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Comment Close
Date
Statement
Name 

Status

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RALO(s)

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Comments
Call for
Comments
Close 
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Announcement 
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Vote 
Reminder
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Date of Submission
Staff Contact and Email
Statement Number
15.01.2013Trademark Clearinghouse "Strawman Solution"Adopted
14Y, 0N, 1A 
05.01.201310.01.201310.01.201310.01.201314.01.201315.01.2013
12:00 UTC 
15.01.2013Karen Lentz
karen.lentz@icann.org 
AL/ALAC/ST/0113/1
Comment/Reply Periods (*)Important Information Links
Comment Open:30 November 2012
Comment Close:21 December 2012 Extended to 15 January 2013
Close Time (UTC):23:59 UTCPublic Comment Announcement
Reply Open:22 December 2012 Extended to 16 January 2013To Submit Your Comments (Forum)
Reply Close:11 January 2013 Extended to 5 February 2013View Comments Submitted
Close Time (UTC):23:59 UTCReport of Public Comments
Brief Overview
Originating Organization:ICANN Staff
Categories/Tags:
  • Top-level Domains
  • Intellectual Property
Purpose (Brief):

The Trademark Clearinghouse facilitates the protection of trademark rights during the initial allocation and registration periods for domain names in new generic top level domains (new gTLDs). All new gTLD registries will be required to use Clearinghouse data to ensure that a set of mandatory trademark rights protection mechanisms are applied to all new domain registrations occurring in at least the first 90 days of domain registration.

Following discussions at the Toronto meeting, ICANN met with a group of stakeholder representatives to complete implementation discussions on the Trademark Clearinghouse and its associated rights protection mechanisms. Among other subjects, these implementation meetings addressed the recent IPC/BC proposal for Improvements and Enhancements to the RPMs for new gTLDs [PDF, 68 KB].

Out of discussions evaluating the merits of these recommendations, the group produced at a strawman solution to address the concerns of affected stakeholders. This strawman solution is being posted for public comment.

One element of the IPC/BC proposal that was not included in the strawman solution concerned a proposal for a "Limited Preventative Registration" mechanism, which attempts to address concerns related to solutions to the second level defensive registration issue that did not achieve consensus among the participants in the implementation meetings. Although this revised proposal is not included in the strawman solution, this proposal is also being posted for public comment to determine whether it should also be considered along with the strawman solution.

Current Status:The Strawman Proposal is the result of collaboration among the participants of the post-Toronto TMCH implementation meetings. The Limited Preventative Registration Proposal is developed by and supported by the BC/IPC. In addition to the public comment period, ICANN is also seeking policy implementation guidance from the GNSO Council in relation to both of these proposals.
Next Steps:Comments will be summarized and analyzed, and revisions to the relevant procedures may be considered based on the feedback received in this public comment period and from the GNSO Council.
Staff Contact:Karen LentzEmail:karen.lentz@icann.org
Detailed Information
Section I: Description, Explanation, and Purpose

Out of the recent Clearinghouse implementation discussions, a strawman solution has been produced to balance and address the concerns of affected stakeholders. This strawman solution is being posted for public comment. This includes:

  • A requirement for 30 days notice in advance of each new gTLD sunrise period.
  • An extension of the required Trademark Claims service to the first 90 days of general registration.
  • A lightweight "Claims 2" period of 6-12 months that is an additional fee-based option for rights holders.
  • Inclusion of domain names previously determined to have been abusively registered or used in both Trademark Claims services.

One element of the IPC/BC proposal that was not included in the strawman solution concerned a proposal for a "Limited Preventative Registration" mechanism. This revised mechanism is proposed by the IPC/BC to address concerns related to solutions for second level defensive registrations that did not achieve consensus among the participants in the implementation meeting. The Limited Preventative Registration proposal is also being posted for public comment to determine whether it should be considered along with the strawman solution.

Section II: Background

The Trademark Clearinghouse facilitates the protection of trademark rights during the initial allocation and registration periods for domain names in new generic top level domains (new gTLDs). All new gTLD registries will be required to use Clearinghouse data to ensure that a set of mandatory trademark rights protection mechanisms are applied to all new domain registrations occurring in at least the first 90 days of domain registration. These mechanisms are described in the Applicant Guidebook for new gTLD applicants.

