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

Mon Sep 17 15:47:20 UTC 2012

Thanks both Mary Jo and Mike for your thoughts on this.

My own view at this point is that there should be a stronger rationale for proposed  alterations of the RPMs than just saying that there are 1900 applications for 1400 unique gTLDs, that the number alone justifies a broad reopening and reconsideration. The current RPMs came out of a 2-year give-and-take process and certainly contemplated 500-1,000 applications, and were designed to scale if there were more (TMC, for example, provides sunrise rights and generates warnings regardless of the exact number of gTLDs). So I believe the burden is on proponents to make a case for alterations based on something more than the absolute number of gTLD applications published on reveal day.

Second, as Secretary Strickling observed at the brand meeting with NTIA-USPTO, many of the concepts being pushed now were considered and rejected in the past. So I would hope that participants in both IRT and STI-RT would step forward and illuminate the reasons for past rejection when a proposal has been previously considered so that the entire community can be well informed..

Third, there are implementation and qualitative considerations. As presently designed for exact matches the TMC has high qualitative thresholds for trademarks eligible for inclusion. If mark plus keyword were implemented then who is going to vet those submissions to make sure they are accurate, and what is the added cost? And, given that the TMC still faces some implementation difficulties in its present guise, what does a significant revision do to its implementation schedule and the projected launch date of new gTLDs, already pushed back to Q1 of 2014.

Fourth, what is the cross-RPM impact? For example, if an exact match TMC generates a claim warning and the domain is nonetheless registered  and a URS is subsequently filed then it may generally be assumed that this is a bad faith registration at least for a non-generic mark. But if the TMC is far broader than exact matches then such an assumption may not be justified - a much more vigorous investigation of the domain's use may be in order, and an infringement claim might be more properly brought via UDRP than URS. In any event, registrants in new gTLDs should clearly understand the cross-relationship prior to the launch of new gTLDs.

Fifth, by what process is it envisioned that any alterations of the RPMs be made? The current set were the end product of a process that included the IRT, STI-RT, GNSO Council, and the ICANN Board. True, the Board has made some tweaks under GAC pressure since then, but they were more in the realm of administration than base policy. As most of what's on the table from the brand side consists of significant policy alterations and not just implementation details, ICA's general position is that they should be considered in regular order by the entire community and not via a process in which certain parties lobby the GAC to pressure the Board.

Finally, what exactly are the proposals being considered? The Brand Summit letter and the follow-up meeting at NTIA did not prioritize the suggestions in any way, conceded that implementation difficulties might exist, and made clear that the list of proposals being suggested was not exhaustive. Given the interconnectedness of the TMC and URS and their potential impact on the launch date for new gTLDs, if we're going to have an informed debate we really need a definitive and pretty well locked down list of suggestions to be considered.

I hope those thoughts are helpful.

Best to all,
Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
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From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of icann at rodenbaugh.com
Sent: Friday, September 14, 2012 3:07 PM
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.

Best,
Mike

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

From: bc-private-bounces at icann.org<mailto:bc-private-bounces at icann.org> [mailto:bc-private-bounces at icann.org]<mailto:[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:

-----

"PAYPAL"

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:

paypaland

paypalvia

paypalwide

paypala

paypalnamely

paypalthereof

paypalconducted

paypalcomputer

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> [mailto:owner-bc-gnso at icann.org]<mailto:[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<mailto: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
NetChoice
http://www.NetChoice.org and http://blog.netchoice.org
+1.202.420.7482

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