[Gnso-rpm-trademark] REMINDER - Proposed Agenda - RPM PDP WG TM Claims Sub Team - 27 March 2019

Tue Mar 26 17:31:12 UTC 2019

I was unable to attend the Kobe meeting, so I wanted to post my view on the first tentative answer:

QUESTION 1 Is the Trademark Claims service having its intended effect?

(a) Is the Trademark Claims service having its intended effect of
deterring bad-faith registrations and providing Claims Notice to domain
name applicants?

Tentative answer of Subteam in Kobe session:  Probably

RT: We don't have enough information to make any kind of judgment about this.  It might be a deterrent, if you believe that cybersquatters can be deterred by a notice, but we have collected zero data that indicate that this is true.

Where data are absent: (1) what percentage of registration attempts that received a notice turned back because of the notice, with a huge potential range; (2) what percentage of registration attempts that received a notice were “cybersquatting” or even “inadvertent trademark conflict” as opposed to completely unproblematic uses of strings like cloud and hotel; (3) whether the cohort that turned back was (a) proportionate to the problem intended to be solved, (b) disproportionately made of cybersquatters or other potential infringers, or (c) disproportionately made of legitimate potential registrants (since we have no data on what deters cybersquatters nor any other information about how people who intend to cybersquat respond to notices); (4) whether the absolute number or relative percentage of cybersquatting attempts changed when there was no longer a notice in place (as a change in behavior post-notice period, or its absence, could have provided relevant evidence); (5) we have no data about what the general incidence of cybersquatting in the new gTLDs is in the first place, whether in absolute terms or as compared to legacy gTLDs without the notice system.  In sum, there is evidence that notice may increase costs and deter registrations, but no evidence about what those registrations would have been in the absence of notice.

At best, it is "possible" that the Claims service is having its intended effect. There is insufficient evidence that this effect is "probably" happening.

Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759
________________________________
From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Sent: Tuesday, March 26, 2019 12:52 PM
To: gnso-rpm-trademark at icann.org
Subject: [Gnso-rpm-trademark] REMINDER - Proposed Agenda - RPM PDP WG TM Claims Sub Team - 27 March 2019

Dear All,

Please see the agenda below and the attached summary table for the meeting on Wednesday, 27 March at 17:00 UTC.

Note for US participants – the time of 17:00 UTC is one hour later than previously in US time zones due to the change to Daylight Savings Time – so, 10:00 PDT and 13:00 EDT.

The notes from the last call are included below, and these indicate that the Sub Team reviewed questions 1 and 3(b).  Please also see the attached transcript.  Sub Team members may wish to consider which questions to turn to next for review, either sequentially with question 2, or otherwise.

Best,

Julie

From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Date: Friday, March 15, 2019 at 12:43 PM
To: "gnso-rpm-trademark at icann.org" <gnso-rpm-trademark at icann.org>
Subject: [Gnso-rpm-trademark] Proposed Agenda - RPM PDP WG TM Claims Sub Team - 27 March 2019

Dear RPM PDP TM Claims Sub Team members,

For the meeting on Wednesday, 27 March at 17:00 UTC the Sub Team will continue the development of preliminary recommendations.  Here is a proposed Draft Agenda:

  1.  Review agenda/updates to Statements of Interest (SOIs)
  2.  Development of Preliminary Recommendations
  3.  AOB

For reference concerning the discussion and progress at ICANN64 in Kobe on 11 March, please see below the brief notes, but also the attached transcript and the TM Claims Summary Table.

Kind regards,

Julie

Julie Hedlund, Policy Director

Notes and Action Items:

Question 1:

Is the Trademark Claims service having its intended effect? Consider the following questions specifically in the context both of a Claims Notice as well as a Notice of Registered Name:

(a)  Is the Trademark Claims service having its intended effect of deterring bad-faith registrations and providing Claims Notice to domain name applicants?

(b)  Is the Trademark Claims service having any unintended consequences, such as deterring good-faith domain name applications?

Tentative Preliminary Recommendation: 1(a) Yes it is working.  1(b) general agreement that the language in the notice needs to be revised.

