[Gnso-rpm-trademark] Five Individual Proposals Submitted - Trademark Claims
Michael Graham (ELCA)
migraham at expediagroup.com
Tue Apr 2 21:18:52 UTC 2019
Thank you. I appreciate the consideration and will follow the Co-Chairs’ advice.
Michael R.
From: Julie Hedlund [mailto:julie.hedlund at icann.org]
Sent: Tuesday, April 02, 2019 12:49 PM
To: gnso-rpm-trademark at icann.org
Cc: Michael Graham (ELCA) <migraham at expediagroup.com>; Susan Payne <susan.payne at valideus.com>
Subject: Re: [Gnso-rpm-trademark] Five Individual Proposals Submitted - Trademark Claims
Dear all,
Please see below the message from Brian Beckham, Phil Corwin, and Kathy Kleiman, the full WG Co-Chairs.
Best,
Mary, Ariel, and Julie
----- From the full WG Co-Chairs:
On their regular weekly planning call held on Friday, March 29, 2019, the full WG co-chairs considered the request of Michael Graham to resubmit his “Exact Match Plus” Trademark Claims proposal in the new process form as an individual proposal.
After extensive discussion, the co-chairs decided not to extend the March 27th deadline for individual proposals as set forth in the “Proposed Process for TMCH Sunrise & Trademark Claims Sub Teams” issued on February 8, 2019. In regard to individual proposals, that document clearly stated, “The submission period will open on 31 January 2019 and remain open till 27 March 2019”.
In reaching this decision, the co-chairs noted that Mr. Graham is a member of the Trademark Claims Sub Team and therefore will have an opportunity to discuss potential expansion of Trademark Claims matching rules during the Sub Team’s consideration of preliminary recommendations for WG consideration.
The February 8th Process document further states:
All Sub Team recommendations (whether developed by the Sub Team or from individual WG members) that a Sub Team has designated as having received wide support from the Sub Team will be included in the Initial Report unless the full WG overrides such recommendation…
In this regard, the co-chairs further note that the sub-team has considerable discretion in its determination of whether “wide support” exists, and may consider both support for the substance of a specific proposal as well as support for inviting comment on a specific proposal for the purpose of soliciting ICANN community feedback on a subject of importance and significant interest, to best assist the full WG in determining the contents of its Final Report; and may weigh both factors prior to forwarding recommended proposals for full WG review.
Finally, the co-chairs note that two other proposals on the subject of trademark claims matching rules were submitted in June 2017 by Greg Shatan and Brian Winterfeldt (see PROPOSALS RECEIVED FROM WORKING GROUP MEMBERS ON “NON-EXACT” MATCHES – 8 JUNE 2017 ). As Mr. Shatan is also a member of the sub-team, and as a member of Mr. Winterfeldt’s law firm (Griffin Barnett) is as well, they will have the same opportunity to discuss potential expansion of matching rules as possible Sub Team recommendations if they wish to do so. The co-chairs would urge Sub Team members with an interest in this subject to explore the possibility of reaching agreement on a common approach for Sub Team discussion and consideration.
-----
On 3/28/19, 2:20 PM, "Gnso-rpm-trademark on behalf of Susan Payne" <gnso-rpm-trademark-bounces at icann.org on behalf of susan.payne at valideus.com<mailto:gnso-rpm-trademark-bounces at icann.org%20on%20behalf%20of%20susan.payne at valideus.com>> wrote:
Whilst I agree that it makes no sense to view a proposal which was made many months ago and parked as now somehow "off the table", I think that in practice this is a non-issue. The TM Claims Charter Qs ask us to consider:
QUESTION 4:
Is the exact match requirement for Trademark Claims serving the intended purposes of the Trademark Claims RPM? In conducting this analysis, recall that IDNs and Latin-based words with accents and umlauts are currently not serviced or recognized by many registries.
(a) What is the evidence of harm under the existing system?
(b) Should the matching criteria for Notices be expanded?
(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) 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 domain name applications?
(iv) What is the resulting list of non-exact match criteria recommended by the WG, if any?
