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[bc-gnso] Results: expedited review of proposed expansion/clarification of BC's position on TM Claims Notices

  • To: "bc-gnso@xxxxxxxxx" <bc-gnso@xxxxxxxxx>
  • Subject: [bc-gnso] Results: expedited review of proposed expansion/clarification of BC's position on TM Claims Notices
  • From: Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>
  • Date: Tue, 18 Sep 2012 12:01:09 +0000

During the review period ending 17-Sep, four BC members raised 
concerns/objections to the proposed change (below).
That is fewer than 10% of the paid BC membership ( 44 ).  Per our charter, the 
proposed change is approved and is now part of the BC position on RPMs in new 
gTLDs.

This change may be discussed at today's Washington DC event hosted by Melbourne 
IT:
 "Trademarks and New gTLDs: Minimizing the need for defensive registrations at 
the second level"  
(link<http://www.melbourneit.info/assets/Events/trademarks-and-newtlds.html>)
  This event is also available via Webinar 
(link<https://www2.gotomeeting.com/register/186360258>)

I am on the panel and will present the attached analysis of current and 
proposed RPMs.  The purpose of this analysis is to discover convergence among 
RPM proposals from the BC, Melbourne IT, Donuts, and the Brand Summit 
participants.    The change we just approved appears as item 2c.

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


From: Steve DelBianco 
<sdelbianco@xxxxxxxxxxxxx<mailto:sdelbianco@xxxxxxxxxxxxx>>
Date: Thursday, September 13, 2012 1:06 PM
To: "bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>" 
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Subject: 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




Attachment: BC - Comparison of RPMs.pdf
Description: BC - Comparison of RPMs.pdf



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