TM Clearinghouse Comments

[Jon Nevett <jon@xxxxxxxxxx>]

I would like to extend my support for the proposed Trademark Clearinghouse (TC) 
proposal with some minor modifications.  The TC would provide for a central 
database that could be used by registries to help manage their mandatory rights 
protection measures (i.e. a Sunrise or TM Claims process).  The TC was 
supported by both the Implementation Recommendation Team (IRT) and the Special 
Trademark Issues (STI) group, as an important tool to make pre-launch 
activities more efficient and more effective.  

There are some modifications to the TC proposed by ICANN staff that require 
some comment and enhancement.  As a matter of policy, I support ICANN staff's 
change that all nationally (or multi-nationally) registered marks should be 
included in the TC regardless of the jurisdiction.  I also support the 
requirement that a registry must utilize either a so-called Sunrise process or 
Trademark Claims process before launching the registry.  With that said, I do 
not support, however, attempts to remove discretion on the part of a registry 
operator to model its own pre-launch rights protections measures.  There must 
be a middle-ground position that grants all trademark holders certain rights, 
but does not remove discretion on the part of the registry operators to offer 
specialized and innovative solutions for trademark holders.

I agree with Bruce Tonkin's public comments in Nairobi that ICANN needs to 
analyze this issue based on whether a registry utilizes a Sunrise process 
and/or TM Claims process.  I can support the notion that all nationally and 
multi-nationally trademarks should be eligible for a pre-launch rights 
protection measure, but registries should have the flexibility to decide which 
protection works best for its registry.  Any attempt to remove this discretion 
could harm competition, innovation and trademark protection itself.  For 
example, the .lamp registry should be able to decide for itself that they will 
have a Sunrise process for any trademarks filed in International Class 011, 
which covers lamps. For all other trademarks, the registry should have the 
discretion to utilize a TM Claims process.  Similarly, the .paris registry 
might want to use a Sunrise process for trademarks filed only in France, and 
use a TM Claims process for the rest.  As long as every name in the TC is 
covered by one of the protections, the registry should have the discretion to 
pick and choose based on various TM differentiators.  If a registry doesn't 
have this discretion, then it might just choose to use the "least common 
denominator" and not provide additional rights to certain trademark segments.  
The applicant guidebook must be clear on this point -- the current language is 
not.  

The ICANN community has worked hard to achieve an important scheme of trademark 
protections in the upcoming round of New TLDs, including a procedure for 
objections for infringing top level applications, a thick Whois requirement, 
the URS, the Trademark Clearinghouse, a mandatory Trademark Claims or Sunrise 
process, and a Post Delegation Dispute Resolution Process.  All of these will 
make New TLDs a much safer place for trademarks than existing gTLDs and ccTLDs. 
 In my opinion after some tweaks to the Clearinghouse and PDDRP, the trademark 
overarching issue should be considered resolved.

Thanks.

Jonathon L. Nevett
President, Domain Dimensions, LLC