[Tmch-iag] IAG P1 and P2 Issues -- Keith Barritt comments

Sun Nov 20 21:43:28 UTC 2011

Dear Fellow IAG Members:

Below are my comments on Issues P1 and P2 as requested in Karen Lentz's
email of November 17.

OverarchingTerminology Issues

a.       "Registration"

The final rules should use consistent, clear terminology.  We already
have the unfortunate and unnecessary confusing terminology of
"registrations" referring to both domain name registrations and
trademark registrations.  We do not need Trademark Clearinghouse
"registrations."  I propose we use "listings" (or some other word)
rather than "registrations" to refer to marks in the Trademark
Clearinghouse.  Thus, trademark owners would submit their marks for
"listing" in the Trademark Clearinghouse.

Similarly, and in particular with respect to Sunrise applications and
the trademark claims notice system, persons/entities who are applying
for domain names are not yet "registrants."  For example, claims notices
are sent to "domain name applicants," not to "domain name registrants
prior to registration."

b.      TMC

Up until now, I believe most references to the Trademark Clearinghouse
have used the abbreviation "TMC" rather than TMCH.  I submit TMC is
preferable.

c.       Verification

There has been inconsistent and unnecessarily complex terminology used
to verify trademark rights in the Trademark Clearinghouse.  Without
clear rationale we do not need separate terms for "validating,
authenticating, or confirming" factual information.  "Verifying" would
likely suffice for almost all uses.  

1.      P1 - Sunrise Domain Registration Authorization

The issue here is to verify that a particular Sunrise applicant owns a
trademark that is an identical match that is listed in the TMC.  Thus,
the checks to verify that the domain name applicant is entitled to the
Sunrise registration requested must occur after the domain name
application is filed.  Apparently the concept of an authorization code
would be to allow registrars or registries to look up all trademarks
listed in the TMC under a particular domain name applicant's authcode to
verify that there is an identical match.  It is unclear how (or why) the
authcode itself would need to be verified, as long as the domain name
applicant owns a mark that is an identical match in the TMC.  

The proposed use of an "agent" to obtain Sunrise registrations is
unclear.  The Sunrise applicant must own a mark that is an identical
match.  An agent might be able to manage applications and payment of
fees, but it is hard to see how an agent itself would be the applicant.
Perhaps by "agent" ICANN is referring to use of a proxy service, where
the owner of record is not the "beneficial owner" (i.e. actual user) of
the domain name.  It is still difficult to see how use of a proxy
service is consistent with the requirement that only the owner of an
identical match mark is eligible to be the owner of a Sunrise
registration.

It appears that having the registry use the domain name applicant's
authcode to verify that it owns an identical match mark listed in the
TMC would be logistically the simplest.

2.      P2 - Responsibility for Registrant Claims Notice

The "Description" section of the attached states that the notice to the
"domain registrant" (meaning domain name applicant) should enumerate the
conflicts "known by" the TMC.  The TMC is not sentient and is incapable
of "knowing" anything.  Rather, the notice simply lists the identical
matches in the TMC.

When a domain name applicant files the application, it could receive an
automated email acknowledgement from the registrar alerting it to the
possibility of receiving a notice from either the TMC, the registry, or
the registrar.  As with issue P1, it appears that having the registry
send the notice may be logistically simplest while also coming from an
entity that the domain name applicant will at least have heard of if an
email acknowledgement of the application as suggested above is sent (and
perhaps have heard of earlier as the entity that is running the gTLD at
issue).

 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 Karen Lentz
Sent: Thursday, November 17, 2011 2:00 PM
To: tmch-iag at icann.org
Subject: [Tmch-iag] Follow-up from 15 Nov 11 teleconference

All,

I want to thank all of the attendees for participating in our IAG
Kickoff Call.  Approximately 37 people attended from around the world
and offered insightful comments in the initial discussion.  

For those who were not able to attend, materials from the call are
posted at https://community.icann.org/display/cctrdmrkclrnghsiag/Home,
including slides, documents, chat transcript and audio recording. 

Attached is a document describing Issue# P1 (Sunrise Domain Registration
Authorization) and Issue# P2 ( Responsibility for Registrant Claims
Notice) which we discussed on the call.  Please submit your written
comments to these issues by 00:01 UTC 23 Nov 2011 to the mailing list.  

As discussed on the call, we are ultimately seeking your recommendations
for either (1) one of the proposed options in the document or (2) your
suggestions for alternatives that you believe to be more attractive and
that should be considered.  Note that the description of P2 has been
slightly edited since the document was originally published for the
Dakar meeting.

In your written comments, please make sure to indicate:  (a) the issue
number (P1 or P2), (b) the recommended option or alternative for the
issue, (c) rationale (consideration of advantages and how any
disadvantages could be minimized) and (d) any other comments.

On the second call, on 30 November, we will brief you on written
comments that we received by the deadline, continuing our discussion
from 15 November.  As mentioned, we will be rotating the call times in
fairness to the different regions - the next call will take place on 30
Nov 11 at 05:00 UTC.  I will be sending out separately a listing of all
call dates/times through March.

We look forward to hearing from you.

Karen Lentz

ICANN

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