Comments on "Draft Proposed Procedure for Trademark Clearinghouse"
Following the ICANN announcement at http://www.icann.org/en/topics/new-gtlds/gnso-consultations-reports-en.htm please find below my comments related to the proxy services report at http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-tm-clearinghouse-04oct09-en.pdf I have questions about fees. The draft speaks first about registries and trademark holders seen as users of this service and they will finance it. However it is also stated that registrars may use this service, when a registrant try to register a domain name. In that case, would this be a paying service for registrars? If so, it may create a problem, since registrant may try many domain names before deciding which one to register, or even not registering any one at the end. Since the end user contracts have to incorporate sentences telling basically that end users are responsible to make sure they do not infringe trademarks by registering domain names, such Trademarks Database as outlined in the draft should be finally a service that registrants could use to make these checks by themselves, so will the clearinghouse have public interfaces to be used by end users? I think there is also a point not clearly designed. At the end it is said "rights holders will pay a registration and renewal fee." and then later "fees are paid by trademark owners to the Clearinghouse validation service to validate the mark for entry into the database" Does the renewal fee mean to be applied like annually or only at trademark end of life? Because if trademark holders pay the validation, this validation occurs only once, so why should there be a renewal fee? National trademarks offices do not revalidate trademarks annually. Also the draft says that, upon registration, the clearinghouse will contact the trademarks holder. I would think there is a need of far more details here such as: - how is this service billed or is it free? - what are the guarantees given by the clearinghouse, such as delivery delay after registration? - how is it delivered? By email? If so I woud like that all such emails are digitally signed (S/MIME or OpenPGP). - how a trademark holder can change its personal information in the clearinghouse when needed during the life of its trademarks? etc. I would also point out that some registries provide or did provide a "defensive registration" service, which seems close to this, except that here the registration succeeds even if it conflicts with the trademarks, to leave disputes to be settled after the fact. Deeper review should eventually be done to see the influences among these 2 services. As for the technical part of things, basically the interfaces offered by the clearinghouse to the registries, registrars or registrants as suggested above, I would suggest to at least study the IRIS protocol (IETF RFC 3981 basically and also 3982,4414,4698,4991,4992,4993,5144) that seems better suited for that than whois. More generally, on a procedure point, I would like to emphasize that, like with any other new structure/process: 1) there should be clear objectives and a timeframe to verify (like few years after start) that the goals are met, to make sure here that this clearinghouse system is effective (its should publish public data, such as number of trademarks stored over time, number of queries by registries/registrars/registrants/etc.) 2) there should also be competition at that level like everywhere else, so if there is to be only one clearinghouse, its contract should not provide perpetual renewal, but steps must be taken so that its duties may be reassigned along the road to another operator for various reasons to list, including lower costs, as these costs are finally paid by end users, even if it goes through registries or registrars. These 2 points would apply to the 2 actors in the clearinghouse as the draft recommends its duties to be splitted. There should also probably be more guarantees on the languages on which the clearinghouse can operate so that trademark holders can fill their rights. And guarantees on the clearinghouse two entities independence in relation with registries and/or registrars, so it should not own/be owned by registries or registrars or even UDRP providers. To foster competition among new gTLDs, I'm not sure that the use of the clearinghouse by the registries should be mandatory. If the registries can provide adequate solutions to their specific needs in their TLD, that seem as good as the clearinghouse then it should be allowed to operate that way and not be required to use the clearinghouse mechanism. I would think also that there should be some cooperation between the clearinghouse and the current UDRP providers, as they may need to validate trademarks during filling this work could be proved useful to the clearinghouse. However strict separation of roles should be enforced at all time, which does not restrict working together. I'm also worried by some points in http://www.icann.org/en/topics/new-gtlds/draft-summary-changes-irt-proposals-20oct09-en.pdf The draft says that using the clearinghouse and storing trademarks in it does not create any new right. The summary changes draft however says, about the possible interaction between the Trademark Clearinhouse and the URS that: "While combining the functionality of the URS and Clearinghouse presents opportunities for efficiency, they remain separate for now - in order to avoid additional complexity in considering the proposals. The efficiency can be introduced later." While I can certainly agree on the complexity reducing goal, I think that just saying "let us just add that later" without any details creates a huge hole ripe for abuse, where dealing with trademarks is already something to be taken with care if we want to avoid to many misuses. -- Patrick Mevzek Dot and Co <http://www.dotandco.com/> <http://www.dotandco.net/> <http://www.dotandco.net/ressources/icann_registrars/prices> <http://icann-registrars-life.dotandco.net/>