[Gnso-rpm-trademark] Action Items for the Trademark Claims Sub Team Call - 9 June 2017

Wed Jun 14 23:47:48 UTC 2017

I think breaking this up is likely to make it harder to assess the current
system versus the proposed system.  I think that Kristine's basic questions
could be aggregated at the end, though I have a couple of notes, which are
below my slightly revised version:

Should the matching criteria for Claims be expanded?

i.                    If so, how (what criteria) and why?

a. What is the evidence of harm under the existing system?

b. What unintended consequences might non-exact matches have?

c. What is the feasibility of expanded matches?  E.g, if human input is
required, who would be responsible for that input?  Who would pay for it?
How would it affect the overall costs of the TMCH system, and should costs
be spread among all users or should TMCH users be allowed to choose whether
to use, and pay for, expanded matches?  If automated matches are used, how
will the automated procedure be developed, at what costs/timeline, and how
will the costs be spread across users?

ii.           If so, should the Claims notice change?

a.       If so, how?

b.       Should there be more than one type of Claims notice?

Questions for Kristine: In terms of claims period duration, could you say a
little more about why expanding the match criteria would interact with the
claims period?

In terms of implementation criteria, could you say more about what you mean
by “implementation”?  Given what we’ve seen with design marks—where even if
there is no consensus about what to do, what has been revealed is that the
provider (here Deloitte) ended up making significant choices that have
major effects on what may be included; I would not like to see that
repeated, if only to spare future groups similar battles.

Rebecca Tushnet
Georgetown Law
703 593 6759

On Wed, Jun 14, 2017 at 7:10 PM, Dorrain, Kristine via Gnso-rpm-trademark <
gnso-rpm-trademark at icann.org> wrote:

