[Gnso-rpm-trademark] Closing Date Extended: [Discussion Thread] TM Claims Q2

Wed May 22 16:41:06 UTC 2019

Dear Kathy and Rebecca,

On behalf of Martin and Roger, the Sub Team Co-Chairs, we thank you for your thoughtful and detailed comments on this discussion thread.  We encourage the whole Sub Team to continue discussion of the open threads (Q2, Q4 and Q5). The plan is to discuss respective thread comments the next meeting after a Discussion Thread is closed (i.e. Q4 at the May 29th meeting (to start the discussion) but with the thread closing on 29 May (extended)), and Q2/Q5 at the June 5th meeting after those threads close on 29 May). Once the Sub Team has discussed all thread input/comments during this subsequent meeting, the respective proposed answers to charter questions and preliminary recommendations will be updated based on the Sub Team discussion and sent to the Sub Team for review.

As mentioned in the emails and during meetings, staff formulated the proposed answers and preliminary recommendations based on the transcripts and chats for the meetings during which the Sub Team discussed the agreed charter questions and related individual proposals. To the extent that there may be gaps, we are grateful if someone could point us to where in the meeting transcripts and chat records there are discussions that we may have missed, or mischaracterized.

Thank you very much for your feedback and assistance.

Kind regards,
Mary, Ariel, and Julie

From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> on behalf of Kathy Kleiman <kathy at kathykleiman.com>
Date: Tuesday, May 21, 2019 at 2:20 PM
To: "gnso-rpm-trademark at icann.org" <gnso-rpm-trademark at icann.org>
Subject: Re: [Gnso-rpm-trademark] Closing Date Extended: [Discussion Thread] TM Claims Q2

Hi All, I'm not sure why this is typing in yellow highlight, but so be it.  I think we had a good discussion on TM#2 and arrived at some sound recommendations. Some edits below, largely from Rebecca, further incorporate the nuances of our discussion into the proposed answers and draft recommendation.

Best, Kathy (individual capacity)

p.s. hopefully edits in green visible below

----------------------------------------------------------

Agreed Trademark Claims Question 2 (Pages 6-7)

[(a) and (b) unchanged]
(c) Should the Claims period be mandatory?
Proposed Answer: The Claims Period should be mandatory and be consistently applied to all TLDs. However, registries should have certain degree of flexibility to create a suitable business model in carrying out the Claims Period.
Proposed Answer: Where there is a Claims Period (see Q2(d)), it should not be shortened.

(d) Should any TLDs be exempt from the Claims RPM and if so, which ones and why?
Proposed Answer: Some TLDs should be exempt from the Claims RPM.

Proposed Answer:  Some members of the Subteam believed that .brand gTLDs had no need for a Claims period, because there will be no individual registrants in a .brand. Some members suggested that certain highly regulated new gTLDs, on the order of .bank, might not need a Claims period because of the other requirements of registration, while another member argued that a Claims period would still be appropriate and not harmful.  Other members suggested there may various use cases for exempting a TLD from the requirement of a mandatory Claims Period due to the particular nature of the TLD, such as a restricted gTLD that would bar commercial use due to its terms of use or acceptable use policy.

Draft Recommendation: The TM Claims Subteam recommends, in general, that the current requirement for a mandatory Claims Period be maintained, including for the minimum initial 90-day period when a gTLD opens for registration. In addition, the TM Claims Subteam recommends that public comment be sought on whether there is a use case for exempting a gTLD that is approved in subsequent expansion rounds from the requirement of a mandatory Claims Period due to the particular nature of that gTLD. Such type of gTLD might include: (i) restricted TLDs that bar any commercial use due to their terms of use or acceptable use policy; (ii) “highly regulated” TLDs that have stringent requirements for registering entities, on the order of .bank; and/or (iii) “Dot Brand” TLDs whose proposed registration model demonstrates that the use of a Claims Service is unnecessary.  [moved up from (e) below and slightly edited for clarity]
Potential Question for Public Comment: Is there a use case for exempting a TLD from the requirement of a mandatory Claims Period due to the particular nature of the TLD? [incorporated above]

(e) Should the proof of use requirements for Sunrise be extended to include the issuance of TMCH notices?
Proposed Answer: The Sub Team agreed that this is an issue for the full Working Group when discussing the TMCH. The Sub Team also needs to review George Kirkios’s individual proposal (#2?) regarding extending the proof of use requirements for Sunrise to include the issuance of TMCH notices.

