[bc-gnso] RE: TMCH Independent Review Questionnaire Now Available

Tue Apr 5 14:49:14 UTC 2016

BC Members:

I certainly encourage all BC members who feel they have something to contribute to complete the questionnaire.

Having said that, I’d like to emphasize several things.

First, note that this ICANN-funded project is being performed at the request of the GAC. At the session held on it in Marrakech, several attendees expressed concern that it might be seeking to bypass the policymaking process. Therefore, I am pleased to see the clarification in the announcement – “This is intended as an informational study to support discussions on related Right Protection Mechanisms (RPMs) activities, such as the work of the Competition, Consumer Trust, and Consumer Choice Review Team (CCT-RT) and the Generic Names Supporting Organization (GNSO) review of all RPMs in all gTLDs Policy Development Process (PDP).” – especially in regard to the RPM WG which I presently serve as Interim Chair. Therefore, I would urge BC members to consider, in responding to question 9 of the questionnaire (any other comments), emphasizing that the results of the study should only be used as an informational input to established ICANN review and policy processes and not as a basis for decision-making outside that context.

Second, in reviewing the questionnaire, most of its questions are very general so it isn’t clear how a final report will summarize the results.

Third, those conducting the study admitted in Marrakech that it will be unable to answer key questions relevant to any contemplated expansion of terms that can be entered into the TMCH – such as the extent to which receipt of TM Claims notices are suppressing non-infringing domain registrations , or how an expansion of the match criteria might affect that.

Below is the portion of the briefing transcript in which I raised that question (and I encourage BC members to review the full transcript, as well as the accompanying March 10th presentation (available at file:///C:/Users/pcorwin.PCorwin-W7/Downloads/presentation-tmch-review-10mar16-en%20(2).pdf<file:///C:\Users\pcorwin.PCorwin-W7\Downloads\presentation-tmch-review-10mar16-en%20(2).pdf> ). Given that serious shortcoming, it’s questionable whether and to what extent its results will be useful to “Inform and support the discussion on related RPM efforts”.

So, overall, I’m concerned that this is a study that will better serve the Board’s relationship with the GAC than it will actually provide useful data as an input to policymaking. Ion that light, it would be useful to know how much ICANN has expended on this project.

Here’s the link to the transcript and the section where I raised my question:

file:///C:/Users/pcorwin.PCorwin-W7/Downloads/transcript-tmch-review-10mar16-en%20(1).pdf<file:///C:\Users\pcorwin.PCorwin-W7\Downloads\transcript-tmch-review-10mar16-en%20(1).pdf>

Philip Corwin: Good morning. My name is Philip Corwin. I'm a member of the business constituency. I'm one of their two GNSO counselors. I am the person Mary named as being appointed yesterday by the council to be the liaison and interim chair of the new PDP working group to review all RPMs and all gTLDs. So in that role, let me say, number 1, reiterate Mary's announcement and the 21-day period for volunteers to join the working groups started yesterday with Council's approval. And I would encourage anyone in the room or online who has an interest in this subject to volunteer for that working group with the understanding that it's going to be a substantial commitment over an extended period of time with, at least, I would imagine weekly calls. It's going to be two very complex - a two-step process with very complex questions before us but necessary exercise.

Let me switch to this now. I think while it's clear that this is addressing one very narrow question relating to the clearinghouse and probably not all of the questions that the working group will want to get into, it would be good if this is, even for that narrow question, this is a high-quality study that would help inform the worker, that working group.

Speaking personally, the Trademark Clearinghouse was established with fairly high qualitative standards. The trademarks had to maintain a certain level of quality to be entered into the clearinghouse. And then in the implementation stage, the community decided to adopt trademark plus 50 where confusingly similar variations of the trademark that had been subject to either a UDRP action or a trademark infringement, and a court could also be added which gave some members of the community some pause, but at least there was a history that, variation had, in fact, been used for infringing. (Unintelligible) for infringing purposes. I personally would have concerns about going further than that and having the Trademark Clearinghouse being a database consisting of trademarks reaching a high qualitative standard, plus a lot of junk, generated by name spinning or whatever.

But here's my question: When you're looking at the claims notices and trying to determine whether or not they had - the receipt of the notice had a discouraging affect, how are you going to figure that out? I don't know the current figures. I remember last year the community was surprised to see that there had been a very number of claims notices generated, several million. At that time it was a very high percentage of the actual total registrations in new TLDs and it's never quite been determined why the number was so high. But there was some conjecture that the registrations had been started not with a true intent to register a domain but other business-related purposes.

