Comments from FAITID on Trademark Clearinghouse: Strawman Solution

[Maxim Alzoba <m.alzoba@xxxxxxxxxx>]

Dear ICANN staff, 

The Foundation for Assistance for Internet Technologies and Infrastructure 
Development (FAITID) is the non-commercial organization that develops a system 
of initiatives aimed at expanding Internet use on behalf of the Russian and 
international community.

In April 2012 an application for the .MOSCOW and .МОСКВА (IDN TLD can be 
translated “Moscow”) domains was submitted to ICANN by FAITID, supported by the 
Government of Moscow.

In the near future lots of companies and individuals will be able to register 
their .MOSCOW/.МОСКВА domains. That’s why it is extremely important for us to 
ensure that trademark holder rights are respected. However, the ICANN's 
requirement of domain registration during priority registration period only for 
trademark holders who are compliant with the Trademark Clearinghouse without 
taking into consideration the interests and rights of other rightful trademark 
holders and not giving them any alternative, makes it impossible because of the 
reasons described below.

As a legal successor of the USSR, the Russian Federation ratified the Paris 
Convention for the Protection of Industrial Property in July 1965. More than 
170 countries ratified this Convention, including the USA in 1887.
In accordance with Art. 6 (1) of this Convention: “The conditions for the 
filing and registration of trademarks shall be determined in each country of 
the Union by its domestic legislation.“
According to Art. 1484 (1) of the Civil Code of the Russian Federation: “The 
person in whose name the trademark is registered (the rights holder) shall 
enjoy the exclusive right to use a trademark in accordance with Article 1229 of 
the present Code, in any manner not contrary to a law (the exclusive right to a 
trademark) including by the means indicated in Paragraph 2 of the present 
Article.”
Namely, “The exclusive right to a trademark may be disposed for the 
individualization of the goods, work, or services with respect to which the 
trademark has been registered, in particular by using a trademark: ... (5) in 
the Internet, including in a domain name and for other means of addressing.” 
This means that in Russia, a person, owning a trademark, registered in 
accordance with the Russian Federal Service for Intellectual Property 
(Rospatent) or the World Intellectual Property Organization (WIPO), has the 
right to register a domain name that includes this trademark. This must be 
taken into account when opening the new domain zones to avoid conflict 
situations in advance.
According to the Madrid agreement concerning the international registration of 
marks («Madrid Agreement»), trademarks, registered by the Russian Federal 
Service for Intellectual Property (Rospatent), and trademarks registered by the 
WIPO have equal rights in Russia.

Thus, we believe that according to national and international law, the priority 
for the registration of .MOSCOW and .МОСКВА domains in the territory of the 
Russian Federation should be granted, in the first place, to trademarks 
registered in accordance with the national legislation of the Russian 
Federation, together with trademarks registered in accordance with the Madrid 
Agreement. The protocol of the Madrid Agreement was signed by the USA on 
November 2, 2003 and by the Russian Federation on June 10, 1997.
We would like to note that any infringement of the rights of rights holders 
that are not provided for by the national or international agreement, is likely 
to become a subject of dispute in court. In this case, the court would 
recognize such infringement as invalid.

Given the arguments above, we are asking you to make an amendment to the 
Applicant Guidebook, regulating the registration of the new TLDs during the 
Sunrise period, in compliance with our position. It will help to avoid 
violation of trademark protection rights under national and international 
legislation.

In case the amendments are not made, our company will de facto be seen as the 
violator of the rights of the rights holders, who will apply to court demanding 
to restore their violated rights. Moreover, we will become the violators of 
Russian law (the Civil Code) and the international convention that has 
superiority over national laws.

If necessary, we are ready to provide further clarifications on this issue and 
provide you with our proposals for the Sunrise period, where we suggest how to 
prevent the violation of the rights of rights holders.


Sincerely Yours,

Maxim Alzoba
Special projects manager,
International Relations Department,
FAITID

mail-to: m.alzoba@xxxxxxxxxx