Comments from Publix on STI Report

["James B. Lake" <jlake@xxxxxxxxxx>]

Dear ICANN:

I write on behalf of Publix Super Markets, Inc., and Publix Asset Management 
Company (collectively "Publix") to identify certain inadequacies in the 
Trademark Clearinghouse as proposed by the Specific Trademark Issues Review 
Team ("STI").   The clearinghouse is a worthy concept that must be strengthened 
in order to avoid chronic infringement and gross inefficiency in the 
introduction and operation of new top-level domains.

Founded in 1930, Publix Super Markets, Inc., is the largest and fastest-growing 
employee-owned supermarket chain in the United States.  Publix is also the 
owner of numerous U.S. trademark registrations, including more than 40 
registrations for its well-known PUBLIX® word mark and related marks.  As a 
trademark owner, Publix is concerned about the potential for abusive, 
infringing use of new top-level domains.  Such misconduct could be more 
effectively thwarted through a properly empowered Trademark Clearinghouse.  
Unfortunately, the clearinghouse STI describes would be largely ineffective.

The first weakness of the clearinghouse is its limited purpose.  The STI 
suggests the clearinghouse might be employed only for "sunrise" screening (¶ 
5.1).  Such limited use will render the clearinghouse largely ineffectual, 
because no doubt many infringers will seek to register infringing domains after 
the sunrise period.  Screening will benefit not only trademark owners, but also 
registries, registrars, and unwitting registrants by providing them a way to 
avoid unnecessary disputes.  Therefore, the clearinghouse's services ought not 
be limited to sunrise use.

A second flaw in the clearinghouse proposal is its strict matching requirement. 
 A screening process that identifies only "identical" matches (¶ 4.3) will 
reward crafty infringers by allowing them to register domains that, although 
not identical to existing trademarks, are confusingly similar.   As the 
Business Constituency noted in its minority report, the .eu, .tel and .asia 
registries have featured screening for non-identical matches.  The 
clearinghouse ought to do the same.

Third and finally, the STI proposal is ambiguous concerning the allocation of 
costs for the clearinghouse.  It appears that trademark owners would bear the 
entire cost of clearinghouse operations.  Thus new registries and registrars 
will receive for free the benefits of a screening tool that will reduce their 
costs and their potential liability for trademark infringement.  The costs of 
the clearinghouse should be shared by all beneficiaries.

Thank you for considering these comments.

James B. Lake
Thomas, LoCicero & Bralow PL
Focused on Business Litigation, Media and IP Law
   
jlake@xxxxxxxxxx  | tlblaw.com <http://www.tlolawfirm.com> 

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