There is generally no disagreement with the concept of a clearinghouse; problems were identified with regional diversity issues that would arise from a global database.

The DAGv3 proposal of a single DB that could be able to accept multiuple "validators" may be a reasonable approach in that it can apply local values to the entry of entries, but it would still be a single final repository.

Common-Law trademarks

*From Evan' notes*
Common law TMs are currently allowed in the US and UK only, and the UK is moving towards the EU model that does not recognize common law TMs.

The group seems fairly united that common-law trademarks should not be enforced as legitimate legal rights in any context related to new gTLDs. On the contrary, we should be specific in describing the marks that can be protected.

*From Olivier:*

Protected marks should be limited to Federally registered trademarks (FRTM) only; that is, trademarks registered with an official trademark agency mandated by the government of the country or region where it is registered.
* No common law trademark
* FRTM needs to be present in a least x countries per region. we need to choose x for each region since some regions incorporate more countries than others. Or perhaps can we say x percent of countries in each region of the world. Or perhaps can we decide on threshold levels per region, depending on the region's characteristics. My reasoning behind this, is to make sure the FRTM has enough worldwide impact to be dominant enough to reduce a clash with a similar FRTM, registered in another set of countries around the world
* FRTM needs to have been registered for at least y years, where we need to choose y. The reasoning behind this, is to avoid a system whereas a corporation would start registering a trademark solely for the purpose to comply with the threshold described above
* The onus of proof of a FRTM lies in on the applicant. Applicants to the Trademark Clearinghouse list need to provide documentary evidence (official certificates or copy of registration) to support their FRTM.
* The listing is to be updated every 5 years with the applicant needing to provide ongoing documentary evidence, except if the certificates provided at any time mention that the FRTM i perpetual "Famous Marques", if not satisfying the above FRTM criteria, will not be given special favour because even WIPO has no list of Famous Marques. If, in the future, WIPO manages to draft such a list, there should be a possibility that this will be included in the Trademark Clearinghouse list.

* Suitable language in the procedure needs to make it clear that common law words - primary English Dictionary single words, will not be included in the Trademark Clearinghouse. We wish to avoid the controversy of having dictionary words as trademarks, and above all, it is my belief that any *non-clearcut* trademark (and I am making the assumption that FRTMs are clear-cut), will ultimately *weaken* the pertinence of the Trademark Clearinghouse.

*From Kathy:*
Clarification: As I understand it, the proposal we discussed was for registering federally registered marks in the TM Clearinghouse -
- the proposal of the ICANN staff -
- and removing the registration of common law marks.

We had some discussion of definitions. Let me share mine: federally registered marks are those registered at a national level (e.g., France's Trademark Office). There are also multi-national marks such as an EU trademark registration which provide TM protection across multiple countries.

In Sydney, we argued (together!) against the GPML because there is no globally-protected marks list (WIPO has none) and there is not even a treaty standard on globally protected marks. Even ICANN staff agreed!

*From Hong:*

If unregistered trademarks are going to be included under common law rights, there must be clear cut criteria available for implementation.The common law rights are based on use of the marks. The pertinent scope, length, goods and most important of all the reputation established by the use shall be taken into account. A simplified recognition of rights would be arbitrary. However, the full consideration of all the element are too complicated to implement and too time-consuming to verify in the DNS. Oppose to include common law marks.

However, it is not true that "the majority of countries around the world do not follow common law." The British Empire actually brought its common law to a large part of Asia, Africa and Caribbean region. The problem of common law marks is not the geographical distribution
but the difficulty to verify and recognize by non-judicial system.

URS

*From Olivier:*
* Current projected cost per URS application would be $300 - which is less money than going through a UDRP process, thus making it "interesting" for Trademark owners. This opens the door to abuse. An element of risk therefore needs to be introduced to deter cowboy launching of URS. Proposal: $3000 deposit when launching URS, 90% of which will be refunded if URS successful. This should act as a deterrent to launching excessive URS processes.
* no appeals process has been described. A full appeals process should be drafted, otherwise an appeals process will be "created" by applicants/defendants and this might include lawsuits in which ICANN would be named.

*From Evan's notes:*

The ides of "aggregeous" abuse of the DNS is understood (but needs better defiunition), and the current UDRP provides solutions that are seen by many that are too slow and too expensive, especially in dealing with serial/high-volume abusers.

View is that the current suitation is too broad, solving a seciific problem with a too-big, clumsy approach. Choice of either/or of URS or UDRP allows potential abuse of the mechnisms.

