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.
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