Comments on STI Recommendation for Trademark Clearinghouse

["Nolan, Aimee" <Aimee.Nolan@xxxxxxxxxxxx>]

W.W. Grainger, Inc. ("Grainger") appreciates the opportunity to submit these 
comments in connection with the recommendations made by the Special Issues 
Review Team regarding trademark protection in the new gTLDs.  Grainger would 
like to commend the members of the Special Trademarks Issues Review Team 
("STI") including ICANN staff, for the extraordinary time and effort they have 
put into developing the STI Report.

We agree with the overall concept of the Trademark Clearinghouse ("TC") but to 
limit its coverage to only registered trademarks and mandatory use only for 
pre-launch sunrise periods and/or Trademark Claims Services limits the scope of 
the TC in a way that minimizes its effectiveness.  Brand holders will not have 
the protection needed to combat registrations of domain names incorporating 
their valuable trademarks and will still need to defensively register domains 
in new gTLDs.

Below are additional comments to the STI Trademark Clearinghouse 
Recommendations:

Section 6
Allowing only identical matches for sunrise/claims services and not making the 
TC mandatory for all domain name registrations does not adequately curb 
cybersquatting, decrease enforcement costs to trademark owners, or limit the 
need for defensive registrations by trademark owners.

We believe that there should be mandatory post-launch use of the TC.  Requiring 
such use of the TC during landrush periods would lessen the need for trademark 
owners to continue to file defensive registrations.

As the STI TC recommendations currently stand, trademark owners would still 
have to pay registry charges for sunrise/claim service participation and, 
unless ICANN imposes a price cap on what a Registry can charge for 
sunrise/claim services, we do not foresee registries charging less than has 
been charged in previous gTLD launches, regardless of the mandatory use of the 
TC.  The current STI recommendations do not go far enough to alleviate the need 
and cost for trademark owners to file defensive registrations and UDRP 
complaints.  In addition to these costs, which a trademark owner would be 
required to pay with or without the implementation of the TC as currently 
proposed by the STI, trademark owners would also have to pay for inclusion in 
the TC.  This adds an additional cost to trademark owners which was contrary to 
the original intent of the TC.

Section 8
If the cost of the TC is to be borne by the "parties utilizing the services," 
there should be no additional charges by registries to trademark owners for 
sunrise/claim services other than the annual domain name registration fee and 
the fees should be the same as those charged for general landrush 
registrations.  If registries are charged a fee to use the TC for all 
sunrise/claim services, this fee will most likely be passed on to trademark 
owners in the amount the registry charges for participation in its 
sunrise/claim service.  This adds additional costs to trademark owners and 
essentially charges the trademark holders twice for use of the TC.