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

[David W. Maher]

+1
David W. Maher
Senior Vice President – Law & Policy
Public Interest Registry
312 375 4849

From: Jeff Eckhaus <eckhaus at demandmedia.com<mailto:eckhaus at demandmedia.com>>
Date: Mon, 21 May 2012 12:38:25 -0400
To: "Rosette, Kristina" <krosette at cov.com<mailto:krosette at cov.com>>, "tmch-iag at icann.org<mailto:tmch-iag at icann.org>" <tmch-iag at icann.org<mailto:tmch-iag at icann.org>>
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Comments on Draft Implementation Model

Hi Kristina and the IP team,

I hope I am not stirring up a hornets nest here, but I have a question regarding the data access and the protections being recommended by the IP lawyers in the IAG.

There is a statement in the comments that "Local caching at the Registry, which the Model envisions, creates an environment in which a Registry can misuse and/or abuse trademark data". While I do not doubt that their could be misuse in any environment or any setting with any data, I am unsure what the misuse of data here could be? Isn't all of the data that will be in the TMCH available for free or for a nominal fee from existing sources?
Is the concern that a Registry , will use their access to the TMCH during the sunrise period and then sell that data to some other person? Will they use the Sunrise data in some other nefarious way? What could they do with it?

I have discussed this issue with trademark people outside of the ICANN world with existing Registries and Registrars and still cannot figure out what the misuse of data can be. If the data is currently available either for free or from other sources for a fee, what is the abuse that can occur? Is this just a case of we need to protect against every possible issue that can come up, even if we cannot identify it?

Now I am not asking this because I want to start an argument, but really work towards a solution. The cryptographic approach has issues and implementation can be difficult and do not believe it is the best solution. I also believe rate limiting is not a proper solution as it could lead to unintended consequences and negatively affect a sunrise period as orders are not able to be fulfilled and requests denied or lost as artificial limits are reached in a busy sunrise period.

I hope we can discuss this issue on this list and in Prague and more important at a possible TMCH summit in July that could include more of the technical folks and IP contingent and of course the actual provider



Thanks


Jeff






From: <Rosette>, Kristina <krosette at cov.com<mailto:krosette at cov.com>>
To: "tmch-iag at icann.org<mailto:tmch-iag at icann.org>" <tmch-iag at icann.org<mailto:tmch-iag at icann.org>>
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Comments on Draft Implementation Model

In fairness to Brian, any arrows regarding the Data Location and Data Access comments should be aimed at me as I was the person in our drafting group who drafted that section.

And, of course, I support the comments in their entirety.

From:tmch-iag-bounces at icann.org<mailto:tmch-iag-bounces at icann.org> [mailto:tmch-iag-bounces at icann.org] On Behalf Of Winterfeldt, Brian
Sent: Friday, May 18, 2012 7:18 PM
To: tmch-iag at icann.org<mailto:tmch-iag at icann.org>
Subject: [Tmch-iag] Trademark Clearinghouse IAG - Comments on Draft Implementation Model

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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