[Gnso-newgtld-wg-wt3] Notes and Action Items Work Track 3 Sub Team Meeting 09 January 2018

Tue Jan 9 18:33:39 UTC 2018

Dear Work Track members,

Please find below the action items and discussion notes from the call on 09 January 2018.  These high-level notes are designed to help Work Track members navigate through the content of the call and are not a substitute for the chat transcript or the recording.

The documents referenced on the call are attached and excerpts from the chat room are included below.

Kind regards,

Emily

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Action Items and Discussion Notes: 09 January 2018

Action Items: The WG will convey to Paul McGrady for consideration the questions concerning the Legal Rights Objection Strawman noted below.

Notes:

1.  SOI Updates: No updates.

2.  Sub-Pro Plenary Update:

-- Looked at our Predictability Framework and homework.

-- Looked at categories/classifications.  Looking for suggestions for actual cases to run through the Framework.

-- Reminded everyone of the 3 Work Track calls this week.

>From the chat:

Cheryl Langdon-Orr (CLO - PDP Co-Chair): minor correction for meeting record, it's a WT 4 call on later this week on the 11 Jan at 1500UTC...  WT5 is at 2000UTC on the 17tg (WT1 meets at the same time on the 16th 24hrs earlier)

3. Legal Rights Objections:

Slide 4: Highlight from Prior Discussions

-- WT considered statistics related to this objection ground.

-- Few concerns identified with the policy language and the AGB language.

-- Some issues raised regarding the scope of the objection, particularly relating to basis of infringement, which requires proving uses (difficult to do for a pending application).

-- WT discussed a strawman proposal redlining section 3.2.2.2.  Proposed changing "infringed" to "abused", which some WT members consider a significant change.  Questions raised about the problem the proposal wa seeking to solve.  No consensus reached.

Slide 5: Legal Rights Strawman

See: https://community.icann.org/display/NGSPP/2017-02-07+New+gTLD+Subsequent+Procedures+PDP+Work+Track+3?preview=/63157176/64067212/7.2.5%20Legal%20Rights%20Objection%20-%20Strawman%20Edits.pdf

Section 3.2.2.2 

Changed "A rightsholder" to "Any rightsholder"

Question: what is the rationale for this change?

Changed "infringed" to "abused"

Question: What took place in the 2012 process that might have prompted this suggested change in terminology?

Discussion:

-- Keep as "infringed".

-- Could be wrongful conduct that is not called infringement.  Also, dilution of a trademark is an actionable thing.

-- Flag that the discussion in the GNSO when the policy recommendation was made was very focused on infringement.  I think we will need to be prepared to explain why we decided to go with a different term, regardless of what that term is.

-- Suggested "violated" because what if it falls near infringement and is having a similar effect.  Several terms could be put into a bucket called "violated".  Could use a list of terms, “infringed, diluted, misappropriated or otherwise violated” to add clarity.

-- Difficult to prove infringement without the string being delegated.  Is it worth discussing the purpose for making a switch to different terminology.

-- If you go to the legal definition of infringement you have to perform a likelihood of confusion test, which may prove to be impossible to meet.  So if this is an objection process before anything exists you have to extrapolate to what the uses will be.  We aren't using "infringement" to mean what it really means.  Not necessarily difficult to prove, but it is what you have to do to prove it.  

>From the chat:

Jon Nevett: i prefer keeping it as infringed

Greg Shatan: I would suggest “violated”.

Kurt Pritz: This objection was always intended to be a narrow inquiry - focused on the string itself. It is difficult to extrapolate from a string name to infringement or abuse or misappropriated without some additional action (which occurs typically after the string is delegated). With such a narrow inquiry, I prefer the legal term infringement - which seems to have the clearest meaning.

Jon Nevett: there is a body of law on infringement

Kristina Rosette (Amazon Registry): Staff, would it be possible for you to post a link to Paul's paper putting forward the strawman and rationale?   That would be extremely helpful.

Greg Shatan: dilution and misappropriation still go to the string itself.

Greg Shatan: Dilution and misappropriation also have clear legal meanings.

Anne Aikman-Scalese (IPC): Agree wtih Greg that dilution and misappropriation go to the string itself

Kristina Rosette (Amazon Registry): I'd be interested in hearing an explanation as for why abuse, dilution, violation, etc don't raise the same issue as infringement.

