[ALAC] Followup meeting on TMCH issues

[Alan Greenberg]

Evan and I attended a follow-on teleconference on the TMCH issues 
today. The following note is written in the first person, but has the 
full support or Evan.

The first part was on the progress related to the negotiation of 
contracts with Deloitte who will perform the TM validation process 
and deal with TM holders and IBM who will operate the Clearinghouse 
and interface with registrars and registries.

The contract with Deloitte is close to finalized. The price for 
registering a single trademark will be $150 (with some variations due 
to currencies and such) and there will be substantive discounts for 
multi-year registrations and for bult registrations. ICANN will have 
access to Deloitte costs and revenue figures and the right to audit 
Deloitte, all to ensure that their profit margins are kept reasonable 
(and specifically a contractual profit cap). Although Deloitte has 
exclusivity until after the first 10 sunrises (ensuring that the 
protocols and TMCH are functioning well), after that point, ICANN 
could invite other applicants to play a similar role - a marked 
change from the original plans.

The contract with IBM should be complete within a week or so. As 
already noted, ICANN will retain all use rights to the data in the 
TMCH, so although IBM will be able to market other services, they can 
only do so with the express permission of ICANN. Similarly, ICANN can 
offer the data to other parties for competing services (all subject 
to whatever the TM holders agree to when they deposit their 
information in the CH).

Although the details of the "strawman" proposal are not yet agreed 
to, both contractors have agreed that what ever is there (presumably 
based on what ins in the current strawman), the contracts already 
will include that.

These could not have been an easy contracts to negotiate, and are the 
most rational from an ICANN and user standpoint that I have ever seen 
at ICANN. To make it clear, I am impressed.

On the strawman proposal, Fadi divided the issues into three sections:
1. Adding a 30 day "announcement period before the formal 30 day sunrise.
2. a) Extending the 60 TM Claims period to 90 days, and b) tacking on 
a new, for-fee TM Claims process for 6-12 months (to be decided) with 
a lighter, less legalistic notice and no requirement to acknowledge receipt.
3. All up to 50 additional character strings associated with a TM to 
be entered into the TMCH (for a fee). The names would typically be 
typos or the TM plus related strings (products or services associate 
with the mark).

Following extensive staff discussions, the following Implementation 
vs Policy recommendations are being made (along with my and Evan's 
take on them)

1. The original policy was silent on sunrise timing, and certainly 
did not either mention or prohibit a prior announcement period. This 
is deemed to be implementation.

Comment: No argument at all. I did point out that despite this new 30 
day period, between now and the first sunrise, ICANN has a real need 
to get out there and let TM holders know this is coming.

2. Both the extension of 60 to 90 days and the addition of the new 
lighter TM Claims process were deemed to be implementation.

Comment: There was little discussion about the first part, but much 
more about the second. I for one was rather surprised as were a 
number of others. Fadi said that there was a lot of discussion on 
this point, and he believes that their rationale, which will be made 
available very shortly will explain why. Regardless of the 
implementation vs policy issue, this extension of TM Claims is 
something that the ALAC supported in its minority report to the STI, 
and the change to a lighter form of notice should adequately address 
the concerns that the ALAC did have about such extension. I did point 
out that it was important for the community to be involved in wording 
this new notice.

3. The additional of "related" strings was deemed to be policy. Only 
strings that have been the subject of UDRP or Court decisions would 
be allow (and specifically not URS).

Comment: No disagreement here. Fadi will be writing to the GNSO to 
tell them that they need to offer guidance on this.

The TM folks on the call took the opportunity to raise the issue of 
blocking (or making very difficult) registration on marks and 
marks+related-strings that have been found to have been abused in the 
past. Fadi was adamant that such a process was not something that he 
could imagine approving in a process like the current one. I added 
that it was sufficiently counter to other decisions that have been 
made in the past that it would need to be the result of substantive 
community-based policy discussion. The TM folks did not seem please 
with this position and we may want to explicitly support Fadi on this one.

On the substance of the blocking proposal, At-Large has traditionally 
been sympathetic to the needs/desires of the TM holders. Although 
At-Large has a keen interest in Registrant rights, when they may 
conflict with User issues, we have tended to side with the needs of 
Users. In this case, the registrations that the TM owners are worried 
about tend to be used for monetized pages, phishing, deceptive web 
site or out-and-out fraud. In all of these cases, fighting such uses 
is generally pro-user. So we are not necessarily completely against 
the concept. But it would need to be implemented in such a way as to 
not unreasonably interfere with valid registrations. To date, none of 
the proposed implementations have come anywhere near this, and they 
specifically all have tended to be "block until the prospective 
registrant can demonstrate that they have a legitimate need" - which 
has a very "guilty until proven innocent" tone to it and with the 
demonstration being a slow and possibly expensive process.

Alan

Alan