[gnso-sti] RE: Clearinghouse statement

["Neuman, Jeff" <Jeff.Neuman@xxxxxxxxxx>]

Mark,

I do not really understand the following sentence:  “The proper solution for 
concerns about the scope and validity of registrations is to record all 
registrations of national or multi-national effect, and to deal with questions 
of scope and validity through notice, disclosure, challenge procedures and 
filing deadlines.”

 

The bottom line is that I am not so concerned what is inside of the 
Clearinghouse.  I know the NCSG may have some concerns, but the registries do 
not necessarily have a strong opinion.  However, we should not be forced to 
give recognition in a Sunrise Period or an IP Claims process to registrations 
in countries that do not undergo substantive review.  If I am launching a new 
generic TLD like “.web”, I should not have to accept ENOM’s trademark 
registration for .Web in the Benelux countries for example in a Sunrise giving 
them the first right to that name.  How does that relate to “scope, validity 
through notice, disclosure, challenge procedures and filing deadlines.” 


So, I will ask the direct question, will the IPC position allow me as a 
registry to refuse to recognize trademark registrations (in a Sunrise Process 
or IP Claims process) in countries that do not do a substantive review even if 
they are allowed to be in the Clearinghouse.


This is a fundamental question for me.

 

Jeffrey J. Neuman 
Neustar, Inc. / Vice President, Law & Policy



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From: Mark V. B. Partridge [mailto:mvbp@xxxxxxxxxxxxxx] 
Sent: Wednesday, December 02, 2009 8:19 PM
To: 'GNSO STI'; Margie Milam
Subject: Re: Clearinghouse statement

 

Dear Members of the STI:

 

Your attention is invited to the following statement on behalf of the IPC 
leadership and STI representatives for consideration in connection with our 
telephone conference on the Clearinghouse on December 3, 2009.

 

Cordially,

 

Mark Partridge

 

>>>>>>>>>> 

 

The STI is currently considering a proposal advocated by the NCSG 
representatives to the STI that would limit the trademark registration data 
included in the Clearinghouse to trademark registrations from countries that 
undertake substantive review.

 

This proposal is contrary to the recommendations of the IRT, and the IPC is 
strongly opposed to limiting the Clearinghouse in that manner.  A large number 
of developing and developed countries, including most of Europe, do not engage 
in substantive review on relative grounds.  It is a serious problem and unwise 
for ICANN to treat such systems in the Clearinghouse as being inferior or to 
disinfranchise registrants from these countries from participation in the 
Clearinghouse.  This would particularly prejudice small businesses and 
not-for-profits who may only budget for a limited number of registrations in 
their country of origin, rather than a global registration program.  

 

Instead, the Clearinghouse, at a minimum, should include registrations of 
national or multinational effect, as recommended by the IRT.  The proper 
solution for concerns about the scope and validity of registrations is to 
record all registrations of national or multi-national effect, and to deal with 
questions of scope and validity through notice, disclosure, challenge 
procedures and filing deadlines.

 

Reliance on the IRT report with respect to the URS standards is misplaced, as 
the URS is part of an overall dispute resolution system that accepts all types 
of trademark rights and merely limits the rights at issue in the URS where 
prior substantive review of registrations facilitates expedited proceedings.