FYI

Date: Sat, 12 Dec 2009 18:40:34 -0500 To: name-issues <name-issues@atlarge-lists.icann.org> From: Alan Greenberg <alan.greenberg@mcgill.ca> Subject: Re: [Name-Issues] At-Large minority positions to the GNSO STI report

To date, we have had three people comment. The results are as follows. Please correct me if I mis-read your comment. By "agree" I mean that the person generally supported the concept and we should state it as an At-Large position.

Additional comments or corrections will be accepted until Sunday, 18:00 UTC

Alan ----------------------------

1. Additional Marks in the Clearinghouse Evan, Hong and Carlton agree, but do it with caution.

2. Transfer of a domain name after a successful URS Evan, Hong and Carlton agree.

3. Post-Launch TM Claims Evan (I think), Hong and Carlton agree.

4. Number of Trademark Clearinghouse (TC) providers

4a - The two parts of the Trademark Clearinghouse must be separated.

4b - No strong preference, so STI recommendation of leaving to staff to decide on merits is ok. Evan, Hong and Carlton agree.

At 10/12/2009 12:55 PM, Alan Greenberg wrote:

...

Olivier and I are suggesting that we issue minority issues on four issues. We both agree on the first three, and are divided on the last. We seek advice of the name-issues group (and particularly the At-Large members) on what to recommend to the ALAC.

Forgive any typos, as there was a great rush to get this out.

Alan and Olivier

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1. Additional Marks in the Clearinghouse

The proposal calls for the Clearinghouse at a minimum to included just nationally or multi-nationally registered trademarks as well as common-law trademarks that have been validated by a court decision. Other TM can be included by the TC at registry and/or TM holder expense) but their use by a registry is not mandatory.

The Business Constituency has proposed that a limited class of other marks be included, and we are proposing that the following types of marks be included for the purposes of sunrise processes. The types of marks would include a registered TM used in conjunction with: - a dictionary word that is associated with the class of services trademarked (example: a chemical company XYZ could deposit in the TC the name "XYZ-Chemicals". This was allowed in the .asia sunrise. - a dictionary word that is regularly used in clear association with the TM (example: Yahoo-Finance - see http://finance.yahoo.com/). There would need to be careful language, objection processes and penalties for depositing names in the TC that do not meet the criteria (example: Yahoo-sucks, unless Yahoo starts to manufacture vacuum cleaners)

Brand owners want to be able to have clear right-of-first-refusal to reduce opportunities for cyber-squatting and to reduce the need for URS and UDRP proceedings. We believe that At-Large benefits from such legitimate registrations to reduce the opportunity for user confusion which results from cyber-squatters obtaining such names. From the perspective of a non-sophisticated user, if they enter a name that CLEARLY maps to a known brand, it should not resolve to a pay-per-click page or someone offering a competing product or service.

The formulation of this proposal eliminates some of the previous objections to this type of proposal (the trademark "enom" preventing someone from registering "venom"). It also excludes allowing entry into the TC of "confusingly similar" typo-squatting type names.

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2. Transfer of a domain name after a successful URS

This was included in the original At-Large input into the STI process.

Under the STI proposal, the only remedies following a successful URS is that the domain be suspended (not usable) for the remainder of the registration period. It also allows the successful URS claimant to extend the registration for one year. It does not allow the claimant to take over the registration and therefore at the end of the registration period, it will be available again (possibly to be used for similar cyber-squatting).

The rationale is:

a) The URS was not originally envisioned by the IRT as a transfer mechanism - if the TM holder wants to take custody of the name, they should use the more expensive and slower UDRP either following a successful URS, or instead of the URS.

b) We need to differentiate the URS from the UDRP

c) It may be complex for the registry and/or registrar to implement if not carefully designed

d) It may take a generic word domain name (which might have legitimate uses over and above those used by the current registrant (which resulted in a successful URS).

We believe that the merits of allowing such a transfer are larger than the negatives. Specifically:

a) should not be relevant. We have already changed MUCH in the original IRT proposal, and rightfully so. And it seems mean-spirited to force a TM holder to go through the UDRP just because of how the URS was originally envisioned. b) Why? There is a good probability that over the next few years, the two procedures will be reviewed and merged into a single procedure with multiple paths. c) This can be overcome with careful design. d) Chances are that either through successive URS proceedings or a UDRP, the name will go out of circulation anyway.

We recommend that a transfer at end-of registration be allowed. Since the domain is explicitly flagged as being the subject of a successful URS, the process should not be onerous if requested at URS-time by the claimant.

Barring that being accepted, we suggest that a transfer be allowed after a second successful URS. The main argument against that was that it would be difficult to implement with respect to record keeping. However, since claimant could indicate that this is a second URS when filing the URS (and give a case number), indicating that if successful, they want a transfer, there is virtually no record keeping needed, other than by the TM holder.

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3. Post-Launch TM Claims

The TC will allow (at the decision of the registry) pre-launch TM Claims. The process is that if a registrant tries to register a name that *might* conflict with an existing TM in the TC, they will be notified of the possible conflict and will need to declare that there is no infringement if they decide to go ahead with the registration. The rationale may by the jurisdiction where the TM is registered, the types of goods or services, or fair use and freedom-of-speech reasons.

There is no such provision after launch, so that a domain that would require such a declaration pre-launch can be registered without any issue after launch. This allows for those inadvertently registering an infringing name to do so without being informed ahead of time that they may have a problem. In the case of cyber-squatting, a post-launch TM Claims service would require that declare that they will use the name for non-infringing purposes, and such a declaration could be used against them in a later URS or UDRP. On the negative side, post-launch TM Claims could have a significant "chilling effect" in that someone registering a name for completely legitimate uses might decide not to because of the notice.

We suggest that At-Large recommend further investigation with respect to efficient and effecting implementation of post-launch IP claims and on the potential chilling effect on non-IP-professional registrants.

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4. Number of Trademark Clearinghouse (TC) providers

Olivier and I are divided on this issue.

Olivier's position

Whilst the original IRT report does not specify whether the Validation of the trademarks included in the TC and the database maintenance element of the TC should be separated or not, the staff proposals recommends two providers, in order to introduce additional safeguards in the process.

Given that the two functions are separate and distinct functions, that they each call upon a different skillset, that a concentration of responsibility resulting from control of both functions by a single provider might ease the possibility of process capture and that the performing of these functions by one provider weakens the commitment by the STI Team to separate these functions, we also recommend that these functions shall be performed by entirely different providers. A validation service provider shall not be able to maintain the database. Similarly, the provider maintaining the database shall not be able to also offer a validation service. This separation of functions shall extend to affiliates of the respective providers.

Alan's position

It is unclear what the exact harms would be from integrating the two functions. Moreover, despite significant discussion, it is not quite clear if the input from the TM holders (which must be handled in a number of languages) is best handled by the validator or the data-base provider. The former will already have the ability to interface with registries, the URS providers, and registrants who need to obtain information related to URS proceedings. The validator must have expertise in validating TM in all jurisdictions of the world, but may not be an expert on the technical issues related to providing round-the-clock computer systems, help desks, multi-lingual support and other aspects that the database provider will have to posses. Given that, the STI-RT chose to leave it up to staff to balance the desire for separation against the ability to find competent provider(s) to implement the overall TM.

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