Possible solutions could include deposits for URS claims that are refunded for legitimate requests, and forfeited for process abuse. Or extra fees or disincentives, etc.

Implementation

*From Olivier:*
the proposals should be tagged as "experimental", to be reviewed after, say 6 months, 1 year, 2 years, 5 years... If this new system ends up being abused, the review team would be able to take an unequivocal guillotine decision to stop these services without prejudice.
This is meant to act as a fuse, should the system be misused, so as for all of ICANN not to be pulled down because of this.

...

Notes:

GNSO Motion to create the drafting group:

Motion on Selected Trademark Issues from the ICANN Board of Directors

Motion by: Adrian Kinderis

Seconded by: Tim Ruiz

WHEREAS, the ICANN Board has requested that the GNSO Council evaluate certain ICANN staff implementation proposals for the protection of trademarks in new gTLDs based in part on the recommendations from the IRT, public comments, and additional analysis undertaken by ICANN Staff, as described in the letter dated 12 October 2009 Letter from Rod Beckstrom & Peter Dengate Thrush to GNSO Council.

WHEREAS, the ICANN Board letter requests the GNSO Council's view by December 14, 2009 on whether certain rights protection mechanisms for second level strings recommended by ICANN Staff based on public input are consistent with the GNSO Council's proposed policy on the introduction of new gTLDs, and are the appropriate and effective options for achieving the GNSO Council's stated principles and objectives;

WHEREAS, the GNSO Council has reviewed the ICANN Board letter and desires to approve the procedures for conducting such evaluation;

NOW THEREFORE BE IT RESOLVED that the GNSO Council adopts the following process to conduct the evaluation requested by the Board:

1. A GNSO Review Team will be comprised of representatives designated as follows: the Registrar and Registry Stakeholder Groups with two (2) representatives each, the Commercial Stakeholder Groups and the Non-Commercial Stakeholder Groups with four (4) representatives each, and At-Large with one (1) representative and one representative (1) from the Nominating Committee Appointees, and the GAC with one (1) observer; Alternate members may participate in case of absence of the designated representative;

2. Each of the Stakeholder Groups will solicit from their members their initial position statements on the questions and issues raised by the ICANN Board letter and the ICANN Staff proposed models for the implementation of the Trademark Clearinghouse and Uniform Rapid Suspension model, and will deliver their initial position statements on November 4, and with final position statements to be delivered by November 6, 2009;

3. Such position statements will be summarized by ICANN Staff and distributed to the GNSO Review Team to evaluate whether a consensus can be reached on the ICANN Staff implementation models or other proposals for the protection of trademarks in the New gTLD Program; and

4. The GNSO Review Team will conduct its analysis, identify those areas where consensus has already been reached, an seek to develop consensus on those issues for which consensus could not be determined. The assistance of members of the IRT in answering questions about the IP Clearinghouse and Uniform Rapid Suspension System recommendations may be useful to this work. The GNSO Council requests that members of the IRT who worked on those recommendations be available to answer any such questions that may arise; and

5. The GNSO Review Team will provide a final report to the GNSO Council on or before the GNSO council's meeting in late November, 2009.

...

Please find the notes I have written (in no specific order) after reading all documents.
Please bear in mind that this is not a follow-up to this morning's breakfast meeting.

Q1. Will regional registries understand the laws and nuances of trademark practice in the countries of their region? Specifically, would the common law right be understood when the majority of countries around the world do not follow common law? I gather that common law would not be acceptable to GAC
Q2. Why is the URS now reduced to 14 days from 20? Is there a legal reason for this? If not, then is 14 days legal in all countries around the world? Is prejudice hinging on a few days more or less?
Is the 14 day process "reasonable"?
Q3. If the Trademark Clearinghouse and the URS proposals apply to the new gTLDs only, does this favor current gTLD registries? Does it prejudice new gTLD applicants in their business?

Specific proposed ideas
(merged above)

That's all for now. I look forward to seeing our group ultimately proceed towards a good set of suggestions.
* Olivier

_contributed by_ _Guest User_ _on_ _Oct 25 10:47pm_
----
Since Evan is busy, I add myself.

Common Law Marks

If unregistered trademarks are going to be included under common law
rights, there must be clear cut criteria available for
implementation.The common law rights are based on use of the marks.
The pertinent scope, length, goods and most important of all the
reputation established by the use shall be taken into account. A
simplified recognition of rights would be arbitrary. However, the full
consideration of all the element are too complicated to implement and
too time-consuming to verify in the DNS. Oppose to include common law
marks.

