[bc-gnso] RE: Report from NTIA-USPTO meeting with Industry, September 5, 2012

[Phil Corwin <psc@xxxxxxxxxxx>]

Just to clarify in regard to this portion of the report:

"Phil Corwin (ICA) said that TM Claims Notices could scare some potential 
registrants so they won't buy the name.   If the warning extends to (TM+generic 
terms) it could suppress demand for names in new domains and "impair the 
success" of the TLD expansion."

ICA does not have a position on the expansion of terms eligible for 
registration in the TMC, and thus to generate warnings of potential  
infringement to individuals attempting to register a "TM + any generic term 
from the brand's description of goods and services" as characterized by 
Kristina Rosette. That is a fairly narrow expansion of the current exact match 
rule and I can run it past my members - although it should be recognized that 
there are many situations where someone other than the TM holder could register 
a domain consisting of that combination without any bad faith registration and 
use. Also, while I didn't raise it at the DOC meeting, the TMC implementation 
group has established rather high standards for the TMs that can entered into 
the database and any discussion of broadening eligibility to combinations with 
related goods and services has to consider whether that undermines those 
standards.

My verbal comment actually went to the suggestion that TM owners be permitted 
to use "name spinners" and to register hundreds or even thousands of terms in 
the TMC database related to a single TM. That goes way beyond the current 
policy, and it would likely generate lots of erroneous warnings to potential 
registrants seeking to register creative names for their web-based enterprises 
with absolutely no intent to infringe on the TM. Most potential registrants 
aren't sophisticated about TM law and aren't likely to spend $ on legal advice 
just to register a domain - so if they get repeated warnings of potential 
infringement as they attempt to register a variety of related domains they may 
just pull back from the transaction and fall back to an incumbent gTLD that 
isn't covered by the TMC.



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: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of 
Steve DelBianco
Sent: Monday, September 10, 2012 10:50 AM
To: bc-gnso@xxxxxxxxx
Subject: [bc-gnso] Report from NTIA-USPTO meeting with Industry, September 5, 
2012

Here's my report from the 5-Sep meeting at US Commerce Department.

The Commerce Dept hosted a meeting on 5-Sep to discuss recommendations from the 
June-2012 "Brand Summit" for improving the existing Rights Protection 
Mechanisms (RPMs).

Attending were many brands, their trade associations, and law firms.  Marilyn 
Cade, Steve DelBianco, and Phil Corwin attended from the BC, and Susan 
Kawaguchi was on the phone.

Larry Strickling and David Kappos  (Director, USPTO) ran the meeting, though 
David ran all the Q&A with RPMs.

Laura Covington of Yahoo described the purpose of their "Brand Summit" -- to 
get a "unified voice" on TM concerns.

Brian Winterfeldt ran thru the RPMs in the attached letter.

Fabricio Vayra (TimeWarner) said that all these RPMs have been discussed 
before, even during the STI process a few years ago.  Fab said the brands 
agreed to drop many of these RPMs in exchange for globally protected marks list 
(GPML).   But ICANN killed the GPML so these RPMs are now needed.

Kappos talked about implementation of RPMs, noting it would be easier to 
implement close-matches thru the TM Clearinghouse, as opposed to some new 
mechanism or algorithm.

Kristina Rosette pushed the idea of TM + any generic term from the brand's 
description of goods and services (it's in the letter).

Fabricio suggested algorithms of related terms, like many registrars do now to 
suggest domains "close" to the one you request.  (brought some laughs)

Kappos asked about implementaility of these RPMs.

DelBianco noted that TM Claim notice services will be fully automated and carry 
very low incremental costs to keep them running after the 60 day required 
period.  And that the BC recommends that names recovered in UDRP/URS should be 
added to the variants in TM Clearinghouse.

Kappos asked why not expand the Watch Services you use now?

Suzanne Kawaguchi (Facebook) said Watch Services work only for registrars that 
allow access and are just for exact matches.  Facebook has 60,000 domains we 
are tracking now, and few of them are exact matches - which are easy to 
shut-down or recover. To protect users, we need more than exact matches.

Marilyn Cade noted that watch services will become much more expensive if 
they're watching over a thousand TLDs.   Marilyn added that the BC supports 
most of these RPMs but that we have our own suggestions too.

Phil Corwin (ICA) said that TM Claims Notices could scare some potential 
registrants so they won't buy the name.   If the warning extends to (TM+generic 
terms) it could suppress demand for names in new domains and "impair the 
success" of the TLD expansion.

DelBianco noted that the expansion's success won't be reviewed just on the 
number of names.   Cited the Affirmation review criteria of consumer trust, 
consumer choice, and competition, etc.

Marilyn explained the BC recommendations from Jan-2012, including 
enforceability of changes/promises made by applicants to overcome Warnings or 
Objections; standardized Sunrise process; centralized URS managed by ICANN.

Jonathan Zuck talked about WHOIS accuracy, and suggested registrars be forced 
to honor an amended RAA that includes WHOIS verification.

Josh Bourne said of 700 "open" TLDs, half will offer "blocking" like ICM does 
in .xxx.   Donuts will also offer a DPML.  He thinks brands won't simply 
scale-up their TM monitoring work to cover the TLDs that don't offer blocking.  
Just too expensive.    So consumers will be subject to more fraud in those TLDs.

Larry Strickling: we're sensitive to critics saying US dominates the Internet. 
So please get non-US governments to weigh-in with these concerns.

Larry: I need to know what's changed since my letter to ICANN in Jan-2012.   
How do I explain why USG wants these additional second-level RPMs when we 
didn't insist on them in January?

The only answer anybody had for that was: in January we thought it was 200-300 
TLDs.  Now we know it's 1400+


--
Steve DelBianco
Executive Director
NetChoice
http://www.NetChoice.org and http://blog.netchoice.org
+1.202.420.7482


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