[Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Tue Jan 24 23:24:19 UTC 2012

I agree fully with Brian's comments.

Best regards,

Marc H. Trachtenberg

Winston & Strawn LLP
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From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On Behalf Of Winterfeldt, Brian
Sent: Tuesday, January 24, 2012 2:22 PM
To: tmch-iag at icann.org
Subject: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Dear Trademark Clearinghouse IAG,
In response to recent comments on the T1 Issue, I continue to have reservations against having the Trademark Clearinghouse supply of all of the listed trademarks and their full information to registries and registrars in bulk.  While we fully acknowledge that trademark claims notices will provide information about a specific mark and so will become somewhat public, the receiver of this information (here, the prospective domain name registrant) will be limited, as will the information provided (i.e., not all listed marks).  Moreover, most .BRAND registries will not likely have many third-party claims notices to send.  Accordingly, there again is no need for registries and registrars to receive trademark owners' entire trademark portfolios collected and compiled in one place.
To reiterate, intellectual property owners are concerned that their competitor registries and registrars will obtain their entire trademark portfolios with the ability to quickly and easily sift through this information to easily discern the holder's brand protection strategy for its marks in not only a comprehensive way, but on a more specific jurisdiction-by-jurisdiction and even a mark-by-mark basis.  This could potentially jeopardize a trademark holder's entire portfolio.  We understand that the registries believe that they can implement tracking metrics such as those currently in use with WHOIS lookup to determine if registrants are attempting to mine Clearinghouse data to gain a competitive advantage, but we still feel the brand protection risks far outweigh any gains in adopting such a measure.  Without a demonstrable need for registries and registrars to obtain all of this information, I again recommend that full trademark information should remain at the Clearinghouse, with information provided on a limited, need-to-know basis, namely, full trademark information about the mark at issue to potential domain name registrants who attempt to register an exact match, and only a yes or no answer to a registrar or registry in response to an exact match query.

Thank you,

Brian

Brian J. Winterfeldt, Esq.
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036
TEL 202.429.6260 | FAX 202.261.7547

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