Comments on the STI report
- To: sti-report-2009@xxxxxxxxx
- Subject: Comments on the STI report
- From: Antony Van Couvering <avc@xxxxxxxxxxxxxxxxxxxx>
- Date: Mon, 25 Jan 2010 04:52:06 +0100
We would first like thank the GNSO for undertaking the challenging task of
considering this dense and challenging topic and for producing a comprehensive
Despite the fact that the IRT proposals in general seek to create greater
rights for trademark holders than exist in the law, and to create a new de
facto global trademark regime in ICANN when over 100 years of effort has failed
to reconcile the trademark laws of different nation states, on a practical
level some of their the proposals will alleviate much confusion and should be
seriously considered for the new gTLD round.
In particular, the Trademark Clearing House proposal has much to recommend it.
We know that applications in previous gTLD Sunrise periods were full of errors,
which produces enormous unnecessary expense both to the trademark holders who
had to do them again properly, and to the registries who had to deal with the
administrative expense. The Trademark Clearing House therefore has our
support. Because it will contain additional data points (geographical scope,
class of trademark, and so on), registries will have the ability to protect
trademarks that apply to their registry, and to reject others. For instance,
.HOTEL will, at its discretion, be able to reject trademarks that apply to
mining, production of chemicals, computer design, and so on. Over time, the
ICANN namespace will begin to resemble the trademark space as it exists in
national laws, as it should. We should also hope that the widespread,
automated ability to retrieve this data will help inform UDRP panelists when
they consider such issues as bad faith registrations.
Some of the recommendations made with regard to the trademark cleaning house
have achieved "rough consensus," and we welcome the opportunity to comment on a
few of these.
1. We support recommendation 3.1, which requires that the Trademark Clearing
House provider is subject to a strict accreditation by ICANN. The loose
relationship between ICANN and the UDRP process has contributed, we feel, to
the arbitrary and capricious nature of those proceedings, and has certainly
robbed the ICANN community of an ability to weigh in on the well-documented
forum shopping and bizarre decision-making that prevails in some cases. We do
not want to see that repeated with the trademark clearing house.
2. We strongly support recommendation 4.1, which restricts trademark rights to
text-based trademarks and rejects the inclusion of design marks. As the report
rightly notes, inclusion of design marks would expand trademark rights well
beyond their current scope.
3. We support recommendation 4.2, which would allow (but not require)
registries to include common-law trademarks, because it will eliminate a layer
of confusion for some new registries. Geographical gTLDs in non-common-law
jurisdictions, for example, would be hampered by a requirement to include
common-law trademarks, while others may at their discretion allow them.
4. Our strongest support is for recommendation 5.2, which allows registries to
discriminate between legitimate and non-legitimate domain name application
based on class of trademarks, and to disallow trademarks from jurisdictions
where there is no substantive review (in other words, where they are sold to
whomever wants them).
5. We support recommendation 6.1, which allows trademark clearing house
provider(s) to offer innovative services.
6. We support recommendation 8.1, which is essentially educative. Given the
poor understanding of ICANN's current trademark protection mechanisms by
non-experts, provisions to provide registrants with an explanation of how the
system works can only be helpful, and ultimately to the advantage of trademark
With regard to the URS, we are confused and concerned by one part of
recommendation 9.1, which concerns abuse of the URS system by trademark
holders. In this recommendation, the recommendation states "Multiple
complaints must be against the same entity and should not include affiliates."
It is unclear if this is referring to complaints by trademark holders against
trademark abusers, or complaints by registrants against abusive trademark
holders. In either case, it is trivially easy to construct affiliates to do
dirty work, and many ICANN processes have been subverted by the creation of
multiple corporate entities under the same effective ownership. ICANN should
not allow abusers to run a shell game to escape censure.
As always, we appreciate the chance to comment on ICANN policy.
Antony Van Couvering
CEO, Minds + Machines