So then why require a Spec 13 applicant to register with the TMCH? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB2E5.76518330] From: Kathy Kleiman <Kathy@KathyKleiman.com> Sent: Monday, April 21, 2025 5:35 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 Hi Mark, With my hat on as former co-chair of the Rights Protection Mechanisms PDP Working Group, I have to share that you anticipate uses of the Trademark Clearinghouse (TMCH) far beyond any envisioned by the RPM WG. It was only set up, and we only reviewed it for, the limited purposes of second-level domain name work of Sunrise and Trademark Claims Notices. There is no authority, mandate or review for using it for approving or mandating a particular version of a trademark that ICANN itself must accept, and in fact, if you are read the RPM WG Final Report closely, you will see that the TMCH is already being used for gaming in a variety of ways, including de minimis use of trademarks -- just barely enough to gain entry into the database and then register marks during Sunrise. ICANN, of course, has its own review and processes at the top level, has never delegated them, and has no mandate to do so. Best, Kathy On 4/18/2025 7:10 PM, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: For #1, the TMCH validates trademark registration, which is the reason that the Spec 13 RO needs to register with them in the first place. If the TMCH registration is not sufficient to validate a trademark registration from an ICANN perspective, then what purpose does the TMCH serve and why should a Spec 13 RO have to register with them in the first place? For #2, it doesn’t matter who ICANN contracts with. #2 has to do with who it makes sense for a brand owner / spec 13 RO to be able to permit to register domain names in their TLD. If there are individuals like real estate or other brokers who use the trademark in the regular course of their business to signify their affiliation with or certification by the brand owner, then they should be able to register domain names in the .BRAND TLD. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB2E5.76518330] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:04 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 Mark, I have to disagree with you here. For #1, the Trademark Clearinghouse grants no rights; it is a repository and a closed one. Of course, ICANN will want to see the accurate and complete copy of the trademark registration. For #2, ICANN does not contract with individuals as ROs, right? Best, Kathy 4/17/2025 1:49 PM, trachtenbergm--- via SubPro-IRT wrote: Two initial questions re Spec 13: 1. Section 9.3(i)(a) requires that for a .BRAND, the applicant must have a registered trademark that “is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN.” If the trademark registration is already validated then why does the applicant also have to provide ICANN with an accurate and complete copy of the trademark registration pursuant to Section 9.3(iii)? His seems redundant and to make the registration with the TMCH meaningless. 1. Section 9.5 defines “Trademark Licensee” as “any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator…”. Why should individuals be excluded? I am guessing the concern is to avoid ROs from claiming Spec 13 status and then offering registrations to anyone. But that does not seem to be a valid concern because there is also the requirement that the rademark license “is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD.” There are a number of brands where individual persons might be legitimate trademark licensees and need to use the trademark (and a domain name in the .brand TLD) as par of their regular business. For example, Realtors or individual insurance or other brokers working for a large company. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB2E5.76518330] From: Elisa Busetto via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Thursday, April 17, 2025 8:27 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Redline Specs 7 and 13 *EXTERNAL TO GT* Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!EL2Chl3j143-VkVUC4FQcYvTKYCir5HIAAVpUivMXvy13uJBCBNiQUx1EzFj60WaWi5mXuA7kJECo0zNRXituKI$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!BfJ1rrU_-Ley3Bzhv1G9PCgBB5ICOlTGL_Nms2sHaEk295sNH93VYVGIbhz6Ybp3GC0i8u5ofHu5_Ewuf_CG1w$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!BfJ1rrU_-Ley3Bzhv1G9PCgBB5ICOlTGL_Nms2sHaEk295sNH93VYVGIbhz6Ybp3GC0i8u5ofHu5_EwUg8BahA$>). 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