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

Wed May 29 16:58:49 UTC 2019

I add my agreement to Kristine and Susan’s points.  As I recall, the
language in red did not get sufficient support to be part of the proposed
preliminary recommendation text.

Greg

On Wed, May 29, 2019 at 12:27 PM Susan Payne <susan.payne at valideus.com>
wrote:

> Having been out of the office at the INTA meeting last week and trying to
> catch up – it is incredibly difficult to follow what the actual text is and
> where/who it has come in these discussion threads when there is no proper
> redline.  Are there Google docs keeping track of this and if there aren’t
> could we perhaps have them?
>
>
>
> Thanks to Kristine and Kathy for their input on this.  I agree with
> Kristine’s comments regarding the language in red, and I think it is
> generous to say that this was “discussed”.  Clearly it came up as a
> suggestion but I don’t recall there being any real attention given to this
> suggestion and certainly not a discussion or support from others.  I do not
> support the inclusion of that language since, for all the reasons Kristine
> identifies, this is a very different scenario to the ones envisaged in (ii)
> and (iii).
>
>
>
> *Susan Payne*
>
> Head of Legal Policy
>
>
>
> *Valideus  *28-30 Little Russell Street
> <https://www.google.com/maps/search/28-30+Little+Russell+Street+%0D%0ALondon+WC1A+2HN+%0D%0AUnited+Kingdom?entry=gmail&source=g>
> London WC1A 2HN
> <https://www.google.com/maps/search/28-30+Little+Russell+Street+%0D%0ALondon+WC1A+2HN+%0D%0AUnited+Kingdom?entry=gmail&source=g>
> United Kingdom
> <https://www.google.com/maps/search/28-30+Little+Russell+Street+%0D%0ALondon+WC1A+2HN+%0D%0AUnited+Kingdom?entry=gmail&source=g>
>
> D: +44 (0) 20 7421 8255
> T: +44 (0) 20 7421 8299
>
> M: +44 (0) 7971 661175
>
> E: *susan.payne at valideus.com <susan.payne at valideus.com>*
>
> *www.valideus.com <http://www.valideus.com/>*
>
>
>
> Liability cannot be accepted for statements made which are clearly the
> sender’s own and not made on behalf of Valideus.
>
> This message is intended solely for the addressee and may contain
> confidential information. If you have received this message in error,
> please send it back to us, and immediately and permanently delete it. Do
> not use, copy or disclose the information contained in this message or in
> any attachment.
>
> Valideus Ltd is registered in England and Wales with company number
> 06181291 and VAT number 272 9057 85.  Our registered office is at 28-30
> Little Russell Street, London, WC1A 2HN
> <https://www.google.com/maps/search/28-30+Little+Russell+Street,+London,+WC1A%0D%0A+2HN?entry=gmail&source=g>
> .
>
>
>
>
>
> *From:* Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> *On
> Behalf Of *Dorrain, Kristine via Gnso-rpm-trademark
> *Sent:* 29 May 2019 16:08
> *To:* Kathy Kleiman <kathy at kathykleiman.com>; gnso-rpm-trademark at icann.org
> *Subject:* Re: [Gnso-rpm-trademark] Closing Date Extended: [Discussion
> Thread] TM Claims Q2
>
>
>
> Haha, yes (and by yes I mean no).  J
>
>
>
>    1. To be clear, I agree that your proposed language (let’s call it the
>    language in red for convenience) was discussed so it’s appropriate that
>    it’s in staff’s notes.  My question is whether it got enough support to
>    make it into the recommendation/question.  And maybe it did.  But I wanted
>    to flag it only because I’m not sure we had a good discussion about how
>    that scenario is different from the other proposed “exemption scenarios”
>    listed (which have VERY sophisticated users).  And to be fair, I’m not sure
>    the community will think any exemption is worth a change here.  It might be
>    less painful to maintain the status quo than to try to invent new
>    guardrails for what is at best an inconvenience to .brands and
>    highly-regulated TLDs.  (I can actually tell you about a .brand story we
>    experienced where we appreciated getting a TMCH claims notice so that’s why
>    I like that we’re calling for folks to either defend or debunk the theory.)
