Nestlé - comments on ICANN’s Trademark Clearinghouse: Strawman Solution
Nestlé’s comments on ICANN’s Trademark Clearinghouse: Strawman Solution Nestlé is the world's leading nutrition, health and wellness company. Most people know us through our brands. Our portfolio covers almost every food and beverage category – giving consumers tastier and healthier products to enjoy. Nestlé protects and defends its brands, which are recognized as a sign of quality. We highlighted several times that adequate legal measures to protect our brands on Internet and in particular for the launch of the new gTLDs is paramount. Obviously strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law. We would like to make additional comments: Sunrise Notice Period Sunrise registration periods come at significant cost to trademark owners (both in terms of entry into the Trademark Clearinghouse and the premium fees typically associated with sunrise registrations). In practice, businesses like Nestlé will be under pressure to purchase domains within new gTLDs purely to defend their brands with no real intention of using many of those domains. This leads to a waste of money, while consumers will not benefit as the domains are never used, and our domain name portfolio will be clogged with unwanted and unused domains. We support the proposal for a minimum 30 day sunrise notice period. But we believe this to be unreasonably short especially when it must create the window for gTLD registry liaison with trademark owner registrants in the Trademark Clearinghouse and a 60 day period is in our view the appropriate grace period to allow for appropriate exchanges. (It should be noted though that this sunrise advertisement period would seem to benefit registration interests as much as trademark owners). We suggest that this sunrise notice function be centrally coordinated. We also believe that ICANN should begin in earnest to coordinate the posting of registry-specific sunrise requirements so that Trademark owners are able to assess the relevance for them of specific registration risks and opportunities. We further believe that particular care should be taken in monitoring and controlling the trademark use support evidence to be put forward to Deloitte Belgium as the Trademark Clearinghouse entry validation service provider. Trademark Claims We support the proposal to operate Trademark Claims for 90 days. We also support the extension of Trademark Claims to include previously-abused variations of a mark, but do not agree with the limit of 50 variations. Trademark “Claims 2” service We see this service as having limited utility in its current form. For example, it is not clear why a Claims 2 service would not display the Guidebook-agreed claims data; and we believe that it should. Potential registrants should be able to assess all the relevant Trademark data free of charge in order to make a fully informed decision on registration. (We note that by virtue of agreeing to UDRP paragraph 2, a registrant already undertakes not to infringe third party rights.) We think today that the option might gain less support from brand owners. Limited Preventative Registration We believe that a Limited Preventative Registration mechanism should be adopted by ICANN and should apply across all gTLDs to all sunrise periods everywhere. This would go towards meeting ICANN’s obligations to the brand owners around the world a long way to addressing the legitimate concerns of trademark owners that they will not be able to keep pace with infringement in new gTLDs. A Limited Preventative Registration mechanism should go into effect in parallel with sunrise registration periods. Additionally, we believe that the Limited Preventative Registration mechanism should be extended to include previously-harmed Trademark variations (as is being contemplated for Trademark Claims). We do not however agree that a Limited Preventative Registration mechanism should be limited to marks which are eligible for a particular sunrise. We believe that there is an important missing element in the proposal for a Limited Preventative Registration mechanism, namely, a safeguard which allows for bona fide third-parties to register a domain name which is subject to a Limited Preventative Registration. Thank you for considering our comments. Finally, we look forward to ICANN’s publication of the responses to its URS RFI. Yours Sincerely, Caroline Perriard Senior Brand IP Counsel - Internet/Social Media Nestlé Legal - Nestec SA Avenue Nestlé 55, 1800 Vevey Switzerland Tel.: +41 21 924 38 25 Mobile: +41 79 353 39 43 Email: Caroline.Perriard@xxxxxxxxxx<mailto:Caroline.Perriard@xxxxxxxxxx> P Please consider the environment before printing this e-mail. The contents of this e-mail may be confidential and / or privileged. This e-mail is intended for the exclusive use of the addressee(s) above. If you are not the intended addressee, please delete this e-mail immediately.