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