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

Wed May 29 17:14:37 UTC 2019

Agree as well with Kristine and Susan’s points.

Michael R.

From: Gnso-rpm-trademark [mailto:gnso-rpm-trademark-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Wednesday, May 29, 2019 9:59 AM
To: Susan Payne <susan.payne at valideus.com>
Cc: gnso-rpm-trademark at icann.org
Subject: Re: [Gnso-rpm-trademark] Closing Date Extended: [Discussion Thread] TM Claims Q2

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<mailto: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
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From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org<mailto: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<mailto:kathy at kathykleiman.com>>; gnso-rpm-trademark at icann.org<mailto: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).  ☺

  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<mailto:kathy at kathykleiman.com>>
Sent: Tuesday, May 28, 2019 6:22 PM
To: Dorrain, Kristine <dorraink at amazon.com<mailto:dorraink at amazon.com>>; gnso-rpm-trademark at icann.org<mailto: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><mailto: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<mailto: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><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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