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RALO(s)

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Vote CloseDate of SubmissionStaff Contact and EmailStatement Number
n/aTrademark Clearinghouse and IDN VariantsApproved 13Y, 0N, 0A23.04.201413.05.201314.05.2013

14.05.2013
19:00 UTC

20.05.201321.05.201322.05.2013n/aAL-ALAC-ST-0513-01-00-EN

FINAL VERSION TO BE SUBMITTED IF RATIFIED

Please click here to download a copy of the PDF below.

 

FINAL DRAFT VERSION TO BE VOTED UPON BY THE ALAC

Revised Version: May 9th, 2013

ALAC Advice to the ICANN Board on Trademark Clearinghouse and IDN Variants 

The At-Large Advisory Committee (ALAC) is deeply concerned by the implementation model outlined in the “Trademark Clearinghouse: Rights Protection Mechanism Requirements” published on April 6, 2013.  We view the model to be deficient in that it overlooks the critical issue of Internationalized Domain Name (IDN) variants.  If implemented, the model would clearly run against the public interest in the pertinent user communities.

We wish to highlight two areas of particular concern in the recently published Trademark Clearinghouse (TMCH) requirements: Domain name matching and bundling.

Domain Name Matching

Since October 2011, language communities have requested that TMCH services factor IDN-script trademarks involving variants and that ICANN consider adopting community-based solutions to address this issue.  Despite concerns raised by language community experts in the TMCH Implementation Assistance Group (IAG), the newly published domain name matching requirements of the TMCH still does not take into account trademarks in IDN scripts involving variants.  Variant matching is critical in certain languages and particularly in Chinese.  To illustrate, when a trademark holder registers a simplified Chinese word-mark and not its traditional equivalent, the TMCH will accordingly generate only one trademark record.  The new generic Top Level Domain (gTLD) registries are obliged to offer sunrise services and trademark claims for trademarks recorded in the TMCH.  Without variant matching requirements in place, only that registered simplified word-mark will be eligible for trademark protection.  This leaves the traditional word-mark equivalent open for cybersquatting.  Given that both simplified and traditional writings of the word-mark are deemed identical by Chinese communities worldwide (and by norm few trademarks are registered in both writings), ruling out the un-registered writing by not allowing variant matching would make the TMCH completely useless to Chinese trademarks, and would result in an unfair penalty against users of Chinese.

Domain Name Bundling
The TMCH requirements grant absolute first rights to trademark holders, which would not only pre-empt certain business models, but also prevent registries from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.

Towards A More Open and Flexible TMCH Model

Trademarks have the very important function of safeguarding the public interest by identifying the source of goods or services. A distorted TMCH design would cause serious public confusion and market chaos.  Confusion over the source or origin of goods or services can be very harmful, particularly in the fields of banking, insurance and other high-security businesses.  In principle, the At-Large community does not support over-extensive trademark protection measures.  Nevertheless, we firmly believe that ICANN's Rights Protection Measures should treat the trademarks in any language or character set equally, the principle being that Internet users in any language community should be equally protected against confusion.

In September 2012, the ALAC statement on the TMCH called for a “more open and flexible model” that can address our community’s concerns regarding the limitations of a uniform model, which would be applied to all gTLD registries irrespective of their differences and competencies.  We believe that new gTLD registries require a more open and flexible TMCH model to be successful and we strongly urge ICANN to move away from a model that is inflexible and unfriendly to variants. 

In light of the considerations above, the ALAC urges the ICANN Board to call for a more open and flexible TMCH model.  Towards this end, we urge the Board to support a community-based, bottom-up solution for TMCH implementation and to ensure that the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries. 

We understand that addressing the IDN Variant issue in a holistic way requires the development of Label Generation Rules (LGR) for the Root Zone, which will create a framework for a more consistent management of variants across all levels.  Experts and Staff have projected that this process will require a minimum of 12 months.  We appreciate that the LGR development requires conscientious effort to maintain the security and stability of the Internet, but we are also mindful that the business and practical requirements of new gTLD applicants, especially from developing economies, call for urgent implementation. 

To expedite the development of appropriate solutions, the ALAC recommends that the Board request from the ICANN Chief Executive Officer (CEO) an interim mechanism that can yield such solutions efficiently and on an urgent basis.  We believe that ICANN already has all the necessary information to develop these solutions based on the IDN Tables and IDN Registration Rules and Policies that were required as part of the application submissions for new gTLDs offering IDN registrations.  The development of the solutions may require additional Staff with the appropriate linguistic capabilities working in tandem with community members with relevant expertise.  It may also require a consideration of expediting the LGR process for the Han script.  We understand that in the general case, the handling of variants is a complex issue. However, for variant cases that are well defined and understood, such as the case of the Han script, ICANN should proceed on a fast-track basis to include variant support in the TMCH in time to accommodate the delegation of the appropriate Top Level Domains (TLDs).

Summary of Recommendations to the ICANN Board

  1. Call for a more open and flexible TMCH model that is variants-friendly and support a community-based, bottom-up solution for TMCH implementation.
  2. Ensure the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries.
  3. Request from the ICANN CEO an interim mechanism that can yield appropriate solutions efficiently and on an urgent basis that may involve the following:
  • ICANN (staff) providing relevant expertise to the community to develop interim services in order to authenticate and verify that trademarks are compatible with variants.  Such services should be interoperable with the TMCH so as to enable the timely launch of the IDN TLDs. 
  • A consideration for expediting the LGR process for the Han script.
  • Longer-term recommendation: A review of the IDN Tables and IDN Registration Rules and Policies submitted by new gTLD applicants offering IDN registrations as a basis for developing a more comprehensive, longer-term solution.

