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RE: Proposed Implementation Plan for Trademark Claims Process

  • To: "Neuman, Jeff" <Jeff.Neuman@xxxxxxxxxx>, "6gtld-guide@xxxxxxxxx" <6gtld-guide@xxxxxxxxx>
  • Subject: RE: Proposed Implementation Plan for Trademark Claims Process
  • From: "Neuman, Jeff" <Jeff.Neuman@xxxxxxxxxx>
  • Date: Mon, 16 May 2011 12:16:43 -0400

Resubmitted with Doc in PDF.



Jeffrey J. Neuman
Neustar, Inc. / Vice President, Law & Policy
Please note new address:  21575 Ridgetop Circle, Sterling VA 20166

________________________________
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From: Neuman, Jeff
Sent: Sunday, May 15, 2011 1:16 PM
To: '6gtld-guide@xxxxxxxxx'
Subject: Proposed Implementation Plan for Trademark Claims Process


We, the undersigned, would like to first thank ICANN for the opportunity to 
comment on the latest version of the Applicant Guidebook and believe that the 
time has come to move forward in the implementation phase by approving the 
Final Guidebook on June 20, 2011 in Singapore.  We believe that ICANN has come 
a long way to work out its differences with the Government Advisory Committee 
to ensure that adequate protections exist for Intellectual Property owners at 
both the top and second-level.  One of the compromises involved the recent 
introduction of the concept of making both the Sunrise and Trademark Claims 
processes mandatory for all new gTLD Registries.  While we believe that the 
Guidebook sufficiently focuses on the criteria for the submission, validation 
and management of Trademark Claims by the Trademark Clearinghouse, we also want 
to focus on the potential operational impacts that requiring both processes 
would have on the interaction between the Trademark Clearinghouse, Registry 
Operators, Registrars, Resellers and Registrants.

To that end, we have produced a draft Trademark Claims Notification Process 
Flow, in order to assist ICANN with the construction of the RFP for 
Clearinghouse Providers and to provide guidance to the new gTLD Registry 
applicants on how an implementation of a 60-day Trademark Claims Notification 
process could work.  As you will see in the process flow, we recommend a 
flexible, yet consistent mechanism for the implementation of the Trademark 
Claims Notification process that also preserves options for a multitude of 
business models that may emerge with the launch of potentially hundreds of new 
gTLDs.  The model makes several assumptions which we would like to see included 
in the final version of the Applicant Guidebook; namely,

1.               1.         Trademark Claims Notifications to prospective 
registrants for domain names match ing Trademark Claims will commence after the 
completion of the Sunrise registration period.  Therefore, during the Sunrise 
period, prospective registrants will not be displayed TM Claims notices.  
However, at the conclusion of the Sunrise period, TM Claimants in the CH will 
receive notice of just-accepted Sunrise registrations; and

2.               2.         “General Registration” shall mean the time period 
following the Sunrise Period in which domain names in the TLD are made 
generally available to registrants who are otherwise qualified to register 
domain names in the TLD.  This can be accomplished through any one of a number 
of processes including, but not limited to, first-come first-served, founders 
programs, auctions, etc.

We also want to stress that the although we are willing to provide the IP 
Claims service for the first 60-days following the commencement of General 
Registration (as defined above), the process is fairly labor and resource 
intensive and is not one that will be sustainable during the life of the TLD 
without significant cost to registries, registrars, and ultimately registrants 
and the Internet community.  We agree with both the GAC and the ICANN Board 
that “Infringement of rights occurs most often after the end of the sunrise 
period (See 
http://gac.icann.org/system/files/20110419-GAC_comments_on_NewgTLD_Rights_Protection.pdf)
 and therefore having the Trademark Claims period last for 60-days following 
the sunrise period should address most of the infringement that occurs during 
the launch period.  Furthermore, we would like to note that nothing will 
prohibit the Trademark Clearinghouse (or any other third party) from offering a 
service that provides notices  to trademark owners after the Trademark Claims 
period to serve as a warning! system to ensure the trademark owner is aware of 
the fact that a domain name has been registered that is potentially infringing 
his/her rights. In fact, many such services exist today in the marketplace and 
will continue to provide these services after the launch of new gTLDs.

However, mandating that new gTLD Registries implement a perpetual Trademark 
Claims has the potential of placing the new gTLDs at a competitive disadvantage 
to the incumbent TLDs (who do not have to implement that rights protection 
mechanism).  If the ICANN community, including all of its stakeholders, 
believes that there should be a perpetual IP Claims process required for all 
TLDs ( both new and existing), it can decide to launch a bottom-up policy 
development process to require its implementation.  This should only be done 
after we get some experience dealing with the Trademark Clearinghouse and the 
Trademark Claims process so that the community can properly evaluate the yet 
untested rights protection mechanism.

Finally, we want to emphasize that we believe that the ICANN Board has come a 
long way in providing protections for trademark owners in the new gTLD process. 
 Compared to the protections afforded today in the existing gTLDs (or even any 
of the ccTLDs), the amount of additional protections proposed at both the top 
and second-level are substantial, including:


1.      Legal Rights Objections

2.      Thick Whois

3.      Trademark Clearinghouse

4.      Mandatory Sunrise Process

5.      Mandatory post-launch IP Claims

6.      Incentives for providing a high security TLD

7.      Abuse Points of Contact

8.      Requiring cooperation with law enforcement

9.      Uniform Rapid Suspension

10.  Post Delegation Dispute Resolution Process

11.  Increased due diligence including ferreting out those applications from 
serial cybersquatters

12.  Removal of orphan glue records (to inhibit spam)

13.  Centralized method of zone-‐file access

We thank you for the opportunity to present this proposal and would be happy to 
discuss this with ICANN staff and the community if so desired.

Respectfully Submitted,

Donuts, Inc.
Encirca
Enom
GoDaddy.com, Inc.
Minds + Machines
Network Solutions, LLC
Neustar, Inc.
Oversee.net
Tucows


Jeffrey J. Neuman
Neustar, Inc. / Vice President, Law & Policy
21575 Ridgetop Circle, Sterling, VA 20166
Office: +1.571.434.5772  Mobile: +1.202.549.5079  Fax: +1.703.738.7965 / 
jeff.neuman@xxxxxxxxxxx<mailto:jeff.neuman@xxxxxxxxxxx>  / 
www.neustar.biz<http://www.neustar.biz/>
Please note new address:  21575 Ridgetop Circle, Sterling VA 20166
________________________________
The information contained in this e-mail message is intended only for the use 
of the recipient(s) named above and may contain confidential and/or privileged 
information. If you are not the intended recipient you have received this 
e-mail message in error and any review, dissemination, distribution, or copying 
of this message is strictly prohibited. If you have received this communication 
in error, please notify us immediately and delete the original message.

Attachment: IPClaims Final.pdf
Description: IPClaims Final.pdf



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