[Tmch-iag] FW: Trademark Clearinghouse IAG - Issue T1

Wed Jan 25 17:47:04 UTC 2012

Mike,

The TMCH for Trademark Claims could use DNS.

The TMCH for Sunrise could use EPP. (without mirroring)

Tom Barrett
EnCirca

  _____  

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of icann at rodenbaugh.com
Sent: Wednesday, January 25, 2012 11:51 AM
To: tmch-iag at icann.org
Subject: [Tmch-iag] FW: Trademark Clearinghouse IAG - Issue T1

If the database is mirrored, then there can be no single point of failure.
Isn't this how the DNS works?

Mike Rodenbaugh

RODENBAUGH LAW

tel/fax: +1.415.738.8087

http://rodenbaugh.com 

From: Neuman, Jeff [mailto:Jeff.Neuman at neustar.us] 
Sent: Wednesday, January 25, 2012 8:34 AM
To: Trachtenberg, Marc H.; Adams, Michael D.; Jeff Eckhaus;
mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: RE: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Marc,

But as a registry, I can control that single point of failure. I don't
necessarily have to rely on a third party.  Or if I do outsource my registry
function, I have a contract directly with them and I can do the diligence on
them to make sure they have the appropriate facilities to handle and the
appropriate contractual protections in place.  I have no control over the
third party clearinghouse.  I, as a registry, was not able to do the
diligence on them.  I have no contract directly with them giving me the
guarantees I would make sure I get with an outsourced provider.

You also have to look at the macro level.  If the Clearinghouse goes down,
it is not just the one registry that goes down...all of them do (that are
going through Sunrise or IP Claims).  Therefore, you are magnifying the
issue tremendously.

The launch phase of the TLD (of which Sunrise, IP Claims, etc. are but just
one piece) is one of the most critical time periods in the lifecycle of a
registry.  It is a huge focus of months worth of marketing, PR, channel
programs, etc.   For non-brand TLDs, if you go down during your launch
phase, there may be no recovery.  Even if not the registry's fault (but a
third party's fault), the market will not care nor will it be very
forgiving.

So again, understand the concerns expressed by Brian and the IP Attorneys
and believe they are very legitimate and need to be addressed.  But the
concept of having a single point of failure and the possible ramifications
of such a failure cause by a party to which the registries have no control
over (contractual or otherwise) is not something that should be taken
lightly.  I know there are some IP Attorneys in this group that do represent
such non-brand registries.   Please take that into consideration.

Thanks.

Jeffrey J. Neuman 
Neustar, Inc. / Vice President, Business Affairs

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From: Trachtenberg, Marc H. [mailto:MTrachtenberg at winston.com] 
Sent: Wednesday, January 25, 2012 11:16 AM
To: Neuman, Jeff; Adams, Michael D.; Jeff Eckhaus; mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: RE: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Jeff,

As you point out, there a single point of failure inherent in every TLD -
the registry.  If strategies are being created to ensure that the registries
don't go down, can't we just apply the same strategies to the TMCH?  How is
this any different? 

Best regards,

Marc H. Trachtenberg 

Winston & Strawn LLP
35 W. Wacker Drive
Chicago, IL 60601-9703

D: +1 (312) 558-7964

M: +1 (773) 677-3305 

F: +1 (312) 558-5700

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Description: Description: Winston & Strawn LLP

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of Neuman, Jeff
Sent: Wednesday, January 25, 2012 10:05 AM
To: Adams, Michael D.; Jeff Eckhaus; mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Michael,

Your perspective is one of an intellectual Property owner and I completely
respect that.  But to be fair, if registries have to rely on the
Clearinghouse to display all notices for IP Claims and to certify to the
Registries that the notice was displayed and the registrant only proceeded
after being shown the IP Claims notice, then that too creates the one single
point of failure.  If the registries/registrars do not have the information,
then they cannot display the claims notices.  All of that may be fine, but I
want to know what assurances there will be that the Clearinghouse will
literally never go down and what repercussions there will be if the
Clearinghouse does go down.

There has been so much emphasis in the new gTLD process about registries
never going down.  Emergency providers being established to ensure the
registrant is not affected.  Countless pages of technical documentation
being required to ensure there is never a single point of failure.  Yet now,
we are saying we are fine with that because of fear that one brand will
learn another brand's protection strategy. Again, this may be ok, and I am
not judging that.

