[Gnso-rpm-trademark] CLOSED: [Discussion Thread] TM Claims Q3

[Ariel Liang]

Dear Trademark Claims Sub Team members,

In the absence of further discussions and per Sub Team Co-Chairs’ determination, the Discussion Thread for the Trademark Claims Agreed Charter Question 3 is now closed.

Best Regards,
Mary, Julie, Ariel

From: Ariel Liang <ariel.liang at icann.org>
Date: Thursday, April 25, 2019 at 7:48 AM
To: "gnso-rpm-trademark at icann.org" <gnso-rpm-trademark at icann.org>
Subject: [Discussion Thread] TM Claims Q3


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 3.


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.


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 12-16)

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 3 (Pages 12-14)
Q3(a) Does the Trademark Claims Notice to domain name applicants meet its intended purpose?
Proposed Answer: The Sub Team agreed that the Trademark Claims Notice generally meets its intended purpose of notifying prospective domain name registrants that the applied-for domain name matches at least one trademark in the Trademark Clearinghouse.

Q3(a)(i) If not, is it intimidating, hard to understand, or otherwise inadequate? If inadequate, how can it be improved?
Q3(a)(ii) Does it inform domain name applicants of the scope and limitations of trademark holders’ rights? If not, how can it be improved?
Proposed Answer: Based on its review of the data, the Sub Team agreed that the Claims Notice is intimidating, hard to understand, or otherwise inadequate (e.g., lack of identifying details of the trademark, issues with figurative/design marks). The Claims Notice does not adequately inform domain name applicants of the scope and limitations of trademark holders’ rights.

Draft Recommendation: The Sub Team recommends that the Trademark Claims Notice be revised to reflect more specific information about the trademark(s) for which it is being issued, and to more effectively communicate the meaning and implications of the Claims Notice (e.g., outlining possible legal consequences or describing what actions potential registrants may be able to take following receipt of a notice). The Sub Team recommends, accordingly, that the current version of the Claims Notice be revised to maintain brevity, improve user-friendliness, and provide additional relevant information or links to multilingual external resources that can aid prospective registrants in understanding the Claims Notice and its implications. To assist the Implementation Review Team (IRT) that will be formed to implement recommendations from this PDP in redrafting the Claims Notice, the Working Group has developed the following Implementation Guidance:

  *   The Claims Notice must be clearly comprehensible to a layperson unfamiliar with trademark law;
  *   Add any other agreed terms, concepts, parameters, objectives, and principles for the revised Claims Notice;
  *   May also suggest that ICANN Org consider partnering with external resources that have already indicated an interest in helping redraft the Claims Notice (e.g., AUIP clinic).

Q3(a)(iii) Are translations of the Trademark Claims Notice effective in informing domain name applicants of the scope and limitation of trademark holders’ rights?
Proposed Answer: Based on its review of the data, the Sub Team generally agreed that the current level of translations of the Trademark Claims Notice does not seem effective in informing domain name applicants of the scope and limitation of trademark holders’ rights. The Sub Team noted that it may become quite complex for a registrar to operate the Claims Notice if all possible translations are included.

Draft Recommendation: The Sub Team recommends that delivery of the Trademark Claims Notice be both in English as well as the language of the registration agreement. The Sub Team also recommends, where feasible, the inclusion of links in the Claims Notice to translations of the Claims Notice in all six UN languages - in this regard, the Sub Team recommends changing the current Trademark Clearinghouse Requirements on this topic to “...registrars must provide the Claims Notice in English and in the language of the registration agreement.”

Q3(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?
Proposed Answer: The Claims Notice should not be sent only to registrants who complete domain name registrations. The Sub Team generally agreed that the Claims Notice should be sent to potential registrants, who are attempting to register domain names that are matches to entries in the TMCH, at some point before the domain name registration is completed. However, Kathy Kleiman strongly opposed sending the Claims Notice before the registration is completed. The Sub Team also needs to review George Kirikos’ individual proposal (#6) that ICANN Org considers providing an open source programming example to help registrars more easily send the Claims Notice before the completion of registration.

Draft Recommendation: The Sub Team recommends that the current requirement for sending the Claims Notice only before a registration is completed be maintained. The Sub Team also recognizes that there may be operational issues with presenting the Claims Notice to registrants who pre-registered domain names, due to the current 48-hour expiration period of the Claims Notice. The Sub Team therefore recommends that the Implementation Review Team consider ways in which ICANN Org can work with registrars to address this implementation issue.

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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