[bc-gnso] Results: expedited review of proposed expansion/clarification of BC's position on TM Claims Notices

Steve DelBianco sdelbianco at netchoice.org
Tue Sep 18 12:01:09 UTC 2012

During the review period ending 17-Sep, four BC members raised concerns/objections to the proposed change (below).
That is fewer than 10% of the paid BC membership ( 44 ).  Per our charter, the proposed change is approved and is now part of the BC position on RPMs in new gTLDs.

This change may be discussed at today's Washington DC event hosted by Melbourne IT:
 "Trademarks and New gTLDs: Minimizing the need for defensive registrations at the second level"  (link<http://www.melbourneit.info/assets/Events/trademarks-and-newtlds.html>)
  This event is also available via Webinar (link<https://www2.gotomeeting.com/register/186360258>)

I am on the panel and will present the attached analysis of current and proposed RPMs.  The purpose of this analysis is to discover convergence among RPM proposals from the BC, Melbourne IT, Donuts, and the Brand Summit participants.    The change we just approved appears as item 2c.

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

From: Steve DelBianco <sdelbianco at netchoice.org<mailto:sdelbianco at netchoice.org>>
Date: Thursday, September 13, 2012 1:06 PM
To: "bc-gnso at icann.org<mailto:bc-gnso at icann.org>" <bc-gnso at icann.org<mailto:bc-gnso at icann.org>>
Subject: 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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