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Straw man proposed to settle trademark deadlock at secretive ICANN meeting

Kevin Murphy, November 19, 2012, 14:29:00 (UTC), Domain Policy

Trademark interests seem to have scored significant concessions in their ongoing battle for stronger rights protection mechanisms in new gTLDs, following a second closed-doors ICANN meeting.
Following a two-day discussion of the Trademark Clearinghouse in Los Angeles late last week, ICANN CEO Fadi Chehade has published a “straw man” proposal for further discussions.
The straw man — if it is ultimately adopted — would grant the Intellectual Property Constituency and Business Constituency some of the things they recently asked for.
Crucially, they’d get the right to add keywords to the trademarks they list in the Trademark Clearinghouse, making them eligible for the Trademark Claims service.
There would be a test — a UDRP or court win concerning the string in question — for inclusion, and a limit of 50 brand+keywords or misspellings per trademark in the Clearinghouse.
The idea here is to help brand owners quickly respond to the registration of — but not preemptively block — domains such as “brand-industry.tld” or “brand-password-reset.tld”.
The Trademark Claims service would be extended from 60 to 90 days, under the straw man model.
Chehade’s blog post also outlines a “Claims 2” process that would run for six to 12 months after the launch of each new gTLD and would require trademark owners to pay an additional fee.
This Claims 2 service would not necessarily give registrants the same information about trademarks related to the domains they want to registry. Why not is anyone’s guess.
Here’s how Chehade described it:

Rights holders will have the option to pay an additional fee for inclusion of a Clearinghouse record in a “Claims 2″ service where, for an additional 6-12 months, anyone attempting to register a domain name matching the record would be shown a Claims notice indicating that the name matches a record in the Clearinghouse (but not necessarily displaying the actual Claims data). This notice will also provide a description of the rights and responsibilities of the registrant and will incorporate a form of educational add-on to help propagate information on the role of trademarks and develop more informed consumers in the registration process.

I’ve long been of the opinion that Trademark Claims service will not prevent most cybersquatting (determined bad actors will click through the notices as easily as you or I click through a software license agreement) and “Claims 2” appears to be a diluted version of the same lip service.
Claims 2 and the extension of the Clearinghouse to brand+keyword strings appears to be a step in the right direction for trademark owners, but I can’t see the changes substantially reducing their costs.
There’s also already opposition to the ideas from the Non-Commercial Stakeholders Group, according to this analysis of the straw man from NCSG chair Robin Gross.
The LA meeting rejected the notion of a preemptive cross-TLD trademark block list along the lines of the ICM Registry’s Sunrise B for .xxx, which is among the IPC/BC proposals.
The only change to Sunrise proposed in the straw man model is a mandatory 30-day notice period before the mandatory 30-day Sunrise kicks off, to give brand owners time to prepare.
In summary, the straw man proposal appears to create some marginal benefit for trademark owners at the expense of some additional cost and complexity for registries and registrars.
It would also create an entirely new rights protection mechanism — Claims 2 — out of whole cloth.
While no firm decisions appear to have been made in LA, it’s impossible for us to know for sure what went down because the meeting was held behind closed doors.
ICANN even enforced a Twitter ban, according to some attendees.
The meeting was the second private, invitation-only TMCH discussion in recent weeks.
While we understand there were remote participation opportunities for invited guests unable to attend in person, there was no opportunity to passively listen in to the call.
DI was told by ICANN there was no way for us to follow the talks remotely.
According to a number of attendees on Twitter, participants were also asked by ICANN not to tweet about the substance of the discussions, after complaints from trademark interests present.
The same attendees said that ICANN plans to publish a transcript of the meeting, but this has not yet appeared.
Considering that the issues under discussion will help to shape the structure of the domain name industry for many years to come, the lack of transparency on display is utterly baffling.

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Comments (7)

  1. Rubens Kuhl says:
    November 19, 2012 at 2:36 pm

    Claims 2 without notices is what can be done without changing the AGB, making changes only to RAA and TMCH contracts. Registrars would download the label list from TMCH and simply say “registrant beware” without need for TMCH to sign a notice display and having it checked by the registries.
    RAA negotiations have also been done in closed doors, so it’s the same level of transparency or lack thereof.

    Reply
    • Kevin Murphy says:
      November 19, 2012 at 2:43 pm

      RAA negotiations are bilateral contract negotiations.
      As far as I can tell the TMCH talks are multi-stakeholder, but only if you’re invited.
      It’s baffling largely in the context of the “new season” of transparency the community was promised.

      Reply
  2. Zack says:
    November 19, 2012 at 6:07 pm

    Why not just call this a closed door meeting versus a secretive meeting. Everyone knows it was invitation only – and that is a transparent statement. I think Fadi is in a difficult position of trying to get things done versus staying with the old course. Let’s see what comes out of these meetings and how they are communicated to the public. Calling it secretive is BS

    Reply
    • Kevin Murphy says:
      November 19, 2012 at 6:22 pm

      I ramped up the adjective from “closed-door” in previous coverage to “secretive” this time due to the request that participants not even tweet about what was being discussed.
      That strikes me as worthy of “secretive”, though I appreciate that opinions may differ.

      Reply
      • Zack says:
        November 19, 2012 at 6:48 pm

        Or it is truly a working session trying to resolve a complex problem as quickly as possible and limiting outside influence (and therefore possible further delays) was the purpose of making it invitation only. Calling it “secretive” perhaps unfairly makes it sound like a conspiracy – in my opinion. I doubt there are any conspiracies here. I assume a number of individuals who would normally have something to say at an ICANN meeting, including applicants, are in attendance.
        A closed door session might be the best way to get their real thoughts without fear of negative press or allowing them to grandstand, as some typically do at ICANN meetings.

        Reply
        • Kevin Murphy says:
          November 19, 2012 at 6:56 pm

          Clearly there’s no conspiracy here.
          The same opposing views were in attendance as usual, and it appears that some of the same disagreements have resulted, which makes it all the more baffling that the whole thing was in camera.
          When outsiders have to rely on executive summaries of meetings rather than the source material, there’s a risk of causing confusion.

          Reply
  3. Maria Farrell says:
    November 21, 2012 at 6:21 pm

    It’s a secretive meeting when:
    – there’s no public or transparent process for how/why it got called
    – there’s no public or transparent process for who got on the invitation list (though commercial/IP interests apparently outnumbered noncommercial by 10 to 1)
    – there is no way for anyone not invited to follow it – including Kevin
    – participants are told by the chair not to blog or tweet about it, and not to write anything about it until the CEO’s summary goes out (and perhaps not even then)
    – a week later, and despite a public request by me on the ICANN blog, we don’t even know who attended this meeting.
    If ‘Zack’ doesn’t think this is secretive meeting, he certainly has different expectations of professionalism and transparency to most of the ICANN community.
    And you know what kills me? Scores of ICANN community people are breaking their backs trying to get the WCIT meetings to open up, and this is how the ‘multi-equal stakeholder’ model we laud is running itself. Disappointing, to say the least.

    Reply

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