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STI Comments from EnCirca

  • To: <sti-report-2009@xxxxxxxxx>
  • Subject: STI Comments from EnCirca
  • From: "Thomas Barrett - EnCirca" <tbarrett@xxxxxxxxxxx>
  • Date: Tue, 26 Jan 2010 21:10:08 -0500


January 26, 2010

Re: Comments on STI Report

EnCirca is an ICANN-accredited Registrar whose customers represent a diverse
set of interests, from trademark owners, to business owners to domain name
investors.  We support all ICANN-Sponsored TLD's and also provide a
map-based directory service for domain name registries.

EnCirca supports the majority of the recommendations contained in the
Special Trademark Issues Report.  We are providing some additional comments
in the interest in advancing the discussion of trademark protection
mechanisms (TPMs) for new gTLDs.

We would like to point out that the beneficiaries of the TPM's should be
both registrants as well as trademark owners.  Most conflicts occur due to
registrant confusion about what constitutes trademark infringement and
dilution.  We feel more can be done to help registrants avoid potential
trademark conflicts.

Sincerely,
 

Thomas Barrett
President
EnCirca, Inc

Public Education Opportunity
With the introduction of new TLD's, ICANN has the opportunity to educate the
public about trademarks and what constitutes trademark infringement.  Let's
not squander this opportunity!

With the proper public outreach, the need for many of the Trademark
Protection Mechanisms will diminish over time.  The will result in savings
for trademark owners and a more stable and secure Internet.

The top priority of the TPMs should be to educate the registrant such that,
even before they begin the registration process, they have a clear
understanding of whether their proposed domain name might infringe the
rights of a third party. 

In order to accomplish this education, the Trademark Clearinghouse (TC) must
be freely accessible and searchable to the public, just as the
publicly-available Whois databases are.  The search results must explain the
purpose of trademarks and what rights they do and do not convey to the
rights holder.

Both Sunrise Periods and IP Claims services should be mandated for new TLDs.
IP Claims should continue throughout the life of a TLD, since registrant
confusion about possible trademark conflicts can exist not just during land
rush, but whenever they attempt to register a domain name.

Marketplace-Driven
Wherever possible, we should not be overly prescriptive in limiting the
function of TC and should instead let the marketplace (i.e. registry
operators) decide the functions performed by the TC.  This includes allowing
the TC to include common law trademarks and other Rights requested by
registries.  

Avoid Creating Monopolies
While the TC is necessarily a monopoly provider, the Validation Service
Provider should not be awarded as a single-source monopoly.  Just as
multiple registrars introduced innovation and lower costs for registrants,
so too can multiple Validation Providers provide innovation and lower costs
for trademark owners.  

Pricing Differential for use by Trademark Owners
While the report recommends that new registries must be required to use the
TC, it does not discuss whether trademark owners must use the TC for Sunrise
Periods and IP Claims services.  So if a registry commences a Sunrise period
or accepts defensive registrations, will the registry be required to give a
discount for applications submitted via the TC versus submission directly
from a trademark owner?  If a Sunrise discount is not mandated, then the
incentive for the trademark owners to use the TC will be diminished.

The URS versus UDRP
While we support the concept of a URS, we feel that the proposed URS falls
short in protecting the rights of registrants.

The proposed URS looks too much like a fast-track UDRP.  The URS should not
have the same elements as the UDRP and should not rely on any precedents
provided by UDRP decisions.  There are too many poor UDRP precedents that
should be disregarded.

The UDRP perpetuates a myth that trademark infringement can occur with the
mere registration of a domain name (i.e. bad faith registration).  As
steward of the Internet, ICANN needs to accurately convey to registrants
what a trademark is and is not, as well as what constitutes trademark
infringement.  ICANN should dispense with the false implication that
trademark infringement can occur before there is use of a domain name.  "Bad
faith registration" is not actually possible and should not even be
criterion of the URS, even if the URS rules define that registration alone
is not sufficient to find bad faith.

Specific Comments

1.1 Trademark Clearinghouse 
The name of the rights protection mechanism should be the "Trademark
Clearinghouse" to signify that only trademarks are to be included in the
database.

This is fine as a starting point.  But there should be a mechanism to allow
the TC to be responsive to requests by gTLD registry operators to include
other types of Rights to help alert registrants of potential conflicts.

2.1 Separation of Functions 
The TC should be required to separate its two primary functions: (i)
validation of the trademarks included in the TC, and (ii) serving as a
database to provide information to the new gTLD registries. Staff should
have the discretion to determine whether the same provider could serve both
functions, or whether two providers would be more appropriate. 