(c) What is the feasibility of implementation for each form of expanded 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 the Claim period differ for exact matches versus non-exact matches?
Clearly we are going to be discussing this topic and subteam members will be suggesting solutions.
Susan Payne
Head of Legal Policy
Valideus
28-30 Little Russell Street
London WC1A 2HN
United Kingdom
D: +44 (0) 20 7421 8255
T: +44 (0) 20 7421 8299
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-----Original Message-----
From: Gnso-rpm-trademark [mailto:gnso-rpm-trademark-bounces at icann.org] On Behalf Of Michael Graham (ELCA) via Gnso-rpm-trademark
Sent: 28 March 2019 18:10
To: gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>
Subject: Re: [Gnso-rpm-trademark] Five Individual Proposals Submitted - Trademark Claims
To be clear: The Proposal included proposed language -- hence the "We (the RPM Working Group)" language.
Thanks to George for requesting this clarification as much time has passed since this and the other Proposals were submitted..
As to the suggestion that submission of this and the other Claims extension proposals only be accepted if granted under a Section 3.7 appeal ignores the fact that, unlike other proposals, these were submitted and discussion initiated before the new Sub-Team proposal submission requirements were announced.
Michael R.
-----Original Message-----
From: Gnso-rpm-trademark [mailto:gnso-rpm-trademark-bounces at icann.org] On Behalf Of George Kirikos
Sent: Thursday, March 28, 2019 10:57 AM
To: gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>
Subject: Re: [Gnso-rpm-trademark] Five Individual Proposals Submitted - Trademark Claims
Michael G. should be forced to file a Section 3.7 appeal, just like I did, to modify the process. His Section 3.7 appeal can be heard right after mine is heard. If not, then the co-chairs should explain what the difference is between Michael G.'s requests and my requests, and why they'd be treated differently.
Furthermore, his "Proposed Rationale Statement" purports that his proposals are on behalf of the entire RPM Working Group. He wrote:
"We (the RPM Working Group)"
and repeatedly uses the term "we". That "we" certainly doesn't represent my positions or proposals.
Sincerely,
George Kirikos
416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=adDIs0WEx_lLwFfrsdovxTYY8GkRHo5ibc8SR3Npdh8&m=bT2H4k8-BSl2lImyFW2IcUh8Qi3tO8sXP2nr0K5UElc&s=Rf9e7-DRoDt1q5ZQIuVCOR6C7BIyuIxI9S37xUBlu8Q&e=
On Thu, Mar 28, 2019 at 1:35 PM Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:
>
> Hello Michael and everyone,
>
>
>
> The staff understanding is that the proposals that had been submitted during prior discussions – in this case, proposals that were submitted in 2017 when the full Working Group was conducting initial discussions about the TMCH – needed to be submitted again in the recommended format (see Section 7 on Page 3 of the process document for the Sunrise and TM Claims Sub Teams approved by the Working Group co-chairs: https://community.icann.org/download/attachments/102146375/Proposed%20Process%20for%20TMCH%20Sunrise%20%20TM%20Claims%20Sub%20Teams%20%288%20Feb%202019%29.pdf?version=1&modificationDate=1552276156000&api=v2).
>
>
>
> However, staff notes that none of the 2017 proposals on “non-exact matches” as this applies to the Claims Notice (including the one you highlighted in your email) were submitted via the form by the closing date. As these proposals may be relevant to the Sub Team’s and Working Group’s discussion of the Agreed Charter Question 4 (especially 4(b)), staff would like to suggest that the Working Group and Sub Team chairs decide if these prior proposals should also be added to the list of current proposals for Sub Team discussion.
