[ALAC] Meeting in LA to discuss TM protection issues

[Alan Greenberg]

NOTE: THIS MESSAGE IS LONG, BUT WE ONLY HAVE A FEW DAYS IN WHICH TO ACT.

In Toronto, The IPC and BC presented a list of suggested rights 
protection mechanisms to ICANN. The document can be found at 
http://www.icann.org/en/news/correspondence/metalitz-to-pritz-17oct12-en.pdf.

The substance was the following 8 points.

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.
2. Extend the TMCH and Claims Notices for an indefinite period; 
ensure the process is easy to use, secure, and stable.
3. Complete the URS as a low cost alternative and improve its 
usefulness - if necessary, ICANN could underwrite for an initial period.
4. Implement a mechanism for trademark owners to prevent second-level 
registration of their marks (exact matches, plus character strings 
previously determined to have been abusively registered or used) 
across all registries, upon payment of a reasonable fee, with 
appropriate safeguards for registrants with a legitimate right or interest.
5. Validate contact information for registrants in WHOIS.
6. All registrars active in new gTLD registrations must adhere to an 
amended RAA for all gTLD registrations they sponsor.
7. Enforce compliance of all registry commitments for Standard applications.
8. Expand TM Claims service to cover at least strings previously 
found to have been abusively registered or used.

Note that these statements are rather vague in some cases, but no 
further details have been provided.

A meeting to iron out differences and clarify issues on the TMCH was 
held in Brussels about 2 weeks ago. The outcomes can be found at 
http://blog.icann.org/2012/11/building-a-secure-and-reliable-trademark-clearinghouse/.

There will be a follow-up meeting in Los Angeles to discuss, (perhaps 
among other things), the BBC/IPC proposals. My understanding is that 
I an likely Evan will be invited to participate (remotely since no 
travel funding is being provided).

Following discussions with Evan and Olivier as well as Kathy Kleiman 
and Robin gross from NCUC, here is what I believe the current 
positions to be supported by ALAC to be.

IF YOU FEEL THAT ANY OF THIS SHOULD BE CHANGED, PLEASE SPEAK UP QUICKLY.

==========================
Our overall position is that we would prefer to not make any 
substantive changes at this late date, and particularly not ones that 
can reasonably be considered policy. This is said with the full 
understanding that throughout the new gTLD process, parts of the 
community have often considered things that they want changed to be 
"implementation", and things that they do not want changed to be 
"policy". In fact, the entire STI discussion 
(http://gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf) 
was deemed to be one of implementation and investigating the "policy 
implications" of the TMCH and URS.  Note that some of the proposals 
are clearly not "Policy" from a GNSO point of view.

That being said, it is possible that change will occur based on the 
issues raised by the BC/IPC, and the ALAC needs to consider the 
specific issues.

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.

ALAC has no strong feelings on this.My understanding is that it may 
already have been resolved during the Brussels meeting.


2. Extend the TMCH and Claims Notices for an indefinite period; 
ensure the process is easy to use, secure, and stable.

A TM Claim sends a notice to a potential registrant that the name 
they are registering possible overlaps with a TM's term. It does not 
stop the registration, but asks that the registrant confirm that 
their use is legitimate and does not violate TM rights (since TM 
rights are specific to the type of service/product offered and a 
geographic local, this is quite possible). The STI report said that 
Post-Launch Claims are not required. The AG says that at a minimum, 
Claims must be used for 60 days following general registration 
availability. Since neither of these terms are fully defined, it is 
not clear if these two requirements conflict or are both 
simultaneously possible. One of the outcomes of the Brussels meeting 
is to firm up some definitions, so perhaps this will become clear. 
That notwithstanding, the ALAC issued a minority report to the STI 
saying that with some specific reservations, we supported ongoing TM 
Claims. So we are basically supportive of the request.


3. Complete the URS as a low cost alternative and improve its 
usefulness - if necessary, ICANN could underwrite for an initial period.

This seems like a motherhood statement and as such ALAC has not 
problem with it. The only reservation is to the exact meaning of 
"increase its usefulness". If this is implying substantive change, we 
do need to consider it on its merits. That being said, the ALAC in 
its minority statement had supported the concept of allowing a URS 
claimant who was successful to have the domain transferred to them 
similar to what is allowed following a successful UDRP.

The concept of ICANN underwriting the URS for some period of time was 
originally suggested by me, so I support it in concept. The ALAC has 
never discussed it. At this point, it looks like there will be one or 
more URS providers who can do it for the required fee without subsidization.


4. Implement a mechanism for trademark owners to prevent second-level 
registration of their marks (exact matches, plus character strings 
previously determined to have been abusively registered or used) 
across all registries, upon payment of a reasonable fee, with 
appropriate safeguards for registrants with a legitimate right or interest.

The ALAC in its minority statement did support allowing strings to be 
registered in the TMCH which included its TM term in conjunction with 
terms related to its service/products (ie Ford-Trucks). So we *might* 
be supportive of that part of the request. However, the term 
"prevent" is onerous, even with "appropriate safeguards".

We would suggest a position that this is a substantive change and 
should not be done at this time, but rather considered as in a future 
policy process. Furthermore, it is something whose value will not be 
significantly lower if it is somewhat delayed.


5. Validate contact information for registrants in WHOIS.

The ALAC certainly supports this concept and our presumption has been 
that this will be included in the next RAA. To the extent that this 
BC/IPC request increases the pressue on ICANN to ensure that this 
happens, we support it.


6. All registrars active in new gTLD registrations must adhere to an 
amended RAA for all gTLD registrations they sponsor.

This is already being discussed in the context of the new RAA. In 
particular, registrars believe that they should not be at a 
competitive disadvantage because some registrars stay on the old RAA 
and thus have lower costs (such as those associated with 
verification). From an ICANN point of view, there will certainly be 
sufficient compliance issues associated with new gTLDs that having 
all registrars who market them on the current RAA can only be viewed 
as good. ALAC strongly supports this.


7. Enforce compliance of all registry commitments for Standard applications.

It is unclear exactly what this one means. Certainly ALAC supports 
any position that strengthens compliance enforcement. The reference 
to "Standard applications" is unclear. It *may* mean that like 
Community TLDs, standard (ie non-Community) TLDs should be required 
to honour the use of the TLD described in the application (currently 
there is no such requirement - they can apply for a TLD string for 
one purpose and change that purpose completely on implementation).

ALAC has generally advocated such a requirement, although it seems 
like it is a bit late to impose it on applicants who have applied 
under the current rules.


8. Expand TM Claims service to cover at least strings previously 
found to have been abusively registered or used.

This is a possibly interesting new TM protection mechanism, and is a 
probably a subset of the "TM along with related terms" statement that 
we made in our minority report. Nevertheless, it is a substantive 
change, and like item 4, should be the subject of a policy process 
prior to implementation.

Alan (and Evan)