[Tmch-iag] Trademark Clearinghouse IAG - Comments on Draft Implementation Model

[Dana Robinson]

I concur with Brian's comments.

On Fri, May 18, 2012 at 4:18 PM, Winterfeldt, Brian
<bwinterfeldt at steptoe.com> wrote:
> Dear Trademark Clearinghouse IAG,
>
>
>
> Please find below comments on various issues regarding the draft Trademark
> Clearinghouse Implementation Model (“Model”).  I would like to reserve my
> right to comment after the service provider is selected and announced and
> after any additional draft Trademark Clearinghouse Implementation Models.
>
>
>
> Data Location and Data Access
>
>
>
> The Model does not adequately address the concerns expressed by trademark
> owners about the potential for misuse and abuse of trademark data deposited
> with and contained in the Trademark Clearinghouse.
>
>
>
> Local caching at the Registry, which the Model envisions, creates an
> environment in which a Registry can misuse and/or abuse trademark data.
> Indeed, there had been previous recommendations by members of the IAG
> against permitting local caching at the Registry for this very reason.
> ICANN’s own consultant repeatedly acknowledged in the 14 May IAG call that,
> under the Model, preventing misuse and/or abuse by a Registry is “not a
> technically solvable problem,” but is instead “a contractually solvable
> problem.”  If ICANN adopts (or requires the Clearinghouse Provider to adopt)
> the proposal to locate data through local caches at the Registry, then ICANN
> must impose contractual limitations to prevent and to address Registry
> misuse and/or abuse of trademark data.  Those contractual limitations must
> be contained in both the contract between the Clearinghouse Provider and the
> Registry and in the New gTLD Registry Agreement between ICANN and the
> Registry Operator.  Violations of those contractual limitations should
> affect a Registry’s ability to use the Trademark Clearinghouse and trigger
> ICANN Compliance action, respectively.  Trademark owners have repeatedly
> been told in the context of the Registrar Accreditation Agreement that ICANN
> Compliance can only enforce against the contract.  We have no reason to
> believe that this is not true for Registries.
>
>
>
> To be clear, the cryptographic approach should be implemented, but it
> requires supplementation with contractual limitations.
>
>
>
> Similarly, the proposal to impose rate limiting at the Registry-registrar
> level that was articulated by JAS Global Advisors in the 14 May IAG Call is
> recommended.  To facilitate enforcement of a rate limiting mechanism, it is
> also recommended that uniform language be developed for inclusion in
> Registry-Registrar agreements.
>
>
>
> Penalties for Fraudulent TMCH Submission
>
>
>
> As an initial matter, the protections afforded by the TMCH benefit all
> stakeholders, whether they be registrars, registries or brand owners.  As a
> result, an intentional fraudulent or bad-faith submission is detrimental to
> all stakeholders and appropriate penalties should be levied against persons
> found to have acted fraudulently or in bad faith.  For the sake of clarity,
> this comment is meant to address submissions of fraudulent or bad faith
> records to the TMCH and not errors in the submission of legitimate records.
>
>
>
> The current Draft Implementation Model dated April 13, 2012 (the “Model”),
> allows for the removal of any record that the TMCH accepted in error.  While
> it is not yet clear how dispute mechanism will actually work, 4.1.1 of the
> Model does allow for third-party challenges against accepted TMCH records.
> In such instances where a challenging party can show by a preponderance of
> the evidence that a challenged record was fraudulently submitted or
> submitted in bad faith, the party responsible for submission of the original
> record should face penalties for abuse of the TMCH.  While a wide range of
> penalties can be considered, parties found to have fraudulently submitted
> records, at a minimum, should have the offending record removed in the first
> instance and be barred from taking advantage of the TMCH in the future for
> multiple instances.