FIRST DRAFT SUBMITTED

The At-Large community is very disappointed at the implementation model outlined by “Trademark Clearinghouse: Rights Protection Mechanism Requirements” (hereafter “Requirements’) published on April 6, 2013. Particularly, the model completely overlooks the critical issues of IDN variants with respect to Trademark clearinghouse (TMCH) and as a result would seriously impact the public interest in the pertinent user communities.

According to the Requirements, *matching domain name labels will be generated for each Trademark Record in accordance with the Trademark Clearinghouse’s domain name matching rules*. The matching rules at the TMCH obviously, however, fail to take into account the trademarks in IDN scripts involving variants, although the variant issues had been raised by the language community experts at the Implementation Assistant Group (IAG).

Variant matching is actually critical for certain language communities. Take Chinese for example, where a trademark holder merely registers a simplified word-mark but not its traditional equivalence, there will only be one trademark record generated in the TMCH. Since the new gTLD registries are obliged to offer sunrise services and trademark claims for the trademarks recorded in the TMCH, only that simplified word-mark will be eligible for sunrise registration and trademark claim services and leaves the traditional equivalence open for cybersquatting. Since both writings of the word-mark are deemed identical in the Chinese community and few trademarks are registered in both writings, ruling out the un-registered writing would make TMCH completely useless to Chinese trademarks.

What is even more striking is that the Requirements specifically prohibits any registry from implementing *variant or bundling rules* and allocating domain names *under such variant or bundling rules prior to the conclusion of the Sunrise Period.* Such restriction actually excludes any solution for IDN trademarks involving variants to be accommodated in the sunrise period at the TLD level, even though a registry is willing fix the variants through its registration management and at its own costs.

Trademarks have very important function of safeguarding public interests by identifying the source of goods or services. The malfunctioned TMCH design would cause serious public confusion and market chaos. Although at-large community never supports over-extensive trademark measures, ICANN should treat all the trademarks equally, irrespective of the characters of the trademarks, and protect the users in all language communities from confusion equally.

The At-Large community has made the statement on the Trademark Clearinghouse (TMCH) in September 2012, in which at-large community concerns that the design of TMCH model that uniformly applies to all the gTLD registries, irrespective of their difference, may not provide the tailored services that are really needed by the new gTLD registries. At-large community suggested that “more open and flexible model deserves further exploration.”

The Chinese Internet user community, dating back to October 2011, suggested that IDN-script trademarks involving variants should be taken into account in the TMCH services and ICANN consider adopting community-based solution to address this issue. Many other language communities shared the views of Chinese community.
Unfortunately, ICANN has been deaf to the user community’s feedback and inputs and moves steadily toward the centralized, inflexible and variants-unfriendly TMCH. At-large community, therefore, strongly suggests that ICANN support community-based TLD-bottom-up solution for TMCH implementation and address the IDN variant issue before TMCH provides the services to the new gTLD registries.

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17 Comments

  1. On behalf of Jean-Jacques Subrenat: 
    Dear Hong & Rinalia,
    thank you Hong for coming up so quickly with a comprehensive draft. It
    represents a thorough and well-argued position, and may just require a few
    stylistic improvements.
    On substance, I would add:
    - it might be useful to mention some technical considerations provided by
    Asmus (the group working on the LGR may take another year to present its
    full solution;
    - so, in the meantime, it would be advisable to set up an interim solution
    (add temporary staff with the proper skills, in order to treat the IDN
    Variants efficiently and speedily).
    With those improvements, I would agree to voting positively tomorrow
    (Thursday).
    Best regards,
    Jean-Jacques.
  2. Thanks for the comments. Here is the revised version. I changed para.4 and 6.

    Still, we should work further to reflect Jean Jacques's two kind comments.  

     

    At-Large Statement on Trademark Clearinghouse and IDN Variants

     

    At-large community is very disappointed at the implementation model outlined by “Trademark Clearinghouse: Rights Protection Mechanism Requirements” (hereafter “Requirements’) published on April 6, 2013. Particularly, the model completely overlooks the critical issues of IDN variants with respect to trademark clearinghouse (TMCH) and as a result would seriously impact the public interest in the pertinent user communities.

     

    According to the Requirements, matching domain name labels will be generated for each Trademark Record in accordance with the Trademark Clearinghouse’s domain name matching rules.

     

    The matching rules at the TMCH obviously, however, fail to take into account the trademarks in IDN scripts involving variants, although the variant issues had been raised by the language community experts at the Implementation Assistant Group (IAG).

     

    Variant matching is actually critical for certain language communities. Take Chinese for example, a trademark holder may have registered a word-mark in simplified characters but it is unlikely to register the same word-mark in traditional characters and absolutely unthinkable to register in a mixed-up character setting. In this case, there will only be one trademark record generated in the TMCH. Since the new gTLD registries are obliged to offer sunrise services and trademark claims for the trademarks recorded in the TMCH, only that simplified word-mark will be eligible for sunrise registration and trademark claim services and leaves all other “variants” open for cybersquatting. Ruling out the un-registered word-mark variants would make TMCH completely useless to Chinese trademarks.

     

    What is even more striking is that the Requirements specifically prohibits any registry from implementing variant or bundling rules and allocating domain names under such variant or bundling rules prior to the conclusion of the Sunrise Period. Such restriction actually excludes any solution for IDN trademarks involving variants to be accommodated in the sunrise period at the TLD level, even though a registry is willing fix the variants through its registration management and at its own costs.