>
>
>
> You can find the consolidated set of the three 2017 proposals on
> “non-exact matches” here:
> https://community.icann.org/display/RARPMRIAGPWG/2017-06-21+Review+of+
> all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG
>
>
>
> Thanks and cheers
>
> Julie, Ariel & Mary
>
>
>
> From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org<mailto:gnso-rpm-trademark-bounces at icann.org>> on
> behalf of "Michael Graham (ELCA) via Gnso-rpm-trademark"
> <gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>>
> Reply-To: "Michael Graham (ELCA)" <migraham at expediagroup.com<mailto:migraham at expediagroup.com>>
> Date: Thursday, March 28, 2019 at 10:00
> To: Ariel Liang <ariel.liang at icann.org<mailto:ariel.liang at icann.org>>,
> "gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>" <gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>>
> Subject: Re: [Gnso-rpm-trademark] Five Individual Proposals Submitted
> - Trademark Claims
>
>
>
> Please confirm that the Proposals previously submitted in regard to Claims Service are included in the consideration of the working team.
>
>
>
> In particular, I want to ensure that the “Exact Match Plus” expansion of TM Claims Notice issuance that I previously submitted (A copy of the original submission follows) will be considered.
>
>
>
> Michael R.
>
>
>
>
>
> Proposed Rationale Statement:
>
>
>
> We (the RPM Working Group) have identified a minor change in current TMCH Trademark Claims Service practices that could benefit both Domain Name Applicants and Trademark Owners:
>
>
>
> We have become aware that Domain Name Applicants (Applicants) and Trademark Owners who have registered their trademarks in the TMCH (TMCH Trademarks) have both sustained unnecessary expense in time, effort, and planning when Domain Names that have proceeded to registration contain strings that are confusingly similar to TMCH Trademarks are challenged after their registration.
> Current Trademark Claims Notice rules limit the issuance of Notifications to applications that consist solely of the exact TMCH Trademark.
> As a result, Applicants are unaware of potential conflicts and may proceed with expending time, money and planning on the use of Domain Names that may be challenged.
> Applicants should have the ability to consider whether to proceed with their planning and use of Domain Names in light of TMCH Trademarks at the earliest opportunity in order to conserve fees and planning efforts.
> Trademark Owners should have the ability to identify both Domain Names that could create confusion and those that will not at the earliest opportunity.
>
>
>
> Proposal (1):
>
> The TMCH Rules should be revised to require Trademark Claims Notices be issued not only for Domain Names that consist of the Exact string of TMCH Trademarks, but also of any Domain Name that includes anywhere in the string the Exact string of TMCH Trademarks.
>
> In addition, we believe the success of the Trademark Claims Service in enabling both trademark owners and domain name applicants to learn of potential conflicts from an early stage in the application process -- when changes can be made or applications either abandoned or continued with the least expense of time, effort, or disruption – would support expansion of the service beyond the new gTLDs.
>
>
>
> For the same reasons, we propose the following:
>
>
>
> Proposal (2): The Trademark Claims Service and TMCH registration program should be expanded to apply to all Legacy TLDs as well as New gTLDs.
>
>
>
>
>
>
>
>
>
>
>
> From: Gnso-rpm-trademark [mailto:gnso-rpm-trademark-bounces at icann.org]
> On Behalf Of Ariel Liang
> Sent: Thursday, March 28, 2019 9:35 AM
> To: gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>
> Subject: [Gnso-rpm-trademark] Five Individual Proposals Submitted -
> Trademark Claims
>
>
>
> Dear Trademark Claims Sub Team members,
>
>
>
> This is to let you know that by the deadline of COB Wednesday, 27
> March, a total of five (5) individual proposals pertaining to
> Trademark Claims were submitted. Please note that two out of these
> five individual proposals (#1, #11) are also concerned with Sunrise.
> You may download all individual proposals here
> https://community.icann.org/x/R6EWBg (bottom half of the table on the
> wiki page includes the Trademark Claims related individual proposals)
>
>
>
> Per Section 7 of the Co-Chairs’ Proposed Process, the next steps for the Trademark Claims Sub Team are:
>
> Sub Team conducts the initial vetting of individual proposals,
> determines the level of support within the Sub Team (e.g., based on data collected), and recommends to the full WG whether to include each of the individual proposals in the Initial Report for the solicitation of public comment, along with an accompanying rationale; The Sub Team’s Summary Tables and reports to the WG should note which individual proposals constitute Sub Team recommendations for inclusion in the Initial Report (using the same standard of wide support as for Sub Team proposals, above) and which do not.