Jon Nevett: were there objections rejected in the 2012 round that Paul and others think should be decided differently in this round? That might help frame why we need changes in the first place.

Kurt Pritz: Infringement is difficult to prove and rightfully so - at this stage of the application process. We can't deny an application for what an applicant might do. 

Anne Aikman-Scalese (IPC): @Jon - agree those examples would be helpful.  He also seems to be suggesting later that some objections were filed solely for the purpose of triggering a private auction and getting paid off.  Does anyone know of any examples of this? 

Kurt Pritz: What is the type of string that the inclusion of "abuse" might disqualify that infringe might not? I am concerned it might be some type of public forum TLD. 

Jon Nevett: i think Paul is suggesting that the application was filed to go to private resolution not the objection

Section 3.5.2

Introductory paragraph: Changing text to "or was filed for the purpose of triggering a private auction proceeding designed to obtain a payment from the objector"

Question: Are there any examples of this from the 2012 round?

>From the chat:

Jon Nevett: i think Paul is suggesting that the application was filed to go to private resolution not the objection

Kurt Pritz: I am concerned that this redline about triggering auctions might lead to multiple IRPs

Michael Flemming: I agree with Paul

on Nevett: how do you prove that an application was filed to go to private resolution

Kurt Pritz: @Jon - it is very difficult - but it would provide a tool for use by objector's to slow the process

1. Change to "or a translation or transliteration of" 

Discussion:  No objections to this change.

>From the chat:

Anne Aikman-Scalese (IPC): I would support the change that adds "translation or transliterations" of

Gg Levine (NABP) 2: Change is appropriate.

3. Change to "including but not limited [to] niche market fame" instead of "of the applicant or of a third party" 

Question: What is the rationale for this change?

Discussion:

-- Objection/don't understand the change.

-- Put a marker down on this one; the niche fame incorporates the dilution standard, the other parts effectively strike a competing legal rights defense by the applicant.

-- Think the concept of "niche market fame" is already included, so this could be seen as clarifying.

>From the chat:

Jon Nevett: I object

Jon Nevett: I don't understand it at this point

Kristina Rosette (Amazon Registry): Can we put a marker down on that one?  The niche fame incorporaes the dilution standard, the other parts effectively strike a fair use defense by the applicant

Kristina Rosette (Amazon Registry): Sorry.  Mistyped.  Not fair use. Competing legal rights.

Anne Aikman-Scalese (IPC): The issue is the definition of the "relevant sector".  Hard to tie down.  for example, are we talking about household goods or industrial goods?  paul describes the possibility of a niche market (a narrow, not a broad one where a name or trademark is known to those participants in the market.)

Anne Aikman-Scalese (IPC): for example, under German law, I am told you only have to show the mark is well known in its own market and there is a percentage test used.  This is a difficult area since trademark law is not uniform worldwide.

4a. “the applicant...conducted a trademark search for trademarks corresponding to the applied-for string"

Question: What is the rationale for this change?

Discussion:

--The underlying issue of what percentage of words in the dictionary are trademarked isn't relevant; not sure we need to have a trademark search.

-- Unclear what the impact of doing a trademark search would be.

-- It may be that evidence of a trademark search that comes up clear could help demonstrate that the applicant had no intent to violate another's rights.  This is an optional consideration, right?

-- Doesn't the inquiry into whether a trademark search was conducted tend to discourage such searches by applicants?

-- If the element of the analysis relates to the element of proof of "intent", then evidence re the trademark search is quite relevant to that determination.

-- What do you do with the information from a worldwide trademark search?

-- History of Applicant's trademark search, if any, is probative on the question of "intent".  It seems that "applicant's intent" is relevant.  Since it's relevant, the evidence of trademark search results would definitely be relevant (but not necessarily relevant if Applicant failed to conduct a trademark search since that doesn't prove any sort of intent.)

-- Example: there is an objection because the string is a trademark. The panel looks into whether there has been a trademark search. If there has been, that is evidence of infringement.

>From the chat:

Jon Nevett:what's the relevance of the trademark search? Majority of dictionary terms are trademarks somewhere, no? 

