Re: [bc-gnso] Re: Urgent! Do we kill the Trademark Clearinghouse - being sold as Christmas Gift to TM Holders

[Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>]

Zahid ? Thanks for raising the alarm about this ?white elephant¹ of a
Christmas gift.  I am checking with my members, but it seems best to reject
the gift as a comprehensive solution to defensive registrations.    Trick is
to avoid looking like we are just attempting to slow-down the new gTLD
launch.  Perhaps we do something like this:

We could agree that the Clearinghouse has a very limited benefit ? just a
way to cut costs for TM owners having to monitor multiple parallel sunrise
periods.  But that¹s ALL it is, so we should neither consider nor accept
this Clearinghouse mechanism as the required solution for defensive
registrations.  

--Steve


On 12/2/09 2:19 AM, "Zahid Jamil" <zahid@xxxxxxxxx> wrote:

> Not sure if this got to the list.  Gary, would it possible to make sure this
> gets posted.  Thanks.
> 
>                                        Sincerely,Zahid
> JamilBarrister-at-lawJamil & JamilBarristers-at-law219-221 Central Hotel
> AnnexeMerewether Road, Karachi. PakistanCell: +923008238230Tel: +92 21 5680760
> / 5685276 / 5655025Fax: +92 21 5655026www.jamilandjamil.com*** This Message
> Has Been Sent Using BlackBerry Internet Service from Mobilink ***
> 
> From:  "Zahid Jamil" <zahid@xxxxxxxxxxxxxxxxx>
> Date: Tue, 1 Dec 2009 21:44:11 +0500
> To: 'bc - GNSO list'<bc-gnso@xxxxxxxxx>
> Subject: Urgent! Do we kill the Trademark Clearinghouse - being sold as
> Christmas Gift to TM Holders
> Dear All,
>  
> As you all know that Trademark protection is a major issue for launch of new
> gTLDs.
>  
> The concern:
> There is a concern that the IP clearing house (the way its developing in the
> Special TM Implementation-STI Working Group which is supposed to send
> recommendations to the GNSO for being placed before the ICANN Board) may be an
> eyewash/placebo. 
>  
> It doesn¹t address any of the pre-launch concerns of Trademark Mark Holders
> (TM Holders) such as defensive registrations.
>  
> But it is being presented as a great compromise/favour and ?Christmas gift¹ to
> TM Holders.  
>  
> Here are some of the aspects that may be useful for you to know and provide
> views on:
>  
>  
> Who pays:
> TM Holders have to PAY ANNULLAY to be in the TM Clearinghouse ­ (Registry¹s
> suggest that only TM Holders pick up the cost even though Registry¹s get a
> windfall cost saving for pre-launch for sunrise and pre-launch IP claims)
>  
>  
> What is included in it:
> The IP Clearinghouse ONLY includes Nationally Registered Marks (NO common law
> marks can be included nor any other types of protected names)
>  
>  
> With what does my brand match:
> One would expect that as in Mark Monitor and even self-searches not only the
> brand name but variants would be matched.
>  
> NO. 
>  
> The match is defined as ONLY IDENTICAL/EXACT match  i.e. If the brand is
> ³Yahoo², the only time a match for the services mentioned below would be
> triggered is if someone tried to register the domain name ³yahoo.TLD² ­ and
> that¹s it.
>  
> However,  ³yahoos.TLD², ³yahoosearch.TLD² or ³yahoosports.TLD² or
> ³searchyahoo.TLD² etc. would NOT be matched.
>  
>  
> What is this database used for:
> For only PRE-LAUNCH (so it serves no purpose to be in the Clearing house
> POST-launch):
>  
> Sunrise ­ for which a TM Holder may have to PAY for dispute resolution in case
> another TM holder¹s rights conflicts with theirs ­ AND ­ forcing TM Holders to
> defensively PAY for registering domain names as abundant caution to ensure
> that registrants don¹t get them once the gTLD is launched ­ remember, however,
> the match is only for IDENTICAL
>  
> Or
>  
