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

Thu Jun 15 01:46:03 UTC 2017

Yes, I would like to keep Q4 together.  Below I've tweaked a bit in
response to Kristine's comments, as I understood them.

Rebecca Tushnet
Georgetown Law
703 593 6759

On Wed, Jun 14, 2017 at 7:47 PM, Rebecca Tushnet <
Rebecca.Tushnet at law.georgetown.edu> wrote:

> 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 RPM system, and should 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?
>
> ii.           If so, should the Claims notice change?
>
> a.       If so, how?
>
> b.       Should there be more than one type of Claims notice?
>
iii. If so, should the Claims period differ for exact and non-exact matches?
a. Is there evidence of different behavior with respect to exact and
non-exact matches over time?
b. What effects would having more than one Claims period have on different
stakeholder groups?
iv. If so, what entity should implement the non-exact matching?

>
>
> 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 <(703)%20593-6759>
>
> 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?"*
>>
>>
>>
>>
>>
>> _______________________________________________
>> Gnso-rpm-trademark mailing list
>> Gnso-rpm-trademark at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-trademark
>>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-trademark/attachments/20170614/2fd5c87a/attachment-0001.html>