Below is the blog post Fadi had to fix to admit expanding scope of TM  
claims was a POLICY matter.   It is still on the web, but staff has  
provided no explanation as to how it gets to change GNSO POLICY that  
it admits is policy and not implementation.

http://blog.icann.org/2012/11/a-follow-up-to-our-trademark- 
clearinghouse-meeti
ngs/



A Follow-Up to Our Trademark Clearinghouse Meetings

by Fadi Chehadé on November 26, 2012

To wrap up the series of meetings ICANN convened with stakeholders to  
find common ground on Trademark Clearinghouse implementation, we  
conducted a follow-up briefing today for the group who worked on  
these issues during our meetings in Brussels and Los Angeles.

We discussed two items:

    1. An update on the Trademark Clearinghouse contract, and
    2. A way forward on the strawman solution developed during the  
meeting in Los Angeles.

Contracts

ICANN has continued to negotiate the agreements for database services  
with IBM and for validation services with Deloitte to include  
additional terms that will provide ICANN with maximum operational  
flexibility and guaranteed stewardship of the trademark database.

Here is an overview:

     * ICANN retains all intellectual property rights in the  
Trademark Clearinghouse data.
     * Deloitte’s validation services are to be non-exclusive. ICANN  
may add additional validators after a threshold of minimum stability  
is met.
     * Trademark submission fees are capped at USD 150 per record.  
Discounts are available for bulk & multi-year submissions.
     * IBM will charge Deloitte for database access via an  
application processing interface (API), and will charge registries  
and registrars for real-time access to the database during the  
sunrise and claims periods.
     * ICANN may audit Deloitte’s performance (and revenues/costs) to  
confirm that the costs and fees for validation services are reasonable.

We are moving to sign agreements as soon as possible and the  
agreements will be posted once signed.

The "Strawman Solution"

As promised, we reviewed each of the elements of the strawman  
solution to identify a way forward, paying special attention to  
determining whether each properly belonged in a policy or  
implementation process. We did not find that any element of the  
strawman was inconsistent with the policy advice from GNSO  
recommendation 3: Strings must not infringe the existing legal rights  
of others that are recognized or enforceable under generally accepted  
and internationally recognized principles of law. However, the  
analysis of the various elements yielded different recommended steps  
for consideration, as described below.

     * Sunrise Notice Requirement. Our analysis is that the addition  
of the required 30-day notice period for Sunrise falls clearly into  
the realm of implementation. The policy advice did not recommend  
specific time periods, and this is a reasonable means to help address  
the communications concerns of rights holders, especially in light of  
the high volume of gTLD applications.
     * Trademark Claims. The extension of Trademark Claims from 60 to  
90 days can also be considered implementation, as it is a matter of  
continuing a service that is already required. The addition of a  
“Claims 2” process could also fall into the category of  
implementation given that it is an optional, fee-based service for  
rights holders, and is more lightweight than what registries and  
registrars will have implemented in the Trademark Claims 1 period.  
This service is envisioned to benefit both consumers and trademark  
holders, and is consistent with the objectives of the Trademark  
Claims service developed by the community. To the extent that there  
are additional costs incurred by registries and registrars, I  
envision that these fees can be offset when the process is  
implemented, as a portion of the fees to be collected by IBM for this  
voluntary service are to be shared with registries and registrars.
     *

       Scope of Trademark Claims. The inclusion of strings previously  
found to be abusively registered in the Clearinghouse for purposes of  
Trademark Claims can be considered a policy matter. This proposal  
provides a path for associating a limited number of additional domain  
names with a trademark record, on the basis of a decision rendered  
under the UDRP or a court proceeding. Given the previous intensive  
discussions on the scope of protections associated with a  
Clearinghouse record, involving the IRT/STI, we believe this needs  
guidance from the GNSO Council.

       I wrote in the original version of this blog post: “the  
inclusion of strings previously found to be abusively registered in  
the Clearinghouse for purposes of Trademark Claims can be considered  
implementation, as it provides a path for associating a limited  
number of additional domain names with a trademark record. This is  
consistent with the policy advice that trademark rights should be  
protected, and, given that the inclusion of such names would be only  
on the basis of a decision rendered under the UDRP or a court  
proceeding, the process would merely take into account names for  
which the issues have already been balanced and considered. However,  
given the previous intensive discussions on the scope of protections  
associated with a Clearinghouse record, involving the IRT/STI, we  
believe this needs guidance from the GNSO Council.” This language  
appeared to create ambiguity as to the nature of the analysis, and  
has been updated as above.

I will be sending a message to the GNSO Council asking it for  
guidance on the Scope of Trademark Claims. In addition, the strawman  
model will be posted this week for public comment. I am also  
including, along with the strawman model, a revised proposal from the  
BC/IPC for limited preventative registrations designed to address the  
need for second-level defensive registrations. Although this proposal  
is not currently part of the strawman model, I will be seeking  
guidance from the GNSO Council on this proposal as well.

As a reminder, the strawman model was developed by participants  
selected by the respective stakeholder groups in the GNSO. I thank  
them for working with me to explore a balanced set of improvements to  
the TMCH and the rights protection mechanisms available for new gTLDs.

I plan to convene this group one last time to discuss the outcome of  
planned contractual talks with IBM. I hope for this to happen later  
this week or next week.

Sincerely,
Fadi







IP JUSTICE
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