Comments to IRT Report

["John McElwaine" <john.mcelwaine@xxxxxxxxxxxxxxxxx>]

The IRT Team is to be commended for putting together a very
comprehensive draft report in a short time frame.  Pursuant to the
request for comments to be included in the final report by May 6, 2009,
I would propose the following:
 
1.  IP Clearinghouse.  Principles Governing the Operation of the IP
Clearinghouse.  I have concerns that the registration data could be
mined by spammers, cybersquatters and other service providers. The data
concerning registered and unregistered trademarks should not be
accessible in the aggregate and proper authentication and password
security should be required for all registrants.
 
2.  GPML Requirements.  
 
    a.    The requirement of 200 trademark registrations of national
effect for a GPM that have issued in 90 countries across all 5 ICANN
Regions may be too difficult of a standard to meet.  My count of
trademarks offices from the WIPO website indicates that there are only
196 trademark offices worldwide.  Therefore, meeting this standard is
impossible, unless the definition of a GPM includes registrations that
contain any form of the mark that is seeking GPM status.  In other
words, a registration for XYZ, XYZ in a stylized form, and XYX
Corporation would count as 3 trademark registrations in one country.  
 
    b.    I also believe that the requirement of 200 trademark
registrations in 90 countries should potentially be lowered, and at
best, seems arbitrary without further justification.  I would recommend
that a survey be undertaken of a statistically relevent sample of the
top global brands.  www.interbrand.com/best_global_brands.aspx.  These
companies should be asked to disclose the number of trademark
registrations that they have and the total of the countries in which
their mark is registered.  An average of these figures should be the
starting point for determining criteria for GPM status.
 
    c.    The fact that one other party may own a tradmark registration
for the GPM should not trigger a heightened standard.  This could be
used to blackmail famous brands and has no impact legally on whether a
mark should be considered famous or not.
 
3.    URS Notices.  The URS Notice requirements should be revised to add
procedures in the case of a private domain name registration.
 
4.    URS Answer.  The URS system as proposed requires a registrant of
[10-25] domain names to submit an answer fee.  In my experience,
registration of more than 4 or 5 domain names in the same gTLD
containing the complainant's trademark indicates that the party is
likely a large scale domainer.  Another thought would be to tie the
Registrant's requirement of needing to submit an answer fee not to the
number of domain names registered by the respondent but the number of
times that they have been named as a respondent.  Under this proposed
standard, I would suggest requiring an answer fee if named as a
respondent in more than three URS proceedings within a one year period.
 
5.    URS Remedy.  A complaint in a successful URS proceeding results in
the subject domain name being placed in a locked state for the life of
the registration.  Presumably, after this time the domain name moves on
through the redemotion and deletion period.  My experience has been that
once a domain name is created it usually stays in existence and may be
re-registered by automated registration programs and individuals looking
to monetize the once-registered domain name as soon as it has been
deleted.  If a domain name is locked pursuant to the URS, I would
suggest that the succesful complainant begin given notice of the pending
deletion of the domain name in the redemption period and provided the
first right of refusal to register the domain name.  This would allow a
complainant to break the cycle of repetitive yearly URS proceedings
without the cost of initiating a UDRP proceeding.
 
Your consideration of these comments is appreciated.
 
Respectfully submitted,
 
John C. McElwaine
NELSON MULLINS RILEY & SCARBOROUGH, LLP
151 Meeting Street, Suite 600
Charleston, South Carolina 29401
t:  843.720.4302
 

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