[Tmch-iag] Follow-up from 15 Nov 11 teleconference

[Rosette, Kristina]

All,

With apologies for missing first call and for sentence fragment form of comments (dictated by impending deadline), here are my comments:

P1.  Sunrise Domain Registration Authorization

Terminology


*         Support Tom Barrett's suggestion that we refer to trademarks in the TMCH as "records".

*         Agree that "authorization" or "authentication" should not be used for the process of determining if the domain name registration applied for during Sunrise matches a trademark in the TMCH.  Recommend using "validation" or "confirmation".  Trademark owners are more familiar with "validation" so that may be preferable, unless that term is being used for the name for determining that the submitted trademark meets the general requirements (national effect, in use, date cutoff, etc.) for inclusion in the TMCH.

*         Agree that "authcode" should not be used.

*         No preference as to whether we use TMCH or TMC as long as all use consistent going forward.

*         Suggest use of "deposit" to refer to the process of including a trademark in the TMCH.  "Register" (and its iterations) is too confusing given that we're also dealing with trademark registrations and domain name registrations.

Approach


*         Strong preference for approach 1 because it (a) avoids the need for a registry or registrar to have unlimited query access or local cache of data; and (b) accommodates use of agents.

*         Have concerns about giving registry or registrar unlimited query access or local cache unless willing to be subject to liability for misuse/abuse of data.

*         Believe essential to allow agents to deposit trademark records and to submit Sunrise domain registration authorization (or whatever we call it) requests.  Some trademark owners may want outside counsel or registrars to handle on their behalf.

*         Agree with Tom Barrett that requiring contact data match will result in failure.

*         Recommend that allow for multiple agents for single trademark owner.

*         Unclear whether it's anticipated that each trademark owner would receive one "code" that applies to all Sunrise domain name registrations or one "code" for each trademark registration.  Having one code for all Sunrise registrations for a particular trademark owner would create difficulties if trademark owner owns multiple trademarks that are subject of multiple trademark registrations in multiple countries and wants to participate in multiple Sunrise processes.  On the other hand, having a separate code for each trademark record deposited with the TMCH will create significant record-keeping issues for trademark owners that have large portfolios. Would like to discuss in next call if possible.

P2:  Responsibility for Registrant Claims Notice

Terminology


*         Trademark Claims applies only to domain name applicants or potential registrants, not registrants.

*         Suggest replace "colliding" with "matching".  "Colliding" adds new term that is unclear.

*         Suggest replace "conflicts known by the trademark clearinghouse" with "matches identified by the trademark clearinghouse".  As Keith points out, TMCH doesn't know anything. And, match doesn't necessarily mean conflict.
Approach


*         Preference for  approach 1.  Suspect many potential registrants likely to be confused by receipt of notice in first instance and receipt from entity that he/she/it has never heard of (registry/TMCH) is likely to compound confusion.

*         Not clear why registrar must have access to mark holder contact information.  Shouldn't notice be populated automatically from clearinghouse, relayed to registrar, and displayed by registrar?  Not clear why data population by clearinghouse and relay to registrar would not satisfy notice requirement.

Sincerely yours,
Kristina
Kristina Rosette
Covington & Burling LLP
1201 Pennsylvania Avenue, N.W.
Washington, DC  20004-2401
voice:  202-662-5173
direct fax:  202-778-5173
main fax:  202-662-6291
e-mail:  krosette at cov.com
www.cov.com/krosette
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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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