     

    Trademarks have very important function of safeguarding public interests by identifying the source of goods or services. The malfunctioned TMCH design would cause serious public confusion and market chaos. The consequence will be even more serious regarding the trademarks in the fields of banking, insurance and other high-secure businesses. Although at-large community never supports over-extensive trademark measures, ICANN should treat all the trademarks equally, irrespective of the characters of the trademarks, and protect the users in all language communities from confusion equally.

     

    At-Large community has made the statement on the Trademark Clearinghouse (TMCH) in September 2012, in which at-large community concerns that the design of TMCH model that uniformly applies to all the gTLD registries, irrespective of their difference, may not provide the tailored services that are really needed by the new gTLD registries. At-large community suggested that “more open and flexible model deserves further exploration.”

     

    The Chinese Internet user community, dating back to October 2011, suggested that IDN-script trademarks involving variants should be taken into account in the TMCH services and ICANN consider adopting community-based solution to address this issue. Many other language communities shared the views of Chinese community.

     

    Unfortunately, ICANN has been deaf to the user community’s feedback and inputs and moves steadily toward the centralized, inflexible and variants-unfriendly TMCH. At-large community, therefore, strongly suggests that ICANN support community-based TLD-bottom-up solution for TMCH implementation and address the IDN variant issue before TMCH provides the services to the new gTLD registries.

     

  3. On behalf of Rinalia who has posted to another WIKI page:

     

    DRAFT

    April 2013

    ALAC Advice to the ICANN Board on Trademark Clearinghouse and IDN Variants

    The At-Large Advisory Committee (ALAC) is deeply concerned by the implementation model outlined in the “Trademark Clearinghouse: Rights Protection Mechanism Requirements” published on April 6, 2013.  We view the model to be deficient in that it overlooks the critical issue of IDN variants, which would seriously impact the public interest in the pertinent user communities.

    We wish to highlight two areas of particular concern in the Trademark Clearinghouse (TMCH) requirements:

     

    (1) Domain Name Matching

    Language communities have requested that TMCH services factor IDN-script trademarks involving variants and that ICANN consider adopting community-based solutions to address this issue since October 2011.  Despite concerns raised by language community experts in the TMCH Implementation Assistance Group (IAG), the domain name matching requirements of the TMCH still does not take into account trademarks in IDN scripts involving variants.  Variant matching is critical for certain languages and particularly for the Chinese language.  To illustrate, when a trademark holder registers a simplified Chinese word-mark and not its traditional equivalent, the TMCH will accordingly generate only one trademark record.  The new gTLD registries are obliged to offer sunrise services and trademark claims for trademarks recorded in the TMCH.  Without variant matching requirements in place, only that registered simplified word-mark will be eligible for trademark protection.  This leaves the traditional word-mark equivalent open for cybersquatting.  Given that both simplified and traditional writings of the word-mark are deemed identical by the Chinese community (and by norm few trademarks are registered in both writings), ruling out the un-registered writing by not allowing variant matching would make the TMCH completely useless to Chinese trademarks.


    (2) Domain Name Bundling
    The TMCH requirements specifically prohibit any registry from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.  Such a restriction would exclude the accommodation of any solution for IDN trademarks involving variants during the sunrise period at the TLD level, even though registries may be willing to address the variants through their own registration management and at their own expense.

    A More Open and Flexible TMCH Model

    Trademarks have a very important function of safeguarding the public interest by
    identifying the source of goods and services.  If left unaddressed, the deficiencies of the TMCH model design may likely cause serious public confusion and result in market chaos.  In principle, the At-Large community does not support over-extensive trademark protection measures.  However, we do strongly believe that ICANN should treat all trademarks equally, irrespective of the characters of the trademarks, and that users from all language communities should be protected from confusion equally.

     

    In September 2012, the ALAC statement on the TMCH called for a “more open and flexible model” that can address our community’s concerns regarding the limitations of a uniform model, which would be applied to all gTLD registries irrespective of their differences and competencies.  We believe that new gTLD registries require a more open and flexible TMCH model to be successful and we strongly urge ICANN to move away from a model that is centralized, inflexible and unfriendly to variants. 

     

    In light of the considerations above, the ALAC urges the ICANN Board to call for a more open and flexible TMCH model.  Towards this end, we urge the Board to support a community-based, bottom-up solution for TMCH implementation and to ensure that the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries. 

     

    We understand that addressing the IDN Variant issue in a holistic way requires the development of Label Generation Rules (LGR) for the Root Zone, which experts and Staff have projected to require a minimum of 12 months.  We appreciate that the LGR development requires conscientious effort to maintain the security and stability of the Internet, but we are also mindful that the business and practical requirements of new gTLD applicants, especially from developing economies, call for urgent implementation.

     

    To expedite the development of appropriate solutions, the ALAC recommends that the Board request from the ICANN CEO an interim mechanism that can yield such solutions efficiently and on an urgent basis.  This may require additional Staff with the appropriate linguistic capabilities working in tandem with community members with relevant expertise.  It may also require a consideration of expediting the LGR process for the Han script.  We understand that in the general case, the handling of variants is a complex issue. However, for variant cases that are well defined and understood, such as the case of the Han script, ICANN should proceed on a fast-track basis to include variant support in the TMCH in time to accommodate the delegation of the appropriate TLDs.

     

    END

    1. I do not know whether this is taken into account in the latest version so please check. Thanks!

  4. Anonymous

    No, not taking into account the updated version. Please refer to my draft above

    Hong

     

  5. Apologies for the Wiki-confusion - blame it on Post-Beijing flu-induced delirium.

    Revised version incorporating comments by Jean-Jacques, Yaovi, Evan and Alan + Summary of recommendations below.


