[Discussion] [Public Comment] GNSO Review of All RPMs in All gTLDs Policy Development Process Phase 1 Final Recommendations

[Pedro de Perdigão Lana]

Dear NCSG,

As suggested by Kathy, there is a relevant discussion about a certain topic
in the GNSO Review of All Rights Protection Mechanisms in All gTLDs Policy
Development Process Phase 1 Final Recommendations for ICANN Board
Consideration.

In Annex D of the Final Report
<https://gnso.icann.org/sites/default/files/file/field-file-attach/rpm-phase-1-proposed-24nov20-en.pdf>
(starting at p. 131), we can find the Working Group Members’ Minority
Statement on TMCH Final Recommendation #1, jointly submitted by Jason
Schaeffer, Jay Chapman, Michael Karanicolas, Mitch Stoltz, Nat Cohen,
Rebecca Tushnet, and Zak Muscovitch.

They are criticizing the second point of the agreed policy principles and
point 3.2.2 of the implementation guide (both state basically the same
thing, defining  “word mark” as including "*service marks, collective
marks, certification marks, and word marks protected by statute or treaty*")
[1].
This apparently passed the vote without receiving any major attention, but
the minority has a very strong argument when they say that this is a bad
definition. It is circular[2] and much wider than the ones commonly used in
other ICANN-related rules and guides [3], including those marks that - in
many jurisdictions - are only considered distinctive by virtue of their
conjunction with a figurative/graphical element [4]. In other words, some
of these "word marks" are deeply generic words that were deemed distinct
from the "commercial commons" because they were presented in a very unique
or unusual graphic format.
I may be being overly concerned, but I truly concur with the Minority
Statement when they warn us that such a broad definition can open a
loophole even for IP rights abuse [5], such as reverse domain name
hijacking.

Before developing this topic more on the public comments, since a few NCSG
members were in favor of the definition as it was presented, I would just
like to consult with the group to get more input about the issue.

Cheers,

[1] "TMCH Recommendation #1 fails to satisfactorily define “Word
Marks,”169thereby enabling the continued misapprehension of the scope and
applicability of the TMCH by the TMCH Validation Provider. The absence of a
satisfactory definition of “Word Mark” will likely contribute to the
continuation of the erroneous TMCH Validation Provider practices, which
violate the fundamental promise that the TMCH would not expand rights but
would rather only recognize existing rights. The problem is compounded by
the unwarranted lack of transparency of the TMCH database.", p. 131
[2] Footnote n. 169
[3] See p. 133
[4] See the potentially harmful examples that already exist in Deloitte's
database, pointed out in pp. 135-137, such as "Parents", "Dealhunter",
"Music", "Cars", "A" and "Own Your Power"
[5] See p. 134


*Pedro de Perdigão Lana*
Lawyer, OAB/PR 90.600, Faria Santos Advocacia <https://cutt.ly/RfkTFrK>
LLM in Commercial Law at UCoimbra (PT), Researcher at GEDAI/UFPR
<https://www.gedai.com.br/>
Board member of Youth SIG <https://youthsig.org/> (Internet Society)
and Creative
Commons Brazil <https://br.creativecommons.net/>
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