportunity for
ICANN.  Potential beneficiaries include not only trademark owners but also
consumers of the internet.  In particular, the mission of the Trademark
Clearinghouse should be expandable to serve as a resource to educate the
public about the rights of trademark owners.

The DAG4 version of the Trademark Clearinghouse is well-written and provides
sufficient detail of the functions required for rights protection.  My only
caveat is that since the published draft describing the Trademark
Clearinghouse will form the nucleus of a Request for Proposal for service
providers, it is important that the document remains focused on requirements
(What we want) and refrain from specifying implementation details (How it
gets done).  By focusing on "What we want" and avoiding proscribing "How it
gets done", this will hopefully encourage creative and competitive proposals
from a wide range of service providers of the trademark industry.

I have just a few minor suggestions to improve the clarity of the document:

1. Section 2. Treatment of Marks.

I believe the compromise offer for allowing marks that have not undergone
substantive review to be a workable compromise.  This compromise allows all
registered trademark owners to be included in the Clearinghouse.
Authentication providers can review submissions from the jurisdictions
impacted by this restriction and ensure that marks have been in conjunction
with the applicable good and services for which they were registered.
 
The punctuation used for the two bullets labeled as "A" and "B" is unclear.
Is the phrase "and that was in effect on or before 26 June 2008" intended to
apply only to sub-bullet "iii" or to all three bullets "i", "ii" and "iii"?
As it currently reads, it applies to sub-bullet "iii" only, which I do not
believe was the intent.

2. Section 6. Use of Clearinghouse Data.

I can see beneficial uses of the Trademark Clearinghouse to help educate
consumers and registrants about the rights of trademark owners.  For this to
happen there should be a mechanism for the Trademark Clearinghouse to evolve
to serve these uses.  

To enable this, following the sentence: "The reason for such a provision
would be to prevent the Clearinghouse from using the data in other ways",
add the following phrase: "without undergoing the ICANN public participation
process."

3. Section 7. Data Authentication and Validation Guidelines.

I think there is a qualifier missing in the last paragraph for validation of
marks by the clearinghouse.  For the sentence that reads "in connection with
a bona fide offering for sale of goods or services" should be inserted the
phrase "in the goods specified in the trademark registration".

This will help prevent the inclusion of sham trademarks in the
Clearinghouse.  For example: trademarks registrations of generic words
applied for in obscure trademark classes that have never been used in
commerce for the goods specified.

4. Section 8. Mandatory Pre-Launch Services.

This document is clear that new GTLD registries must use the Trademark
Clearinghouse.  But it is not explicit that registries must use it
exclusively for the submission of Sunrise or IP claims submissions.  This
should be made clear.

In the same section, there is a reference to "UN-sponsored language".  What
UN agency is this referring to?

In the same section, on the definition of "Identical match"; it says
punctuation or special characters may be replaced by ".spaces, hyphens or
underscores."   Underscores are not a valid character for domain names.

5. Section 9. Protection for Trademarks in Clearinghouse
Second to last paragraph starting with "The proposed SDRP", refers to
registration of "national effect" in two places.  Should it also mention
"multi-national effect" as well or is this excluded on purpose?

Last sentence is unclear: "on or before ICANN announced the applications
received."  What applications are you referring to?

END OF COMMENTS

Thanks again for this opportunity to provide comments on the DAG4.

Best regards,

Tom Barrett
President
EnCirca
400 West Cummings Park
Suite 1725-307
Woburn, MA 01801