Discussion:

-- Don’t have the data to answer either (a) or (b).

-- Do think it is having its intended effect.

-- On 1(b) – possibly based on the data.  Not sure we have data that one person was deterred, so don’t know that we can answer 1(b).

-- Already agree that the notice needs to be rewritten, without getting too watered down.

-- Is intimidating an unintended consequence?  Depends on what you mean by intimidation.  Is the deterrence appropriate – that you got the correct result.

-- We had some people who got the notice and didn’t proceed.  We did have people who didn’t register but didn’t say it was because of the notice.  Didn’t have anyone who said they were put off by the claims notice.

-- Could agree that some people who might have been good faith registration might not have gone forward.  That the notice wording was not optimal.

-- It is a question of proportionality.  Is the notice having a proportional impact?  Notoriously difficult to measure chilling effects.  Can probably agree that it is happening but not to what extent.

-- Might rewrite as something informational, rather than intimidate.

-- From a registrar standpoint any extra click is bad.

-- Second part of question 1(a) is easy – providing Claims Notice to domain name applicants.  Not sure we can answer the first part.  For 1(b) the answer seems to be yes.

-- Maybe rewrite the notice to be an informative thing so that they can make their own decisions.

-- Final report of the Analysis Group that people are getting the notices on dictionary words.  Seems to support 1(b) as “yes” that it is having unintended consequences and deterring good-faith domain name registrations.

-- On proportionality and the next round, there are likely to be more niche extensions where there might be lower likelihood of cybersquatting.

Michael Graham: Comment:  <<I believe our discussions, experience and evidence before us suggest we answer:  a) Yes, and b) No evidence other than that there may be some misunderstanding of the Notice and scope of TM rights.>>

Michael Graham: Comment:  <<Please note that Question 3 relates to the effect of the Notice -- intimidation.  I do not believe (on reflection) that effectiveness of the Notice is appropriate for the discussion of Question 1 a and b.>>

Question 3(b):

(a) Does the Trademark Claims Notice to domain name applicants meet its intended purpose?

(i) If not, is it intimidating, hard to understand, or otherwise inadequate? If inadequate, how can it be improved?

(ii) Does it inform domain name applicants of the scope and limitations of trademark holders’ rights? If not, how can it be improved?

(iii) Are translations of the Trademark Claims Notice effective in informing domain name applicants of the scope and limitation of trademark holders’ rights?

(b)Should Claims Notifications only be sent to registrants who complete domain name registrations, as opposed to those who are attempting to register domain names that are matches to entries in the TMCH?

Tentative Preliminary Recommendation on Question 3(b): Maintain the current policy – send the Claims Notifications at some point before the domain name registration is completed.

Discussion:

Question 3(b)

-- The notice should be given before the registration – if you do it after you’ve paid for the name you don’t want to find out that it is an infringing name.

-- 48-hour window before general availability, even if accepted the claims notice 3 months prior, but if they don’t accept it again then they lose it.

-- Giving the notice after the registration is completed seems unfair to everybody.

-- Pre-registration is with the registrar, not with the registry.  Other issue is the fast expiration of tokens.

-- Some registrars may have wanted to do the notice after registration because it was technically easier, but one way to get greater buy-in from registrars if ICANN had an open source registration system they could use.

-- Focus on the policy aspect, not the technical issues – it’s a timing aspect.  If it’s after it doesn’t serve the intended purpose of the notice.

-- We should recommend the policy and let the technical issues work themselves out.

-- Think about what would happen if we gave the notice after.

-- Pre-registration has nothing to do with the claims process.  It also isn’t an ICANN process – it’s a registrar marketing process.

-- Set a high-level policy – customers need to get notice that there might be a claim.  Don’t get into the implementation details.  You could just set a timeframe/window.

-- One Sub Team member indicated concern with answering 3(b) out of context of 3(a).

-- Note that Sub Team members who are not participating in this meeting will be able to contribute.

-- Can make a recommendation but point out issues that the IRT might want to consider.
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