>
>
>
> Best Regards,
>
> Mary, Julie, Berry, Ariel
>
>
>
> From: Ariel Liang <ariel.liang at icann.org<mailto:ariel.liang at icann.org>>
> Date: Friday, March 29, 2019 at 12:23 AM
> To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
> Subject: Re: Closing Tomorrow: Individual Proposal for Sunrise &
> Trademark Claims
>
>
>
> Dear RPM Working Group members,
>
>
>
> This is to let you know that by the deadline of COB Wednesday, 27 March, a total of 13 individual proposals pertaining to Sunrise and Trademark Claims have been submitted via the SurveyMonkey form. The form is now closed.
>
>
>
> You can download all individual proposals (including a consolidated
> document) from the wiki page here:
> https://community.icann.org/x/R6EWBg
>
>
>
> Staff will forward the individual proposals to the Sunrise and Trademark Claims sub teams, who are tasked to conduct the initial vetting of the individual proposals.
>
>
>
> Thank you to the Working Group members who made contributions/input via the proposal submission.
>
>
>
> Best Regards,
>
> Mary, Julie, Berry, Ariel
>
>
>
> From: Ariel Liang <ariel.liang at icann.org<mailto:ariel.liang at icann.org>>
> Date: Tuesday, March 26, 2019 at 11:49 PM
> To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
> Subject: Closing Tomorrow: Individual Proposal for Sunrise & Trademark
> Claims
>
>
>
> Dear RPM Working Group members,
>
>
>
> Please be so kind to note that George Kirikos submitted six (6)
> individual proposals pertaining to Sunrise and Trademark Claims. You
> may access the proposals here: https://community.icann.org/x/R6EWBg
>
>
>
> Furthermore, staff would like to take the opportunity and remind you of the individual proposal submission deadline, which is EOB tomorrow (Wednesday, 27 March 2019).
>
>
>
> Please submit your proposal via the online form here: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.surveymonkey.com_r_SunriseClaims&d=DwIGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=adDIs0WEx_lLwFfrsdovxTYY8GkRHo5ibc8SR3Npdh8&m=bT2H4k8-BSl2lImyFW2IcUh8Qi3tO8sXP2nr0K5UElc&s=jFO6RpeoUoDd0ZJnpnWmh-g5EhvPKqYOi4ifxdYuWSc&e= [surveymonkey.com]. If you have technical difficulty accessing the online form, please contact ariel.liang at icann.org<mailto:ariel.liang at icann.org> for assistance.
>
>
>
> Detailed requirements for individual proposals are included below.
>
>
>
> Best Regards,
>
> Mary, Julie, Berry, Ariel
>
>
>
> ==
>
> As noted in Section 7 of the Co-Chairs’ Proposed Process for Sunrise and Trademark Claims Sub Teams:
>
> Individual WG members may submit their additional proposals, on behalf of one or more members, (including any specific proposals that were raised during earlier discussions, e.g., during the WG’s previous (January to July 2017) discussions of the TMCH when proposals relating to its structure and operations were solicited) to the relevant Sub Teams:
>
> The submission period will open on 31 January 2019 and remain open
> till 27 March 2019; WG members do not necessarily need to rely on Sub
> Team proposals to develop individual proposals (this is why the
> submission period for individual proposals opens before the Sub Teams
> complete their discussion of and make decisions on Sub Team
> proposals);
>
> Each individual proposal shall be succinct and specific, and may be
> accompanied by a justification statement of no more than 500 words. It
> should state the operational or policy rationale for the proposal, and should also cite any evidence in support of it. Such evidence may be information developed by the relevant Sub Team, or documented in other sources; Sub Teams conduct the initial vetting of individual proposals, determine the level of support within the Sub Teams (e.g., based on data collected), and recommend to the full 3 WG whether to include each of the individual proposals in the Initial Report for the solicitation of public comment, along with an accompanying rationale; The Sub Teams’ Summary Tables and reports to the WG should note which individual proposals constitute Sub Team recommendations for inclusion in the Initial Report (using the same standard of wide support as for Sub Team proposals, above) and which do not.
>
>
>
>
>
> _______________________________________________
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