But lets call it what it is..the creation of a single point of failure.  If
we are fine with that, let's move on and figure out how we can ensure that
that single point of failure will never go down.

Best regards,

Jeffrey J. Neuman 
Neustar, Inc. / Vice President, Business Affairs

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From: Adams, Michael D. [mailto:MAdams2 at mayerbrown.com] 
Sent: Wednesday, January 25, 2012 10:40 AM
To: Neuman, Jeff; Jeff Eckhaus; mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: RE: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

>From my perspective, all that is required for registries is that they have
the most basic of information, namely, the existence of a validated right
and the validated right's owner.  What will not be needed by registries is
an in-depth detailed set of information regarding all brands, classes
claimed, countries of registration etc.  Unless my understanding is
mistaken, it does not seem to me that registries have a need for the
information they are advocating to receive.  Please let me know if I am
missing something.  Thanks. 

_________________________

Michael D. Adams
MAYER BROWN LLP
71 South Wacker Drive
Chicago, Illinois 60606-4637
Direct Dial: (312) 701-8713
Direct Fax: (312) 706-9139
e-mail:  <mailto:bmiller at mayerbrown.com> mdadams at mayerbrown.com  

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of Neuman, Jeff
Sent: Wednesday, January 25, 2012 7:46 AM
To: Jeff Eckhaus; mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

>From a registry perspective, if we decide to centralize all of the data in
one place, as is being advocated, we run a substantial risk of affecting the
real time registration process and we create a single point of failure.  If
that Clearinghouse were to ever go down (or even take a scheduled
maintenance), then each registry that is relying on the Clearinghouse for
real time IP Claims or real time Sunrise will also go down.  Registrations
may be tied up in queues or not accepted at all.  Customer support inquiries
to both the registries and registrars will be a nightmare to say the least.
Who will compensate the registries and registrars for lost revenue as a
result?  

Question to the IP Owners:  If I really wanted information on my competitors
and the brand protection strategy, cant I just go to a Thomson and Thomson
or any trademark watch service and order a search on my competitors.  In
other words, I believe now I am free to go to one of these search firms and
demand search results on any third party to find out their brand protection
strategy.  So, as Microsoft, couldn't I order a service from Thomson and
Thomson or CSC to search all of the filings of Google and alert me when new
registrations come in?  How would this be different?  

And if there is still a concern, couldn't we create a code of conduct which
forbids the disclosure of such data or separates the duties out whereby
anyone working on the registry cannot share that information with others
even within their own corporation.

There are tradeoffs here that need to be considered.

Jeffrey J. Neuman 
Neustar, Inc. / Vice President, Business Affairs

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From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of Jeff Eckhaus
Sent: Wednesday, January 25, 2012 1:40 AM
To: mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

The question that I have here is do the IP lawyers here who agree with
Brian's original comments believe that the full service can be completed by
registries and registrars with limited data? 

Or are you willing to accept a possible lower standard to protect the full
portfolio of marks? 

Just to be clear I am not advocating one way or another here, just want to
know if there are trade offs being made here and if there are trade offs are
people willing to accept them.

Jeff

On Jan 24, 2012, at 10:32 PM, "icann at rodenbaugh.com" <icann at rodenbaugh.com>
wrote:

Agreed.  The Clearinghouse, or any substantial part of it, should only be
mirrored in a finite number of places, solely for purposes of bandwidth and
redundancy.  Queries can be made against any of the mirrored databases in
real time, as needed.  Is someone making an argument for more than this?

Mike Rodenbaugh

RODENBAUGH LAW

tel/fax: +1.415.738.8087

http://rodenbaugh.com 

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of Keith Barritt
Sent: Tuesday, January 24, 2012 4:30 PM
To: 'Trachtenberg, Marc H.'; Winterfeldt, Brian; tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

I also concur with Brian's well-articulated reasoning.

Keith Barritt

<image001.jpg>Fish & Richardson P.C.

1425 K Street N.W.

Suite 1100

Washington, DC  20005

Phone:  (202) 626-6433

Fax:      (202) 783-2331

www.fr.com

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of Trachtenberg, Marc H.
Sent: Tuesday, January 24, 2012 6:24 PM
To: Winterfeldt, Brian; tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

I agree fully with Brian's comments.

Best regards,

Marc H. Trachtenberg 

Winston & Strawn LLP
35 W. Wacker Drive
Chicago, IL 60601-9703

D: +1 (312) 558-7964

M: +1 (773) 677-3305 

F: +1 (312) 558-5700

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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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