[bc-gnso] Posting the list of "improvements" to the new gTLD program to the BC public list

[Smith, Bill]

I'm speaking neither in support of, or in opposition to #8.

A GPML seems difficult to manage on many levels, though I understand why it is attractive to many mark holders. Questions that we would need to consider include:


 *   What criteria would be used to determine which marks could be protected and those that could not?
 *   Are different fields of use considered? (Delta the airline, Delta the faucet manufacturer)
 *   Are different jurisdictions considered?
 *   What priorities, if any, would be applied to fields of use, jurisdiction, or other criteria?
 *   How would appeals be handled?
 *   Could a "protected mark" be sold or traded? (Delta as an example)

Staying with Delta as an example, the US PTO has some 2,200 registrations for Delta. The first five (Delta with no other words) are:

85237943<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.3> Masco Corporation of Indiana (Delta Faucets)
85496225<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.7> Biolase Technology, Inc. (Dental instruments)
85493162<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.10> Delta Electronics, Inc. (Brushless motors, and lot's more)
85209409<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.42> MEDICAL DEPOT, INC. (Bedframes)
85219224<http://tess2.uspto.gov/bin/jumpto?f=doc&state=4009:6dn8vn.2.61> Delta Electronics, Inc. (Wind Power Electricity Generation Equipment)

I'm sure Delta Airlines is somewhere in the pack.

Let's assume .travel, .airline, .plumbing, and .faucet are new gTLDs. No doubt Delta (the airline) would like to register delta.travel, and delta.airline. Similarly, Delta (the faucet manufacturer) would like to register delta.plumbing, and delta.faucet. Unfortunately, Delta (of dental instrument fame) has already protected delta in the GPML we are considering proposing.

It's fairly clear to me that each of the deltas should be allowed to have a second-level domain name in each "appropriate" new top-level domain. Unfortunately, our potential GPML prohibits this if any applicant is successful in gaining entry into the GPML. If we attempt to limit entries in the GMPL to only "really important" marks like Coke or McDonalds, issues remains with TLDs like .steel and .ancestry. Coke.steel seems a perfectly reasonable second-level domain for that industry as does mcdonalds.ancestry in the genealogy industry.

Perhaps there is a way to develop a universal, globally operated, grand-unified mark registration list. While I'm not an IP attorney, I note that marks are registered by jurisdiction and field of use. Overlap in name is common (as demonstrated by the Delta example) so attempts to preclude that overlap are destined to fail, at some level.

A last comment here, how does discussion of GPML fit within "user or consumer perspectives"?

On Jan 11, 2012, at 10:24 AM, <icann at rodenbaugh.com<mailto:icann at rodenbaugh.com>> <icann at rodenbaugh.com<mailto:icann at rodenbaugh.com>> wrote:

Thanks Bene.

So Marilyn, re your Proposal No. 8 again, there was minimal discussion on the call.  Bill Smith reiterated general operational concerns with the skeletal concept.  Steve referred us back to prior BC support for a GPML concept, involving famous marks only, which died when it became evident that there is no workable way to define fame, among other reasons.  Initially you said this is your proposal, then you said that “a number of members support it.”  At the moment that number appears to be “one” since nobody else has publicly supported even the bare concept, as far as I can tell from tracking the BC List.  Until you answer some of the questions I and others have raised, there simply is no proposal that anyone can reasonably consider, and so the idea should be dropped from further discussion (as a general waste of time) until you do try to answer some of those questions.

Here’s one more too:  what if there might be several owners of the same mark?  United, Delta, probably a million other marks are registered to different parties in different places for different things.  What if one of them wants to register in a new TLD, but another one of them has placed a permanent block?  From your perspective, does that seem potentially unfair?  How would you propose to address that issue?

Thanks,
Mike

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax: +1.415.738.8087
http://rodenbaugh.com

From: owner-bc-gnso at icann.org<mailto:owner-bc-gnso at icann.org> [mailto:owner-bc-gnso at icann.org] On Behalf Of Benedetta Rossi
Sent: Wednesday, January 11, 2012 8:48 AM
To: Marilyn Cade
Cc: bc - GNSO list
Subject: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD program to the BC public list

Dear Members,

Please find attached the transcript for yesterday's BC Call. I have also posted it to the BC Wiki in the teleconference section, along with all other transcripts and reports.

As requested, I have also posted the document regarding the list of improvements to the new gTLD program to the Wiki.

As a reminder, the BC Wiki can be found here: https://community.icann.org/display/gnsobc/Home

Kind Regards,



Benedetta Rossi

BC Secretariat

https://community.icann.org/display/gnsobc/Home

www.bizconst.org<http://www.bizconst.org>

bc-secretariat at icann.org<mailto:bc-secretariat at icann.org>

On 11/01/2012 00:12, Marilyn Cade wrote:

Two members asked to have this list posted to the bc-GNSO list. Thus, I am posting it, but you already received it via bc-private, so you can disregard this. It is a copy of the list provided for the BC call.

Bene will also put it on the BC WIKI, and as she and I finalize the grid/excel version, we will get that posted to members. As noted in the earlier email, I am targeting providing it to the ExComm for a sanity check on readability and undertandabiilty for members comments on the document, and then posting to the bc-GNSO list.

Just a reminder that you will have the transcript from Bene, our Secretariat in a few days, or sooner, as well, as a memory supplement, or if someone in your company missed the call and you want to engage with them on the discussions.

Marilyn Cade