Following discussions at the Toronto meeting, ICANN met with a group of stakeholder representatives to complete implementation discussions on the Trademark Clearinghouse and its associated rights protection mechanisms. Among other subjects, these implementation meetings addressed the recent IPC/BC proposal for Improvements and Enhancements to the RPMs for new gTLDs [PDF, 68 KB].

Section III: Document and Resource Links

Public Comment is being sought on the following documents:

Section IV: Additional Information

(*) Comments submitted after the posted Close Date/Time are not guaranteed to be considered in any final summary, analysis, reporting, or decision-making that takes place once this period lapses.

FINAL VERSION TO BE SUBMITTED IF RATIFIED

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

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FINAL DRAFT VERSION TO BE VOTED UPON BY THE ALAC

The ALAC wishes to comment on the Trademark Clearinghouse "Strawman Solution" from a number of different perspectives.

Was this the right time for re-opening Rights Protection Mechanisms (RPMs)?

As the RPMs outlined in the Applicant Guidebook for the first round of new gTLDs were arrived at through an extremely difficult but successful consensus process, the ALAC’s first preference would be to not re-open this sensitive issue at this point. However, the ALAC also acknowledges that the concerns of the IPC/BC do have some basis, as demonstrated by the significant level of defensive registrations within existing TLDs as well as ongoing UDRP activity. Given that, the ALAC is prepared to comment on the specific RPMs being proposed on their individual merits.

Was the process followed to re-open the RPM discussion reasonable?

The ALAC finds the process followed by both the IPC/BC and by ICANN staff significantly flawed.

The IPC/BC presented a very brief and very fuzzy set of requirements worded in such a way as to create more questions than they answered. Although the IPC/BC (according to their own statements) spend a lot of time refining these requirements between the time of the Toronto ICANN meeting and the ad hoc meeting held in Los Angeles, they provided the rest of the participants in the Los Angeles meeting with none of this until after the conclusion of that meeting. The lack of early disclosure and sharing significantly impacted the ensuing discussions and served to cripple the concept of the Multi-Equal-Stakeholder Model.

ICANN staff failed to include At-Large in the initial discussions held in Brussels, and only after a suggestion from the NCSG were we even thought to be included in the LA meeting. The ALAC was only formally notified of the meeting a few days before it was to be held, and was refused any travel funding to attend in person. We were assured that we would not be disadvantaged by remote participation, which turned out to not be the case. At-Large representatives (and other members participating remotely) considered themselves to be at a substantial disadvantage compared to the physically-present BC/IPC and contracted parties.  As a result, we do not believe that the point of view of Internet end-users fairly represented in this process.

The lack of clarity over how the participants were selected, how balanced the various stakeholder participation was, and whether these participants in fact “represented” their parent bodies is troubling. Moreover, there was no single understanding of what would happen with the outcomes of the meeting.

The decision to try to identify what differentiates implementation and policy was an important one, and one that should have been addressed by ICANN long before now in a more comprehensive fashion. The lack of clarity of this even now is one of the root sources for disagreement among the various parties.

All of that notwithstanding, this kind of brain-storming and cooperative problem solving is an important innovation - one that the ALAC believes will be absolutely mandatory if ICANN is to rationally address some of the difficult problems ahead and come out with anything more than the least-common denominator solution that the standard PDP WG tends to result in. The STI Review Team was in fact a very similar body and arguably one of the more successful ICANN efforts to find common ground among very diverse initial positions. The challenge will be how to use such a process as a prelude to or part of the GNSO policy processes. Included in this challenge will be how to successfully run such discussion groups without the direct involvement of the CEO or the threat of Board action if the discussions fail - conditions which the ALAC believes were critical to the outcomes of the LA Consultation and to the STI.

As stated above, the specific process used in the Brussels and LA meetings was severely flawed and demands significant revision. Nonetheless, the effort to use innovative (for ICANN) methodology is a positive constructive step that is to be encouraged. The ALAC  welcomes the opportunity to take part in a decision-making process that is effective, efficient and inclusive.