>    2. I’m still deciding if I like my proposed language, but I’m happy to
>    leave it where it is and let others take shots at it.
>
> Best,
>
>
>
> Kristine
>
>
>
> *From:* Kathy Kleiman <kathy at kathykleiman.com>
> *Sent:* Tuesday, May 28, 2019 6:22 PM
> *To:* Dorrain, Kristine <dorraink at amazon.com>;
> gnso-rpm-trademark at icann.org
> *Subject:* Re: [Gnso-rpm-trademark] Closing Date Extended: [Discussion
> Thread] TM Claims Q2
>
>
>
> Hi Kristine and All,
>
> Don't we love meetings that come after a long holiday weekend?
>
> To Kristine:  for (1) below, I took the language in red straight from the
> Staff recommendation. I just moved it up because it wound up in the wrong
> section [under "use"].  If you page down to the bottom of the page, I have
> put the original line in bold italics.
>
> (2) OK, I've added the language to 2(d) below. Does that fit the bill?
>
> Best and tx,
> Kathy
>
>
>
> On 5/24/2019 5:34 PM, Dorrain, Kristine wrote:
>
> I am generally ok with this language, but have two flags.
>
>
>
>    1. Kathy, you added this language (which I made red for easy
>    identification), which was not agreed to (you proposed it but I don’t
>    recall anyone, particularly anyone from constituencies other than yours,
>    who also supported it), so I think I would be useful to discuss it:   *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]*
>
> Regarding who qualifies for an exemption: It’s **possible** we don’t need
> to put brands on notice because those TLDs are essentially
> single-registrant (The RO is also the registrant for all intents and
> purposes).  For restricted TLDs, like .bank, there is an extremely close
> relationship between the RO and the registrant, often a very personal 1:1
> connection and a lot of paperwork.  A lot of vetting happens.  In that
> scenario (#(i) in red), you’re actually proposing to remove a consumer
> protection where there isn’t that close 1:1 relationship. Your proposal
> contains none of the same protective limitations as examples (ii) and
> (iii).  While it’s possible that non-commercial uses of a word that is also
> a trademark would survive litigation, I worry that it’s unfair to not warn
> people that it’s still “enter at your own risk.”  In the mini.tattoo
> scenario we’re discussing in the other group, even if someone registered
> mini.tattoo for the non-commercial purpose of a poetry blog, wouldn’t it be
> in the public’s best interest to tell them there was a risk of a lawsuit
> before they went through the effort?  I’ve said it before, but UDRP cases
> that receive a “non-response” email often say “I had no idea—oops.” In your
> scenario, I don’t see additional vetting, I see a person going to a
> registrar, ticking a box saying “yeah, I’m non-commercial (or worse, I read
> the T&Cs and AUP)” (and people will self-identify wrong), and getting a
> domain without a claims notice then feel cheated when they get a UDRP and
> demand to know why they weren’t told.  You’re here on behalf of
> non-commercial users as I understand it, and so I’m trying to understand if
> your proposal actually does them a disservice that simply changing the
> language of the claims notice might fix.
>
>
>
>    1. My second point is related to the first.  I propose that we add
>    language like this to 2(d).  “We recommend that if the community supports
>    an exemption, it should be codified in the RA, similar to the way the RA
>    allows certain registries to have a Code of Conduct exemption for certain
>    TLDs with certain business models.”  *This would put guardrails on who
>    can apply for, and receive, an exemption and gives Compliance oversight
>    authority to enforce it.”  [not married to this language – it’s a
>    proposal]- I see it being most useful for scenario (ii) where the TLD is
>    not single-registrant.* “If the WG recommends exemption language, what
>    are the appropriate guardrails ICANN should use when granting the exception
>    (e.g. single-registrant? Highly-regulated or manually hand-registered
