Comments on the IRT Draft Report

[Paul Tattersfield <gpmgroup@xxxxxxxxx>]

6th May, 2009


Dear Sirs,

Thank you for the opportunity to be able to comment on the IRT work to date.

Starting from very basic principles - What is a trademark?

We believe that every name of a product is a trademark of its respective
organization. Simply if an organization creates a name for its product and
continues to use it, it is a “trademark” whether it is registered or not.

The registration of a trademark simply serves to publicly document that use
from a given time.

Why do we believe it is important to remind of this distinction at this
time?

It is convenient to develop ideas around the notions of “a piece of paper”,
“a license” or an “entry in a database” and then go on to design a framework
around notions such as - *Which piece of paper is the most important? Or how
many other pieces of paper you need to enjoy extra special protection? etc.*

Whilst convenient, if one is not careful ideas quickly become divorced from
the any notion of creating protection for the underlying products.

UDRP illustrates this all too well. If we have a registered trademark UDRP
will allow us to file a dispute. The criteria determining whether we can
file or can not file isn’t whether we have a product being infringed, it is
whether we hold a “piece of paper” called a registered trademark.

Without careful consideration this can afford the unscrupulous an
opportunity to try and avail themselves of others property simply by
securing the necessary “piece of paper”.

Of course UDRP has some measures to prevent this from happening for example
the 3 step test. Where steps 1, 2 and 3 all have to be satisfied in order to
prevail. Occasionally there are panelist decisions which on the surface at
least one wonders if the reasoning behind the decision was more concerned
with the “piece of paper” than infringement of any underlying products.

* (Whilst looking at IP considerations as a whole perhaps it would be worth
considering a process of appeal where respondents whom had initially lost
could pay a UDRP fee and have the decision reviewed by different panelist in
order to remove any doubt or perception of individual panelist bias without
the cost of having to challenge in a court of law,  which may prove
prohibitive for some respondents.)*

If one is intellectually lazy and focuses on the “piece of paper” it is very
easy to create a framework where small changes can have unintended
consequences.

”Whether the domain name has been registered or used in bad faith”

If this is allowed to happen suddenly the importance of the piece of paper
has increased beyond measure and the process has become dangerously divorced
from the underlying protections it was trying afford.

Again, concentrating on the “piece of paper” when drafting policy can make
redress dependent on owning the correct “piece of paper” rather than trying
to afford protection to underlying products.

 “...the domain name registrant did not own a trademark of national effect”

Any mechanism which affords economic advantage to owning a “piece of paper”
simply creates a race to own the best piece of paper whilst failing to
provide adequate protection to the underlying product. This is perhaps best
demonstrated with Sunrise Policies where organizations looking to secure
domain names before the open registration period, simply acquire “pieces of
paper” to meet any sunrise period requirements.

What is required to obtain trademark registration varies by jurisdiction. In
some jurisdictions trademark registrations are given out like confetti so
anyone can buy them cheaply, by the “shed load” and often irrespective of
whether or whether not they have a product which requires the protection the
trademark registration affords.

If there is economic advantage to acquiring names in the sunrise period then
speculators will simply acquire more and more trademark registrations and
this will likely have serious consequences in the future for UDRP and any
other new dispute procedures, especially if the procedures are more
concerned with the correct “piece of paper” rather than protecting the
underlying product.

Under the current proposals the new gTLD registries are likely to be quite
happy for as many names as possible to be registered during sunrise periods,
simply because the prices are often higher than during the open [normal]
registration period. If the sunrise periods are truly to protect third party
organization products then perhaps it may be worth considering creating a
new class of domain name registration with restricted rights purely for
names registered during sunrise periods.

It may also be worth giving consideration to an alternative allocation to
part of any money received by registries from domain name sales during
sunrise periods to avoid some new gTLDs registries being created primarily
to benefit from payments from organizations looking to defend their marks
and products. One solution may be for any excess revenue over and above the
domain name price in the open registration period to be allocated to a
central ICANN fund.


Finally it is increasingly obvious that the implications of introducing new
gTLDs are likely to be profound and have far reaching consequences for many
innocent third parties and the Implementation Recommendation Team (IRT) are
to be commended for producing such an extensive and wide ranging draft
report in such a short period of time. Given the vast amount of time the
GNSO has spent on preparing its proposed new gTLD process, it is unfortunate
that ICANN does not feel it necessary to afford more than 7 working days for
the wider community to prepare and submit reasoned comments on such in depth
subjects for consideration by the IRT team.

Yours faithfully,



Paul Tattersfield
http://www.gpmgroup.com – blog http://www.gpmgroup.info