However, it is not true that "the majority of countries around the
world do not follow common law." The British Empire actually brought
its common law to a large part of Asia, Africa and Caribbean region.
The problem of common law marks is not the geographical distribution
but the difficulty to verify and recognize by non-judicial system.

Please also refer to [http://www.cdnua.org/|http://www.cdnua.org/]

Hong

_contributed by_ _Guest User_ _on_ _Oct 27 12:59am_
----
1. Impact of a clearinghouse notice on a registrant: is there a potential chilling effect on registrations if a Trademark holder contacts a registrant before the registration is made?

*So long that there is an established procedure that all the registrants are aware of*

2. The requirement that the Clearinghouse be separate and independent from ICANN: not be operated by ICANN and clear and distinct from ICANN. It should operate based on market needs and collect fees from those who use its services. ICANN may coordinate or specify interfaces used by registries and registrars, and provide some oversight or quality assurance function to ensure rights protection goals are appropriately met.

*There should be clearly defined rules of how the database of the clearinghouse is updated, by whom, when and how*.

3. Is Clearinghouse use optional or mandatory for new registries (if optional, must the registry must provide something as effective or better)?

*Clearinghouse should be used in jurisdictions/countries where there are no other mechanisms to check for Trademarks and copyrights*

4. Should the Clearinghouse requirements (including the choice of IP Claims or Sunrise processes) be applied to existing registries?

*Yes, the requirements should include new TLDs as well as existing TLDs*.

5. Liability: During verification of trademarks, liability may arise through false positive and negative results. How should potential liability of parties be managed?

*Without prejudice notice while going through the process*

6. Who assumes the cost of the Clearinghouse? Should the Clearinghouse be funded completely by the parties utilizing its services?

*The cost of the Clearinghouse should be funded by the parties utilising its services*

6. How would the Clearinghouse be used? ICANN is publishing a detailed procedure under separate cover that should be considered as part of the Clearinghouse proposal in this review.

*The use of the Clearinghouse should be optional in countries where there are no other mechanisms in place for trademarks verification*

7. What are the criteria for inclusion in the Clearinghouse? Should the Clearinghouse as conceived accept registered and unregistered marks -- similar to marks considered for UDRP consideration now?

*The acceptance or rejection of the trademark should be left to the discretion of the body managing the clearinghouse since ICANN will only have oversight. It should be given its own independance*

_contributed by_ _Dave Kissoondoyal_ _on_ _Oct 27 11:46pm_
----
*1.Impact of a clearinghouse notice on a registrant: is there a potential chilling effect on registrations if a Trademark holder contacts a registrant before the registration is made?*

Yes

*2.The requirement that the Clearinghouse be separate and independent from ICANN: not be operated by ICANN and clear and distinct from ICANN. It should operate based on market needs and collect fees from those who use its services. ICANN may coordinate or specify interfaces used by registries and registrars, and provide some oversight or quality assurance function to ensure rights protection goals are appropriately met.*

Agreed

*3.Is Clearinghouse use optional or mandatory for new registries (if optional, must the registry must provide something as effective or better)?*

No opinion.

*4.Should the Clearinghouse requirements (including the choice of IP Claims or Sunrise processes) be applied to existing registries?*

Yes. The incumbent registries currently have a market advantage in not have to perform on the same terms as the new gTLDs

*5.Liability: During verification of trademarks, liability may arise through false positive and negative results. How should potential liability of parties be managed?*

Liability should be on the trademark clearinghouse operator. Registries and registrars should be indemnified if they have checked the trademark clearinghouse.

*6.Who assumes the cost of the Clearinghouse? Should the Clearinghouse be funded completely by the parties utilizing its services?*

Funded by trademark owners. It is for their own personal benefit, but a burden to both registrars and registries. According to RFC 1591: "In case of a dispute between domain name registrants as to the rights to a particular name, the registration authority shall have no role or responsibility other than to provide the contact information to both parties." Obviously, if ICANN commits to comply with RFC 1591 for ccTLDs, it should also agree to comply with requirements for gTLDs.

*7.How would the Clearinghouse be used? ICANN is publishing a detailed procedure under separate cover that should be considered as part of the Clearinghouse proposal in this review.*

*8.What are the criteria for inclusion in the Clearinghouse? Should the Clearinghouse as conceived accept registered and unregistered marks -- similar to marks considered for UDRP consideration now?*

To avoid inconsistency, the database should only contain trademarks registered with relevant offices. Because the process will be highly automated, unchallengable evidence is needed.

