[Gnso-rpm-trademark] IMPORTANT: Action Items and Notes from Trademark Claims Sub Team Call - 14 April 2017

[Amr Elsadr]

Dear Trademark Claims Sub Team members,

Please find below the Action Items and Notes from the Trademark Claims Sub Team call on Friday, 14 April. The Sub Team had a very productive call last Friday, and I suggest that Sub Team members who were not able to attend listen to the recording. You will find links to the recordings on the GNSO Calendar (https://gnso.icann.org/en/group-activities/calendar#apr).

Thanks.

Amr


Action Items:


1.       Defer selection of Sub Team Chair to on-list call for volunteers - Kristine Dorrain and Michael Graham volunteered to co-chair

2.       Sub Team members to review and bundle Charter questions (both specific to Trademark Claims and General questions) that are related to each other, and eliminate those that are duplicative - integrate into working group workplan, so that timeline needed to collect additional information is factored in

3.       Similar to the Sunrise Registrations Sub Team, Sub Team members have 5 days (COB Wednesday, 19 April) to send suggestions to the mailing list, to be captured by staff in a Google Doc

4.       Staff/Sub Team Leadership to set up a Google Doc for first pass of consolidation of questions

5.       Staff to review all questions listed in consolidated list document to ensure that Charter questions relevant to Trademark Claims are categorized appropriately --> confirm this with Sub Team members on-list

6.       Staff to compile information on context/origin of each of the Charter questions by the next Sub Team call

7.       Sub-Team to make determination of what is meant by "Genuine Registrations", and report back to the full Working Group

8.       Staff will keep the original questions in the Google Doc, but will capture comments/suggestions in a separate column

9.       Staff to confirm with Sub Team members on-list that the next call will take place next Friday (21 April) at the same time (UTC 16:00)

Notes:


·         Suggestion to adopt approach to work similar to Sunrise Registrations Sub Team

o    Suggestion to avoid wordsmithing – if a Charter question is unclear, add footnote to draw attention to the full Working Group

o    Sub Team members to send suggestions to mailing list, captured by staff in a Google Doc to be circulated prior to next week’s Sub Team call

o    Purpose of next Sub Team call will be to deliberate on contents of the Google Doc

·         Missing data necessary to answer Charter questions should be identified early on, along with possible sources, in order to provide time to collect and analyze when the time comes

·         All outputs/deliverables/requests for addition data identified by the Sub Team will be subject to review and a decision by the full Working Group on next steps

·         "General Questions" in consolidated list of charter questions document might be directly relevant to the Sub Team's work

·         3 Categories of Questions:

o    Questions directly specific to Trademark Claims

o    General Charter questions of relevance to the Trademark Claims

o    Questions on TMCH that have relevance to the Sub Team on Trademark Claims (particularly questions that were deferred until discussion on Trademark Claims take place)

·         Overview of questions and their contexts:

o    Source of questions are mainly from public comments, previous papers and projects

o    Some questions are longstanding questions from the community, while some may be from individuals or smaller groups

o    ACTION ITEM: Staff will identify historic context for each of the Sub Team's Charter questions

o    In answering charter questions, follow-up questions will be identified, and considered along with how they will fit in with Working Group workplan

·         Discussion on Trademark Claims Question 1: “Should the Trademark Claims period be extended beyond 90 days?”

o    Should this question be followed up with others (example: if “yes”, then for how long/short)

o    Sub Team should identify refinements, follow up questions, additional questions or sub-questions, and provide direction to the full Working Group in answering those questions

o    Suggestion to allow for requests to extend the 90-day Trademark Claims period (place in a comment section on the Google Doc) as middle ground, instead of extending minimum mandatory 90-day period – possible to associate request to extend 90-day period with demonstrable causes

o    What party would be responsible for agreeing to an extension of the 90-days, and what criteria would that party be required to consider

o    Notices on claims services to registrants and TM holders beyond 90 days are currently voluntary, not required (this is an ICANN-approved ancillary service that Deloitte offers)

·         Discussion on Trademark Claims Question 2: “Should the Trademark Claims period continue to apply to all new gTLDs”

o    Clarification of intent and meaning of question 2 required, may require contextual research

o    Does this question involve retroactive applicability of Trademark Claims period to existing new gTLDs, or does this concern new gTLD subsequent procedures

o    Questions 1, 2 and 5 inter-related on applicability and scope of Trademark Claims - can be bundled together

o    Should registry operators be allowed to choose between provision of Trademark Claims services or Sunrise Registrations

·         Discussion on Trademark Claims Question 3: “Does a Trademark Claims period create a potential “chilling effect” on genuine registrations, and, if so, how should this be addressed?”

o    Necessary to revise the language of the Trademark Claims notice to both registrants and Trademark holders

o    Suggestion to adopt clearer nomenclature to replace "genuine registrations" – possibly with "good-faith registrations"

o    What constitutes "good faith" – Not meant to refer to cybersquatting or trademark infringing domain name registrations, keeping in mind the scope of the RPMs in dealing with cybersquatting and trademark infringement

·         Discussion on Trademark Claims Question 4: “Is the TMCH and the Sunrise Period allowing key domain names to be cherry picked and removed from new gTLDs unrelated to those of the categories of goods and services of the trademark owner (e.g., allowing “Windows” to be removed from a future .CLEANING by Microsoft)”

o    Does this question belong in the Trademark Claims discussion

o    Does the Sub Team agree with a previous Working Group decision to defer answering this question as part of the overall TMCH review until after the Trademark Claims and Sunrise Registrations reviews are conducted


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