[Gnso-rpm-tmch] REMINDER: Clarifications requested on RPM Sub Team questions to the TMCH Providers

Mon Nov 28 18:50:54 UTC 2016

Hi all, Like Kurt I don't think we need a call with the providers before we send them the questions.  Perhaps if they feel they need further clarification before they can answer them we could then arrange a call after we have sent the questions - although hopefully having clarified the questions in response to the queries from GDD staff this will not be necessary.

I have added some additional comments to those from Kurt below.

Susan

Susan Payne
Head of Legal Policy | Valideus Ltd

E: susan.payne at valideus.com<mailto:susan.payne at valideus.com>
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From: gnso-rpm-tmch-bounces at icann.org [mailto:gnso-rpm-tmch-bounces at icann.org] On Behalf Of Kurt Pritz
Sent: 28 November 2016 16:41
To: Mary Wong <mary.wong at icann.org>
Cc: gnso-rpm-tmch at icann.org
Subject: Re: [Gnso-rpm-tmch] REMINDER: Clarifications requested on RPM Sub Team questions to the TMCH Providers
Importance: High

Hi Everyone:

I don't think a call is required before the providers have had a full opportunity to review the questions. We should furnish the questions to the providers, offer either a conference call or email exchange to provide clarifications on any or all of the questions, and ask for responses.

After the answers are formulated by the providers we should arrange for a conference call so that the providers can present the answers and respond to questions.

I think the clarifying questions below are largely good and the points should be incorporated into the questions. I have made a few comments below in italics but was not present at the formulation of the questions so will need others to comment. (I added my initials so that others can include theirs.)

I hope this is helpful.

Thanks & regards,

Kurt
________________
Kurt Pritz
kurt at kjpritz.com<mailto:kurt at kjpritz.com>
+1.310.400.4184
Skype: kjpritz

On Nov 28, 2016, at 2:29 AM, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:

Dear all,

We have not received any interest in the suggestion of a call to be arranged between this Sub Team, the TMCH Providers, and our GDD colleagues who have been assisting us with interfacing with the TMCH Providers and other contractors (e.g. Analysis Group). Please let us know therefore if you have any comments concerning the suggested clarifications to the Sub Team's original questions to the TMCH Providers - please see the emails below for these, which are indicated in red.

As noted, the idea is to have all such comments or suggestions discussed by the Sub Team via this mailing list by tomorrow (Tuesday 29 November), so that a decision can be made as to whether it will be the original questions or amended ones that are sent to the TMCH Providers by the end of this week.

Thanks and cheers
Mary

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Wednesday, November 23, 2016 at 01:55
To: "gnso-rpm-tmch at icann.org<mailto:gnso-rpm-tmch at icann.org>" <gnso-rpm-tmch at icann.org<mailto:gnso-rpm-tmch at icann.org>>
Subject: PLEASE REVIEW & RESPOND: Clarifications requested on Sub Team questions to the TMCH Providers

Dear all,

The Working Group co-chairs have just held a planning meeting with staff, based on which they would like to request that Sub Team members please review the note and questions below, and respond with your views to this mailing list as soon as possible on the following points:

-          Whether you think a call with the TMCH Providers and GDD support staff to go through and clarify the questions is needed. If you believe a call should be done, please let us know by this Friday 25 November if possible.
-          If you do not think a call with the Providers is necessary, please indicate whether you think the questions should be sent to the Providers as drafted by the Sub Team, or if clarifications along the lines suggested by GDD staff (or other adjustments) should be made. If you believe clarifications or amendments are needed, please send suggested edits to this list by next Tuesday 29 November, to allow other Sub Team members time to comment and the finalized questions to be sent to the Providers by the end of the week if possible.

Thanks and cheers,
Mary

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Tuesday, November 22, 2016 at 02:36
To: "gnso-rpm-tmch at icann.org<mailto:gnso-rpm-tmch at icann.org>" <gnso-rpm-tmch at icann.org<mailto:gnso-rpm-tmch at icann.org>>
Subject: Clarifications requested on Sub Team questions to the TMCH Providers

Dear TMCH Data Gathering Sub Team members,

We have received feedback from our GDD colleagues who we had asked to assist with forwarding the Sub Team's questions to the TMCH Providers. As some of the clarifying questions seem to go toward substantive issues, we thought it preferable to send them back to the Sub Team for your confirmation and discussion. If it will help, we can arrange a call between the Sub Team, our GDD colleagues who are working with the Providers, and perhaps the Providers as well, to work through the questions so that the Providers have a good sense of what is being asked, and can tell us what they think they can provide in terms of data and input.

Please review the initial feedback from GDD below (in red), and let us know if you would like us to go ahead to arrange the suggested call, perhaps for next week or the week following.

  *   What is the rate of rejection of an attempted registration of a trademark into the TMCH by country/region? Is it safe to assume that the request here is referring to the country/region of the trademark holder?  (kp) Yes, make this clarification. (sp) Yes, I believe the purpose of this question was to help  identify whether there was any lack of understanding from potential users in particular countries over the criteria for recordal. It might make sense to make it clear that this is seeking % rate of rejection.

