Documents:
draft-proposed-procedure-urs-04oct09-en.pdf
draft-proposed-procedure-tm-clearinghouse-04oct09-en.pdf
Letter from Zamil GNSO BC to ALAC re IP-IRTR issues in_DAG3
draft-summary-of-changes-from-IRT-proposals-2009-10-20.pdf
draft-rfp-redline-04oct09-en.pdf
Issues:
Trademark Clearinghouse
*From Evan's notes:*
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.
