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.