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

Marie Pattullo marie.pattullo at aim.be
Mon Sep 17 15:19:26 UTC 2012

Steve, all


Apologies for the late response – I was in meetings both Friday and this morning, and am about to leave to another one. Issues being discussed by AIM members relative to the MIT proposal are:


·         Is the paper only intended to cover organisations such as Red Cross, banks and similar entities? 

·         What about the serious consumer confusion with sites using domain names containing (famous) trade marks?

·         Disagree that “the framework established by ICANN provides sufficient protection for the vast majority of organizations”.

·         The TMCH is not a RPM, it is simply a database. Rights holders don’t want to pay for further protection through the TMCH. ICANN should instead establish a blocking possibility e.g. based on the number of UDRP’s won & trade mark/DN registrations worldwide. Costs suggested by MIT are too high ($1K-$2K to validate the “High At Risk Mark” plus a one-off reservation fee per mark registered - even higher than the Fairwinds proposal!).

·         The exact match in the trade mark claim service is insufficient - severely diminishes the effectiveness of the list. Cybersquatters hardly ever go for the exact match. The trade mark claim service should cover DNs which include the trade mark.

·         Criteria for HARM status need to be looked at again. The current criteria is for the Mark to be “distinctive and must not match common words” - TM law the world over recognises that dictionary words can acquire distinctive character through extensive use on the market.  In fact, both 'red' and 'cross' are dictionary words, yet paper uses throughout as example of possible HARM. As long as the Mark has been accepted as a plain word (no logo) in jurisdictions that examine on absolute grounds, that should be enough.  Could we suggest that Mark is registered in 50 countries (with spread over 5 ICANN regions)?

·         There should be a loser pays mechanism in both the URS and the UDRP, or at the very least a reimbursement of costs.

·         Should be no limit on the claims notices – not just 60 days after launch but continuous.


Hope this helps






Marie Pattullo

Senior Brand Protection Manager

AIM - European Brands Association

tel: +32 2 736 0305

fax: +32 2 734 6702

marie.pattullo at aim.be

www.aim.be <http://www.aim.be/> 






From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of icann at rodenbaugh.com
Sent: vendredi 14 septembre 2012 21:07
To: 'Mari Jo Keukelaar'; 'bc - GNSO list'
Subject: RE: [Bc-private] [bc-gnso] For expedited review by 17-Sep-2012: proposed expansion/clarification of BC's position on TM Claims Notices


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



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 required.


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 (link <http://www.aipla.org/advocacy/intl/Documents/JointLetter-BrandOwners-SecondLevelRights-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 <http://www.bizconst.org/Positions-Statements/BC%20request%20for%20implementation%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 registrations. 


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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