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

Thu Apr 6 14:09:47 UTC 2017

On this point, what we are really talking about mostly  is sunrise registrations.

If we had seen evidence  that TM owners were making sunrise registrations for descriptive/dictionary words across dozens or hundreds of new gTLDs, and thereby denying an opportunity for others to acquire such useful domains in land rush or general availability periods, I might be convinced that some limitation might be warranted.

However, what we have found instead is that for a variety of reasons (pricing; availability of blocking services; adopting a strategy of active monitoring of DN registrations and selective use of UDRP/URS) is that sunrise registrations are substantially below expectations. Given that fact, as well as the administrative burden of creating a system that would be required to determine which particular gTLDs “related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”, and the potentially subjective nature of such determinations, I would not favor the proposed limitation. And I agree that we had a robust and comprehensive discussion of this matter in our F2F meeting in Copenhagen and that prolonging it is unlikely to alter viewpoints.

Please note that these views relate only to the TMCH under the present registration rules, and that I might well favor such limitations if we permitted variations of trademarks that were not trademarks in themselves to be registered in the TMCH. I do not favor such expansion as I believe that the main value of the TMCH is that it is a database of registered marks satisfying certain qualitative standards. I also see no rationale to accord trademark holders sunrise registration rights in terms that are not trademarks. And the generation of TM Claims Notices to prospective registrants in such non-TM terms would further discourage legitimate registrations intended for non-infringing purposes. If we accept that the receipt of a TM Claims Notice has a salutary effect in discouraging domain registrations intended to be  infringing (and if that is not the case then there is little reason to continue generating such notices to prospective registrants), I think we must also recognize that such receipt is also deterring non-infringing registrations by unsophisticated potential registrants, especially given the very high abandonment rate documented by the Analysis Group.

Summing up, on these issues I am pretty much in favor of maintaining the status quo.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Susan Payne
Sent: Thursday, April 06, 2017 6:08 AM
To: Beckham, Brian; Mary Wong; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Excellent points Brian

Susan Payne
Head of Legal Policy | Valideus Ltd

E: susan.payne at valideus.com<mailto:susan.payne at valideus.com>
D: +44 20 7421 8255
T: +44 20 7421 8299
M: +44 7971 661175

From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Beckham, Brian
Sent: 06 April 2017 09:20
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

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<mailto:brian.beckham at wipo.int> | www.wipo.int<http://www.wipo.int/>

From: gnso-rpm-wg-bounces at icann.org<mailto: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<mailto: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

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com/email-signature>
Version: 2016.0.8012 / Virus Database: 4769/14210 - Release Date: 03/30/17
Internal Virus Database is out of date.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170406/c537f97a/attachment-0001.html>