Re: [bc-gnso] Posting the list of "improvements" to the new gTLD program to the BC public list

[Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>]

Great examples and cogent explanation, Bill.  Would love to hear replies from 
BC members who worked on GPML when it was under consideration.


From: "Smith, Bill" 
<bill.smith@xxxxxxxxxxxxxx<mailto:bill.smith@xxxxxxxxxxxxxx>>
Date: Wed, 11 Jan 2012 15:05:43 -0700
To: "mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>" 
<mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>>
Cc: Benedetta Rossi 
<bc-secretariat@xxxxxxxxx<mailto:bc-secretariat@xxxxxxxxx>>, Marilyn Cade 
<marilynscade@xxxxxxxxxxx<mailto:marilynscade@xxxxxxxxxxx>>, bc - GNSO list 
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Subject: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD 
program to the BC public list


I'm speaking neither in support of, or in opposition to #8.

A GPML seems difficult to manage on many levels, though I understand why it is 
attractive to many mark holders. Questions that we would need to consider 
include:


*   What criteria would be used to determine which marks could be protected and 
those that could not?
*   Are different fields of use considered? (Delta the airline, Delta the 
faucet manufacturer)
*   Are different jurisdictions considered?
*   What priorities, if any, would be applied to fields of use, jurisdiction, 
or other criteria?
*   How would appeals be handled?
*   Could a "protected mark" be sold or traded? (Delta as an example)

Staying with Delta as an example, the US PTO has some 2,200 registrations for 
Delta. The first five (Delta with no other words) are:

85237943<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.3> 
Masco Corporation of Indiana (Delta Faucets)
85496225<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.7> 
Biolase Technology, Inc. (Dental instruments)
85493162<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.10> 
Delta Electronics, Inc. (Brushless motors, and lot's more)
85209409<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.42> 
MEDICAL DEPOT, INC. (Bedframes)
85219224<http://tess2.uspto.gov/bin/jumpto?f=doc&state=4009:6dn8vn.2.61> Delta 
Electronics, Inc. (Wind Power Electricity Generation Equipment)

I'm sure Delta Airlines is somewhere in the pack.

Let's assume .travel, .airline, .plumbing, and .faucet are new gTLDs. No doubt 
Delta (the airline) would like to register delta.travel, and delta.airline. 
Similarly, Delta (the faucet manufacturer) would like to register 
delta.plumbing, and delta.faucet. Unfortunately, Delta (of dental instrument 
fame) has already protected delta in the GPML we are considering proposing.

It's fairly clear to me that each of the deltas should be allowed to have a 
second-level domain name in each "appropriate" new top-level domain. 
Unfortunately, our potential GPML prohibits this if any applicant is successful 
in gaining entry into the GPML. If we attempt to limit entries in the GMPL to 
only "really important" marks like Coke or McDonalds, issues remains with TLDs 
like .steel and .ancestry. Coke.steel seems a perfectly reasonable second-level 
domain for that industry as does mcdonalds.ancestry in the genealogy industry.

Perhaps there is a way to develop a universal, globally operated, grand-unified 
mark registration list. While I'm not an IP attorney, I note that marks are 
registered by jurisdiction and field of use. Overlap in name is common (as 
demonstrated by the Delta example) so attempts to preclude that overlap are 
destined to fail, at some level.

A last comment here, how does discussion of GPML fit within "user or consumer 
perspectives"?

On Jan 11, 2012, at 10:24 AM, 
<icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx><mailto:icann@xxxxxxxxxxxxxx>>
 
<icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx><mailto:icann@xxxxxxxxxxxxxx>>
 wrote:

Thanks Bene.

So Marilyn, re your Proposal No. 8 again, there was minimal discussion on the 
call.  Bill Smith reiterated general operational concerns with the skeletal 
concept.  Steve referred us back to prior BC support for a GPML concept, 
involving famous marks only, which died when it became evident that there is no 
workable way to define fame, among other reasons.  Initially you said this is 
your proposal, then you said that “a number of members support it.”  At the 
moment that number appears to be “one” since nobody else has publicly supported 
even the bare concept, as far as I can tell from tracking the BC List.  Until 
you answer some of the questions I and others have raised, there simply is no 
proposal that anyone can reasonably consider, and so the idea should be dropped 
from further discussion (as a general waste of time) until you do try to answer 
some of those questions.

Here’s one more too:  what if there might be several owners of the same mark?  
United, Delta, probably a million other marks are registered to different 
parties in different places for different things.  What if one of them wants to 
register in a new TLD, but another one of them has placed a permanent block?  
From your perspective, does that seem potentially unfair?  How would you 
propose to address that issue?

Thanks,
Mike

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax: +1.415.738.8087
http://rodenbaugh.com

From: 
owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx><mailto:owner-bc-gnso@xxxxxxxxx>
 [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Benedetta Rossi
Sent: Wednesday, January 11, 2012 8:48 AM
To: Marilyn Cade
Cc: bc - GNSO list
Subject: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD 
program to the BC public list

Dear Members,

Please find attached the transcript for yesterday's BC Call. I have also posted 
it to the BC Wiki in the teleconference section, along with all other 
transcripts and reports.

As requested, I have also posted the document regarding the list of 
improvements to the new gTLD program to the Wiki.

As a reminder, the BC Wiki can be found here: 
https://community.icann.org/display/gnsobc/Home

Kind Regards,



Benedetta Rossi

BC Secretariat

https://community.icann.org/display/gnsobc/Home

www.bizconst.org<http://www.bizconst.org>

bc-secretariat@xxxxxxxxx<mailto:bc-secretariat@xxxxxxxxx><mailto:bc-secretariat@xxxxxxxxx>

On 11/01/2012 00:12, Marilyn Cade wrote:

Two members asked to have this list posted to the bc-GNSO list. Thus, I am 
posting it, but you already received it via bc-private, so you can disregard 
this. It is a copy of the list provided for the BC call.

Bene will also put it on the BC WIKI, and as she and I finalize the grid/excel 
version, we will get that posted to members. As noted in the earlier email, I 
am targeting providing it to the ExComm for a sanity check on readability and 
undertandabiilty for members comments on the document, and then posting to the 
bc-GNSO list.

Just a reminder that you will have the transcript from Bene, our Secretariat in 
a few days, or sooner, as well, as a memory supplement, or if someone in your 
company missed the call and you want to engage with them on the discussions.

Marilyn Cade