[Recommendation below appears to be for (d), now included above. Do we have a draft recommendation for (e)?]
Draft Recommendation: In general, the Sub Team recommends that the current requirement for a mandatory Claims Period be maintained, including for the minimum initial 90-day period when a TLD opens for general registration. In addition, the Sub Team recommends that public comment be sought on whether there is a use case for exempting a TLD from the requirement of a mandatory Claims Period due to the particular nature of the TLD. Such type of TLD might include: (i) restricted TLDs that bar any commercial use due to their terms of use or acceptable use policy; and (ii) “Dot Brand” TLDs whose proposed registration model demonstrates that the use of a Claims service is unnecessary.

Individual Proposals

Please reference the following pages in the Summary Table for the draft answers to the three questions regarding the individual proposals. Links to the individual proposals are also included below.

Proposal #1 (Pages 7-8): https://community.icann.org/download/attachments/102146375/Proposal%231.pdf?api=v2

Proposal #12 (Pages 8-9): https://community.icann.org/download/attachments/102146375/Proposal%2312.pdf?api=v2
On 5/17/2019 1:19 PM, Ariel Liang wrote:
Dear Trademark Claims Sub Team members,

Per Sub Team Co-Chairs’ determination, the closing date of the Discussion Thread for the Trademark Claims Agreed Charter Question 2 has been extended. It will remain open until 23:59 UTC on 29 May.

The extension is granted due to its overlap with the Trademark Claims Agreed Charter Question 5. The Discussion Thread for TM Claims Q5 will also remain open until 23:59 UTC on 29 May 2019.

You may wish to reference the latest version Summary Table (as of 17 May 2019), pages 8-13, for your review/input: https://community.icann.org/download/attachments/102138613/%5BClaims%20Summary%20Table%5D%20%2817%20May%202019%29.pdf?version=1&modificationDate=1558112544184&api=v2

Best Regards,
Mary, Julie, Ariel

From: Ariel Liang <ariel.liang at icann.org><mailto:ariel.liang at icann.org>
Date: Thursday, April 18, 2019 at 11:48 AM
To: "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: [Discussion Thread] TM Claims Q2

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 2, including Individual Proposals #1 and #12.

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 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 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 6-12)

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 2 (Pages 6-7)
If the answers to the agreed Claims question 1(a) is “no” or 1(b) is “yes”, or if it could be better: What about the Trademark Claims Notice and/or the Notice of Registered Name should be adjusted, added or eliminated in order for it to have its intended effect, under each of the following questions?

(a) Should the Claims period be extended - if so, for how long (up to permanently)?
Proposed Answer: Registries should have the option to extend the Claims Period. The Sub Team noted, however, that there is data indicating an extension will not be advisable as a matter of policy.

(b) Should the Claims period be shortened?
Proposed Answer: The Claims Period should not be shortened.

(c) Should the Claims period be mandatory?
Proposed Answer: The Claims Period should be mandatory and be consistently applied to all TLDs. However, registries should have certain degree of flexibility to create a suitable business model in carrying out the Claims Period.

(d) Should any TLDs be exempt from the Claims RPM and if so, which ones and why?
Proposed Answer: Some TLDs should be exempt from the Claims RPM.

Potential Question for Public Comment: Is there a use case for exempting a TLD from the requirement of a mandatory Claims Period due to the particular nature of the TLD?

(e) Should the proof of use requirements for Sunrise be extended to include the issuance of TMCH notices?
Proposed Answer: The Sub Team agreed that this is an issue for the full Working Group when discussing the TMCH. The Sub Team also needs to review George Kirkios’s individual proposal (#2?) regarding extending the proof of use requirements for Sunrise to include the issuance of TMCH notices.

Draft Recommendation: In general, the Sub Team recommends that the current requirement for a mandatory Claims Period be maintained, including for the minimum initial 90-day period when a TLD opens for general registration. In addition, the Sub Team recommends that public comment be sought on whether there is a use case for exempting a TLD from the requirement of a mandatory Claims Period due to the particular nature of the TLD. Such type of TLD might include: (i) restricted TLDs that bar any commercial use due to their terms of use or acceptable use policy; and (ii) “Dot Brand” TLDs whose proposed registration model demonstrates that the use of a Claims service is unnecessary.

Individual Proposals

Please reference the following pages in the Summary Table for the draft answers to the three questions regarding the individual proposals. Links to the individual proposals are also included below.

Proposal #1 (Pages 7-8): https://community.icann.org/download/attachments/102146375/Proposal%231.pdf?api=v2

Proposal #12 (Pages 8-9): https://community.icann.org/download/attachments/102146375/Proposal%2312.pdf?api=v2

Best Regards,

Mary, Julie, Ariel

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