Documents:
draft-proposed-procedure-urs-04oct09-en.pdf
draft-proposed-procedure-tm-clearinghouse-04oct09-en.pdf
Letter from Zamil GNSO BC to ALAC re IP-IRTR issues in_DAG3
draft-summary-of-changes-from-IRT-proposals-2009-10-20.pdf
draft-rfp-redline-04oct09-en.pdf
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Issues:
Trademark Clearinghouse
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5. The GNSO Review Team will provide a final report to the GNSO Council on or before the GNSO council's meeting in late November, 2009.
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Please find the notes I have written (in no specific order) after reading all documents.
Please bear in mind that this is not a follow-up to this morning's breakfast meeting.
Q1. Will regional registries understand the laws and nuances of trademark practice in the countries of their region? Specifically, would the common law right be understood when the majority of countries around the world do not follow common law? I gather that common law would not be acceptable to GAC
Q2. Why is the URS now reduced to 14 days from 20? Is there a legal reason for this? If not, then is 14 days legal in all countries around the world? Is prejudice hinging on a few days more or less?
Is the 14 day process "reasonable"?
Q3. If the Trademark Clearinghouse and the URS proposals apply to the new gTLDs only, does this favor current gTLD registries? Does it prejudice new gTLD applicants in their business?
Specific proposed ideas
(merged above)
That's all for now. I look forward to seeing our group ultimately proceed towards a good set of suggestions.
* Olivier
_contributed by_ _Guest User_ _on_ _Oct 25 10:47pm_
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Since Evan is busy, I add myself.
Common Law Marks
If unregistered trademarks are going to be included under common law
rights, there must be clear cut criteria available for
implementation.The common law rights are based on use of the marks.
The pertinent scope, length, goods and most important of all the
reputation established by the use shall be taken into account. A
simplified recognition of rights would be arbitrary. However, the full
consideration of all the element are too complicated to implement and
too time-consuming to verify in the DNS. Oppose to include common law
marks.
However, it is not true that "the majority of countries around the
world do not follow common law." The British Empire actually brought
its common law to a large part of Asia, Africa and Caribbean region.
The problem of common law marks is not the geographical distribution
but the difficulty to verify and recognize by non-judicial system.
Please also refer to [http://www.cdnua.org/|http://www.cdnua.org/]
Hong
_contributed by_ _Guest User_ _on_ _Oct 27 12:59am_
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1. Impact of a clearinghouse notice on a registrant: is there a potential chilling effect on registrations if a Trademark holder contacts a registrant before the registration is made?
*So long that there is an established procedure that all the registrants are aware of*
2. The requirement that the Clearinghouse be separate and independent from ICANN: not be operated by ICANN and clear and distinct from ICANN. It should operate based on market needs and collect fees from those who use its services. ICANN may coordinate or specify interfaces used by registries and registrars, and provide some oversight or quality assurance function to ensure rights protection goals are appropriately met.
*There should be clearly defined rules of how the database of the clearinghouse is updated, by whom, when and how*.
3. Is Clearinghouse use optional or mandatory for new registries (if optional, must the registry must provide something as effective or better)?
*Clearinghouse should be used in jurisdictions/countries where there are no other mechanisms to check for Trademarks and copyrights*
4. Should the Clearinghouse requirements (including the choice of IP Claims or Sunrise processes) be applied to existing registries?
*Yes, the requirements should include new TLDs as well as existing TLDs*.
5. Liability: During verification of trademarks, liability may arise through false positive and negative results. How should potential liability of parties be managed?
*Without prejudice notice while going through the process*
6. Who assumes the cost of the Clearinghouse? Should the Clearinghouse be funded completely by the parties utilizing its services?
*The cost of the Clearinghouse should be funded by the parties utilising its services*
6. How would the Clearinghouse be used? ICANN is publishing a detailed procedure under separate cover that should be considered as part of the Clearinghouse proposal in this review.
*The use of the Clearinghouse should be optional in countries where there are no other mechanisms in place for trademarks verification*
7. What are the criteria for inclusion in the Clearinghouse? Should the Clearinghouse as conceived accept registered and unregistered marks -- similar to marks considered for UDRP consideration now?
*The acceptance or rejection of the trademark should be left to the discretion of the body managing the clearinghouse since ICANN will only have oversight. It should be given its own independance*
_contributed by_ _Dave Kissoondoyal_ _on_ _Oct 27 11:46pm_
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*1.Impact of a clearinghouse notice on a registrant: is there a potential chilling effect on registrations if a Trademark holder contacts a registrant before the registration is made?*
Yes
*2.The requirement that the Clearinghouse be separate and independent from ICANN: not be operated by ICANN and clear and distinct from ICANN. It should operate based on market needs and collect fees from those who use its services. ICANN may coordinate or specify interfaces used by registries and registrars, and provide some oversight or quality assurance function to ensure rights protection goals are appropriately met.*
Agreed
*3.Is Clearinghouse use optional or mandatory for new registries (if optional, must the registry must provide something as effective or better)?*
No opinion.
*4.Should the Clearinghouse requirements (including the choice of IP Claims or Sunrise processes) be applied to existing registries?*
Yes. The incumbent registries currently have a market advantage in not have to perform on the same terms as the new gTLDs
*5.Liability: During verification of trademarks, liability may arise through false positive and negative results. How should potential liability of parties be managed?*
Liability should be on the trademark clearinghouse operator. Registries and registrars should be indemnified if they have checked the trademark clearinghouse.
