Comments on the Special Trademark Issues Review Team Recommendations Report

[birgit.schnell@xxxxxxxxxxxxxx]

Dear Sirs,

Red  Bull  GmbH  appreciates  the  opportunity  to submit these comments in
connection  with  the  Special Trademark Issues Review Team Recommendations
Report (“STI Report”).

Red  Bull GmbH understands that the IRT Report originally established an IP
Clearinghouse  (now  referred to as the TC) in order to reduce the cost and
administrative  burden  of  protecting  trademarks in the new gTLDs for all
trademark  owners.   The  IP  Clearinghouse  was  designed to function as a
central  entity  with which all new gTLD registries and possibly registrars
interact  in  relation  to  the  Globally  Protected  Marks  List  and  the
Pre-Launch  IP  Claims  Service also recommended by the IRT”.  In addition,
the  original  purpose  of the URS was to (i) reduce the need for defensive
registrations, (ii) provide a cost-effective and timely mechanism for brand
owners  to  protect their trademarks, and (iii) promote consumer protection
on the Internet. As set forth below, neither the URS nor the TC reduces the
cost and administrative burden for brand rights holders.

·       TRADEMARK CLEARINGHOUSE (TC)

         o      Sections  1.1/4.2;  Trademark Clearinghouse/Common Law Rights:
            Red  Bull  GmbH is concerned with the removal of IP rights such
            as  common  law  rights  or registered design marks or other IP
            rights  from  the  TC.  To the extent there are gTLD registries
            with  sunrise  periods  that  allow the initial registration of
            names  with  common law or other IP rights then such registries
            will need to establish a separate process for the validation of
            these  names.  Instead of forcing new gTLD registries to create
            their  own  validation  processes, it would make sense to allow
            them to make use of the TC database.

         o      Section  2.2;  Use  of  Regional  Expertise:  Allowing  and/or
            requiring   regional   subcontractors   to  provide  additional
            validation   services   for   the  TC  Service  Provider  is  a
            unnecessary  touch  point  that  could potentially increase the
            cost that brand holders would have to pay each year to register
            with  the  TC  Provider.   There are already existing trademark
            service  providers with worldwide offices that may already have
            this capability.

         o      Section  3.2;  ICANN  Agreement  for  Database Services: It is
            unlikely   that   a   TC   provider   would   provide  a  broad
            indemnification  for  errors including false positives that may
            occur.  Moreover,  such  a requirement would certainly increase
            the  cost  of  registering  with  the TC Provider. In addition,
            24/7, 365 day customer service will likely increase the cost to
            the TC registrant.

         o      Section  4.3;  Conversion  of Mark into TC Database: Requiring
            that  the TC be limited to “identical match” names as described
            in  the  TC  does  not  provide  brand  owners  with sufficient
            protections   to   deter  cybersquatters.  Red  Bull  therefore
            believes  that  it  would be important for the TC to also allow
            (i)  the inclusion of names which would include a registered TM
            used  in  conjunction with a dictionary word that is associated
            with  the class of goods or services for which the trademark is
            protected (i.e. redbullhats), (ii) the inclusion of names which
            would  include  a  registered  TM  used  in  conjunction with a
            dictionary  word  that  is  regularly used in clear association
            with  the  TM  (i.e.  redbullracing)  or  (iii) variants of the
            trademark  or  other  IP right (i.e. reddbull or retbull) . Red
            Bull  believes  that  trademark  owners  will benefit from such
            legitimate  registrations  by reducing the opportunity for user
            confusion  which  results  from  cyber-squatters obtaining such
            names.  The  TC database does not appear to have any real value
            beyond  its  use  during sunrise periods. Thus, it becomes more
            critical  that  brand owners be able to obtain notifications of
            potential  registrations  of  any  variants  of its trademarks.
            Without  a further expansion, the TC does not advance the goals
            of  reducing  defensive  registrations  that  was  the original
            intent of the RPM’s as set forth in the IRT Report.

         o      Section  5.1;  TM  Claims  or  Sunrise  Use: The use of the TC
            database  should not be limited to only sunrise periods for new
            gTLDs.   A  brand  owner should be notified under a TC Claim if
            any  registrant attempts to register its trademark post launch.
            To the extent marks are expanded beyond identical matches, this
            would be of far greater value to a brand owner.

         o      Section 5.2; Protection for all Trademarks in the TC: Red Bull
            is  concerned  that  while  new  gTLD registries should provide
            equal  protection  to  all  trademarks in the TC that have been
            substantially  reviewed,  registries  should  have "unspecified
            discretion   to   decide   "whether  to  grant  protections  to
            trademarks  in  the  TC".  The protections provided by new gTLD
            registries  should  include  all  registration  of  national or
            multinational effect instead.

