Comments on the STI report

[Antony Van Couvering <avc@xxxxxxxxxxxxxxxxxxxx>]

We would first like thank the GNSO for undertaking the challenging task of 
considering this dense and challenging topic and for producing a comprehensive 
report. 

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 
holders.

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.

Respectfully submitted,

Antony Van Couvering
CEO, Minds + Machines