[gnso-rpm-wg] REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC

Wed May 30 01:38:34 UTC 2018

Thanks, Brian.  As I noted on the call introducing the research, I don't think a few words from a subteam should be treated as settling much of anything, especially without reviewing the information we have available about what's going on, which is what I hope we'll do on the call.  My own takeaway from the research is that the URS is generally functioning well for easy cases, but there is a serious issue of lack of reasoning and thus lack of information in a significant subset of cases.  Following up on a question asked last time, Alex separated the cases by provider and found that examiners only copied and pasted in ADR Forum. All ADNDRC and MFSD cases had at least some explanation provided.

On the categorization of trademarks, a note on the reasons for some of these categories: I wanted to understand whether URS cases had the same pattern as the TMCH alert system apparently does, with terms like "hotel" being the basis for URS cases, or whether there were issues with trademark owners with rights that were limited to particular areas (e.g., Apple for computers and not farms, Delta for pick your favorite Delta business, etc.) asserting claims in the URS beyond the scope of their marks.  The very good news is that, with the arguable exception of Richard Branson's claims, that doesn't seem to be happening in any systematic way.

As for the specific IBM/BBVA question Brian poses, my coders put IBM in "suggestive" because they are young; I'd have put that in descriptive. BBVA is an acronym for Banco Bilbao Vizcaya Argentaria (combination of generic/geographic terms) so they followed the general rule about acronyms for such terms.

The columns to which Brian refers (AE, AD, and AF) are designed to track the URS standard, not the full trademark infringement test.

Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759

________________________________
From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> on behalf of BECKHAM, Brian <brian.beckham at wipo.int>
Sent: Tuesday, May 29, 2018 12:28 PM
To: gnso-rpm-wg at icann.org
Subject: [gnso-rpm-wg] FW: REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC

Thanks Mary, Ariel, Berry, and Julie,

With apologies, I am unlikely to be able to attend Wednesday’s call.

In advance of this week’s call, and in particular given that there was significant discussion some months back on whether and to what extent the WG and/or Subteams should evaluate past decisions, it may be worth recalling that the Summary Report from the URS Documents Subteam (shared with the full WG) stated that “overall the URS appears to be functioning as intended” and that the Subteam “wishes to consult with the full Working Group on the advisability of and need to proceed with this [250/58] analysis.”

At the same time, the Documents Subteam suggested a possible policy recommendation that the WG consider the utility in an “examiner’s guide” to outline the core elements that should normally be included in URS determinations (e.g., the mark, domain name, website use, parties’ names, defenses, etc.).

Therefore a first question might be whether Prof Tushnet’s research is of assistance to the WG in considering additional core elements (if any) that the WG may wish to recommend be included as a template “examiner’s guide” for URS determinations.

Aside from these more threshold questions, time permitting, it may be useful to better understand the placement e.g., of “ibm” in the “TM is arbitrary/suggestive for category” column (Z) or “bbva” in the “TM is descriptive for category” column (AA).

Similarly, for columns (AE, AD, and AF) capturing “likely confusion” it is not clear if this is meant to cover the URS’ confusingly similar standard (it seems to be), or a more traditional trademark likelihood of confusion assessment (which is usually conceptually captured under the legitimate interests and bad faith criteria).

I hope this is useful for tomorrow’s call.

Brian

From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Julie Hedlund
Sent: Tuesday, May 29, 2018 3:51 PM
To: gnso-rpm-wg at icann.org
Subject: [gnso-rpm-wg] REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC

Dear RPM PDP WG members,

Per the WG Co-Chairs, here is the proposed agenda for the Working Group call Wednesday, 30 May 2018, scheduled for 1200 UTC – note the usual earlier time for the last meeting of the month.

WG members are encouraged to review the data at the link below to prepare for the discussion on agenda item 2.

Draft Agenda, 30 May 2018, 1200 UTC:

  1.  Review agenda/SOIs;
  2.  Discuss what quantitative data from Rebecca’s research can be used to address Documents Sub Team questions about the 250 “response received” and 58 “respondent prevailed” cases, See: https://www.dropbox.com/s/1dodxsqkauqp1vr/URS%20Case%20Review%20-%20Final.xlsx?dl=0;
  3.  ICANN62 Planning;
  4.  AOB

Best,

Mary, Ariel, Berry, and Julie

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