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

Thu Jun 15 01:19:39 UTC 2017

Thanks for your quick input, Rebecca.

To be clear, you suggest that the added text (whatever we decide it is) all remain as part of Q4, correct?

Responses to your questions to me:

1.       Claims period.  On the call, I believe I heard some people suggest that there might be different claims notice periods based on the type of match (exact vs non-exact).  Q2 already asks us to examine the duration of the claims period.  But that’s for the claims notice/process as it exists today (the REVIEW of RPMs).  If there is a proposal to change something, we would need to re-examine if the decisions we make on Q2 would need to change as a result of decisions we make on Q4.  Which is why I suggested trying to tackle the sub-parts with like sub-parts.

2.       Your new Question i(c) is a more specific variation on my implementation question.  What I meant by implementation is: beyond the theory of non-exact matches, how feasible/implementable are the mechanics and technicalities?  As to your proposed, more specific, wording in Q i(c), I think we should not assume the TMCH would offer this new non-exact match feature.  In fact, on the call, at least one person suggested there could be a 3P provider so we need to leave room for that.  Also, I think all questions about cost, like your first reference, should be neutral as to allocation of cost – we should not assume costs will be spread out or distributed in any way.

Other viewpoints?

Thanks

Kristine

From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu]
Sent: Wednesday, June 14, 2017 4:48 PM
To: Dorrain, Kristine <dorraink at amazon.com>
Cc: Amr Elsadr <amr.elsadr at icann.org>; gnso-rpm-trademark at icann.org
Subject: Re: [Gnso-rpm-trademark] Action Items for the Trademark Claims Sub Team Call - 9 June 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<mailto: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> [mailto: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<mailto: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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