Comments

["Speed, Clare" <Clare.Speed@xxxxxxxxxxxxxxxxxxxx>]

Dear Sirs

Our comments on the Special Trademark Issues (STI) Recommendations are
as follows:

Point:  Use of the TC Database to support post-launch TM Claims shall
not be required.

Comment:  Disagree.  Support the comments of The Business Constituency
that the TM Clearinghouse needs to be broadened in scope to act as an
effective rights protection mechanism.  Some kind of "TM Claims" service
should be mandatory throughout the life of new gTLD registries.

Also agree with BC's 3 suggestions for improvement but believe it should
go further:  1. Allow inclusion of common law rights and protected
names. 2. Broaden definition of "match" as exact matches are likely (in
our experience) to occur very rarely.  "Match" should include the exact
match + descriptive word (eg 'ebayshop.web') or an obvious misspelling
(eg 'yahhoo').

Point:  No inclusion of design/logo Marks in the Clearinghouse.

Comment:  Disagree.  Extending to design/logo Marks would offer
protection to TM owners unable to fund Applications for the plain word
version of every logo TM that they own.  Also precedent in .eu start-up
phase showing that this is workable.

Point:  The URS shall incorporate penalties for abuse of the process by
trademark holders. In the event of two (2) abusive complaints, or one
(1) finding of a "deliberate material falsehood,"
the party should be barred for one (1) year from URS. Two (2) findings
of "deliberate material falsehood" should permanently bar the party from
the URS. Staff shall implement guidelines for what constitutes abuse,
consistent with previous cases of reverse domain name hijacking, TM
abuse and general principles of fairness.

Comment:  Leaving the guidelines to be created post-commencement would
lead to legal uncertainty.  Parties need to be aware of what constitutes
'deliberate material falsehood' before filing their complaint.  Does
claiming a reputation in an unregistered Mark (a sincerely held belief)
that is subsequently judged to be not proven constitute such a
'deliberate material falsehood'.  If a low threshold is set, the risks
of self-filing are too high and a complainant will need a lawyer's help
in drafting the complaint.  With legal fees, the costs of the URS are
likely to be close to a UDRP action - therefore, little incentive for
the URS to be used.

Point:  Transferring the infringing domain to the successful complainant
not permitted under the URS

Comment:  Disagree.  Support the comments of the BC on this issue.  Not
allowing the transfer of the infringing domain to the successful
complainant means there will be little incentive for the URS to be used.


Further comment:  Agree with IPC's proposal for complainants to be able
to use the data stored in the TM Clearinghouse to support URS
complaints.

Yours faithfully

Clare Speed
Trade Mark Attorney

Reckitt Benckiser Group plc, 103-105 Bath Road 
Slough, Berkshire SL1 3UH, United Kingdom 
www.reckittbenckiser.com 



 
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