> Hi team:
>
>
>
> In the hopes that we can wrap up our calls this Friday and report on our
> work to the plenary group next week, I’d like to kick off our final action
> item, assigned to us a week ago by the plenary WG – that is, to include in
> the Charter questions and workplan, a discussion of the
> Shatan/Winterfeldt/Graham proposals (“S/W/G proposal”).
>
> For anyone out of pocket, I apologize for the long email with colors and
> formatting.
>
>
>
> The proposed language from the chat, submitted by Kathy, is:
>
>
>
> *In light of the evidence of the TM Claims gathered in Questions 1-3
> above, how extensive is the need for non-exact matches? What is the proof
> of harm under the existing system? What unintended consequences might
> non-exact matches have?  What is the appropriate balance going forward? a.
> If non-exact matches are not adopted, then no further action is necessary.
> b. If non-exact matches of some form are adopted, should the marks in the
> TMCH be used to generate non-exact matches for the purpose of providing a
> broader range of claims notices?  If so, how should the claims notices be
> written?*
>
>
>
> As I started to think about this in the context of the other charter
> questions, I started to think about the way we had the charter questions
> structured and how this would fit.
>
> New Q1 is gating:  What’s working, what’s not.
>
> New Q2 brings up all the current proposed “solutions.”
>
> New Q3 asks about the wording of the claims notice.
>
>
>
> Putting all of the S/W/G proposal factors into a single new question meant
> we’d be duplicating effort.  So, I decided to take a risk.  We’ve finalized
> our charter questions.  But in order to really fit them in the proper
> place, I’m suggesting to work the S/W/G proposal questions in, as below.
>
>
>
> That keeps Q1 as gating: intended/unintended effects.
>
> That makes sure we keep all the proposals in Q2.
>
> That makes sure we discuss the variations in language (Q3) for the notice
> at the same time.
>
>
>
> And the newly-revised Q4 adds time to discuss how it could work
> technologically.
>
>
>
> Thoughts on my straw proposal below?
>
> Do you support the “working in” option or the creation of a single,
> multi-part standalone question?
>
> (I just extracted the Updated questions for the purposes of this
> discussion…we are NOT eliminating any columns)
>
> My changes are in red text.
>
>
>
> *Updated Question*
>
> 1.     Is the Trademark Claims service having its intended effect,
> specifically:
>
>
>
> a.                   Is the Trademark Claims service having its intended
> effect of deterring bad-faith registrations and providing notice to
> potential registrants?
>
> b.                  Is the Trademark Claims service having any unintended
> consequences, such as deterring good-faith registrations?
>
> 2. If the answers to 1.a. is “no” or 1.b. is “yes”, or if it could be
> better: What about the Trademark Claims service should be adjusted, added
> or eliminated in order for it to have its intended effect?
>
>
>
> a.                   Should the Claims period be extended - if so, how
> long (up to permanently)?
>
> b.                  Should the Claims period be shortened?
>
> c.                   Should the Claims period be mandatory?
>
> d.                  Should any TLDs be exempt from the Claims RPM and if
> so, which ones and why?
>
> e.                  Should the matching criteria for Claims be expanded?
>
> i.                     If so, how (what criteria) and why?
>
> ii.                   If so, should the expansion affect the duration of
> the Claims period?
>
> 3.     Does the Trademark Claims Notice to users meet its intended
> purpose?
>
>
>
> a.       If not, is it intimidating, hard to understand, or otherwise
> inadequate?
>
>                                  i.            If inadequate, how can it
> be improved?
>
> b.      Does it inform potential registrants of the scope and limitations
> of trademark holders’ rights?
>
>                                  i.            If not, how can it be
> improved?
>
> c.       Are translations of the Trademark Claims Notice effective in
> informing potential registrants of the scope and limitation of trademark
> holders’ rights?
>
> d.      If the matching criteria should be expanded, should the Claims
> Notice change?  If so, how?
>
>                                  i.            Should there be more than
> one Claims Notice?
>
> 4. If the Review of all RPMs in all gTLDs PDP determines that non-exact
> matches of trademarks should be allowed inclusion in the TMCH, should the
> TM Claims Notice be changed, and if so, how?  to expand matching criteria
> for Claims Notices, what implementation criteria does the WG recommend?
>
> a. Ask the TMCH?
>
> b. Find a 3P provider?
>
> c. Something else?
>
> 5. Should the Trademark Claims period continue to be uniform for all types
> of gTLDs in subsequent rounds?
>
>
>
> For proposed data, I suggest that we ensure any UDRP/URS data gathering
> we initiate include a question looking for evidence to support or refute
> the assertion that UDRP and URS cases demonstrate significant abuse of
> non-exact match terms and when those terms are registered, relative to the
> launch of the TLD.
>
>
>
> Thanks,
>
>
>
> Kristine
>
>
>
>
>
> *From:* gnso-rpm-trademark-bounces at icann.org [mailto:gnso-rpm-trademark-
> bounces at icann.org] *On Behalf Of *Amr Elsadr
> *Sent:* Monday, June 12, 2017 4:13 PM
> *To:* gnso-rpm-trademark at icann.org
> *Subject:* [Gnso-rpm-trademark] Action Items for the Trademark Claims Sub
> Team Call - 9 June 2017
>
>
>
> Dear Trademark Claims Sub Team Members,
>
>
>
> Below are the action items from the Sub Team Call on 9 June. The action
> items, notes, meeting document and materials as well as recordings and
> transcripts have been posted to the meeting’s wiki page here:
> https://community.icann.org/x/mzzwAw.
>
>
>
> Thanks.
>
>
>
> Amr
>
>
>
>
>
> Action Items:
>
>
>
> 1.       *Sub Team* to draft a question(s) that would allow the WG to
> analyze the proposals by Michael Graham, Greg Shatan and Brian Winterfeldt
> during the Trademark Claims Review
>
> 2.       *Sub Team* to use the following question as a starting point for
> discussion of the proposals on non-exact matches by Michael Graham, Greg
> Shatan and Brian Winterfeldt: *"In light of the evidence of the TM Claims
> gathered in Questions 1-3 above, how extensive is the need for non-exact
> matches? What is the proof of harm under the existing system? What
> unintended consequences might non-exact matches have?  What is the
> appropriate balance going forward? a. If non-exact matches are not adopted,
> then no further action is necessary. b. If non-exact matches of some form
> are adopted, should the marks in the TMCH be used to generate non-exact
> matches for the purpose of providing a broader range of claims notices?  If
> so, how should the claims notices be written?"*
>
>
>
>
>
> _______________________________________________
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> Gnso-rpm-trademark at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-trademark
>
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