Report of AIPLA Trademark Internet Committee Teleconference

Held Tuesday, January 8, 2013 at 2 pm Eastern

Attendees:

Mark Partridge, Chair

Janet Fuhrer, Vice Chair

John Beard

Angela Fox

Parrish Freeman

Sean Garrison

Steven Hollman

Sheldon Klein

Ben Klosowski

Linda Kuczma

Camille Miller

Molly Richard

Bill Scanlon

Matt Wagner

Dineen Wasylik

Susan Weller

Ken ??

Guest: Tim Bourne (membership pending)

Regrets:

Andrew Bridges

Tom Folsom

Noel Humphreys

Agenda and Remarks:

  1. Welcome – Mark welcomed everyone on the call.
  2. Committee Meetings
  3. Monthly telephone conference – Second Tuesday at 2:00 pm Eastern: The next teleconference will be on Tuesday, February 12, 2013 at 2 pm Eastern.
  4. Mid-winter Meeting: Mark asked who would be attending the Mid-winter Meeting at the end of the month and whether an in person meeting should be held. Those who will be attending thought that this would be useful.
  5. IPC (Intellectual Property Constituency) membership and participation: Mark reported that he attended an IPC teleconference earlier in the day. He encouraged members to join the IPC which has its own website. More information can be found at:
  6. Monthly telephone conference – Second Tuesday at 11:30 Eastern: As mentioned, the next teleconference will be on Tuesday, February 12, 2013 at 2 pm Eastern.
  7. Inter-sessional Meeting – January 29-30: Mark advised that the agenda for this meeting was not clear yet but the meeting is intended to encourage different constituencies in ICANN to work together. Seven participants have been selected for the meeting (filling all available slots) but remote access may be possible.
  8. ICANN Beijing meeting – April 7 – 11: The mandate of the Committee includes attending ICANN meetings, including IPC meetings, with a view to informing AIPLA about issues of interest to members, and preparing comments if solicited and appropriate, notably: (i) the operation of the Trademark Clearinghouse (TMCH); (ii) the operation of the URS; (iii) the launch of the new gTLDs (anticipated 2nd-3rd quarter this year); (iv) WHOis; and (v) UDRP. The latter two issues are longer term in light of the imminent launch of the new gTLDs.
  9. Comments on Strawman proposal – due to AIPLA Board today: The draft Comments on the proposal were discussed. Those on the teleconference (including 9 “active voting” members) voted unanimously, either on the call or subsequently by email, to submit the Commentsto the AIPLA Board with changes along the lines of those underlinedin the Comments reproduced below.The Comments were circulated with the changes to all committee members again following the committee teleconference on January 8, 2013.There were no objections.The deadline for submitting comments to ICANN is January 15, 2013.
  10. Report to AIPLA Board and website post: Janet volunteered to produce the report. We will ask for a volunteer at the outset of the next teleconference to prepare the next report.
  11. Other business: There was no other business. Mark thanked everyone who joined the call.

AIPLA Comments – Proposed by AIPLA Trademark Internet Committee

Stephen Crocker

Chairman

ICANN

4676 Admiralty Way, Suite 330

Marina Del Ray, CA 90292

Dear Chairman Crocker:

The American Intellectual Property Law Association (AIPLA) wishes to express its continued concerns with ICANN’s program to introduce new generic top level domains (gTLDs) and to respond specifically with the Request for Public Comment on the Trademark Clearinghouse "Strawman Solution."

AIPLA is a national bar association whose approximately 16,000 members are primarily lawyers in private and corporate practice, in government service, and in the academic community. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of trademark, copyright, patent and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

Our concerns center on the impact of new gTLDs on intellectual property owners and users, that is, consumers and the general public. We believe the new procedures remain flawed, untested and are unlikely to meet the needs of consumers and business to avoid the consumer fraud and unwarranted expense likely to result from a dramatic expansion of new gTLDs.

We recognize the efforts of the ICANN community to address concerns of this nature with mandatory rights protection mechanisms, including the Trademark Clearinghouse. We also support the recent implementation meetings which are the subject of the pending request for comment, and the implementation recommendations of the IPC and BC, including the following recommendations relating to the TMCH:

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.

2. Extend the TMCH and Claims Notices for an indefinite period; ensure the process is easy to use, secure, and stable.

3. Implement a mechanism for trademark owners to prevent second-level registration of their marks (exact matches, plus character strings previously determined to have been abusively registered or used) across all registries, upon payment of a reasonable fee, with appropriate safeguards for registrants with a legitimate right or interest.

4. Expand TM Claims service to cover at least strings previously found to have been abusively registered or used.

The Strawman Solution, which is based on some of these recommendations and additional input from other ICANN stakeholders, is a positive step toward improving the implementation of the Trademark Clearinghouse. Key features of the Solution are likely to reduce the incidence of cybersquatting and online deception of Internet users. This would be a positive improvement to the new gTLD program.

We also support the Limited Preventive Registration (LPR) proposal as an additional implementation enhancement that is likely to reduce cybersquatting and online deception without adversely impacting the interest of legitimate domain name users. This proposal is a modest and workable approach to the concept of a "do not sell" list, which we previously have supported. We recommend, however, that the LPR process be available at cost during any sunrise registration period and apply across all gTLDs going forward as well as during general registration.

Thank you for your consideration of this important matter.

Sincerely,