[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Thu Apr 6 12:44:59 UTC 2017

On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham at wipo.int> wrote:
> Finally, since the chart references the EFF letter, it is worth mentioning
> here that the fact that a trademark owner may pay (sometimes extremely high
> amounts) to defensively register a domain name exactly matching its
> trademark in a Sunrise process (and thereby taking it “off the market”) does
> not prevent free expression, which may be undertaken in countless other
> ways.  The number of terms that may be appended to a trademark (not to
> mention typos) to engage in all manner of speech – fair or otherwise – is,
> practically-speaking, all but limitless.

As someone whose main practice area is on freedom of expression, I
also have to take issue with this statement. It's facile to suggest
that no free expression issue exists just because people are left with
other avenues to express themselves. In China, people have many ways
to express themselves - just so long as they don't criticize the
government. You can say whatever you want about your taste in music,
art, fashion etc. The fact that wide areas of expression are left
available doesn't negate concerns.

Obviously, that's an extreme example - but I only mean to illustrate
that this is, by any calculus, a limit on expression. All trademarks
are a limitation on speech. That's not to argue that they're not a
*justifiable* limit on freedom of expression - but just that
consideration of the impact on speech must be part of the equation,
and can't be dismissed based on the fact that other areas remain
untouched. And it also, I think, leads us back to the transparency
question, since one of the cardinal principles in limiting speech is
that rules must be clear - to ensure that other speakers know where
the lines are, and what they are or are not allowed to do and say.
This is a major reason why I, and others, argue for the need for
transparency here - in order to ensure clarity over which areas are
available, and which have been reserved. Restrictions on speech can be
justified. Secret restrictions on speech never can.

On Thu, Apr 6, 2017 at 5:19 AM, Beckham, Brian <brian.beckham at wipo.int> wrote:
> Thanks for this Mary,
>
>
>
> It is noted that more discussion is recommended for item 11 which states:
> “Should the scope of the RPMs associated with the TMCH be limited to apply
> only to TLDs that are related to the categories of goods and services in
> which the dictionary term(s) within a trademark are protected”.
>
>
>
> While not seeking to stifle further discussion, WG members will recall that
> this issue was discussed at great length in Copenhagen, and it seemed clear
> that there was no possibility of achieving consensus on such proposed
> limitations, for a number of articulated reasons.
>
>
>
> Merely to recall two obvious examples raised in Copenhagen:
>
>
>
> (i)             what limitations to the categories of goods and services
> would apply to TLDs such as “.web” or “.online” or “.fun”? and
>
>
>
> (ii)            this proposed limitation would unfairly impact a brand owner
> such who had submitted a mark to the TMCH in one class but who also had
> valid marks in other classes which for various reasons had not been
> submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable
> music and Class 45 for social services (US Reg Nos 3317089 and 1071006
> respectively)).
>
>
>
> Therefore, the WG co-chairs may wish to consider whether further discussion
> on this topic is in fact warranted.
>
>
>
> Finally, since the chart references the EFF letter, it is worth mentioning
> here that the fact that a trademark owner may pay (sometimes extremely high
> amounts) to defensively register a domain name exactly matching its
> trademark in a Sunrise process (and thereby taking it “off the market”) does
> not prevent free expression, which may be undertaken in countless other
> ways.  The number of terms that may be appended to a trademark (not to
> mention typos) to engage in all manner of speech – fair or otherwise – is,
> practically-speaking, all but limitless.
>
>
>
> Best regards,
>
>
>
> Brian
>
>
>
> Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration
> and Mediation Center
> 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 |
> E brian.beckham at wipo.int | www.wipo.int
>
>
>
>
>
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
> On Behalf Of Mary Wong
> Sent: Wednesday, April 05, 2017 11:29 PM
> To: gnso-rpm-wg at icann.org
> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group
> call held earlier today
>
>
>
> Dear all,
>
>
>
> The following Action Items were noted by staff during the Working Group call
> held earlier today. Below them you will find some additional questions that
> several Working Group members typed into the Adobe Connect chat room for
> your further discussion as to whether or not to forward them to the Analysis
> Group or otherwise consider. You will also find attached to this email the
> slides that Greg Rafert and Stacey Chan used for the discussion that took
> place today.
>
>
>
> ACTION ITEMS:
>
> 1.       Working Group members to consider volunteering for either the
> Sunrise Charter Questions or Private Protections Sub Team (please let staff
> know if you are interested in joining either/both)
>
>
>
> 2.       Staff to review Work Plan, and to begin planning Sunrise and Claims
> Sub Team calls starting next week
>
>
>
> 3.       Co-Chairs to continue working with staff to develop draft questions
> and proposed scope of work for the Private Protections Sub Team
>
>
>
> 4.       Co-Chairs and staff to coordinate with the Analysis Group for a
> second call with them (question for all: when do you think this will be most
> useful? Do you have comments or questions based on the attached slides that
> you think the Analysis Group and/or the Working Group should address?)
>
>
>
> 5.       Co-Chairs and staff to review results of Doodle poll and propose
> call duration times up to ICANN59 and an appropriate weekday for the fourth
> (APAC timezone-friendly) rotating Working Group call at 0300 UTC
>
>
>
> REMINDER - Working Group members to review TMCH Charter Categories 1 & 2
> (see attached TMCH Next Steps table) and send a note to this mailing list if
> they have any additional suggestions or follow up on those two categories.
>
>
>
> Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from
> today; please send any comments you may have or suggestions for follow up to
> this mailing list:
>
>
>
> ·         Phil Marano: The revised report indicates in several areas that
> conclusions could not be reached because various parties failed to respond
> to requests from Analysis Group for additional data.  It would be great to
> receive additional context from Analysis Group on the specific requests it
> made, to whom, and any reasons given for failure to respond or provide the
> requested data.
>
>
>
> ·         Michael Graham: If the registration application was abandoned AG
> could not see the DOMAIN applied for, so there's no way of tracing duplicate
> pings, etc.?
>
>
>
> ·         Kristine Dorrain: Do we know if a user who got a Claims Notice and
> abandoned their attempt to register then subsequently decided later to go
> back and register the domain despite the Claims Notice?
>
>
>
> ·         Griffin Barnett: Is there data on abandonment of registrations
> where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on
> abandonment during the same periods for those starting the registration
> process but not receiving a Claims Notice?
>
>
>
> Finally, I also attach the Notes that were taken by staff in the Adobe
> Connect notes pod during the Working Group call held earlier today – please
> note that these have been prepared solely to assist the Working Group with
> recalling and progressing its work, and are not intended to replace or
> supersede the call recording or meeting transcript, which are the official
> records of the meeting.
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
>
>
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