>
>
>
> Proof of Use
>
>
>
> 2.2 Validation for Proof of Use
>
>
>
> A clear set of standards is necessary for evaluating proof of use
> submissions.  ICANN has stated that a "single standard is desired to create
> an efficient and predictable process."  However it is not clear from the
> Model what that standard will be and what process will be put in place for
> evaluating proof of use submissions that are not standard.  It is
> recommended that there be a higher level of review within the TMCH to
> evaluate proof of use submissions that are questionable, and that there
> should be a process in place for objecting to false or misleading poof of
> use claims.  These recommendations should be included in the TMCH Model
> document.
>
>
>
> 2.2.2 Declaration
>
>
>
> The language for the Declaration states "[Trademark
> Holder/Representative/Licensee/Agent] hereby certifies", and there was much
> discussion about who can submit information to the TMCH.  One of the IAG
> recommendations was that only the trademark holder or its agent or
> representative could make submissions, and that licensees should not be
> permitted to submit information on behalf of rights holders because they may
> not have rights that cover making domain name registrations.
>
>
>
> The Declaration goes on to state ""that the trademarks set forth in this
> submission are currently in use in the manner set forth in the accompanying
> specimen; ... and that if, at any time, the information contained in this
> submission is no longer accurate, the [Trademark
> Holder/Representative/Licensee/Agent] will notify the Clearinghouse within a
> reasonable time of that information which is no longer accurate, ...."  If
> what is meant here relates only to changes in the actual registration or
> validity of a mark, rather than updating the TMCH on changes in the specimen
> of use, the language should be revised.  For example, do changes in the
> specimen of use, i.e. from using a mark in italics to using plain block
> letters, require a new specimen of use to be submitted to the TMCH?  The
> current language suggests that a new specimen would need to be submitted.
>
>
>
> 2.2.3 Sample of Use
>
>
>
> The standard that the sample "be an item that evidences an effort on behalf
> of the holder to communicate to a consumer so that the consumer can
> distinguish, without the possibility of confusion, the products or services
> of one from those of another" is requiring the TMCH to make a legal judgment
> on what constitutes confusion that is beyond its purpose and scope.   The
> phrase "without the possibility of confusion" should be stricken.
>
>
>
> The TMCH will require some guidance on what types of samples of use are
> acceptable.  However, some items on the list, applications for business
> licenses, licenses to use the mark in question, would not be considered bona
> fide trademark use, at least in the US.   Additionally, other items such as
> letterhead/business cards/press releases may be problematic as they can be
> easily produced to fabricate use.  Again, in the US, items such as business
> names on letterhead/business cards/press releases do not necessarily
> constitute trademark use but merely business name use.  Accordingly, it may
> be useful to request recommendations for a specific and exhaustive list of
> samples that can be submitted so as to reduce the role and discretion of the
> TMCH in the evaluation process.
>
>
>
> Matching Rules
>
>
>
> During the IAG conference call, there was discussion concerning how the
> matching rules would be implemented, and in particular, how certain elements
> of a mark would be translated.  The Model states:
>
>
>
> For processing Clearinghouse records for the purpose of Sunrise and
> Trademark Claims processes, matching rules specified in the Special
> Trademark Issues Review Team recommendations are used. An “identical match”
> is defined as follows:
>
>
>
> Domain name consists of the complete and identical textual elements of the
> mark.
>
>
>
> a. spaces can be replaced by hyphens (and vice versa) or omitted;
>
> b. only certain special characters in a trademark are spelled out with
> appropriate words describing it (@ and &);
>
> c. punctuation or special characters in a mark that are unable to be used in
> a domain name may be (i) omitted or (ii) replaced by spaces, hyphens or
> underscores and still be considered identical matches; and
>
> d. no plurals and no “marks contained” qualify.
>
>
>
> The Model acknowledges that "more work is needed" on this issue, but appears
> to limit that to determining which languages are relevant.  As an initial
> matter regarding matching rules, all matching rules should be determined
> before implementation of the Clearinghouse and administered solely by the
> Clearinghouse so as to reduce uncertainty among trademark owners and to
> reduce burdens on registries.
