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

[Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>]

Thanks, Marie.

Before turning to your questions and comments, I need to understand AIMs 
position on the proposed change that we circulated for review last Thursday 
(see note at very bottom of this email).

That note described a proposed change to BC position only on TM Claims Notices 
(an RPM service that uses the TM Clearinghouse database).

This proposal is consistent with the Brand Summit proposal.  It was not 
addressed in the HARM proposal from Melbourne IT.

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


From: Marie Pattullo <marie.pattullo@xxxxxx<mailto:marie.pattullo@xxxxxx>>
Date: Monday, September 17, 2012 11:19 AM
To: "mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>" 
<mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>>, 'Mari Jo Keukelaar' 
<mj@xxxxxxxxxxxxxxxxx<mailto:mj@xxxxxxxxxxxxxxxxx>>, 'bc - GNSO list' 
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Subject: RE: [Bc-private] [bc-gnso] For expedited review by 17-Sep-2012: 
proposed expansion/clarification of BC's position on TM Claims Notices

Steve, all

Apologies for the late response – I was in meetings both Friday and this 
morning, and am about to leave to another one. Issues being discussed by AIM 
members relative to the MIT proposal are:


·         Is the paper only intended to cover organisations such as Red Cross, 
banks and similar entities?

·         What about the serious consumer confusion with sites using domain 
names containing (famous) trade marks?

·        Disagree that “the framework established by ICANN provides sufficient 
protection for the vast majority of organizations”.

·         The TMCH is not a RPM, it is simply a database. Rights holders don’t 
want to pay for further protection through the TMCH. ICANN should instead 
establish a blocking possibility e.g. based on the number of UDRP’s won & trade 
mark/DN registrations worldwide. Costs suggested by MIT are too high ($1K-$2K 
to validate the “High At Risk Mark” plus a one-off reservation fee per mark 
registered - even higher than the Fairwinds proposal!).

·         The exact match in the trade mark claim service is insufficient- 
severely diminishes the effectiveness of the list. Cybersquatters hardly ever 
go for the exact match. The trade mark claim service should cover DNs which 
include the trade mark.

·         Criteria for HARM status need to be looked at again. The current 
criteria is for the Mark to be “distinctive and must not match common words” - 
TM law the world over recognises that dictionary words can acquire distinctive 
character through extensive use on the market.  In fact, both 'red' and 'cross' 
are dictionary words, yet paper uses throughout as example of possible HARM. As 
long as the Mark has been accepted as a plain word (no logo) in jurisdictions 
that examine on absolute grounds, that should be enough.  Could we suggest that 
Mark is registered in 50 countries (with spread over 5 ICANN regions)?

·         There should be a loser pays mechanism in both the URS and the UDRP, 
or at the very least a reimbursement of costs.

·         Should be no limit on the claims notices – not just 60 days after 
launch but continuous.

Hope this helps

Marie



Marie Pattullo
Senior Brand Protection Manager
AIM - European Brands Association
tel: +32 2 736 0305
fax: +32 2 734 6702
marie.pattullo@xxxxxx<mailto:marie.pattullo@xxxxxx>
www.aim.be<http://www.aim.be/>





From: owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx> 
[mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of 
icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx>
Sent: vendredi 14 septembre 2012 21:07
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