    Version: April 24, 2013

    ALAC Advice to the ICANN Board on Trademark Clearinghouse and IDN Variants

    The At-Large Advisory Committee (ALAC) is deeply concerned by the implementation model outlined in the “Trademark Clearinghouse: Rights Protection Mechanism Requirements” published on April 6, 2013.  We view the model to be deficient in that it overlooks the critical issue of IDN variants.  If implemented, the model would clearly run against the public interest in the pertinent user communities.

    We wish to highlight two areas of particular concern in the recently published Trademark Clearinghouse (TMCH) requirements: Domain name matching and bundling.

     

    Domain Name Matching

    Since October 2011, language communities have requested that TMCH services factor IDN-script trademarks involving variants and that ICANN consider adopting community-based solutions to address this issue.  Despite concerns raised by language community experts in the TMCH Implementation Assistance Group (IAG), the newly published domain name matching requirements of the TMCH still does not take into account trademarks in IDN scripts involving variants.  Variant matching is critical in certain languages and particularly in Chinese.  To illustrate, when a trademark holder registers a simplified Chinese word-mark and not its traditional equivalent, the TMCH will accordingly generate only one trademark record.  The new gTLD registries are obliged to offer sunrise services and trademark claims for trademarks recorded in the TMCH.  Without variant matching requirements in place, only that registered simplified word-mark will be eligible for trademark protection.  This leaves the traditional word-mark equivalent open for cybersquatting.  Given that both simplified and traditional writings of the word-mark are deemed identical by Chinese communities worldwide (and by norm few trademarks are registered in both writings), ruling out the un-registered writing by not allowing variant matching would make the TMCH completely useless to Chinese trademarks, and would result in an unfair penalty against users of Chinese.


    Domain Name Bundling
    The TMCH requirements specifically prohibit any registry from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.  Such a restriction would exclude the accommodation of any solution for IDN trademarks involving variants during the sunrise period at the TLD level, even though registries may be willing to address the variants through their own registration management and at their own expense.

    Towards A More Open and Flexible TMCH Model

    Trademarks have a very important function in safeguarding the public interest by
    identifying the source of goods and services.  If left unaddressed, the deficiencies of the TMCH model design may likely cause serious public confusion and result in market chaos.  In principle, the At-Large community does not support over-extensive trademark protection measures.  However, we do strongly believe that ICANN should treat all trademarks equally, irrespective of the characters of the trademarks, and that users from all language communities should be protected from confusion equally.

     

    In September 2012, the ALAC statement on the TMCH called for a “more open and flexible model” that can address our community’s concerns regarding the limitations of a uniform model, which would be applied to all gTLD registries irrespective of their differences and competencies.  We believe that new gTLD registries require a more open and flexible TMCH model to be successful and we strongly urge ICANN to move away from a model that is inflexible and unfriendly to variants. 

     

    In light of the considerations above, the ALAC urges the ICANN Board to call for a more open and flexible TMCH model.  Towards this end, we urge the Board to support a community-based, bottom-up solution for TMCH implementation and to ensure that the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries. 

     

    We understand that addressing the IDN Variant issue in a holistic way requires the development of Label Generation Rules (LGR) for the Root Zone, which experts and Staff have projected to require a minimum of 12 months.  We appreciate that the LGR development requires conscientious effort to maintain the security and stability of the Internet, but we are also mindful that the business and practical requirements of new gTLD applicants, especially from developing economies, call for urgent implementation.

     

    To expedite the development of appropriate solutions, the ALAC recommends that the Board request from the ICANN CEO an interim mechanism that can yield such solutions efficiently and on an urgent basis.  This may require additional Staff with the appropriate linguistic capabilities working in tandem with community members with relevant expertise.  It may also require a consideration of expediting the LGR process for the Han script.  We understand that in the general case, the handling of variants is a complex issue. However, for variant cases that are well defined and understood, such as the case of the Han script, ICANN should proceed on a fast-track basis to include variant support in the TMCH in time to accommodate the delegation of the appropriate TLDs.

     

    Summary of Recommendations to the ICANN Board

    1. Call for a more open and flexible TMCH model that is variants-friendly and support a community-based, bottom-up solution for TMCH implementation.
    2. Ensure the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries.
    3. Request from the ICANN CEO an interim mechanism that can yield appropriate solutions efficiently and on an urgent basis that may involve:
    • Additional Staff with the appropriate linguistic capabilities, who will work in tandem with community members with relevant expertise. 
    • A consideration for expediting the LGR process for the Han script.

     

    END

     

    Rinalia

  6. Well done Hong and Rinalia. I support JJ's statement of thanks for drafting such a comprehansive statement in such a short space of time.  Well done and thank you

  7. I am now bothered by the several wiki pages this statement seems to have collected. I make no apology that my IDN views are truly influenced by the folks I consider experts - and from communities likely to feel the decision directly.  I reviewed the email thread.  I've followed the links advised to different wiki pages.  I'm still trying to make heads and tails of the comments.

    What am I missing here?

    Carlton

    1. Only one valid Wiki page, and it's this one. (smile)

  8. Hi, Carlton.

     

    The confusion regarding the wiki pages was my fault.  For some reason I did not see the page that was already set up on the policy development wiki - it was rather strange, but then again I was not feeling well after Beijing.

