[Gnso-rpm-trademark] Action Items for the Trademark Claims Sub Team Call - 9 June 2017
Greg Shatan
gregshatanipc at gmail.com
Fri Jun 16 15:57:12 UTC 2017
Taking Justine's version as a jumping-off, here are some revisions :
4. Does the exact match criteria for Trademark Claims Notices limit its
usefulness?
a. What is the evidence of harm under the existing system?.
i. Are there studies, reports or articles discussing the harm of
typosquatting and other forms of non-exact-match cybersquatting?
ii. What is the actual experience of brandowners?
iii. What is the link between non-exact-match cybersquatting and
phishing,malware distribution, botnets, counterfeiting, and other related
harms?
iv. What information can be gleaned from UDRP/URS studies? What are the
limitations of relying on UDRP/URS studies
v. What other sources of information should be used to explore the level
of harm?
b. Should the matching criteria for Notices be expanded?
i. If so, how (which criteria) and why?
A. Review each suggested non-exact match
ii. What results (including unintended consequences) might each
suggested form of expansion of matching criteria have?
iii. What balance should be adhered to in striving to deter
bad-faith registrations but not good-faith registrations?
c. What is the feasibility of each form of expanded matches?
i. Should the marks in the TMCH be the basis for an expansion of
matches for the purpose of providing a broader range of claims notices?
ii. Who should be tasked to implement a solution for a expansion
of matches?
iii. What are the anticipated costs of implementing a solution for
a expansion of matches?
A. Who should bear these costs?
d. If an expansion of matches solution were to be implemented:
i. Should the existing TM Claims Notice be amended? If so, how?
ii. Should users pay a fee to use it?
iii. Should the Claim period differ for exact matches versus
non-exact matches?
Greg
On Thu, Jun 15, 2017 at 1:45 AM, Justine Chew <justine.chew at gmail.com>
wrote:
> Hi all,
>
> I've just caught up with the recording from last week's call.
>
> While I do realise that the earlier copy of the questions had been
> finalised, I do wonder if we could do a quick re-look at the wording of Q3
> ie *"3. Does the Trademark Claims Notice to users meet its intended
> purpose?"* Reason being when I read it again yesterday and today it made
> me ask wrt "to users" "which users?", do we need the words "to users"? Or
> am I the only one bothered by this?
>
>
> Back to the matter at hand .....Thanks, Kristine and Rebecca, for kicking
> off this discussion for inclusion of non-exact matches questions.
>
> While I understand Kristine's approach for inserting non-exact matches
> questions throughout Qs1-3, I favour Rebecca's reasoning and hence her
> approach in clustering the questions in Q4:
>
> (1) It may difficult enough to assess effectiveness of the existing TM
> Claims Notice for exact matches (an existing RPM) without muddying the
> waters with an expansion with non-exact matches (not an existing RPM)
> (2) I am also cognizant of the fact that non-exact matches (if they
> proceed) should be "inferior" to that of exact matches (i.e. non-exact
> matches would not be included in the TMCH database but simply generated
> from records included the TMCH), so I think questions related to non-exact
> matches should be distinctly and addressed entirely under Q4.
>
> My rework of Q4 for further refinement / proper renumbering:
>
> 4. Does the exact match criteria for Trademark Claims Notices limit its
> usefulness?
> a. What is the evidence of harm under the existing system?
> b. Should the matching criteria for Notices be expanded?
> i. If so, how (what criteria) and why?
> ii. What unintended consequences might an expansion of matching
> criteria have?
> iii. What balance should be adhered to in striving to deter
> bad-faith registrations but not good-faith registrations?
> c. What is the feasibility of expanded matches?
> i. Should the marks in the TMCH be the basis for an expansion
> of matches for the purpose of providing a broader range of claims notices?
>
> ii. Who should be tasked to implement a solution for a expansion
> of matches?
> iii. Who should bear the cost of implementing a solution for a
> expansion of matches?
> d. If an expansion of matches solution were to be implemented:
> i. Should the existing TM Claims Notice be amended? If so, how?
> ii. Should users pay a fee to use it?
> iii. Should the Claim period differ for exact matches versus
> non-exact matches?
>
>
> As to data collection for Q4 / proposal for non-exact matches, I support
> Kristine's proposal of "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."
>
> Further I note that the present data collection suggestions refer to the
> need to connect UDRP/URS filed (ref 3b. in far right column of table) to
> registration of domain names that triggered claims notices and that's fine,
> but I wanted to know if we had data on how many of such UDRP/URS filed were
> ultimately successful.
>
> I think if the non-exact matches proposal were to go ahead it would be
> useful to be able to gauge if UDRP/URS complaints were filed as a result of
> a non-exact match term being registered even if a notice was triggered had
> been filed on a 'genuine' basis, so as to speak.
>
> I will try my best to join the call on Friday night.
>
> Thanks,
>
> Justine Chew
> -----
>
> On 15 June 2017 at 09:46, Rebecca Tushnet <Rebecca.Tushnet at law.georgetow
> n.edu> wrote:
>
>> 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 <(703)%20593-6759>
>>
>> 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
>>>>
>>>
>>>
>>
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>
>
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