[Tmch-iag] further comments on P1/P2

[Keith Barritt]

Dear Fellow IAG Members:

I have a few further comments on P1/P2 as discussed below:

Terminology Issues


I continue to believe there is unnecessary complexity in having different terms for the function of verifying factual information without any clear rationale.  Even ICANN's documents are inconsistent.  For example, page 11 of the October 2011

"Trademark Clearinghouse Request for Information" includes the following definitions:



* AUTHENTICATION: Determination that rights for the trademark are recognized within the jurisdictions specified;

* VALIDATION: Determination that the asserted rights for the trademark meet the proof-of-use standard for Sunrise registration as defined in the gTLD Applicant Guidebook.



Yet the same document states on page 5:



The provider of data authentication and validation functions will be required to provide the following in multiple languages: a) authentication of data for registered trademarks; b) validation of trademarks validated by a court; and c) validation of trademarks protected by a statute or treaty.



(See http://www.icann.org/en/topics/new-gtlds/trademark-clearinghouse-rfi-03oct11-en.pdf).



Thus, "validation" is supposedly defined as a determination only that the "proof of use" standard is met, yet "validation" is also referred to as determining whether a mark has been validated by a court or protected by treaty/statute, which seems to be what "authentication" would be.



In short, in the absence of a clear rationale for doing otherwise, I suggest there be one term (whatever it is) that describes the TMC's function of verifying factual information ("verification" works better well), whether that information be related to trademark registration, use, validation by a court, or protection by a statute or treaty.



Sunrise Applicant

I do not see how the agent of a trademark owner can be the Sunrise "applicant."  My understanding is that the Sunrise applicant must own a mark in the TMC.  Perhaps an agent could file a Sunrise application on behalf of the mark owner, using the mark owner's TMC identification number/authorization code (or whatever we call it - I think "owner identification number" is the most direct and useful term).  The Sunrise application would also refer to the proper information in the TMC that confirms the trademark owner is eligible for the requested domain, but the agent itself should not be considered the "applicant."

The question arises as to how to minimize fraudulent Sunrise registrations if an agent is permitted to submit Sunrise applications on behalf of the mark owner.  An unrelated third party could pose as the authorized agent, obtain a Sunrise registration in the name of the mark owner (but using fraudulent contact information), and then swiftly transfer the domain to itself or conspirators.  Thus, it will be necessary to ensure that the trademark owner ID number/authorization code does not become part of the public record to minimize such potential abuse.


Number of Codes

I agree with Tom Barrett that the Sunrise applicant could provide the owner ID number and then the specific registration/court validated/treaty protected/statute protected mark (including jurisdiction), rather than have a separate code for each entry in the TMC.


Language Substitutions

I agree with Tom Barrett that there should be only one repository of information regarding which language-specific substitutions are permitted.  This could be maintained and applied at the TMC level when confirming that a Sunrise applicant is eligible for the domain name requested.  The registries should not be allowed to generate their owns lists, which could create inconsistency and confusion across multiple new gTLDs.

Keith Barritt
[cid:image002.jpg at 01CCB8B1.6AD33310]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<http://www.fr.com>


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