>    domains? Something else?)”
>
>
>
>
>
> Thanks,
>
> Kristine
>
>
>
>
>
>
>
>
>
> *From:* Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org>
> <gnso-rpm-trademark-bounces at icann.org> *On Behalf Of *Kathy Kleiman
> *Sent:* Tuesday, May 21, 2019 11:20 AM
> *To:* 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]  **We recommend that
> if the community supports an exemption, it should be codified in the
> Registry Agreement, similar to the way the Registry Agreement allows
> certain registries to have a Code of Conduct exemption for certain TLDs
> with certain business models.*
>
> 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> <ariel.liang at icann.org>
> *Date: *Thursday, April 18, 2019 at 11:48 AM
> *To: *"gnso-rpm-trademark at icann.org" <gnso-rpm-trademark at icann.org>
> <gnso-rpm-trademark at icann.org> <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
>
>
>
>
>
> _______________________________________________
>
> Gnso-rpm-trademark mailing list
>
> Gnso-rpm-trademark at icann.org
>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-trademark
>
> ------------------------------
> The contents of this email and any attachments are confidential to the
> intended recipient. They may not be disclosed, used by or copied in any way
> by anyone other than the intended recipient. If you have received this
> message in error, please return it to the sender (deleting the body of the
> email and attachments in your reply) and immediately and permanently delete
> it. Please note that the Com Laude Group does not accept any responsibility
> for viruses and it is your responsibility to scan or otherwise check this
> email and any attachments. The Com Laude Group does not accept liability
> for statements which are clearly the sender's own and not made on behalf of
> the group or one of its member entities. The Com Laude Group includes
> Nom-IQ Limited t/a Com Laude, a company registered in England and Wales
> with company number 5047655 and registered office at 28-30 Little Russell
> Street, London, WC1A 2HN England
> <https://www.google.com/maps/search/28-30+Little+Russell+Street,+London,+WC1A+2HN+England?entry=gmail&source=g>;
> Valideus Limited, a company registered in England and Wales with company
> number 06181291 and registered office at 28-30 Little Russell Street,
> London, WC1A 2HN England
> <https://www.google.com/maps/search/28-30%0D%0A+Little+Russell+Street,+London,+WC1A+2HN+England?entry=gmail&source=g>;
> Demys Limited, a company registered in Scotland with company number
> SC197176, having its registered office at 33 Melville Street, Edinburgh
> <https://www.google.com/maps/search/33+Melville+Street,+Edinburgh?entry=gmail&source=g>,
> Lothian, EH3 7JF Scotland; Consonum, Inc. dba Com Laude USA and Valideus
> USA, headquartered at 1751 Pinnacle Drive, Suite 600, McLean, VA 22102,
> USA
> <https://www.google.com/maps/search/1751+Pinnacle+Drive,+Suite+600,+McLean,+VA+22102,+USA?entry=gmail&source=g>;
> Com Laude (Japan) Corporation, a company registered in Japan having its
> registered office at Suite 319,1-3-21 Shinkawa, Chuo-ku, Tokyo, 104-0033,
> Japan. For further information see www.comlaude.com <https://comlaude.com>
> _______________________________________________
> Gnso-rpm-trademark mailing list
> Gnso-rpm-trademark at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-trademark
> _______________________________________________
> By submitting your personal data, you consent to the processing of your
> personal data for purposes of subscribing to this mailing list accordance
> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and
> the website Terms of Service (https://www.icann.org/privacy/tos). You can
> visit the Mailman link above to change your membership status or
> configuration, including unsubscribing, setting digest-style delivery or
> disabling delivery altogether (e.g., for a vacation), and so on.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-trademark/attachments/20190529/e04bdb7b/attachment-0001.html>