RE: [gnso-sti] RE: Clearinghouse statement

[<McGradyP@xxxxxxxxx>]

Jeff,
 
Before Mark and I respond, can I ask a clarifying question?  Do you feel
the same way about both Sunrise and IP Claims, or just Sunrise?  Thanks.
 

Regards,

Paul

Paul D. McGrady, Jr. 
Greenberg Traurig, LLP 
77 West Wacker Drive, Suite 2500 
Chicago, IL 60601 
312 456 8426 tel 
312 899 0407 fax 
mcgradyp@xxxxxxxxx <mailto:mcgradyp@xxxxxxxxx>  
Assistant:  Loyanna Grierson (312) 236-4952 Direct Dial (312) 456-8435
Facsimile griersonl@xxxxxxxxx <mailto:griersonl@xxxxxxxxx>  

Links: www.paulmcgrady.com <http://www.paulmcgrady.com/>  and
www.mcgradyondomainnames.com <http://www.mcgradyondomainnames.com/> 

 

 


 

________________________________

From: owner-gnso-sti@xxxxxxxxx [mailto:owner-gnso-sti@xxxxxxxxx] On
Behalf Of Neuman, Jeff
Sent: Thursday, December 03, 2009 11:06 AM
To: Mark V. B. Partridge; GNSO STI; Margie Milam
Cc: J. Scott Evans
Subject: [gnso-sti] RE: Clearinghouse statement
Importance: High



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.

 

 

 


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