>
>
>
> It is agreed that words ought to be translated.  However, attempting to
> define which languages are deserving, or relevant enough, to allow
> translation, seems to be an arbitrary and fruitless undertaking.  In other
> words, translation of words in an inherently imperfect and personal/cultural
> analysis that would be best left to the trademark owner.
>
>
>
> This theory was suggested by some members of the IAG that put forth the idea
> that a trademark registration owner should be able to provide a translation
> of its mark's content.  This functionality is important because in many
> languages symbols might have multiple meanings.  For instance the + symbol
> can be translated in English as "and", "plus" or "positive".  For example,
> Google + is branded as "Google Plus" not "Google And" or "Google
> Positive".   Moreover, as stated in the Draft Implementation Model, the
> genesis for the matching rules was the Special Trademark Issues Review Team
> Report, which clearly stated that the ""symbols", were, in fact, any
> "special characters", including but not limited to, " ~ @ # ! § % ^ © and
> &".  See the IRT Report at p. 19, footnote 15.   This list is not exhaustive
> and may include hundreds, if not thousands, of special characters many of
> which have multiple and different meanings in different languages.  Allowing
> the trademark owner to designate the translation of its symbols relieves
> this burden from the TMCH and helps to keep costs down.  A challenge process
> could be put into place for a translation that was false or fraudulent.
>
>
>
> Lastly, with respect to subsection (d) concerning plural and marks
> contained, we suggest that if TMCH policies were developed to allow an
> applicant to self-identify translations of element of its mark, then the
> policy should be expanded to allow a trademark owner to designate other
> generic terms related to the trademark registration being entered in the
> TMCH. It is our understanding that a similar process had been implemented in
> the past by .ASIA allowing registrants to submit a list of marks including
> other words contained in the Nice classification(s) of the trademark's
> registration.
> http://www.wipo.int/classifications/nice/en/classifications.html.  The text
> of Trademark Claims Notice in its current form with just minor revisions
> could provide such notice without any chilling concerns toward domain name
> registrants.
>
>
>
> Additional Verification Services
>
>
>
> Regarding additional verification beyond identical matching, the
> Clearinghouse should not be tasked with additional verification duties.
> Adding these duties would only cause further delays and costs, and is
> arguably beyond the Clearinghouse’s mandate.  Moreover, given the wide range
> of possible registration policies, it may make sense for many registries to
> directly manage their own specific eligibility requirements.
>
>
>
> Dispute Resolution Procedures
>
>
>
> In line with the Trademark Clearinghouse’s mandate to hear Sunrise
> challenges, but not to decide legal claims, the Sunrise Dispute Resolution
> Procedure (SDRP) should be limited to the following grounds: (1) where a
> Sunrise Applicant submitted a Sunrise Application that is not an exact match
> to a listed Clearinghouse registration, (2) where a Sunrise Application is
> based on one or more clear-cut unqualified listed registrations under the
> current SERs that can be determined by objective data such as cancelled
> trademark registrations or registration dates, or (3) where a Sunrise
> Applicant has submitted fraudulent documents, including specimens, in
> support of a TMCH listing.  This would decrease the likelihood that the TMCH
> or third parties could unnecessarily delay sunrise registrations in order to
> litigate gray legal issues such as bona fide use and/or abandonment, and
> keep the TMCH within its mandate not to decide legal claims.  This would
> also likely reduce Sunrise Application deterrents to participation by
> trademark owners and any subsequent adverse impact on the financial success
> of open registries that sell domain name registrations and will rely on
> Sunrise Registrations to increase profit.
>
>
>
> Additionally, the two flow charts in the Executive Summary could do a better
> job of identifying which party is carrying out which action.  In some
> portions of the charts, the acting party is clearly identified (“Registry
> notifies”, “Clearinghouse notifies”, “Applicant reviews”, “Registrar
> captures”, etc.), but in others no party is identified, merely an action
> (“Seek”, “Provide”, “Confirm”, “Check”, “Display”, etc.).
>
> _______________________________________________
>
>
>
> 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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>
>
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Dana Robinson,
Partner
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