[Tmch-iag] ICANN IPC / Trademark Clearinghouse IAG - P3 & P5 Comments

[Winterfeldt, Brian]

Dear Trademark Clearinghouse IAG,

With respect to issue P3, namely who should be responsible for providing the domain name registration notice to the trademark holder listed in the Clearinghouse, I am of the opinion that there are significant practical advantages to having the registrar be responsible for generating and transmitting the registration notice.  First, the registrar is the party that has just completed the registration, and is thus in the most efficient position to submit the notice.  Second, the registrar already possesses the required contact information for the domain name registrant to provide the trademark holder.  Moreover, the registry operator would be relieved of this function, which might be desirable as there has been concern among trademark holders that registry operators, many of whom will be competing brand owners, should not obtain full trademark clearinghouse data for fears that they could engage in trademark strategy mining.  We are cognizant that there might be some issues with the ability of either the Clearinghouse or registry to verify that the notice was sent.  However, it should be possible for the registrar to generate simultaneous notices to both the Clearinghouse and the registry that the notice has been sent without revealing sensitive trademark holder information to the registry.  Accordingly, I recommend Approach (2) where the registrar is responsible for providing the trademark claims notice to the mark holder, while requiring that the registrar simultaneously submit verification to the registry operator and the Clearinghouse that the notice has been sent.

With respect to issue P5,  namely who should be responsible for performing trademark claims checks for pending domain name applications to the Clearinghouse, I am similarly of the opinion that the registrar is in the most efficient position to conduct this check, and can most quickly do so during the application process.  Forcing registries to perform this check could slow down the domain name registration process.  Moreover, registrars can relieve registries of this function, who may otherwise have to adopt additional EPP, SLA, and other technological extensions that may be unwanted.  Again, there has been concern among trademark holders that registry operators, many of whom will be competing brand owners, should not obtain full trademark clearinghouse data for fears of trademark strategy mining.  Accordingly, I recommend Approach (2) to require the registrar to conduct this check, while requiring that the registrar simultaneously to submit verification to the registry operator that it has done so.

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
bwinterfeldt at steptoe.com<mailto:bwinterfeldt at steptoe.com>
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