     

    Regarding the comments, some of the debate had occurred in email threads, which the ALAC is copied on.  Hong had raised the following concerns in the revised draft that I prepared:

    1. The need for additional ICANN staff - which Jean-Jacques and I responded to as necessary, specifically the need for staff who have the right set of expertise to facilitate and work with community experts.
    2. The taking into account of the LGR process - There were discussions of this in Beijing, including at the IDN Working Group meeting.  I had also consulted various experts, who indicated that whatever the solution, it will involve an LGR, which can be dealt with at the second level or at the root level.   Since ICANN is proceeding with an LGR process for the root, there is the opportunity to synergize and not duplicate efforts while expediting the Han script's entry into the root.

    Hong's original draft had pointed to the need for a "decentralized" solution.  Yaovi, Evan, Dev and Alan engaged in a discussion on this point, which led to the removal of the word (please view the ALAC message trail on this).  The ALAC, in the finalized statement, calls for an open and flexible TMCH model, which in my opinion can accommodate a de-centralized or centralized mechanism or a combination of both.  The details of which can be addressed when the actual proposal for an alternative model becomes tangible enough to grapple with in terms of whether not it serves the needs of the language communities.

     

    Best regards,

     

    Rinalia

  9. Hello again, everyone.

    Based on Edmon's input and the responses to date, please find below a revised draft Advice from the ALAC to the Board on Trademark Clearinghouse and IDN Variants.  Blue text represents the input provided by Edmon (slightly tweaked for smooth integration into the overall text).  Red text represents my proposed addition to clarify why the Root LGR is applicable and has value for addressing the problem, plus an additional recommendation for the Board based on Edmon's contribution.

    Feedback appreciated for finalization a.s.a.p.

    Best regards,

    Rinalia


    Revised Version: May 5th, 2013

    ALAC Advice to the ICANN Board on Trademark Clearinghouse and IDN Variants 

    The At-Large Advisory Committee (ALAC) is deeply concerned by the implementation model outlined in the “Trademark Clearinghouse: Rights Protection Mechanism Requirements” published on April 6, 2013.  We view the model to be deficient in that it overlooks the critical issue of IDN variants.  If implemented, the model would clearly run against the public interest in the pertinent user communities.

    We wish to highlight two areas of particular concern in the recently published Trademark Clearinghouse (TMCH) requirements: Domain name matching and bundling.


    Domain Name Matching

    Since October 2011, language communities have requested that TMCH services factor IDN-script trademarks involving variants and that ICANN consider adopting community-based solutions to address this issue.  Despite concerns raised by language community experts in the TMCH Implementation Assistance Group (IAG), the newly published domain name matching requirements of the TMCH still does not take into account trademarks in IDN scripts involving variants.  Variant matching is critical in certain languages and particularly in Chinese.  To illustrate, when a trademark holder registers a simplified Chinese word-mark and not its traditional equivalent, the TMCH will accordingly generate only one trademark record.  The new gTLD registries are obliged to offer sunrise services and trademark claims for trademarks recorded in the TMCH.  Without variant matching requirements in place, only that registered simplified word-mark will be eligible for trademark protection.  This leaves the traditional word-mark equivalent open for cybersquatting.  Given that both simplified and traditional writings of the word-mark are deemed identical by Chinese communities worldwide (and by norm few trademarks are registered in both writings), ruling out the un-registered writing by not allowing variant matching would make the TMCH completely useless to Chinese trademarks, and would result in an unfair penalty against users of Chinese.


    Domain Name Bundling
    The TMCH requirements specifically prohibit any registry from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.  Such a restriction would exclude the accommodation of any solution for IDN trademarks involving variants during the sunrise period at the TLD level, even though registries may be willing to address the variants through their own registration management and at their own expense.

    (NEW TEXT) The TMCH requirements grant absolute first rights to trademark holders, which not only pre-empted certain business models, but also prevented registries from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.


    Towards A More Open and Flexible TMCH Model

    Trademarks have a very important function in safeguarding the public interest by
    identifying the source of goods and services.  If left unaddressed, the deficiencies of the TMCH model design may likely cause serious public confusion and result in market chaos.  In principle, the At-Large community does not support over-extensive trademark protection measures.  However, we do strongly believe that ICANN should treat all trademarks equally, irrespective of the characters of the trademarks, and that users from all language communities should be protected from confusion equally.  (NEW TEXT) However, we do strongly believe that ICANN should treat all trademarks equally, irrespective of the characters of the trademarks, and that users from all language communities should be protected from confusion equally.

     

    In September 2012, the ALAC statement on the TMCH called for a “more open and flexible model” that can address our community’s concerns regarding the limitations of a uniform model, which would be applied to all gTLD registries irrespective of their differences and competencies.  We believe that new gTLD registries require a more open and flexible TMCH model to be successful and we strongly urge ICANN to move away from a model that is inflexible and unfriendly to variants. 

     

    In light of the considerations above, the ALAC urges the ICANN Board to call for a more open and flexible TMCH model.  Towards this end, we urge the Board to support a community-based, bottom-up solution for TMCH implementation and to ensure that the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries. 

     

    We understand that addressing the IDN Variant issue in a holistic way requires the development of Label Generation Rules (LGR) for the Root Zone, (NEW TEXT) which will create a framework for a more consistent management of variants across all levels.  Experts and Staff have projected that this process will require a minimum of 12 months.  We appreciate that the LGR development requires conscientious effort to maintain the security and stability of the Internet, but we are also mindful that the business and practical requirements of new gTLD applicants, especially from developing economies, call for urgent implementation. 