  *   What were the most frequently asked questions?  (Note - not necessarily what made it to the website but, rather, what questions did you get the most?) Is this related to the use of the Trademark Clearinghouse (by trademark holders) or the Trademark Database (by Registries and Registrars)?  (kp) I believe (but can be corrected) that the original intent of this question was that it was to target trademark holders but I also think that we could ask this question of registries and registrars to obtain more complete information. Append to the question, "by trademark owners, by registries, and by registrars." (sp) Agree with Kurt

  *   If you are able, please provide the number and/or percentages of SMD files that were used in Sunrise periods corresponding to specific time periods (e.g. Jan/June/Sept 2014; Apr/Sept 2015; Apr/Sept 2016).

  *   Are the registration totals contained within the various monthly/quarterly reports made to ICANN cumulative?

  *   What is meant by the term 'expired marks' in the various monthly/quarterly reports made to ICANN?

  *   In relation to the statistics regarding the number of marks submitted to the TMCH, as noted in the various monthly/quarterly reports to ICANN, does this statistic relate to individual marks that are submitted, or the number of labels generated, or the number of SMD files created?

  *   How are marks cancelled within national/regional registries handled at the TMCH level, if validation is only done annually? In other words, what is the TMCH process (if any) relating to marks that are cancelled or expire: reactive (e.g. TM owner/agent obligations) or proactive?

  *   If it is possible, please provide a break down of where the corporate headquarters of those registrants using TM agents are located. Is this breakdown meant to be by country? (kp) Country seems good to me because we can get regional distribution from that. There is an issue where a multinational corporation is likely to register in the TMCH from a location other than their headquarters but let's see how the providers respond.  (sp) Yes, this was seeking data about the country of origin of the registrant

  *   Some data has been provided regarding outreach efforts; if you can, please provide additional information on the precise nature of the activities undertaken and who was the audience for this? Were any outreach efforts made to potential registrants or trademark owners?
-        How much time and resources were expended on educating TM owners and/or registrants on the TMCH?
-        Was outreach and education part of the TMCH remit? What are the contractual obligations for education imposed by ICANN, if any?
-        In what regions/languages were outreach sessions held?

  *   How many design marks have been submitted and validated? What is your criteria for validating these? How are you differentiating between design marks in the practical application of the TMCH guidelines?

  *   In relation to Claims Notice statistics, can any discernible trends be noted in relation to: (i) registrar gaming and (ii) registrant turn-back as a result of a possible "chilling effect" resulting from the issuance of a Claims Notice? The question seems to ask about the effect of displaying a Claims Notice Information Service (CNIS) service to a potential registrant. Can the Sub Team provide a definition for "registrar gaming"? The TMDB has no visibility to whether a label is registered by a registrant or not - only the registrar would know that. The TMDB only logs that there has been a CNIS request for a label.  (sp) "registrar gaming" seeks information from the TMCH as to whether and the extent to which interrogations of the TMCH data by registrars may not be legitimate attempts to register domain names but attempts to identify the marks which have been recorded for some other purpose.  As I said during our discussion of these questions, I do not believe the TMCH will feel itself able to answer either (i) or (ii) but the group felt that these were questions that we should ask.

  *   How many contracts are there for private uses of the TMCH? How many of them involve blocking mechanism services? Is this asking about "Ancillary Services" that are allowed under Section 2.4 of the contract, or to services offered by the TMCH to third parties, i.e. contracts other than that with ICANN? (kp) This seems related to the 'DPML' question below and might be combined with it in a two-part question.
-        Are there contracts for other uses, and if so, how many?
-        If there are no such contracts, is the TMCH aware of other uses?

  *   How many "court-validated" marks are there currently in the TMCH?

  *   How many marks in the TMCH fall under the following category: "Other marks that constitute intellectual property and meet a registry's individual requirements"? Follow-up question: how would Deloitte keep these marks from being used in the Sunrise and Claims periods of other registries?

  *   Did any trademarks that applied for entry into the TMCH fail in the "actual use" test? If so, how many? Did you receive any complaints of trademarks registered in the TMCH that they were not in actual use?

  *   How many TMCH records include a TM+50 list; and how many are on this list on average? How many registrations were made for entries on the TM+50 list?

  *   Have any gTLDs used the TMCH option to limit registrations by goods and services in a particular registration period? Does this refer to a given registry's registration policies which are posted at https://newgtlds.icann.org/en/program-status/sunrise-claims-periods prior to the start of Sunrise, Claims or Limited Registration Periods? (sp) the question refers to the following from the TMCH RPMs Requirements:

2.3.1.1 Registry Operator MAY apply restrictions relating to the underlying rights of a Trademark Record related to the purpose of the TLD (e.g., restrictions on the class of goods or jurisdiction of the Trademark Record that are related to the TLD).

  *   How many marks were rejected? What is a breakdown of the reasons? This question appears to be a superset of the question above related to "actual use." Can we consolidate these two questions into this one and then handle the additional question about trademark complaints and again perhaps provide a breakdown if one is available? I think there are two questions: how many / what percentage of marks were rejected and, of those accepted, how many / what percentage failed the actual use test. Then there is a question asking how many marks that passed actual use resulted in complaints.

