[bc-gnso] Expansion of TMC Database-Procedural Issues

[Phil Corwin <psc@xxxxxxxxxxx>]

I am well aware that the BC favored expansion of the TMC database to allow 
rights holders to add up to 50 domain name variations that had been recovered 
via UDRP or court proceedings. While not wishing to be the skunk at the garden 
party, I continue to believe that the manner in which ICANN made this 
determination raises serious procedural issues (especially coming right after 
being advised by the GNSO that a majority believed it was a policy matter 
requiring further discussion) - and raises additional implementation questions 
that have yet to be addressed.

Tom Barrett of Encirca and TM.biz has a guest post at 
http://www.thedomains.com/2013/03/23/guest-post-tom-barrett-icann-expands-trademark-claims-do-the-ends-justify-the-means/
 that addresses the subject in what I believe is a balanced manner. I have 
posted my own article on this at http://internetcommerce.org/ICANN_Amnesia . 
The point for business users is to be cautious in validating questionable 
procedures to reach decisions you favor, because the same procedures can later 
be used to ram through decisions you strongly disfavor.

For my own part I think the TMC decision may sometimes be useful as an 
educational measure for registrants who may have no intention to infringe, but 
in many other instances will generate false positives that deter registrations 
that would not constitute bad faith registration and use. Regardless, now that 
ICANN has made the decision some additional questions arise that have not been 
clarified:

*         What if any documentation will rights holders have to submit to the 
TMC when they seek to list TM variants claimed to have been recovered in prior 
proceedings?

*         When a registrant receives a TMC warning will he/she be advised 
whether the domain being sought is an exact TM match or a variation that was 
lost in a UDRP or litigation?

*         When the domain was lost in a UDRP, will there be further information 
as to whether the filing was responded to or was a default judgment - and 
whether there was an appeal by registrant and, if so, its result?

*         If a registrant proceeds with a domain registration of a TM variation 
despite receiving the TMC warning will that subsequently be viewed (at least 
presumptively)  as prima facie evidence of bad faith registration in a 
subsequent UDRP or URS, or will that critical factor remain an open question 
for panel determination?

All of these are relevant questions that are not addressed in ICANN's 
announcement of last week. The answers are important for all prospective 
registrants in new gTLDs.

Thanks for considering my viewpoint, and best regards.



Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
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Twitter: @VlawDC

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