Comments on the proposed procedure for clearinghouse

This applies to provisions in the proposed procedure that are not covered by the board questions:

*3.Service Provider(s)*

The use of multiple clearinghouses may lead to unconsistent results. What are the liabilities of registries if a trademark is in clearinghouse B but not clearinghouse A ?

URS

If this needs to be implemented at all, I suggest the following modifications
* Notification to registrant: rather than 14 days + 7 we should bring that to 21 days +7 (5.1 and 5.2 of the draft proposed procedure )
* Postal mail should be using guaranteed Day+2 delivery. No bulk international mail, which may be delivered after the notification period is over. This is further reinforced by the fact that the use of telefax is unlikely for individual domain name registrants, and that e-mail has been proven unreliable.

Additional comments on the URS

1.4c) “the Complainant should include a copy of the currently available Whois information and a copy of the web site content associated with each domain name that is the subject of the Complaint;”

What happens of there is no web site associated with the domain name ?

_5.1 [It has been proposed that a Response fee shall be due with the Response only if the Response relates to 26 or more domain names being challenge in the Complaint. This proposal, along with whether the Response fee would be refundable if the Registrant prevails is still under consideration］_

Yes. Indeed, the registrant should incur no cost if proven innocent and should further be compensated by the complainant for the costs incurred in processing the complaint.

_contributed by_ _Patrick Vande Walle_ _on_ _Oct 28 12:30am_
----
Some of the above comments have staked out a position that the Trademark Clearinghouse should be limited to Federally registered trademarks (FRTM) only and should not include common law marks. Clearly, one needs to ask: How does this position serve the needs of the average small business that currently uses the Internet as a vehicle for commerce?

My employer (a very small business) commenced operations in 1928 and has relied upon its existing and recognized rights under common law; the firm has never filed for a federally registered trademark (it never needed to do so) as it has long enjoyed the protections offered by common law.

The currently posted Trademark Clearinghouse criteria state: "in the absence of a registration, evidence of continuous use of the mark in connection with the bona fide offering for sale of goods or services for a period of five years prior to application for membership." Such criteria are reasonable, and impose no major burden upon small businesses other than the provisioning of reasonably requested documentation.

By contrast, what some (through their above comments) are proposing will necessarily force small businesses to expend considerable financial resources on federal-level trademark registration processes just to be able to obtain the same clearinghouse services that will in due course be made available to members of the large business community.

The approach taken by these proponents stands in opposition to the generally accepted principles articulated by the GNSO for new gTLDs, namely that deference should be afforded to the existing legal rights of others. The Clearinghouse criteria recognize these existing rights and attempt to lay out a reasonable basis for the documentation of such rights. One might reasonably argue that four years, or six years, or some other number is a better choice than five years, but any such final choice is certainly better and more reasonable than the attempt to capriciously exclude the holders of common law marks.

contributed by Danny Younger

_contributed by_ _Guest User_ _on_ _Oct 29 6:39am_
----
Danny,
I understand your points and agree that registering a Trademark is an added burden for a small business. However, this small burden shifts the responsibility of Trademark establishment onto a legal Trademark authority, a responsibility that ICANN cannot afford to take.
In the wider sense, allowing common law trademarks will bias the system in favor of registrants from countries practicing common law, whilst at the same time do disservice to individuals potential registrants since more than 80% of the English Dictionary would then end-up in the database. This would mean that no matter what domain name you would be applying for, there would be a high chance that there are already trademark claims on it, somewhere.
I hope you understand the wisdom of leaving common law trademarks out of the Trademark Clearinghouse.
Thanks,
Olivier Crépin-Leblond

_contributed by_ _Guest User_ _on_ _Oct 29 9:02pm_
----
I listed myself as a participant. Hope that's OK.

If, Oliver, you are proposing that small businesses with common law rights take the time and expense to register federally (and its not all that expensive), won't these latecomers be viewed as registering simply to become eligible to be listed with the Clearinghouse? Ultimately, someone is going to have to decide which applications for recent registration are real and significant and which are not. And even without considering common law trademarks, I think you will find multiple instances of conflicting rights as between federal registrants from different countries and a significant portion of the words of the English Dictionary eligible for listing with the Clearinghouse.

I also wonder (Danny) whether the small businesses that do not bother to federally register their marks will take the time and expense to list with the Clearinghouse. I have registered hundreds of marks for small businesses, but I doubt very much if more than a very few would list with a Clearninghouse. And small businesses with common law rights, like Danny's employer, will still have the UDRP to fall back on.

Seth

_contributed by_ _seth.reiss_ _on_ _Oct 29 11:45pm_

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