  *   How many SMD files has the TMCH cancelled?  How many TMCH disputes have been brought relating to SMD file validity for TMs that are cancelled/expired?
On the TMCH page on the New gTLD microsite, the process of invalidating a trademark is described as below. Can the Sub Team clarify that this is what is being asked about and, if so, use the term "revocation?"
SMD Revocation
Revoking an SMD is the process of invalidating an SMD before its expiration date. The Trademark Clearinghouse (TMCH) may invalidate an SMD for several reasons, including security or data validation issues. The list (SMDRL) of revoked SMDs is maintained as part of the Trademark Database (TMCH) and published as specified in section 6.2 of the TMCH Functional Specifications<http://tools.ietf.org/html/draft-lozano-tmch-func-spec>. If your product uses SMDs, you must verify that the SMD has not been revoked as described in section 5.3.2 of the aforementioned Internet-draft.
(sp) this was also seeking information about SMD files cancelled because the mark is no longer registered.  Would that fall within "SMD Revocation"?

  *   Have there been any Sunrise DRPs relating to marks relied on at Sunrise which had already expired or been cancelled?

The Dispute Resolution Process covers three types of disputes:
*         Disputes brought by Trademark<http://www.trademark-clearinghouse.com/lexicon/6/letter_t#Trademark> Holders or Trademark Agents<http://www.trademark-clearinghouse.com/lexicon/6/letter_t#Trademark_Agents> alleging that the Clearinghouse incorrectly rejected a Trademark Record<http://www.trademark-clearinghouse.com/lexicon/6/letter_t#Trademark_Record>;
*         Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record<http://www.trademark-clearinghouse.com/lexicon/6/letter_t#Trademark_Record>; and
*         Disputes brought by Third Parties alleging that a Trademark Record<http://www.trademark-clearinghouse.com/lexicon/6/letter_t#Trademark_Record> is no longer valid based on new information (i.e. information not available to the Verification Provider at the time it reviewed the Trademark Record<http://www.trademark-clearinghouse.com/lexicon/6/letter_t#Trademark_Record>).
Would it be preferable to get a list of disputes by type? (kp) I think this question refers to the last tip of dispute but I think it would be clearer and more informative to ask about all three types of dispute. (sp) agree with Kurt

Further clarity may also be needed regarding the "already been canceled" part of the question - the Registry is responsible for downloading the SMDRL every 24 hours and has to check against that prior to validating an SMD. Is the question related to the theoretical 23 hours, 59 minutes and 59 seconds during which that file is not refreshed by the registry? Or is the question asking about registries that did not check the SMDRL prior to issuing the sunrise registration? (sp) I think the question relates to the extent to which there might have been any disputes relating to a mark which has expired/ been cancelled at the TM office but was still relied upon to support a sunrise registration

  *   How many DPML services are you supporting?
Assuming that DPML stands for Donuts offering the service called Domains Protected Marks List, there is only one DPML service called that. Minds+Machines has a similar service called Minds + Machines Protected Marks List or MPML. Both of these services are very similar in that they require the trademark holder to have a valid SMD file. Does the Sub Team consider that as being supported by the TMCH, or is this a broader question about blocking services in general? (kp) I would change the question to, "How many blocking-type services (e.g., DPML) are you supporting." (sp) agreed

  *   What is the geographic distribution of those who record marks in the TMCH - bearing in mind that TMCH agents may be in a different country to the TM owner and that TM owners may record a mark registered in a different country to the one they are based in?

  *   What is the percentage of trademark registrations, Sunrise registrations and Claims Notices sent by country / region (bearing in mind that TMCH agents may be in a different country than the TM owner and that TM owners may record a mark registered in a different country from the one in which they are based)?

There may be multiple questions here and perhaps a misunderstanding of terms.

The first part of the question asks "What is the percentage of trademark registrations... by country/region?" By using the term "trademark registrations", did the Sub Team mean a total of the Sunrise registrations and Claims registrations? (kp) No, I think it means the number of marks registered in the TMCH. (sp) agreed - perhaps this should say trademark registrations recorded in the TMCH.  However agree that is then a duplication of the preceding question.

The second part of the question asks for the percentage of Sunrise registrations... by country/region. Is this asking for the location of the registrant by country/region or the location of the trademark holder (or agent)? (kp) I don't get the distinction. Isn't the registrant (or at least the beneficial registrant) in a Sunrise registration the trademark holder? If there is a difference, I would say the trademark holder.

The third part of the question asks for Claims Notices sent. By the phrasing, can it be assumed that this does not mean Claims Notice Information Service (CNIS) notices displayed to potential registrants, but rather the Notice of Registered Domain Name (NORN) files sent to trademark holders? (kp) I think that is right. Asked another way, I think this question means: "What is the percentage by country of trademark holders for all the Claims Notices displayed." (sp) I think that is correct - although perhaps the location of potential registrants is also useful information.

Thanks and cheers
Mary and David

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