[bc-gnso] RE: Report from NTIA-USPTO meeting with Industry, September 5, 2012

Phil Corwin psc at vlaw-dc.com
Mon Sep 10 16:11:26 UTC 2012

Just to clarify in regard to this portion of the report:

"Phil Corwin (ICA) said that TM Claims Notices could scare some potential registrants so they won't buy the name.   If the warning extends to (TM+generic terms) it could suppress demand for names in new domains and "impair the success" of the TLD expansion."

ICA does not have a position on the expansion of terms eligible for registration in the TMC, and thus to generate warnings of potential  infringement to individuals attempting to register a "TM + any generic term from the brand's description of goods and services" as characterized by Kristina Rosette. That is a fairly narrow expansion of the current exact match rule and I can run it past my members - although it should be recognized that there are many situations where someone other than the TM holder could register a domain consisting of that combination without any bad faith registration and use. Also, while I didn't raise it at the DOC meeting, the TMC implementation group has established rather high standards for the TMs that can entered into the database and any discussion of broadening eligibility to combinations with related goods and services has to consider whether that undermines those standards.

My verbal comment actually went to the suggestion that TM owners be permitted to use "name spinners" and to register hundreds or even thousands of terms in the TMC database related to a single TM. That goes way beyond the current policy, and it would likely generate lots of erroneous warnings to potential registrants seeking to register creative names for their web-based enterprises with absolutely no intent to infringe on the TM. Most potential registrants aren't sophisticated about TM law and aren't likely to spend $ on legal advice just to register a domain - so if they get repeated warnings of potential infringement as they attempt to register a variety of related domains they may just pull back from the transaction and fall back to an incumbent gTLD that isn't covered by the TMC.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Steve DelBianco
Sent: Monday, September 10, 2012 10:50 AM
To: bc-gnso at icann.org
Subject: [bc-gnso] Report from NTIA-USPTO meeting with Industry, September 5, 2012

Here's my report from the 5-Sep meeting at US Commerce Department.

The Commerce Dept hosted a meeting on 5-Sep to discuss recommendations from the June-2012 "Brand Summit" for improving the existing Rights Protection Mechanisms (RPMs).

Attending were many brands, their trade associations, and law firms.  Marilyn Cade, Steve DelBianco, and Phil Corwin attended from the BC, and Susan Kawaguchi was on the phone.

Larry Strickling and David Kappos  (Director, USPTO) ran the meeting, though David ran all the Q&A with RPMs.

Laura Covington of Yahoo described the purpose of their "Brand Summit" -- to get a "unified voice" on TM concerns.

Brian Winterfeldt ran thru the RPMs in the attached letter.

Fabricio Vayra (TimeWarner) said that all these RPMs have been discussed before, even during the STI process a few years ago.  Fab said the brands agreed to drop many of these RPMs in exchange for globally protected marks list (GPML).   But ICANN killed the GPML so these RPMs are now needed.

Kappos talked about implementation of RPMs, noting it would be easier to implement close-matches thru the TM Clearinghouse, as opposed to some new mechanism or algorithm.

Kristina Rosette pushed the idea of TM + any generic term from the brand's description of goods and services (it's in the letter).

Fabricio suggested algorithms of related terms, like many registrars do now to suggest domains "close" to the one you request.  (brought some laughs)

Kappos asked about implementaility of these RPMs.

DelBianco noted that TM Claim notice services will be fully automated and carry very low incremental costs to keep them running after the 60 day required period.  And that the BC recommends that names recovered in UDRP/URS should be added to the variants in TM Clearinghouse.

Kappos asked why not expand the Watch Services you use now?

Suzanne Kawaguchi (Facebook) said Watch Services work only for registrars that allow access and are just for exact matches.  Facebook has 60,000 domains we are tracking now, and few of them are exact matches - which are easy to shut-down or recover. To protect users, we need more than exact matches.

Marilyn Cade noted that watch services will become much more expensive if they're watching over a thousand TLDs.   Marilyn added that the BC supports most of these RPMs but that we have our own suggestions too.

Phil Corwin (ICA) said that TM Claims Notices could scare some potential registrants so they won't buy the name.   If the warning extends to (TM+generic terms) it could suppress demand for names in new domains and "impair the success" of the TLD expansion.

DelBianco noted that the expansion's success won't be reviewed just on the number of names.   Cited the Affirmation review criteria of consumer trust, consumer choice, and competition, etc.

Marilyn explained the BC recommendations from Jan-2012, including enforceability of changes/promises made by applicants to overcome Warnings or Objections; standardized Sunrise process; centralized URS managed by ICANN.

Jonathan Zuck talked about WHOIS accuracy, and suggested registrars be forced to honor an amended RAA that includes WHOIS verification.

Josh Bourne said of 700 "open" TLDs, half will offer "blocking" like ICM does in .xxx.   Donuts will also offer a DPML.  He thinks brands won't simply scale-up their TM monitoring work to cover the TLDs that don't offer blocking.  Just too expensive.    So consumers will be subject to more fraud in those TLDs.

Larry Strickling: we're sensitive to critics saying US dominates the Internet. So please get non-US governments to weigh-in with these concerns.

Larry: I need to know what's changed since my letter to ICANN in Jan-2012.   How do I explain why USG wants these additional second-level RPMs when we didn't insist on them in January?

The only answer anybody had for that was: in January we thought it was 200-300 TLDs.  Now we know it's 1400+

Steve DelBianco
Executive Director
http://www.NetChoice.org and http://blog.netchoice.org

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