[Gnso-rpm-trademark] [Discussion Thread] TM Claims Q1

Thu May 16 21:25:57 UTC 2019

Dear Trademark Claims Sub Team members,

In relation to the discussion under Agreed Charter Question 1 Individual Proposal #6 (“If the TM Claims Notices are retained … ICANN shall provide open source software in the top 5 programming languages used by registrars to assist in integration of the TM Claims notices with registrar systems”), staff had the action item to seek information about possible difficulties that registrars may have experienced in implementing the Claims Notice requirements from our GDD and other operations-focused colleagues. Here is our report based on the questions that were asked by Sub Team members during the discussion of this proposal.

  1.  Does Compliance validate whether a Registrar is implementing the TM Claims Notice? If so, how?
Answer: Compliance does not proactively validate if a Registrar is implementing TM Claims Notices. If Compliance receives a complaint regarding this issue, it will be reviewed based on the applicable process and approach, described here: http://www.icann.org/en/resources/compliance/approach-processes.

  1.  Does ICANN Org know how many Registrars are currently not implementing the TM Claims Notice, if any?
Answer: We do not have this information and Compliance has not received any complaints concerning Registrars not implementing the TM Claims Notice. In their Registrar audits, Compliance does not look at Trademark Claims handling by Registrars; however, all Registrars that have been certified by IBM on the Trademark Clearinghouse Database (TMDB) are able to support Claims Registrations. You can find the list of Registrars that have fully executed the 2013 RAA and received certification from IBM (updated by ICANN Org on a regular basis) on the New gTLD microsite: https://newgtlds.icann.org/en/about/trademark-clearinghouse/scsvcs/db-registrar-certified-latest.pdf.

  1.  Has ICANN Org provided assistance/guidance to Registrars in implementing the TM Claims Notice? If so, what assistance/guidance?
Answer: Besides the TMCH User Manuals, there is a variety of resources available on the New gTLD microsite that provide guidance to Registrars on how to connect to the TMDB, what Registrars are required to test during the testing process before full access to functionalities are granted, etc. Please see: https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-registrars.

In addition, IBM also hosted webinars to help Registrars learn about the TMDB, testing Claims function certification, compliance with the Functional Specification in implementing the Claims Services, etc. Those were recorded and are available for additional information and/or assistance on the New gTLD microsite.

  1.  Did ICANN Org provide “TMCH-related software” to Contracted Parties?
Answer: No.

  1.  What concerns may arise over legal liability if ICANN Org were to provide any kind of open source software to registrars (as contemplated by the proposal)?
Answer: As this is a legal question, we are not in a position to provide a response.

Best regards,
Julie, Ariel & Mary

From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> on behalf of Ariel Liang <ariel.liang at icann.org>
Date: Thursday, April 25, 2019 at 07:48
To: "gnso-rpm-trademark at icann.org" <gnso-rpm-trademark at icann.org>
Subject: [Gnso-rpm-trademark] [Discussion Thread] TM Claims Q1

Dear Trademark Claims Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to Trademark Claims Agreed Charter Question 1, including Proposals #5 and #6.

We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “tentative answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposals:
a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?
b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?
c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 15 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

Summary Table (Pages 3-6)

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138613/%5BClaims%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515784000&api=v2

Agreed Trademark Claims Question 1 (Page 3)
Q1 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?
Proposed Answer: The Trademark Claims service is possibly having its intended effect of deterring bad-faith registrations, but there is insufficient data to know the extent of the deterrence.

(b) Is the Trademark Claims service having any unintended consequences, such as deterring good-faith domain name applications?
Proposed Answer: The Trademark Claims service is possibly having unintended consequences, such as deterring good-faith domain name applications, but there is insufficient data to know the extent of the deterrence.

Draft Recommendation: The Sub Team recommends that the language of the Trademark Claims Notice be revised, in accordance with the Implementation Guidance outlined in the Sub Team’s recommendations for Question 3.

Individual Proposals

The Sub Team just discussed the Proposal #5 on 24 April 2019 and has not yet discussed Proposal #6, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide update via this discussion thread.

Links to the individual proposals are included below.

Proposal #5: https://community.icann.org/download/attachments/102146375/Proposal%235.pdf?api=v2

Proposal #6: https://community.icann.org/download/attachments/102146375/Proposal%236.pdf?api=v2

Where to Find All Discussion Threads
Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/9YIWBg

Best Regards,

Mary, Julie, Ariel

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