We support the separation of the two primary functions.  However, staff
should not have the discretion to allow the same provider to serve both
functions.  Nor should staff be allowed to select a single Validation
Service Provider.  There should be multiple Validation Service providers
from the onset of operations to ensure a competitive marketplace for the
benefit of trademark owners.

2.2 Use of Regional Expertise 
The TC Service Provider(s) should utilize regional Marks Validation Service
Providers (VSP) (whether directly or through sub-contractors) to take
advantage of local experts who understand the nuances of the trademark
rights in question. 

Agreed.  This is another reason ICANN should not issue a monopoly to a
single company for the Validation Service provider.  The TC should be able
to issue tenders in the marketplace to find an appropriate VSP that
satisfies the requirements of a registry operator.

2.3 Segregation of TC Database 
The TC Service Provider should be required to maintain a separate TC
database, and may not store any data in the TC database related to its
provision of ancillary services, if any. 

This is a front-end interface implementation issue and does not address the
concern that users may see co-mingling of data in their queries, which could
occur even if the databases were separate.  I think the intent could be
better captured with a re-wording.

3 Relationship with ICANN 
3.1 ICANN Accreditation Agreement for Validation Services 
The Service Provider(s) providing the validation of the trademarks submitted
into the TC should adhere to rigorous standards and requirements that would
be specified in an ICANN contractual agreement. The model to be suggested
for this contractual relationship would be similar to the detailed registrar
accreditation agreement, rather than the minimal accreditation practice
adopted by ICANN for UDRP providers (e.g., WIPO, NAF, and others). 

Agreed.  ICANN should assume there will be multiple Validation Service
providers to ensure competition.

3.2 ICANN Agreement for Database Services 
The TC Service Provider responsible for maintaining the centralized database
should have formal, detailed contract with ICANN. The contract should
include service level agreement metrics, customer service availability
(seven days per week, 24 hours per day, 365 days per year), data escrow
requirements, and equal access requirements for all persons and entities
required to access the TC database. The Agreement should also include
indemnification by Service Provider for errors such as false positives for
participants, such as Registries, ICANN, Registrants, and Registrars. 

Agreed.

4 Marks Eligible for Inclusion in the TC 
4.1 National or Multinational Registered Marks 
The TC Database should be required to include nationally or multinationally
registered "text mark" trademarks, from all jurisdictions, (including
countries where there is no substantive review). (The trademarks to be
included in the TC are text marks because "design marks" provide protection
for letters and words only within the context of their design or logo and
the STI was under a mandate not to expand existing trademark rights.) 

Agreed.

4.2 Common Law Rights 
No common law rights should be included in the TC Database, except for court
validated common law marks; provided that a new gTLD Registry may elect to
have the TC Service Provider collect and verify common law right provided
that it conforms to Recommendation 2.3. The TC Service Provider could charge
higher fees to reflect the additional costs associated with verifying these
common law rights. 

Disagree.  The TC should be responsive to requests by registry operators to
collect and verify other types of Rights.  This would help alert registrants
of potential conflicts with trademark owners.

4.3 Conversion of Mark into TC Database 
The TC Database should be structured to report to registries strings that
are considered an "Identical Match" with the validated trademarks.
"Identical Match' means that the domain name consists of the complete and
identical textual elements of the Mark. In this regard: (a) spaces contained
within a mark that are either replaced by hyphens (and vice versa) or
omitted, (b) only certain special characters contained within a trademark
are spelt out with appropriate words describing it ( @ and &.), (c)
punctuation or special characters contained within a mark that are unable to
be used in a second-level domain name may either be (i) omitted or (ii)
replaced by spaces, hyphens or underscores and still be considered identical
matches, and (d) no plural and no "marks contained" would qualify for
inclusion. 

Disagree.  This should be re-worded as a minimum requirement.  The TC should
be able to be responsive to requests by registries to provide more than just
identical matches.  Registrants would benefit from awareness about possible
conflicts.

5. Mandatory Pre- Launch Use of the Trademark Clearinghouse 
5.1 TM Claims or Sunrise Use 
All new gTLD registries should be required to use the TC to support its
pre-launch rights protection mechanisms (RPMs) that should, at a minimum,
consist of a TM Claims process or a sunrise process that meets the minimum
standards and sunrise challenge grounds as specified in the IRT Report,4
except to the extent that a registry elects not to extend sunrise protection
for certain trademarks as described in 5.2 below). There is no requirement
that a registry adopt both of these RPMs. 

