RE: [Bc-private] [bc-gnso] For expedited review by 17-Sep-2012: proposed expansion/clarification of BC's position on TM Claims Notices

[Phil Corwin <psc@xxxxxxxxxxx>]

Thanks both Mary Jo and Mike for your thoughts on this.

My own view at this point is that there should be a stronger rationale for 
proposed  alterations of the RPMs than just saying that there are 1900 
applications for 1400 unique gTLDs, that the number alone justifies a broad 
reopening and reconsideration. The current RPMs came out of a 2-year 
give-and-take process and certainly contemplated 500-1,000 applications, and 
were designed to scale if there were more (TMC, for example, provides sunrise 
rights and generates warnings regardless of the exact number of gTLDs). So I 
believe the burden is on proponents to make a case for alterations based on 
something more than the absolute number of gTLD applications published on 
reveal day.

Second, as Secretary Strickling observed at the brand meeting with NTIA-USPTO, 
many of the concepts being pushed now were considered and rejected in the past. 
So I would hope that participants in both IRT and STI-RT would step forward and 
illuminate the reasons for past rejection when a proposal has been previously 
considered so that the entire community can be well informed..

Third, there are implementation and qualitative considerations. As presently 
designed for exact matches the TMC has high qualitative thresholds for 
trademarks eligible for inclusion. If mark plus keyword were implemented then 
who is going to vet those submissions to make sure they are accurate, and what 
is the added cost? And, given that the TMC still faces some implementation 
difficulties in its present guise, what does a significant revision do to its 
implementation schedule and the projected launch date of new gTLDs, already 
pushed back to Q1 of 2014.

Fourth, what is the cross-RPM impact? For example, if an exact match TMC 
generates a claim warning and the domain is nonetheless registered  and a URS 
is subsequently filed then it may generally be assumed that this is a bad faith 
registration at least for a non-generic mark. But if the TMC is far broader 
than exact matches then such an assumption may not be justified - a much more 
vigorous investigation of the domain's use may be in order, and an infringement 
claim might be more properly brought via UDRP than URS. In any event, 
registrants in new gTLDs should clearly understand the cross-relationship prior 
to the launch of new gTLDs.

Fifth, by what process is it envisioned that any alterations of the RPMs be 
made? The current set were the end product of a process that included the IRT, 
STI-RT, GNSO Council, and the ICANN Board. True, the Board has made some tweaks 
under GAC pressure since then, but they were more in the realm of 
administration than base policy. As most of what's on the table from the brand 
side consists of significant policy alterations and not just implementation 
details, ICA's general position is that they should be considered in regular 
order by the entire community and not via a process in which certain parties 
lobby the GAC to pressure the Board.

Finally, what exactly are the proposals being considered? The Brand Summit 
letter and the follow-up meeting at NTIA did not prioritize the suggestions in 
any way, conceded that implementation difficulties might exist, and made clear 
that the list of proposals being suggested was not exhaustive. Given the 
interconnectedness of the TMC and URS and their potential impact on the launch 
date for new gTLDs, if we're going to have an informed debate we really need a 
definitive and pretty well locked down list of suggestions to be considered.

I hope those thoughts are helpful.

Best to all,
Philip

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 
icann@xxxxxxxxxxxxxx
Sent: Friday, September 14, 2012 3:07 PM
To: 'Mari Jo Keukelaar'; 'bc - GNSO list'
Subject: RE: [Bc-private] [bc-gnso] For expedited review by 17-Sep-2012: 
proposed expansion/clarification of BC's position on TM Claims Notices

Thanks MJ, I had similar thoughts but hadn't got to draft them yet.

I believe the BC has previously proposed (at least in the STI if not also 
elsewhere) that TM owners could self-select the brand/keyword combinations that 
they wish to register in the TMC, so long as the keyword is present in a 
national trademark registration somewhere.  This approach seemed to work well 
with the dotAsia launch.  If there is some slight incremental cost to 
registering each combination, that would provide some disincentive for TM 
owners to overreach.  Perhaps the BC could coalesce around a proposal like this 
again now?

Also, putting this back to the public BC list where it belongs.

Best,
Mike

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

From: bc-private-bounces@xxxxxxxxx<mailto:bc-private-bounces@xxxxxxxxx> 
[mailto:bc-private-bounces@xxxxxxxxx]<mailto:[mailto:bc-private-bounces@xxxxxxxxx]>
 On Behalf Of Mari Jo Keukelaar
Sent: Friday, September 14, 2012 11:25 AM
To: 'bc-private icann.org'
Subject: Re: [Bc-private] [bc-gnso] For expedited review by 17-Sep-2012: 
proposed expansion/clarification of BC's position on TM Claims Notices




After reading and considering the proposal made here, we find it difficult to 
understand how this would work as a practical matter. First, particularly in 
the EU, goods and services descriptions can go on for hundreds of words; and 
second, how do you define the "a generic term from the description of goods and 
services?"