Evaluation of the Strawman components

30 days pre-sunrise notice period: The ALAC agrees that this is an implementation issue and supports the change.

Extension of minimum Trademark Claims service to 90 days: The STI recommendation was for no Trademark Claims (TMC) post launch, and the Applicant Guidebook required TMC for 60 days post-general registration availability. The exact relationship is between these two reference points (launch and general registration) is still unclear, but it is obvious that this period was “adjusted” during the overall new gTLD design process. This process implies that the community has accepted that this is an implementation issue, since the deliberations that resulted in 60 days could well have resulted in 90, and the ALAC agrees that this can and should be considered implementation. On the substance, the ALAC, in its minority statement to the STI, has already supported the concept of longer or ongoing TMC, and so the ALAC does support this change.

Lightweight "Claims 2" period of 6-12 – fee-based: Although a modification of the original TMC, this is a new mechanism that departs significantly from the STI recommendations. ICANN staff have said that they believe that this is an implementation issue, but to date have not provided a detailed analysis to justify this conclusion. In the absence of such a convincing rationale, the ALAC must consider this matter to be a policy issue that requires GNSO attention. The ALAC, in its minority statement to the STI, advocated an ongoing TMC but had some reservation about the chilling effects of such an extension. This new “light” TMC seems a reasonable balance - extending the TMC yet reducing the chilling effect - and the ALAC supports it. The ALAC encourages the GNSO to evaluate the impact of this mechanism on stakeholders and if applicable, recommend its implementation.

Inclusion of domain names previously determined to have been abusively registered or used in both Trademark Claims services: This is a totally new mechanism that has not been the subject of previous extensive discussion and investigation. As such it is clearly policy and cannot be judged simply implementation. This new mechanism would give a TM holder first refusal at registering a limited number of strings related to a TM during sunrise, or generate TMC notices for other prospective registrants.  The ALAC is aware, just as are brand-owners, that such abuse can cause user confusion and possibly fraud. In fact, the ALAC supported the concept of allowing TM Clearinghouse registration of “marks-contained” strings in its minority statement to the STI. Given the limited nature of this protection and its reliance on past abuse, the ALAC supports this change. The ALAC encourages the GNSO to fairly investigate the benefits and impacts of this mechanism and to recommend its adoption.

Limited Preventative Registration: This is not part of the Strawman proposal, and differs from anything previously accepted by the community. As such it is clearly policy. It is a form of blocking without (to date) any practical method of over-riding it to account for fair-use situations. The ALAC cannot support any form of such a change at this time.

FIRST DRAFT SUBMITTED

The ALAC wishes to comment on the Trademark Clearinghouse "Strawman Solution" from a number of different perspectives.

Was this the right time for re-opening Rights Protection Mechanisms (RPMs)?

As the RPMs outlined in the Applicant Guidebook for the first round of new gTLDs were arrived at through an extremely difficult but successful consensus process, the ALAC’s first preference would be to not re-open this sensitive issue at this point. However, the ALAC also acknowledges that the concerns of the IPC/BC do have some basis, as demonstrated by the significant level of defensive registrations within existing TLDs as well as ongoing UDRP activity. Given that, the ALAC is prepared to comment on the specific RPMs being proposed on their individual merits.

Was the process followed to re-open the RPM discussion reasonable?

The ALAC finds the process followed by both the IPC/BC and by ICANN staff significantly flawed.

The IPC/BC presented a very brief and very fuzzy set of requirements worded in such a way as to create more questions than they answered. Although the IPC/BC (according to their own statements) spend a lot of time refining these requirements between the time of the Toronto ICANN meeting and the ad hoc meeting held in Los Angeles, they provided the rest of the participants in the Los Angeles meeting with none of this until after the conclusion of that meeting. The lack of early disclosure and sharing significantly impacted the ensuing discussions and served to cripple the concept of the Multi-Equal-Stakeholder Model.

ICANN staff failed to include At-Large in the initial discussions held in Brussels, and only after a suggestion from the NCSG were we even thought to be included in the LA meeting. The ALAC was only formally notified of the meeting a few days before it was to be held, and was refused any travel funding to attend in person. We were assured that we would not be disadvantaged by remote participation, which turned out to not be the case. At-Large representatives (and other members participating remotely) considered themselves to be at a substantial disadvantage compared to the physically-present BC/IPC and contracted parties.  As a result, we do not believe that the point of view of Internet end-users fairly represented in this process.