*6.Who assumes the cost of the Clearinghouse? Should the Clearinghouse be funded completely by the parties utilizing its services?*
Funded by trademark owners. It is for their own personal benefit, but a burden to both registrars and registries. According to RFC 1591: "In case of a dispute between domain name registrants as to the rights to a particular name, the registration authority shall have no role or responsibility other than to provide the contact information to both parties." Obviously, if ICANN commits to comply with RFC 1591 for ccTLDs, it should also agree to comply with requirements for gTLDs.
*7.How would the Clearinghouse be used? ICANN is publishing a detailed procedure under separate cover that should be considered as part of the Clearinghouse proposal in this review.*
*8.What are the criteria for inclusion in the Clearinghouse? Should the Clearinghouse as conceived accept registered and unregistered marks -- similar to marks considered for UDRP consideration now?*
To avoid inconsistency, the database should only contain trademarks registered with relevant offices. Because the process will be highly automated, unchallengable evidence is needed.
Comments on the proposed procedure for clearinghouse
This applies to provisions in the proposed procedure that are not covered by the board questions:
*3.Service Provider(s)*
The use of multiple clearinghouses may lead to unconsistent results. What are the liabilities of registries if a trademark is in clearinghouse B but not clearinghouse A ?
URS
If this needs to be implemented at all, I suggest the following modifications
* Notification to registrant: rather than 14 days + 7 we should bring that to 21 days +7 (5.1 and 5.2 of the draft proposed procedure )
* Postal mail should be using guaranteed Day+2 delivery. No bulk international mail, which may be delivered after the notification period is over. This is further reinforced by the fact that the use of telefax is unlikely for individual domain name registrants, and that e-mail has been proven unreliable.
Additional comments on the URS
1.4c) “the Complainant should include a copy of the currently available Whois information and a copy of the web site content associated with each domain name that is the subject of the Complaint;”
What happens of there is no web site associated with the domain name ?
_5.1 [It has been proposed that a Response fee shall be due with the Response only if the Response relates to 26 or more domain names being challenge in the Complaint. This proposal, along with whether the Response fee would be refundable if the Registrant prevails is still under consideration］_
Yes. Indeed, the registrant should incur no cost if proven innocent and should further be compensated by the complainant for the costs incurred in processing the complaint.
_contributed by_ _Patrick Vande Walle_ _on_ _Oct 28 12:30am_
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Some of the above comments have staked out a position that the Trademark Clearinghouse should be limited to Federally registered trademarks (FRTM) only and should not include common law marks. Clearly, one needs to ask: How does this position serve the needs of the average small business that currently uses the Internet as a vehicle for commerce?
My employer (a very small business) commenced operations in 1928 and has relied upon its existing and recognized rights under common law; the firm has never filed for a federally registered trademark (it never needed to do so) as it has long enjoyed the protections offered by common law.
The currently posted Trademark Clearinghouse criteria state: "in the absence of a registration, evidence of continuous use of the mark in connection with the bona fide offering for sale of goods or services for a period of five years prior to application for membership." Such criteria are reasonable, and impose no major burden upon small businesses other than the provisioning of reasonably requested documentation.
By contrast, what some (through their above comments) are proposing will necessarily force small businesses to expend considerable financial resources on federal-level trademark registration processes just to be able to obtain the same clearinghouse services that will in due course be made available to members of the large business community.
The approach taken by these proponents stands in opposition to the generally accepted principles articulated by the GNSO for new gTLDs, namely that deference should be afforded to the existing legal rights of others. The Clearinghouse criteria recognize these existing rights and attempt to lay out a reasonable basis for the documentation of such rights. One might reasonably argue that four years, or six years, or some other number is a better choice than five years, but any such final choice is certainly better and more reasonable than the attempt to capriciously exclude the holders of common law marks.
contributed by Danny Younger
_contributed by_ _Guest User_ _on_ _Oct 29 6:39am_
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Danny,
I understand your points and agree that registering a Trademark is an added burden for a small business. However, this small burden shifts the responsibility of Trademark establishment onto a legal Trademark authority, a responsibility that ICANN cannot afford to take.
In the wider sense, allowing common law trademarks will bias the system in favor of registrants from countries practicing common law, whilst at the same time do disservice to individuals potential registrants since more than 80% of the English Dictionary would then end-up in the database. This would mean that no matter what domain name you would be applying for, there would be a high chance that there are already trademark claims on it, somewhere.
I hope you understand the wisdom of leaving common law trademarks out of the Trademark Clearinghouse.
Thanks,
Olivier Crépin-Leblond
_contributed by_ _Guest User_ _on_ _Oct 29 9:02pm_
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I listed myself as a participant. Hope that's OK.
If, Oliver, you are proposing that small businesses with common law rights take the time and expense to register federally (and its not all that expensive), won't these latecomers be viewed as registering simply to become eligible to be listed with the Clearinghouse? Ultimately, someone is going to have to decide which applications for recent registration are real and significant and which are not. And even without considering common law trademarks, I think you will find multiple instances of conflicting rights as between federal registrants from different countries and a significant portion of the words of the English Dictionary eligible for listing with the Clearinghouse.
I also wonder (Danny) whether the small businesses that do not bother to federally register their marks will take the time and expense to list with the Clearinghouse. I have registered hundreds of marks for small businesses, but I doubt very much if more than a very few would list with a Clearninghouse. And small businesses with common law rights, like Danny's employer, will still have the UDRP to fall back on.
Seth
_contributed by_ _seth.reiss_ _on_ _Oct 29 11:45pm_