[Bc-private] [bc-gnso] For expedited review by 17-Sep-2012: proposed expansion/clarification of BC's position on TM Claims Notices

icann at rodenbaugh.com icann at rodenbaugh.com
Fri Sep 14 19:06:36 UTC 2012

Thanks MJ, I had similar thoughts but hadn't got to draft them yet.


I believe the BC has previously proposed (at least in the STI if not also
elsewhere) that TM owners could self-select the brand/keyword combinations
that they wish to register in the TMC, so long as the keyword is present in
a national trademark registration somewhere.  This approach seemed to work
well with the dotAsia launch.  If there is some slight incremental cost to
registering each combination, that would provide some disincentive for TM
owners to overreach.  Perhaps the BC could coalesce around a proposal like
this again now?


Also, putting this back to the public BC list where it belongs.





Mike Rodenbaugh


tel/fax:  +1.415.738.8087

 <http://rodenbaugh.com> http://rodenbaugh.com 


From: bc-private-bounces at icann.org [mailto:bc-private-bounces at icann.org] On
Behalf Of Mari Jo Keukelaar
Sent: Friday, September 14, 2012 11:25 AM
To: 'bc-private icann.org'
Subject: Re: [Bc-private] [bc-gnso] For expedited review by 17-Sep-2012:
proposed expansion/clarification of BC's position on TM Claims Notices



After reading and considering the proposal made here, we find it difficult
to understand how this would work as a practical matter. First, particularly
in the EU, goods and services descriptions can go on for hundreds of words;
and second, how do you define the "a generic term from the description of
goods and services?"


Just taking the example provided, and applying reality, the G&S description
for one of the PAYPAL registrations is:





Clearing and reconciling financial transactions via a global computer
network; Providing a wide variety of banking services and providing 

financial services, namely, credit card services, processing and
transmission of bills and payments thereof, and insurance for financial 

transactions conducted via global computer network



>From this we get such strings as:











And other senseless things. 


Of course, "PAYPAL" is a fanciful mark and other marks come with a different
set of problems. When you consider the fact that there are trademarks for
things like "O", claimed by Oprah Winfrey, Oakley sunglasses, and
Overstock.com, then every time someone registers a domain name beginning
with the letter O, there will be hundreds of queries and notifications


Now, you could, and most likely will, say "we only mean the words in the G&S
which actually relate to the goods and services." In that instance, the
answer presumes that someone is going to go through all of the G&S
descriptions and flag those which duly relate. That cannot be done on an
automated basis.


Furthermore, which language are we looking at for the G&S for EU
registrations? If the proposal intends all languages, then the problem 

of large EU G&S descriptions is again multiplied.


Then there is an implementation issue:


The TCH is thus far envisioned as a blackbox which matches "inputstring" to
"mark". If someone is registering "paypaland" what is the input query to the
TCH? If the query is "paypaland", it comes back "no match".


The question is, in querying the TCH, how is the software at either end
supposed to know which part of the input string is a mark?


Finally, the TCH is envisioned to enable identification of trademark
strings.  I may own five different trademark registrations for "EXAMPLE"
encompassing five different sets of goods and services. There are, of
course, a number of "PAYPAL" trademark registrations.

Whereas before I believed I would only have to submit one of my trademark
registrations to the TCH in order to enter the mark into the 

TCH, under this scheme I am being told I should submit five different
registrations of the same mark (since I now wish to protect all of my listed
goods and services)?



Name Administration agrees that the TCH should be a more flexible database
capable of implementing a variety of operations. There is 

significant pushback on the possibility of it becoming a source of public
trademark registration data in competition with commercial 

providers of such information. We believe that is the primary tension which
prevents any number of innovative solutions to be implemented.


Mari Jo Keukelaar, M.A./J.D.

On behalf of Name Administration, Inc.


From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of
Steve DelBianco
Sent: Thursday, September 13, 2012 1:08 PM
To: bc-gnso at icann.org
Subject: [bc-gnso] For expedited review by 17-Sep-2012: proposed
expansion/clarification of BC's position on TM Claims Notices


To all BC members:


Your executive committee is seeking member review and approval of an
incremental change to the BC's present position on rights protection
mechanism (RPMs) for new gTLDs.   We have authorized an expedited review
since this is a small change and it would be useful to know the BC position
during new gTLD discussions in Washington DC on Tuesday 18-Sep. 


The proposed change would allow TM owners to specify variants on their TM
that would generate TM Claims notices to registrants.  This change was
suggested at the Brand Summit participants in their letter to the US Govt
LevelRights-gTLDProgram.pdf> ).  The proposed change is to: 


Require the TM Claims Service to issue warnings for any registration that
consists of the mark and a generic term from the description of goods and
services in the registration deposited with the Trademark Clearinghouse.


For example, Paypal is a registered TM that includes "payments" in its
description of goods and services, so TM Claims notices would be issued to
anyone that registered paypalpayments.tld.  Same would apply to
verizon-phones.tld, yahoomail.tld, etc.


You may ask, How does this proposal differ from the existing BC position?
Here's how:


In Jan-2012 the BC approved the attached ballot of RPMs, which was then
summarized in our letter
ation%20improvements.pdf>  to ICANN leadership in Feb-2012.  


The BC voted to require that any domain name recovered in URS/UDRP be added
to TM Clearinghouse, which would therefore automatically generate TM Claim
Notices to subsequent registration attempts of those strings.  See item 3.4
on page 2:


(3.4)  Successful URS complainants should have option to transfer or suspend
the name, and such names should generate TM Claims Notice for subsequent


The BC also went well beyond exact matches for allowing TM owners to acquire
Domain Blocks.  See item 8 on page 4:

(8) Add a "do not register/registry block" service to the Trademark
Clearinghouse, allowing any trademark holder to pay a one time fee to
permanently prevent registration of names that are an identical match or
include the identical match trademark name.

So please reply to me (or reply all) to indicate whether you approve or
oppose the change by 17-Sep-2012.  


If by that date 10% of BC members oppose the change, we will follow the
process described in our charter:

7.3. Approval where there is initial significant disagreement. 

If there are at least 10% of members who oppose a position a mechanism to
discuss the issue will be provided by the Vice Chair for policy
coordination. This may be an e-mail discussion, a conference call or
discussion at a physical meeting. 



Steve DelBianco

Executive Director


http://www.NetChoice.org and http://blog.netchoice.org 






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