Michael Flemming:Just because legal rights objections can be loosely done if an applicant applied for the string as a trademark in the wake of applying for it. 

Kurt Pritz:In this case, conducting a trademark search is evidence of infringement, abuse, etc. Correct? 

Kristina Rosette (Amazon Registry):In its current form, the trademark search requirement seems overly burdensome. Trademark search in what jurisdictions? What if the string is a common dictionary word such that a trademark search could yield thousands of results? I defended one LRO for which a search of the USPTO database would yield almost 1000 registrations or applications containing the TLD string term. 

Michael Flemming:applying for it as a tld * 

Anne Aikman-Scalese (IPC):It may be that evidence of a trademark search that comes up clear could help demonstrate that the applicant had no intent to violate another's rights. This is an optional consideration, right? 

Jon Nevett:Agree with Kristina 

Kurt Pritz:To build on my last comment - doesn't the inquiry into whether a trademark search was conducted tend to discourage such searches by applicants? 

Anne Aikman-Scalese (IPC):If the element of the analysis relates to the element of proof of "intent", then evidence re the trademark search is quite relevant to that determination. 

Cheryl Langdon-Orr (CLO - PDP Co-Chair):in very many classes of use as we amusing, indeed... worth looking at clarification 

Kurt Pritz:Susan is making my point better than I did. Ex. there is an objection because the string is a trademark. The panel looks into whether there has been a trademark search,. If there has been, that is evidence of infringment. 

Michael Flemming:agree with Kristina 

Anne Aikman-Scalese (IPC):I do think history of Applicant's trademark search, if any, is probative on the question of "intent". It seems that "applicant's intent" is relevant. Since it's relevant, the evidence of trademark search results would definitely be relevant (but not necessarily relevant if Applicant failed to conduct a trademark search since that doesn't prove any sort of intent.) 

Kurt Pritz:Well, it might be games but it is just evidence to be considered 

4d. "whether or not the applicant has engaged in past "private auctions" designed to raise funds from competing applications; or"  

Question: Have we seen any evidence of this?

Discussion:

-- Object to using participation in auctions as evidence of abuse. 

-- One issue with 4d. is that it assumes that an applicant participates (or participated) in a private auction solely to "raise funds from competing applications" and that is a false assumption.

>From the chat:

Kurt Pritz: I also object to using participation in auctions as evidence of abuse. 

5. "In the event that the string does not correspond to a famous trademark owned by the objector"

Question: What is the rationale for this change?

>From the chat:

Jon Nevett: disagree with suggested change to 5 

6. is consistent with strictly corresponds to such acquisition or use the applicant’s marks or other intellectual property rights. Failure of the applicant to include registration and use restrictions prohibiting registration and use of the string in conjunction with the goods and services covered by the Objector’s trademarks shall be conclusive evidence that applicant does not have defenses under this paragraph.

8. Failure of the applicant to include registration and use restrictions prohibiting registration and use of the string in conjunction with the goods and services covered by the Objector’s trademarks shall be conclusive evidence that applicant’s intended use of the gTLD will create a likelihood of confusion with the objector’smark as to the source, sponsorship, affiliation, or endorsement of the gTLD.

Question: What is the rationale for these changes?

Discussion: 8 goes with 6 with the conclusive evidence concept.

>From the chat:

Kristina Rosette (Amazon Registry):It's still early here in WA, but #6 would seem to result in the conclusion that an applicant that applied for a generic term to use it as its dictionary meaning would then have to either (a) impose restrictions or (b) be found to not have any defenses. That seems to be a catch-22 to me. 

7. [Deleted: this can be gamed with mere corporate filings – the issue is trademarks, not company names.]

Question: What is the rationale for this change?

Discussion:

-- Doesn't this section refer to a TLD that is not an exact match of a trademark but similar enough? Apologies, very late and trying to read small print on my phone so I may have misinterpreted 7.

-- Problematic because there are some trademark rights that are protected by statute rather than there be a requirement that they be registered.

>From the chat:

Michael Flemming: Doesn't this section refer to a tld that is not an exact match of a trademark but similar enough? Apologies, very late and trying to read small print on my phone so I may have misinterpreted 7. 

Kristina Rosette (Amazon Registry): Some countries afford corporate names trademark-like protection 

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