     

    To expedite the development of appropriate solutions, the ALAC recommends that the Board request from the ICANN CEO an interim mechanism that can yield such solutions efficiently and on an urgent basis.  (NEW TEXT) We believe that ICANN already has all the necessary information to develop these solutions based on the IDN Tables and IDN Registration Rules and Policies that were required as part of the application submissions for new gTLDs offering IDN registrations.  The development of the solutions may require additional Staff with the appropriate linguistic capabilities working in tandem with community members with relevant expertise.  It may also require a consideration of expediting the LGR process for the Han script.  We understand that in the general case, the handling of variants is a complex issue. However, for variant cases that are well defined and understood, such as the case of the Han script, ICANN should proceed on a fast-track basis to include variant support in the TMCH in time to accommodate the delegation of the appropriate TLDs.


    Summary of Recommendations to the ICANN Board

    1. Call for a more open and flexible TMCH model that is variants-friendly and support a community-based, bottom-up solution for TMCH implementation.
    2. Ensure the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries.
    3. Request from the ICANN CEO an interim mechanism that can yield appropriate solutions efficiently and on an urgent basis that may involve:
    • Additional Staff with the appropriate linguistic capabilities, who will work in tandem with community members with relevant expertise. 
    • A consideration for expediting the LGR process for the Han script.
    • Reviewing the IDN Tables and IDN Registration Rules and Policies submitted by new gTLD applicants offering IDN registrations as a basis for developing the solutions.


    END

  10. Looking once again at this draft in its final version, I think if was useful to add the bit about having the CEO set up an interim solution.

    As it now stands, this final draft is thorough, and action-oriented.

  11. 3 changes to the draft. In Summary,

     “ICANN should treat all trademarks equally” . When completing the draft at the late night after the gala event in Beijing, I was actually thinking-- 
    (1) "ICANN RPM should treat the trademarks in any language or character set equally", because [ as JJS stated] "users in any language community should be protected from confusion equally". 
    (2) "Trademarks have very important function of safeguarding public interests by identifying the source of goods or services. The malfunctioned TMCH design would cause serious public confusion and market chaos. Confusion over the sources or origins of the goods or services can be very destructive, particularly in the fields of banking, insurance and other high-security businesses."  
    (3) Revised one item in the Recommendation
    From "Additional Staff with the appropriate linguistic capabilities, who will work in tandem with community members with relevant expertise" to 
    "ICANN (staff) supports the community members with relevant expertise to develop interim variants-capable trademark verification services that are interoperable with the TMCH so as to enable the timely launch of the IDN TLDs." 
    Hong Xue

     

    Revised Version: May 6th, 2013

    ALAC Advice to the ICANN Board on Trademark Clearinghouse and IDN Variants 

    The At-Large Advisory Committee (ALAC) is deeply concerned by the implementation model outlined in the “Trademark Clearinghouse: Rights Protection Mechanism Requirements” published on April 6, 2013.  We view the model to be deficient in that it overlooks the critical issue of IDN variants.  If implemented, the model would clearly run against the public interest in the pertinent user communities.

    We wish to highlight two areas of particular concern in the recently published Trademark Clearinghouse (TMCH) requirements: Domain name matching and bundling.


    Domain Name Matching

    Since October 2011, language communities have requested that TMCH services factor IDN-script trademarks involving variants and that ICANN consider adopting community-based solutions to address this issue.  Despite concerns raised by language community experts in the TMCH Implementation Assistance Group (IAG), the newly published domain name matching requirements of the TMCH still does not take into account trademarks in IDN scripts involving variants.  Variant matching is critical in certain languages and particularly in Chinese.  To illustrate, when a trademark holder registers a simplified Chinese word-mark and not its traditional equivalent, the TMCH will accordingly generate only one trademark record.  The new gTLD registries are obliged to offer sunrise services and trademark claims for trademarks recorded in the TMCH.  Without variant matching requirements in place, only that registered simplified word-mark will be eligible for trademark protection.  This leaves the traditional word-mark equivalent open for cybersquatting.  Given that both simplified and traditional writings of the word-mark are deemed identical by Chinese communities worldwide (and by norm few trademarks are registered in both writings), ruling out the un-registered writing by not allowing variant matching would make the TMCH completely useless to Chinese trademarks, and would result in an unfair penalty against users of Chinese.


    Domain Name Bundling
    The TMCH requirements specifically prohibit any registry from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.  Such a restriction would exclude the accommodation of any solution for IDN trademarks involving variants during the sunrise period at the TLD level, even though registries may be willing to address the variants through their own registration management and at their own expense.

    (NEW TEXT) The TMCH requirements grant absolute first rights to trademark holders, which not only pre-empted certain business models, but also prevented registries from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.

     

    Towards A More Open and Flexible TMCH Model

    Trademarks have a very important function in safeguarding the public interest by
    identifying the source of goods and services.  If left unaddressed, the deficiencies of the TMCH model design may likely cause serious public confusion and result in market chaos.  In principle, the At-Large community does not support over-extensive trademark protection measures.  However, we do strongly believe that ICANN should treat all trademarks equally, irrespective of the characters of the trademarks, and that users from all language communities should be protected from confusion equally.  (NEW TEXT) However, we do strongly believe that ICANN should treat all trademarks equally, irrespective of the characters of the trademarks, and that users from all language communities should be protected from confusion equally.

    (Hong XUE)  "Trademarks have very important function of safeguarding public interests by identifying the source of goods or services. The malfunctioned TMCH design would cause serious public confusion and market chaos. Confusion over the sources or origins of the goods or services can be very destructive, particularly in the fields of banking, insurance and other high-security businesses."  "ICANN Right Protection Measures should treat the trademarks in any language or character set equally, because users in any language community should be protected from confusion equally".


    In September 2012, the ALAC statement on the TMCH called for a “more open and flexible model” that can address our community’s concerns regarding the limitations of a uniform model, which would be applied to all gTLD registries irrespective of their differences and competencies.  We believe that new gTLD registries require a more open and flexible TMCH model to be successful and we strongly urge ICANN to move away from a model that is inflexible and unfriendly to variants. 

