Comments on "Draft Proposed Procedure for Trademark Clearinghouse"

[Patrick Mevzek <contact@xxxxxxxxxxxx>]

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>
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