Intel Corporation Comments on STI Report [Kelly W. Smith]

[Marc Salvatierra <marc.salvatierra@xxxxxxxxx>]

Intel Corporation Comments on STI Report

Submitted by ICANN Staff on behalf of:

Kelly W. Smith | Senior Attorney, Trademarks & Brands Legal| Intel Corporation

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From: Smith, Kelly W [mailto:kelly.w.smith@xxxxxxxxx]
Sent: Tuesday, January 26, 2010 3:33 PM
To: sti-report-2009@xxxxxxxxx
Subject: Intel Corporation Comments on STI Report

Intel Corporation submits the following comments regarding the Special 
Trademarks Issues Working Team (STI) Report on Trademark Protection in New 
gTLDs.

As an Initial matter, we must express our disappointment that many of the 
rights protection mechanisms suggested by the Implementation Recommendation 
Team (IRT) were not included in the most recent Draft Applicant Guidebook or 
the STI Report. These mechanisms were intended to work together to create an 
overall system for trademark rights protection, and Intel continues to support 
inclusion of each interrelated mechanism, including a Globally Protected Marks 
list. Intel believes that the mechanisms included in the STI report are 
insufficient to protect the rights of trademark owners and urges ICANN to 
reconsider the addition of some or all of the additional mechanisms suggested 
by the IRT. With that said, Intel comments on each mechanism suggested by the 
STI:

Trademark Clearinghouse

Intel agrees that a Trademark Clearinghouse would be a beneficial 
implementation tool for rights protection mechanisms (RPMs) such as sunrise or 
TM Claims, would create efficiencies for Intel in protecting its trademark 
rights in the domain name space, and should be included in the new gTLD 
rollout. However, it is important to note that such a clearinghouse is not in 
itself a RPM.

Intel submits:

* To best utilize the efficiencies allowed by the Trademark Clearinghouse, 
Intel suggests that it be used not only by new gTLDs in pre-launch RPMs, but 
also in post-launch procedures (including the Uniform Rapid Suspension process 
and perhaps even UDRP proceedings) by all gTLDs (both new and existing).

* The Trademark Clearinghouse should include all registered trademarks of 
national or multinational effect, whether or not the trademark office issuing 
the registration performs substantive review during the application process.

* The information that trademark owners submit to the Trademark Clearinghouse 
should only be shared with registries and registrars for the purpose of 
supporting RPM procedures, unless the trademark owner explicitly authorizes 
sharing of the information for another purpose. Intel objects to the licensing 
of its trademark information for unspecified and unlimited "ancillary services."

* Any fees paid by a trademark owner to submit its trademarks to the Trademark 
Clearinghouse (whether for inclusion to support sunrise registrations or as 
part of a TM Claims service) should limited to a minimal registration fee. In 
our view, most of the operating costs of the clearinghouse should be borne by 
the new gTLD registries as a cost of ensuring IP protection in the rollout of 
new gTLDs.

Uniform Rapid Suspension (URS)

Intel agrees that the URS can be a beneficial implementation tool for RPMs and 
should be required in the new gTLD program. But for the URS to have any benefit 
to Intel, is should afford a less expensive and quicker resolution than that 
afforded by the UDRP process. As currently described in the STI Report, it does 
not.

* Intel believes that to expedite the process, the respondent should have less 
than 20 days to answer the Complaint. The UDRP response time is 20 days; for 
the URS to be truly "rapid" it should allow less time for response.

* As currently drafted, even if successful in a URS proceeding, Intel would 
have to wait to use a domain name reflecting its mark for the duration of the 
domain name registration. As a result, in our view the URS is not a very 
effective RPM. A successful complainant should have the ability to have the 
domain name at issue transferred to it. Without the possibility of transfer, in 
many cases Intel would likely forego the URS and file a UDRP complaint instead 
to secure the infringing domain name.

Regards,

Kelly Smith

Kelly W. Smith | Senior Attorney, Trademarks & Brands Legal| Intel Corporation 
| xxx.xxx.xxxx | kelly.w.smith@xxxxxxxxx