[Gnso-rpm-trademark] Actions & Notes: RPM Trademark Claims Sub Team Meeting 02 May 2019 1700 UTC

[Julie Hedlund]

Dear All,

Please see below the action items and notes captured by staff from the RPM Trademark Claims Sub Team meeting held on 02 May 2019 (17:00-18:00 UTC).  Staff will post them to the wiki space.  Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, AC chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-05-02+Sub+team+for+Trademark+Claims+Data+Review .

Best Regards,
Julie
Julie Hedlund, Policy Director

==

ACTIONS & NOTES:

Action Items:


  1.  Question 1, Proposal 6: Staff is checking with ICANN Org.
  2.  Staff will start up a discussion thread on Question 4.
  3.  Staff will update the summary table based on the transcript/recording from the meeting.
  4.  Sub Team members will review the homework assignments in preparation for the next meeting.

Brief Notes:

1. Updates to Statements of Interest (SOIs): No updates provided.

2. Overview of Updated Timeline and Work Plan:

3. Development of Preliminary Recommendations:

Question 1, Proposal 6:
-- Staff is checking with ICANN Org as to what assistance they already provide.

Question 4:
-- Harms of limiting notices to just exact matches -- there are plenty of non-exact matches that would fit into confusion or bad-faith analysis.  Limiting to exact matches doesn’t give a full view.
-- Comment <Most domain names that we have issue with are Match Plus some other elements.  Very few exact matches.  And notifying applicants of possible issues would permit them to consider continuing or not.>

-- Trademark +50: you get terms adjudicated that are deemed to be a problem already.
-- From ICANN Website: “The Abused Domain Name labels service allows rights holders to register up to 50 abused labels related to a verified trademark record in the Clearinghouse. These associated labels must have been the subject of a determination in a prior UDRP case or court decision in which the rights holder prevailed. The TMCH Validator, facilitated by Deloitte, will examine former and current ICANN-approved UDRP providers' database information and court case documentation to ensure each label submitted meets this criterion.”
-- TM+50 has its limitations because it only applies to previously-adjudicated variations.
-- If the notice was generated through an algorithm where it captured a certain set of TM variants, the notice language could I think be crafted in a manner that appropriately and accurately captures that the attempted registration is an exact match or similar variation of a mark in the TMCH.
-- Could be aligned with match plus.
-- GAC wanted Analysis Group to look at whether there should be an expansion of exact matches, but determined that there was no reason to expand and expansion could cause problems.
-- Helpful to have a specific proposal for expansion to determine if it is technically feasible for Deloitte in the TMCH.
-- Other member noted that it already is implementable since match plus exists and is implemented.
-- Exercise caution in following the Analysis Group report and even they caution that it shouldn’t be used as the basis for policy development.
-- 50+ is still technically an exact match.
-- Think about what will benefit the consumers.  It could be helpful for the average Joes to know that a letter or two could cause problems.  We do want people to register domain names they can use.  A concept should be how do we notify these people that there is a potential problem.
-- Just FYI: the 50 abused labels are part of the list that can be used for a Claims Notice only. Additional variants that a TM owner may wish to add are usable for the Ongoing Notification Service that the TMCH offers separately
-- Just talking about notice -- others might be addressed via curative mechanisms.
-- Comment: <The evidence of harm for my company (and others based on my conversations with in-house IP counsel) is that most of our enforcement in the domain name space is for either Typosquats or Exact Plus Trademark domain name applications.  This harms both us (protecting our trademarks and ensuring consumer ability to trust them) and applicants (who might not be aware that a particular domain name may include a registered domain name).  Agree that a well-crafted, informational notice is better than forcing applicants and trademark owners to take adverse, curative action.>



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