The lack of clarity over how the participants were selected, how balanced the various stakeholder participation was, and whether these participants in fact “represented” their parent bodies is troubling. Moreover, there was no single understanding of what would happen with the outcomes of the meeting.

The decision to try to identify what differentiates implementation and policy was an important one, and one that should have been addressed by ICANN long before now in a more comprehensive fashion. The lack of clarity of this even now is one of the root sources for disagreement among the various parties.

All of that notwithstanding, this kind of brain-storming and cooperative problem solving is an important innovation - one that the ALAC believes will be absolutely mandatory if ICANN is to rationally address some of the difficult problems ahead and come out with anything more than the least-common denominator solution that the standard PDP WG tends to result in. The STI Review Team was in fact a very similar body and arguably one of the more successful ICANN efforts to find common ground among very diverse initial positions. The challenge will be how to use such a process as a prelude to or part of the GNSO policy processes. Included in this challenge will be how to successfully run such discussion groups without the direct involvement of the CEO or the threat of Board action if the discussions fail - conditions which the ALAC believes were critical to the outcomes of the LA Consultation and to the STI.

As stated above, the specific process used in the Brussels and LA meetings was severely flawed and demands significant revision. Nonetheless, the effort to use innovative (for ICANN) methodology is a positive constructive step that is to be encouraged. The ALAC  welcomes the opportunity to take part in a decision-making process that is effective, efficient and inclusive.

Evaluation of the Strawman components

30 days pre-sunrise notice period: The ALAC agrees that this is an implementation issue and supports the change.

Extension of minimum Trademark Claims service to 90 days: The STI recommendation was for no Trademark Claims (TMC) post launch, and the Applicant Guidebook required TMC for 60 days post-general registration availability. The exact relationship is between these two reference points (launch and general registration) is still unclear, but it is obvious that this period was “adjusted” during the overall new gTLD design process. This process implies that the community has accepted that this is an implementation issue, since the deliberations that resulted in 60 days could well have resulted in 90, and the ALAC agrees that this can and should be considered implementation. On the substance, the ALAC, in its minority statement to the STI, has already supported the concept of longer or ongoing TMC, and so the ALAC does support this change.

Lightweight "Claims 2" period of 6-12 – fee-based: Although a modification of the original TMC, this is a new mechanism that departs significantly from the STI recommendations. ICANN staff have said that they believe that this is an implementation issue, but to date have not provided a detailed analysis to justify this conclusion. In the absence of such a rationale, the ALAC must consider this matter to be a policy issue that requires GNSO attention. The ALAC, in its minority statement to the STI, advocated an ongoing TMC but had some reservation about the chilling effects of such an extension. This new “light” TMC seems a reasonable balance - extending the TMC yet reducing the chilling effect - and the ALAC supports it. The ALAC encourages the GNSO to evaluate the impact of this mechanism on stakeholders and if applicable, recommend its implementation.

Inclusion of domain names previously determined to have been abusively registered or used in both Trademark Claims services: This is a totally new mechanism that has not been the subject of previous extensive discussion and investigation. As such it is clearly policy and cannot be judged simply implementation. This new mechanism would give a TM holder first refusal at registering a limited number of strings related to a TM during sunrise, or generate TMC notices for other prospective registrants.  The ALAC is aware, just as are brand-owners, that such abuse can cause user confusion and possibly fraud. In fact, the ALAC supported the concept of allowing TM Clearinghouse registration of “marks-contained” strings in its minority statement to the STI. Given the limited nature of this protection and its reliance on past abuse, the ALAC supports this change. The ALAC encourages the GNSO to fairly investigate the benefits and impacts of this mechanism and to recommend its adoption.

Limited Preventative Registration: This is not part of the Strawman proposal, and differs from anything previously accepted by the community. As such it is clearly policy. It is a form of blocking without (to date) any practical method of over-riding it to account for fair-use situations. The ALAC cannot support any form of such a change at this time.

Posted: 05/01/2013

 

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