     

    In light of the considerations above, the ALAC urges the ICANN Board to call for a more open and flexible TMCH model.  Towards this end, we urge the Board to support a community-based, bottom-up solution for TMCH implementation and to ensure that the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries. 

     

    We understand that addressing the IDN Variant issue in a holistic way requires the development of Label Generation Rules (LGR) for the Root Zone, (NEW TEXT) which will create a framework for a more consistent management of variants across all levels.  Experts and Staff have projected that this process will require a minimum of 12 months.  We appreciate that the LGR development requires conscientious effort to maintain the security and stability of the Internet, but we are also mindful that the business and practical requirements of new gTLD applicants, especially from developing economies, call for urgent implementation. 

     

    To expedite the development of appropriate solutions, the ALAC recommends that the Board request from the ICANN CEO an interim mechanism that can yield such solutions efficiently and on an urgent basis.  (NEW TEXT) We believe that ICANN already has all the necessary information to develop these solutions based on the IDN Tables and IDN Registration Rules and Policies that were required as part of the application submissions for new gTLDs offering IDN registrations. The development of the solutions may require additional Staff with the appropriate linguistic capabilities working in tandem with community members with relevant expertise.  It may also require a consideration of expediting the LGR process for the Han script.  We understand that in the general case, the handling of variants is a complex issue. However, for variant cases that are well defined and understood, such as the case of the Han script, ICANN should proceed on a fast-track basis to include variant support in the TMCH in time to accommodate the delegation of the appropriate TLDs.


    Summary of Recommendations to the ICANN Board

    1. Call for a more open and flexible TMCH model that is variants-friendly and support a community-based, bottom-up solution for TMCH implementation.
    2. Ensure the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries.
    3. Request from the ICANN CEO an interim mechanism that can yield appropriate solutions efficiently and on an urgent basis that may involve:
    • Additional Staff with the appropriate linguistic capabilities, who will work in tandem with community members with relevant expertise. 
    • (Hong XUE) "ICANN (staff) supports the community members with relevant expertise to develop interim variants-capable trademark authentication/verification services that are interoperable with the TMCH so as to enable the timely launch of the IDN TLDs." 
    • A consideration for expediting the LGR process for the Han script.
    • Reviewing the IDN Tables and IDN Registration Rules and Policies submitted by new gTLD applicants offering IDN registrations as a basis for developing the solutions. [ this is a long-term solution rather than an interim one. Consider removing it from there. ]
    1. From Jean-Jacques Subrenat:

      Sorry, my attempt to make online corrections was unsuccessful, so I am listing them here (please note that I did not copy the whole text, but only those parts for which I suggest changes in green; grammar has been changed accordingly):

      (NEW TEXT) The TMCH requirements grant absolute first rights to trademark holders, which would not only pre-empt certain business models, but also prevent registries from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.

      ...

       (Hong XUE)  "Trademarks have the very important function of safeguarding the public interest by identifying the source of goods or services. A distorted TMCH design would cause serious public confusion and market chaos. Confusion over the source or origin of goods or services can be very harmful, particularly in the fields of banking, insurance and other high-security businesses."  "ICANN Right Protection Measures should treat the trademarks in any language or character set equally, the principle being that Internet users in any language community should be equally protected against confusion".

      ...

      (Hong XUE) "ICANN (staff) shall provide relevant expertise to the community to develop interim services in order to authenticate and verify that trademarks are compatible with variants; such services shall be interoperable with the TMCH so as to enable the timely launch of the IDN TLDs." 

      ...

      Longer-term recommendation: Review the IDN Tables and IDN Registration Rules and Policies submitted by new gTLD applicants offering IDN registrations as a basis for developing the solutions.

  12. I am comfortable with Hong's additions as per Jean-Jacques edits. In addition:

    I would propose keeping the final recommendation while indicating that it may be a longer-term recommendation. 

    I would also suggest adding the purple text into the following paragraph:

     (Hong XUE in Blue, JJS in green, RAR in purpleTrademarks have the very important function of safeguarding the public interest by identifying the source of goods or services. A distorted TMCH design would cause serious public confusion and market chaos. Confusion over the source or origin of goods or services can be very harmful, particularly in the fields of banking, insurance and other high-security businesses.  In principle, the At-Large community does not support over-extensive trademark protection measures.  Nevertheless, we firmly believe that ICANN's Rights Protection Measures should treat the trademarks in any language or character set equally, the principle being that Internet users in any language community should be equally protected against confusion.

    Best regards,

     

    Rinalia

     

  13. A revised version below factoring the latest comments from Hong, Jean-Jacques and myself towards finalization of Advice.  Also, I've tried to spell out all acronyms at least once to help users not conversant with ICANN lingo to see what they are referring to.

    Rinalia

     

    Revised Version: May 9th, 2013

    ALAC Advice to the ICANN Board on Trademark Clearinghouse and IDN Variants 

    The At-Large Advisory Committee (ALAC) is deeply concerned by the implementation model outlined in the “Trademark Clearinghouse: Rights Protection Mechanism Requirements” published on April 6, 2013.  We view the model to be deficient in that it overlooks the critical issue of Internationalized Domain Name (IDN) variants.  If implemented, the model would clearly run against the public interest in the pertinent user communities.

    We wish to highlight two areas of particular concern in the recently published Trademark Clearinghouse (TMCH) requirements: Domain name matching and bundling.

