2019-09-11 Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP WG

Notes/ Action Items

Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached document and proposals on the list).

Notes:

Open Charter Question 8:

-- Clarify what is meant by TMs protected by statutes or treaties – not meant to include non-TMs. 

-- 3.2.3: Any word mark [specified as protected]...

-- 3.2.4: Other marks that constituted intellectual property.

-- See proposal from Rebecca Tushnet: The Trademark Clearinghouse is for trademarks. The current categories in the AGB of "Marks protected by statute or treaty" and "other IP" (3.2.3 and 3.2.4) should both be replaced by the single concept of "word marks protected as trademarks by statute or treaty specifying the marks at issue."  The three categories of eligible trademarks for the TMCH would then be marks protected by a national registration, marks confirmed by a court decision, and marks recognized as trademarks by statute or treaty (e.g., the Olympic marks, 36 U.S.C. §380, Use of Olympic symbols, emblems, trademarks and names).

-- If a Registry Operator wants to protect intellectual property it can do so under 3.2.4, but if not how else?

-- Amend to “Any word mark set forth in a statute or treaty and protected as a mark, trademark, service mark...by a statute or treaty...” and delete 3.2.4.

-- QUESTION from staff: it likely makes a difference in scope whether the WG agrees to use “mark” or “trademark” for what is within scope of 3.2.3., i.e. all “trademarks” are likely “marks”, but not all marks are trademarks.

-- If the statute treats you as a trademark you should be in the TMCH, if not then not.

-- Could change 3.2.4 to reference “trademark” instead of “marks”.

-- On 3.2.4 - it is supposed to cover other intellectual property protected by arrangement with a registry, under that registry’s rules and requirements.

-- “mark” was used in 3.2.4 was used to avoid confusion.  The intention in the practice in AGB and implemented by Deloitte, are marks protected by a Registry for its rules, but only pertain to that Registry.  It is not meant to be a broad category of anything that could be a mark.

-- It seems to staff that basically the WG is converging on the concept that “word marks protected by statute or treaty” should be limited to those marks that are protected as the functional & substantive equivalent of trademarks.

-- But staff are concerned about specifying that the actual statute/treaty must either name the mark(s) and/or contain an actual list of the marks, as that may exclude a lot of “marks” that have that function and protection.

-- Concern that the staff comment above would put statute or treaty marks on parallel with trademarks.

-- Could say “trademark” “service marks” “certification marks” and “collective marks”.

-- Listing or specifying marks will likely exclude Paul Tattersfield’s suggestion of Article 6ter, some Red Cross names, etc.

-- As follow up, the staff comments above really went to our earlier point about “mark” vs “trademark”. The examples we gave could arguably be “marks” but perhaps not “trademarks”.

-- Registry uses of ancillary databases – such as book titles – what a Registry is allowed to do under its contract.  Allow them to protect different forms of source identifiers.  Don’t agree on how that should happen.  The ancillary database would be a way to do it, with the limited registration period after the Sunrise period.

-- Ancillary databases are not in the TMCH, but are services provided by the TMCH.

-- Everything in the TMCH gets Sunrise and notices, so we should separate out those that shouldn’t – such as 3.2.4.

-- Look at AGB in 7.0, 7.1, and 7.2 – everyone is maybe talking about best practices.  Maybe a good idea that ancillary marks should be in a separate database.

Open Charter Question 7:

We have had some side line conversations regarding the proposal below.  I informed Zak separately and wish to convey that this is where the IPC currently stands:

1. As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does notenter TMCH. – IPC agrees.
2. As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH.  – IPC agrees. 
3. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. – The IPC disagrees as this would undermine the purpose of registering with the TMCH to begin with.
4. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. – The IPC is willing to discuss this proposal.  We agree in principle that language that is not well understood or could frighten an unsophisticated applicant should be revised.  However, the notice should not be providing legal advice or any advice about effects of certain types of trademark registrations.
5. Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. – The IPC does not agree as this outcome is contrary to trademark law.

In general, it appears that Greg’s proposal addresses 3 and 5.  To what degree to people object?  We see the proposal as creating a solution for a small problem with significant, unintended consequences.

There are objections procedures for domains registered during Sunrise period and we believe that these procedures should be highlighted as remedy for the concerns that registrant’s have regarding this issue.

Discussion:

-- Could include Greg’s proposal of eliminating design marks that have disclaimers and include those that have partial disclaimers.

-- With respect to #3 – it is interesting if there was some clearer names that could give a right to claims but not to Sunrise, but IPC membership is concerned about how you draw that line.  Comes back to what is or isn’t a design mark.

-- In terms of #4 we were thinking that there could be compromise language, but not provide legal advice in a notice.

-- In terms of #5, many IPC members agreed that these are TM registrations and should be in the TMCH.

-- Design Mark/Word Mark is a false binary. 

-- Could have a compromise if we can figure out how to split Sunrise and Claims.  Sunrise can do some additional examination, we should leverage that.

-- If it is a clear situation – talking about predominantly the mark is a word, then we are closer to compromise.  The concern is not to expand rights beyond what they are given under the law. 

-- Be aware of the practical impact of a registrant getting a notice and the possible chilling effect.

-- On Sunrise, getting that pre-emptive right that is expansive if you don’t have that clear right – such as in a heavy design mark, although unclear who would make that determination.