> IP Claims Notice­ this is nothing more than a notice provision to people
> attempting to register the IDENTICAL domain as the brand in PRE-LAUNCH ONLY.
> In Pre-launch, if someone tries to register ?yahoo.TLD¹, then they get a
> notice telling them that their application matches with a brand in the IP
> Clearinghouse.  They are asked if they affirm that they will only use this for
> legitimate purposes (paraphrase) ­ they accept by clinking ?affirm¹ and they
> get the domain name.  The TM holder only gets a notice that such a
> registration has been allowed once the new gTLD has launched to then decide
> whether to file a UDS, UDRP or Court case.  No notices, however, in case
> someone tries to register ³yahoosearch.TLD².
>  
>  
> How can this be gamed:
>  
> As a bad actor I wait and don¹t register any domains with are EXACT matches in
> PRE-LAUNCH such as ³yahoo.TLD² and wait for the first 30 seconds of the new
> gTLD being launched and register then to CIRCUMVENT the entire ³WHITE
> ELEPHANT² for which as Brand holder I am being forced to PAY to keep it
> running.
>  
> But as a bad actor I can register ³yahoos.TLD², ³yahoosearch.TLD² or
> ³yahoosports.TLD² or ³searchyahoo.TLD² etc. in PRE-LAUNCH and POST-LAUNCH and
> I won¹t get a notice and the Brand holder won¹t get a notice.
>  
>  
> One advantage is that there will be one registration of TM (ANNUALLY PAID FOR
> RENEWALS) for Sunrise and so all new Registry¹s won¹t have to spend money on
> Consultancy/Admin etc. for Sunrise ­ so it¹s really a SUNRISE CLEARING HOUSE
> for cutting Registry costs.
>  
>  
> My opinion: This doesn¹t help small businesses nor does it help developing
> country Brand owners since they probably won¹t be participating in Sunrise and
> pre-launch.
>  
> This IP CLEARINGHOUSE is being presented as a great compromise by Registries,
> Registrars and Non-Commercials.  One even described it offline as a ?Christmas
> Gift¹ to Trademark Holders.
>  
> Options:
>  
> We state our objections but let it go through.  This then becomes for the
> Board a solution for defensive registrations by TM holders and so seemingly,
> for the record, addresses Brand holders¹ concerns in Pre-Launch and defensive
> registrations.
> OR
> We state clearly that we as TM Holders don¹t want this solution since it fails
> to address/solve the real problems identified by Brand Holders.
>  
>  
>  A thought:  would not being in the IP CLEARINGHOUSE be seen as not being
> vigilant in protecting your brand name thus creating a legal imperative to
> forcibly have to register and PAY to be in it?  I don¹t know.
>  
>  
> Just as background.  This Clearing house was an adjunct and ancillary piece of
> technology/database to facilitate the Globally Protected Marks List (GPML).
> Now that the GPML has been jettisoned,  this ancillary to GPML (byproduct) is
> still being proposed by the Board & Staff as a solution for Trademark
> protection in for new gTLDs.
>  
> A Solution looking for a problem to solve?
>  
>  
> This is my humble and very quick attempt to try and simplify the issue and
> would welcome any additions or clarifications or corrections.  The STI is
> supposed to have a conference call on this in 2 days.
>  
> Hope this helps and looking for feedback.
>  
>  
>  
>  
>  
>  
> Best regards,
>  
>  
> Zahid Jamil
> Barrister-at-law
> Jamil & Jamil
> Barristers-at-law
> 219-221 Central Hotel Annexe
> Merewether Road, Karachi. Pakistan
> Cell: +923008238230
> Tel: +92 21 5680760 / 5685276 / 5655025
> Fax: +92 21 5655026
> www.jamilandjamil.com <http://www.jamilandjamil.com/>
>  
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-- 
Steve DelBianco
Executive Director
NetChoice
http://www.NetChoice.org and http://blog.netchoice.org
+1.202.420.7482