    Domain Name Matching

    Since October 2011, language communities have requested that TMCH services factor IDN-script trademarks involving variants and that ICANN consider adopting community-based solutions to address this issue.  Despite concerns raised by language community experts in the TMCH Implementation Assistance Group (IAG), the newly published domain name matching requirements of the TMCH still does not take into account trademarks in IDN scripts involving variants.  Variant matching is critical in certain languages and particularly in Chinese.  To illustrate, when a trademark holder registers a simplified Chinese word-mark and not its traditional equivalent, the TMCH will accordingly generate only one trademark record.  The new generic Top Level Domain (gTLD) registries are obliged to offer sunrise services and trademark claims for trademarks recorded in the TMCH.  Without variant matching requirements in place, only that registered simplified word-mark will be eligible for trademark protection.  This leaves the traditional word-mark equivalent open for cybersquatting.  Given that both simplified and traditional writings of the word-mark are deemed identical by Chinese communities worldwide (and by norm few trademarks are registered in both writings), ruling out the un-registered writing by not allowing variant matching would make the TMCH completely useless to Chinese trademarks, and would result in an unfair penalty against users of Chinese.

    Domain Name Bundling
    The TMCH requirements grant absolute first rights to trademark holders, which would not only pre-empt certain business models, but also prevent registries from implementing “variant or bundling rules” and allocating domain names under such “variant or bundling rules” prior to the conclusion of the Sunrise Period.

    Towards A More Open and Flexible TMCH Model

    Trademarks have the very important function of safeguarding the public interest by identifying the source of goods or services. A distorted TMCH design would cause serious public confusion and market chaos.  Confusion over the source or origin of goods or services can be very harmful, particularly in the fields of banking, insurance and other high-security businesses.  In principle, the At-Large community does not support over-extensive trademark protection measures.  Nevertheless, we firmly believe that ICANN's Rights Protection Measures should treat the trademarks in any language or character set equally, the principle being that Internet users in any language community should be equally protected against confusion.

    In September 2012, the ALAC statement on the TMCH called for a “more open and flexible model” that can address our community’s concerns regarding the limitations of a uniform model, which would be applied to all gTLD registries irrespective of their differences and competencies.  We believe that new gTLD registries require a more open and flexible TMCH model to be successful and we strongly urge ICANN to move away from a model that is inflexible and unfriendly to variants. 

    In light of the considerations above, the ALAC urges the ICANN Board to call for a more open and flexible TMCH model.  Towards this end, we urge the Board to support a community-based, bottom-up solution for TMCH implementation and to ensure that the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries. 

    We understand that addressing the IDN Variant issue in a holistic way requires the development of Label Generation Rules (LGR) for the Root Zone, which will create a framework for a more consistent management of variants across all levels.  Experts and Staff have projected that this process will require a minimum of 12 months.  We appreciate that the LGR development requires conscientious effort to maintain the security and stability of the Internet, but we are also mindful that the business and practical requirements of new gTLD applicants, especially from developing economies, call for urgent implementation. 

    To expedite the development of appropriate solutions, the ALAC recommends that the Board request from the ICANN Chief Executive Officer (CEO) an interim mechanism that can yield such solutions efficiently and on an urgent basis.  We believe that ICANN already has all the necessary information to develop these solutions based on the IDN Tables and IDN Registration Rules and Policies that were required as part of the application submissions for new gTLDs offering IDN registrations.  The development of the solutions may require additional Staff with the appropriate linguistic capabilities working in tandem with community members with relevant expertise.  It may also require a consideration of expediting the LGR process for the Han script.  We understand that in the general case, the handling of variants is a complex issue. However, for variant cases that are well defined and understood, such as the case of the Han script, ICANN should proceed on a fast-track basis to include variant support in the TMCH in time to accommodate the delegation of the appropriate Top Level Domains (TLDs).

    Summary of Recommendations to the ICANN Board

    1. Call for a more open and flexible TMCH model that is variants-friendly and support a community-based, bottom-up solution for TMCH implementation.
    2. Ensure the IDN variant issue is addressed before the TMCH begin providing services to the new gTLD registries.
    3. Request from the ICANN CEO an interim mechanism that can yield appropriate solutions efficiently and on an urgent basis that may involve the following:
    • ICANN (staff) providing relevant expertise to the community to develop interim services in order to authenticate and verify that trademarks are compatible with variants.  Such services should be interoperable with the TMCH so as to enable the timely launch of the IDN TLDs. 
    • A consideration for expediting the LGR process for the Han script.
    • Longer-term recommendation: A review of the IDN Tables and IDN Registration Rules and Policies submitted by new gTLD applicants offering IDN registrations as a basis for developing a more comprehensive, longer-term solution.
  14. A Trademark Clearing House (TMCH) particularly one involving the new batch of generic Top Level Domains (gTLDs) must include variants that are within the Internationalized Domain Names variants. The exclusion of specific services to include domain name matching of variants sends two messages:

    1) That ICANN does not consider IDNs to be important at this stage and despite numerous submissions from the community in this regard has deliberately chosen to disregard the calls for action; and

    2)That the TMCH model is not ready for rollout until it addresses the current deficiencies.

    Noting that ICANN has the capacity to address the deficiencies to make the current TMCH more friendly for variants. It is unclear whether there will be a need for a separate TMCH to deal with variants or whether the same system would work but this should have been forecasted in ICANN's business plans as IDNs have been on the table for more than a decade.

    It is in the public interest that users are protected from confusingly similar marks.


    As such, we would urge the global ICANN community to note that some of the largest block of global internet users come from a non English speaking block and from within the Asian block, many of whom are advocating to be able to navigate through the Internet through their native script.