Nestlé - comments on ICANN’s Trademark Clearinghouse: Strawman Solution

["Perriard,Caroline,VEVEY,FC-LEGAL" <Caroline.Perriard@xxxxxxxxxx>]

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.