TMCH must not be the source of new rights or privileges

[Werner Staub <werner@xxxxxxxx>]

The purpose of the TMCH is to help trademark holders to defend their
existing rights. It has never been, nor can it be the role of the
TMCH to create new rights or privileges at the expense of other
legitimate rights.

The draft RPM requirements as published in
draft-rpm-requirements-06aug13.pdf would, however, dole out two kinds
of unacceptable new privileges, and correspondingly, cause other
rights to be trampled or violated. This affects collective rights
held by communities or the public at large.


1. Privileges to the TMCH providers

The draft gives an unnecessary and unacceptable privilege to the TMCH
providers, Deloitte and IBM. This is the result of Clause 2.4.1
awarding the TMCH a monopoly on trademark validation.

This is not only a problem because of the high fees charged, but also
because the TMCH is badly adapted for many needs, especially those of
smaller or local trademark holders. To smaller brand holders, the
TMCH can be a costly detour devouring prodigious amounts of their
manpower.

It is inappropriate for ICANN to mandate a TMCH monopoly here.

The use of ICANN rules to favor one provider may be found to
constitute an abuse of dominant market position from a competition
standpoint. The essence is less the revenue generated from fees by
the TMCH providers, but the indirect advantages associated with the
pivotal role of a monopolistic TMCH. The TMCH monopoly is
particularly problematic in the context of the secrecy that has
enshrouded contracting between ICANN and the TMCH providers. And the
latter is incompatible with ICANN’s accountability and transparency
commitments.

Ultimately, a monopoly TMCH is even bad for the TMCH providers
themselves. (Note that such a situation has never been an accepted
excuse for anti-competitive practices.) A competitive environment of
trademark validation, one where the TMCH is merely one available
provider, is the best way forward. Competition and choice in
trademark validation would also be the best way to minimize the
effect of the many design bugs, which currently make the TMCH too
shaky to rely upon alone.


2. Privileges beyond the limits of trademark-protected rights

The current draft awards formal priority to Sunrise-Eligible Rights
holders over holders of other rights. Many legal rights are being
ignored by the TMCH, hence the holders of those rights are not
“sunrise-eligible”. In particular, public authorities are
explicitly excluded. That means that collective rights are thus left
without protection in the TMCH.

At the same time, the TMCH fails to document the clear limits the Law
has set in all jurisdictions to trademark rights.

The current draft RPM Requirements ignore these gaps.  The result is
a process designed as if – and often misunderstood as if – the
misuse of a trademark registrations was the very purpose the sunrise
process.

Here are a couple of examples.


2.1. Local area names for geoTLDs.

Example: There are many trademark based on the string “Ipanema”.
Ipanema is a famous beach in Rio de Janeiro. One famous company name
Ipanema produces footwear, evidently named after the famous beach. It
goes without saying that the Ipanema footwear company has no
legitimate right to for “ipanema.rio”, not even a right of first
refusal. The legitimate holders of the rights to “ipanema.rio”
are the communities associated with the place. They have
democratically elected national and local government authorities.
Those authorities, rather than ICANN, must decide what happens to
“ipanema.rio”.

The communitarian meaning of place names (as opposed to their use as
trademarks) is not just key for geographic TLD strings such as .rio.

The question is whether the place name has an intrinsic property of
referring to a communitarian concern when associated with a given TLD
string.


2.2. Place names and people descriptors

Example: “napoli.sport” clearly targets the local sport community
in Naples, just as “antwerp.hotel” targets the hotel sector in
Antwerp. There are many “Napoli” brands, even within sport, and
there are brands, even hotel-related, by the name of “Antwerp”.

But the holders of these trademarks do not have rights that they can
oppose to the communities of the places from which they have derived
their brand names.

Registries must be able to protect the interest of communities and
the public at large.

For instance, at the very least, the .hotel registry must be allowed
to protect the interests of the local hotel community targeted by
expressions like “<placename>.hotel”, and the Sport registry must
be allowed to do the same for the local sports governing bodies
concerned with expressions like “<placename>.sport”.

To do so effectively, they must be able to entrust such domains to
neutral parties mandated to provide content in the public and
community interest, BEFORE the sunrise starts. No trademark right can
possibly be violated in this way, whereas the current draft RPM
requirements would put community rights in jeopardy.


2.3. Public function and resource names

There are many trademarks based on words designating social functions
or public resources, such as “Mayor”, “Police”, “Metro”.
- Should the cigar brand “Mayor” win “mayor.nyc”?
- Should the rock band “Police” hold “police.london”?
- Should the Metro newspaper publishing company run
  “metro.paris”?


2.4. Product and service categories

Particularly in the case of geographic TLDs, domain names reflecting
product or service categories are an object of speculation. The
result is destructive as no useful content is generally provided in
this way. Uncontrolled speculation leads to deceptive pay-per-click
sites, or at best, a proliferation of domain-for-sale pages.

A registry must be able to design that portion of name space, just as
cities must take urban design seriously.  The .paris registry must be
able to make sure that names like “architects.paris” or
“plumbers.paris” are operated by parties providing the content
the public is entitled to expect. The current draft of the RPM
Requirements would disrupt these efforts.

The public has a right to proper signposts, especially when the TLD
registry is run on behalf of the local public authority. The RPM
mechanisms must support, rather than defeat, the proactive design of
a local name space for geographic or community-based TLD.


2.5. Frivolous Trademark Registrations

Unfortunately, there are also many bad-faith trademark registrations.
In the 2005/2006 launch of .eu, the sunrise period was largely abused
by holders of bad-faith registered trademarks.

A typical ploy is to register a trademark with a special character in
it, such as an ampersand (“&”) character. The TMCH label matching
rules allow the special character to be omitted. This is one of the
many bugs in the TMCH. Unless there is a protective mechanism, a
bad-faith party can easily get in to the TMCH with trademark
registrations like “Cell & Phones” or “Flo & Wers” or “Hot
& Els” as trademarks. The proof-of-use requirement is no credible
barrier. From there, bad-faith actors can submit perform frivolous
sunrise registrations for domains like “cellphones.london” or
“flowers.nyc” or “hotels.paris”.

The ampersand was widely misused in the .eu sunrise. The mere fact
that this well-known bug has been reaffirmed in the TMCH, rather than
being corrected, speaks volumes on the state of the TMCH process. It
is just another illustration as to why the TMCH should not be imposed
as a compulsory passage and first phase.  It should not become the
lowest common denominator for the quality of rights protection in new
gTLDs.

Werner Staub