So how are you going to parse it between registrations that were started for purposes other than a true intent to register? And then for those registrations that were initiated with an intent to register a domain, how are you going to differentiate between the registrations where the registrant had an intent to infringe and was scared off by the claims notice and realized that was probably not a good idea? To the other cases where you might have had either unsophisticated registrants who didn't understand that a mere match to a name, particularly a dictionary name, is not evidence of an infringement without additional infringing evidence as well as those registrants who understood that but just didn’t want to go into the expense of retaining legal counsel for advice or risking a potential UDRP or URS. Even where their intent was not infringing, they just said let's get a different name. We don't want to risk having the cost of that action.

So that's my question. How are you going to take the raw data and figure out what the intent was of unknown individuals who receive claims notices?

Man 1: Thank you for the question. And that's a really good one. And I think the answer, unfortunately, is with respect to the data that we have available, it's going to be probably impossible to actually look at intent from the information that IBM has. It is something that we're hoping to pick up in the survey and questionnaire that we'll be providing to potential registrants or registrants. But I think it's going to be difficult to come up with any statistically significant kind of understanding of the extent to which it's a deterrent for different types of activity or registrations.

Philip Corwin: So you're saying, basically, that it's going to be difficult to impossible to figure out the extent to which receipt of claims notices deterred potential registrations where there was no infringing intent and there would have been no infringing use?

Man 1: That's correct. I think - our hope is that we'll pick some of this in the survey, but I think that information will be more anecdotal, just because it's going to be difficult to find all of the registrants in these different groups that you mentioned.

Philip Corwin: Okay. Well, thank you. (Emphasis added)

Also, FYI, I made this comment later in the session---

… Finally, putting back on business constituency hat, we have many members of the business constituency who are involved in trademark protection programs for major corporations, both U.S. and abroad. One of the reasons they have not taken advantage of the Sunrise registration period, in many cases after registering their names, is simply because particular registries have established very high premium pricing for registering their own trademarks in that particular registry.

So they've decided, given the potential cost benefit, and it may be a registry where the right of the dot term is not particularly relevant to their lines of business where they’ve just decided to not pay the price and to wait for general availability or just say if somebody registers that and they start infringing, we'll just file a UDRP or a URS.

So the pricing of registration in the clearinghouse and the pricing of registered Trademark Clearinghouse terms in the Sunrise period are very important data that you should be looking at in the study.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Chantelle Doerksen
Sent: Monday, April 04, 2016 11:33 PM
To: bc-gnso at icann.org
Subject: [bc-gnso] TMCH Independent Review Questionnaire Now Available

Dear all,

Kindly see the note regarding the TMCH Independent Review Team below, and the request to complete the corresponding questionnaire at http://www.analysisgroup.com/icann-trademark-clearinghouse/ .

Many thanks.
Kind regards,
Chantelle

_______

Dear SO/AC leaders,

To follow up on our previous message sent prior to ICANN 55, we wanted to thank all those who reached out and met with the Trademark Clearinghouse (TMCH) Independent Review Team to provide input on this study.

We are continuing with outreach and stakeholder discussions, and as part of this work, Analysis Group has developed a questionnaire to assess the opinions of various groups that interact with either all or some of the TMCH services. Given that feedback from interested stakeholders is extremely valuable to this review, we would greatly appreciate your assistance in helping us promote the TMCH questionnaire. Therefore, it would be fantastic if you could share the following link (http://www.analysisgroup.com/icann-trademark-clearinghouse/) via one or more of your communication channels (website, blog, e-mail, bulletin board, newsletter etc.) and encourage your members to complete the questionnaire.

As noted previously, ICANN is conducting an independent review of the TMCH, which was recommended by the Governmental Advisory Committee (GAC) in 2011 (see https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf). The purpose of this study is to assess the effectiveness of the TMCH in combination with the areas that the Governmental Advisory Committee (GAC) specified for review, which include: (1) handling of non-exact matches to trademarks, (2) extension of the Trademark Claims notifications, and (3) impacts of the Claims services on the commercial watch services market.

This is intended as an informational study to support discussions on related Right Protection Mechanisms (RPMs) activities, such as the work of the Competition, Consumer Trust, and Consumer Choice Review Team (CCT-RT) and the Generic Names Supporting Organization (GNSO) review of all RPMs in all gTLDs Policy Development Process (PDP).

Thank you again for taking the time to consider our request, and please let us know if you have any questions that we can help address.

Best regards,
Antonietta Mangiacotti
Research Assistant
Internet Corporation for Assigned Names and Numbers
antonietta.mangiacotti at icann.org<mailto:antonietta.mangiacotti at icann.org>
Office: 310.578.8903
Mobile: 310.795.8543

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