Just taking the example provided, and applying reality, the G&S description for 
one of the PAYPAL registrations is:



-----

"PAYPAL"



Clearing and reconciling financial transactions via a global computer network; 
Providing a wide variety of banking services and providing

financial services, namely, credit card services, processing and transmission 
of bills and payments thereof, and insurance for financial

transactions conducted via global computer network

----



>From this we get such strings as:



paypaland

paypalvia

paypalwide

paypala

paypalnamely

paypalthereof

paypalconducted

paypalcomputer



And other senseless things.



Of course, "PAYPAL" is a fanciful mark and other marks come with a different 
set of problems. When you consider the fact that there are trademarks for 
things like "O", claimed by Oprah Winfrey, Oakley sunglasses, and 
Overstock.com, then every time someone registers a domain name beginning with 
the letter O, there will be hundreds of queries and notifications required.



Now, you could, and most likely will, say "we only mean the words in the G&S 
which actually relate to the goods and services." In that instance, the answer 
presumes that someone is going to go through all of the G&S descriptions and 
flag those which duly relate. That cannot be done on an automated basis.



Furthermore, which language are we looking at for the G&S for EU registrations? 
If the proposal intends all languages, then the problem

of large EU G&S descriptions is again multiplied.



Then there is an implementation issue:



The TCH is thus far envisioned as a blackbox which matches "inputstring" to 
"mark". If someone is registering "paypaland" what is the input query to the 
TCH? If the query is "paypaland", it comes back "no match".



The question is, in querying the TCH, how is the software at either end 
supposed to know which part of the input string is a mark?



Finally, the TCH is envisioned to enable identification of trademark strings.  
I may own five different trademark registrations for "EXAMPLE" encompassing 
five different sets of goods and services. There are, of course, a number of 
"PAYPAL" trademark registrations.

Whereas before I believed I would only have to submit one of my trademark 
registrations to the TCH in order to enter the mark into the

TCH, under this scheme I am being told I should submit five different 
registrations of the same mark (since I now wish to protect all of my listed 
goods and services)?





Name Administration agrees that the TCH should be a more flexible database 
capable of implementing a variety of operations. There is

significant pushback on the possibility of it becoming a source of public 
trademark registration data in competition with commercial

providers of such information. We believe that is the primary tension which 
prevents any number of innovative solutions to be implemented.

Mari Jo Keukelaar, M.A./J.D.
On behalf of Name Administration, Inc.

From: owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx> 
[mailto:owner-bc-gnso@xxxxxxxxx]<mailto:[mailto:owner-bc-gnso@xxxxxxxxx]> On 
Behalf Of Steve DelBianco
Sent: Thursday, September 13, 2012 1:08 PM
To: bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>
Subject: [bc-gnso] For expedited review by 17-Sep-2012: proposed 
expansion/clarification of BC's position on TM Claims Notices

To all BC members:

Your executive committee is seeking member review and approval of an 
incremental change to the BC's present position on rights protection mechanism 
(RPMs) for new gTLDs.   We have authorized an expedited review since this is a 
small change and it would be useful to know the BC position during new gTLD 
discussions in Washington DC on Tuesday 18-Sep.

The proposed change would allow TM owners to specify variants on their TM that 
would generate TM Claims notices to registrants.  This change was suggested at 
the Brand Summit participants in their letter to the US Govt 
(link<http://www.aipla.org/advocacy/intl/Documents/JointLetter-BrandOwners-SecondLevelRights-gTLDProgram.pdf>).
  The proposed change is to:

Require the TM Claims Service to issue warnings for any registration that 
consists of the mark and a generic term from the description of goods and 
services in the registration deposited with the Trademark Clearinghouse.

For example, Paypal is a registered TM that includes "payments" in its 
description of goods and services, so TM Claims notices would be issued to 
anyone that registered paypalpayments.tld.  Same would apply to 
verizon-phones.tld, yahoomail.tld, etc.

You may ask, How does this proposal differ from the existing BC position?  
Here's how:

In Jan-2012 the BC approved the attached ballot of RPMs, which was then 
summarized in our 
letter<http://www.bizconst.org/Positions-Statements/BC%20request%20for%20implementation%20improvements.pdf>
 to ICANN leadership in Feb-2012.

The BC voted to require that any domain name recovered in URS/UDRP be added to 
TM Clearinghouse, which would therefore automatically generate TM Claim Notices 
to subsequent registration attempts of those strings.  See item 3.4 on page 2:

(3.4)  Successful URS complainants should have option to transfer or suspend 
the name, and such names should generate TM Claims Notice for subsequent 
registrations.

The BC also went well beyond exact matches for allowing TM owners to acquire 
Domain Blocks.  See item 8 on page 4:
(8) Add a "do not register/registry block" service to the Trademark 
Clearinghouse, allowing any trademark holder to pay a one time fee to 
permanently prevent registration of names that are an identical match or 
include the identical match trademark name.
So please reply to me (or reply all) to indicate whether you approve or oppose 
the change by 17-Sep-2012.

If by that date 10% of BC members oppose the change, we will follow the process 
described in our charter:
7.3. Approval where there is initial significant disagreement.
If there are at least 10% of members who oppose a position a mechanism to 
discuss the issue will be provided by the Vice Chair for policy coordination. 
This may be an e-mail discussion, a conference call or discussion at a physical 
meeting.

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




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