Registrants are best protected if both RPM's are mandated both pre-launch
and post-launch.

5.2 Protection for all Trademarks in the TC 
New gTLD registries should provide equal protection to all trademarks in the
TC for their RPMs, except as follows: (i) Inclusion of a trademark in the
Trademark Clearinghouse from a country where there is no substantive review
does not necessarily mean that a new gTLD Registry must include those
trademarks in a Sunrise or IP Claims Process; or (ii) Registries shall have
discretion to decide whether to grant protections to trademarks in the TC.
ICANN could allow specialized gTLDs to restrict eligibility for sunrise
registrations to fit the purpose of the registry as described in the charter
(example, .shoe could restrict sunrise to only trademark registrations in
shoe-related class of goods and services). 

We would agree to this restriction for a Sunrise period or for defensive
registrations.

However, the restriction should not exist for an IP Claims process, since no
rights are being granted to Rights holders to file an IP Claim.  Again, the
more information we can provide registrants, the better.

6 Voluntary Use of the Trademark Clearinghouse 
6.1 Use of TC For Ancillary Services 
There should be no bar on the TC Service Provider or other third party
service providers providing ancillary services on a non-exclusive basis.
Such services could include, without limitation, a "marks contained"
service, or a TM watch service. In order not to have a competitive advantage
over competitors, the TC database should be licensed to competitors
interested in providing ancillary services on equal and non-discriminatory
terms, and on commercially reasonable terms; provided that the TC Service
Provider is not materially advantaged in the provision of such ancillary
services by virtue of it being the TC Service Provider. The specific
implementation details should be left to Staff to address possible monopoly
and competition concerns, and all terms and conditions related to the
provision of such services shall be included in the TC Service Provider's
agreement with ICANN and subject to ICANN review. As stated in 2.3, if the
TC Service Provider provides such ancillary services, any information should
be stored in a separate database. Access by the Registrant to verify and
research TM Claims Notices shall not be considered an ancillary service, and
shall be provided without cost to the Registrant. 

Agreed.

6.2 Pre-Registration of URS 
The TC could be used to enable URS Procedures by allowing trademark holders
to preregister their trademark information to support a future URS action
based on rights in jurisdictions where there is substantive review of
trademark registrations. The TC shall provide confirmation of the TM, and
its jurisdictions, to the URS Providers for a fee. 

Agreed.

7 Mandatory Post- Launch Use of the TC 
7.1 No Required Post-Launch TM Claims 
Use of the TC Database to support post-launch TM Claims shall not be
required. 

Disagree.  Possible registrant confusion about whether they might be
infringing the rights of a third party does not end after the land rush
period.  The IP Claims service should be mandated post-launch of TLDs to
protect registrants and help avoid possible trademark conflicts.

8 Required Elements of TM Claims Notice 
8.1 TM Claims Notice to provide clarity to Registrant The TM Claims Notice
should 
provide clear notice to the Registrant of the scope of the trademark
holder's rights, in order to minimize the chilling effect on registrants. A
form TM Claims Notice that describes the required elements is attached as
Annex 5. If feasible, the TM Claims Notice should provide links, or provide
alternative methods of providing access, to the registrant for accessing the
TC Database information referenced in the TM Claims Notice for a fuller
understanding of the TM rights being claimed by the trademark owner. These
links shall be provided in real time without cost to the Registrant. The
implementation details should be left to ICANN Staff to determine how to
easily provide access to registrants to this information. The TM Claims
notice should be preferably be provided in the language used for the rest of
the interaction with the registrar or registry, but at the very least in the
most appropriate UN-sponsored language (as specified by the prospective
registrant or registrar/registry). 

Agreed.
 
9 Effect of Filing with the TC 
9.1 TC is a depository of information and does not create legal rights 
It should be clearly stated in mandate of the TC that inclusion of a TC
validated 
mark into the Database is not proof of any right, nor does it confer any
legal rights on the trademark holder. Also, failure to file should not be
perceived to be lack of vigilance by Trademark holders. 

Agreed:  This is why it should be OK to include common law marks as well.

10 Costs of Operating the TC 
10.1 Costs of Operating Clearinghouse Costs should be completely borne by
the parties utilizing the services. ICANN should not be expected to fund the
costs of the operating the TC. The TC should not be expected to fund ICANN
from its fees. 

Agreed.


 

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