         o      Section  6.1;  Use  of  TC for Ancillary Services: Red Bull is
            concerned  that  the failure to limit the permitted uses of the
            trademark   data  contained  in  the  TC  could  undermine  its
            effectiveness  and  lead  to unintended abuses. The operator of
            the  TC  should  therefore  not  be  allowed to offer ancillary
            services  without  express permission from the trademark owners
            whose data is contained in the tool.

         o      Section  6.2;  Pre-Registration of URS:  Any fees that will be
            charged  in  order  to enable URS procedures will ultimately be
            passed  on  to brand owners. These additional fees will make it
            likely  that  brand  owners  will  not  take advantage of these
            potential benefits of the TC.

         o      Section  10.1;  Costs  of  Operating  Clearinghouse:  The  TC
            operations   will   be  funded  from  annual  registration  and
            validation  fees  that  will  come primarily from brand owners.
            Red Bull believes however, that the TC should be a service that
            is provided gratis to the Internet community by ICANN.  At very
            least,  the  TC  should be funded by a combination of fees from
            ICANN  and  brand  owners and/or other parties.  This will keep
            the TC registration fees at a reasonable level.

·       ·       UNIFORM RAPID SUSPENSION MECHANISM (URS):

         o      Section  4.1; Effect of Filing Complaint: The terms of the URS
            currently  require  a  “freezing”  of  a  domain  name  for the
            duration of a registration (with the addition of an extra year)
            in the event of a successful URS dispute by complainant.  As we
            stated  in  the  past,  this would require that the brand owner
            continue  to  monitor  the  name to ensure that a cybersquatter
            does  not  register the name after the expiration of the freeze
            period.  Again,  this policy will be inconvenient and costly to
            the  brand  owner  and potentially require that the brand owner
            file  continuous URS actions on the same domain name.  Red Bull
            therefore  believes  that  in  the  event  of  a successful URS
            action,  the  domain  name should either be transferred back to
            the  complainant,  at the discretion of the brand owner, or the
            domain  name  should  be  blocked from being re-registered by a
            third  party  until  the  trademark  or  other  IP right of the
            complainant are no longer valid.

         o      Section 5.3; Effect of Filing an Answer after Default: Red Bull
            does  not  believe  that  TC registrants should be allowed a de
            novo  review  at any time (during the life of the registration)
            after  a  respondent  fails  to  file  an  answer.  Under  this
            scenario,  in  the  event of a five (5) year registration, if a
            URS  case  is  filed  in  the  first  year  then the case would
            effectively  stay  live for four years.  Red Bull would instead
            join  MarkMonitor  in  its  request for a grace period for a de
            novo  review  of  a  default  judgment  of  3  months  or  upon
            expiration of the registration period, whichever occurs first.

         o      Section 7.1; Remedy if Successful on the Merits: Red Bull would
            like  to  see  the implementation of an effective and efficient
            post-launch IP-claims. It does not believe that a suspension of
            the domain name for the balance of the registration period is a
            sufficient  tool  for  preventing  the continued abuse of brand
            owner's  rights. As stated above Red Bull would rather favour a
            black  listing  of  domain  names  which were found to infringe
            trademark  rights  in URS proceedings (Globally Protected Marks
            List).

         o      The information contained in the TC should be used to lower the
            cost  of  URS proceedings. In particular trademark owners whose
            trademark  data  is  pre-validated  in  the  TC  tool should be
            allowed  to  populate  a  URS  complaint and use the TC data to
            support  its  claim.  The cost of preparing and filing a URS is
            not  likely  to be dramatically cheaper or faster than filing a
            UDRP, as the evidentiary standard is even higher.

The proposals set forth in the STI Report do not appear to reduce the costs
to  the brand owner in protecting its trademark rights under new gTLDs.  In
fact,  given  the  many  validation  touch  points  in the TC, the costs to
register  each  year  in  the  TC database could be substantial. As we have
stated  above,  this  cost should be borne by ICANN alone or in conjunction
with  registrants in the TC.  In addition, the inability of the brand owner
to  force  a transfer or the black listing of a domain name as opposed to a
freeze  will require that the brand owner continuously monitor the name and
potentially re-file URS actions every year or other year.

Yours faithfully

Birgit Schnell
Trademark Attorney Europe

Red Bull GmbH
Am Brunnen 1
A-5330 Fuschl am See
Tel: +43 662 6582-7217
Fax: +43 662 6582-67217
birgit.schnell@xxxxxxxxxxxxxx

The Globally Protected Marks List
An application supported by the IP Clearinghouse which will permit the
blocking of applications for terms at either or
both of the top or second-level in the new gTLDs. The GPML is intended to
address the requirement of trade mark
owners to create a “Reserved Names List” or “White List” according to
well-defined conditions. Essentially a famous
marks list providing greater protection than that afforded to marks which
do not qualify for inclusion. Inclusion will
necessitate meeting a set of strict criteria.