[Gnso-rpm-data] Action Items from 11 January 2018 RPM Data Sub Team Call

Thu Jan 11 23:48:54 UTC 2018

Dear all, 

Below are the action items and notes staff captured from the RPM Data Sub Team meeting today (11 January 2018).  The notes from the call are posted to the Sub Team wiki space, together with the call recording, transcript and Adobe Connect chat and attendance records.

Best Regards,

Julie

Julie Hedlund, Policy Director

Action Items:  Section 3 of the Charter Questions, Survey of TM and Brand Owners: Staff will incorporate edits into the Google Document and PDF.

Notes:

1. Update on the RFP

-- Staff is completing the RFP preparation.  We can launch a little earlier than expected.

-- Does the Sub Team feel comfortable with sharing the survey questions in draft form -- with clarification that it is a work in progress, while the Sub Team can keep working on the data table.  We are asking this question now as it's possible the document will not be finalized by 22 January, so we want to be sure the Sub Team understanding.

-- Also, request suggestions on vendors.

Discussion:

-- Wouldn't send the full document with all of the columns. 

-- Suggest the Analysis Group as a possible vendor.

-- Fairly certain that purpose and scope came from the draft document that the co-chairs presented to the GNSO.  Yes, it was what was submitted to the GNSO Council.

-- Clarify that in the RFP document we will include the whole list of the charter questions as a reference.

-- Relevant charter questions are the revised questions.

2. Section 3, Trademark/Brand Owners: Google doc: https://docs.google.com/document/d/1EUXC03ccuYhRMa_X4hDCPrq88KkF6qBRkL6sCcNutoI/edit?usp=sharing 

Obtain feedback on number of cease-and-desist letters sent (Claims Charter Question #3 – whether Claims serves its intended purpose)

Fourth Column, data questions: 

How many Claims Notices have you received for our TMCH registered trademarks?

How many of these Claims Notices did you follow up with some actions? What actions did you take? (possible multiple choice with drop-down menu) 

-- May not want to try to do too much about the options.  The list could be developed with the survey experts.

-- One issue is that we aren't certain that the survey expert would be an expert in the procedures that are followed.

-- Could be followed with "Do you believe your actions were successful?"

-- Added for clarification: The primary method for TM owners would be a letter of concern or a cease-and-desist letter.

-- Are we seeking information on how many times TM owners got notices about their own mark, or whether someone has registered your name?  It would be whether someone has registered the name.

-- We MUST change the wording to Notice of Registered Names (NORNs). That's what brand owners get and it's what will ring a bell.

How many of these Claims Notices did you follow with a cease and desist letter? Did you leave it alone? If so, why? 

-- Change to “How many of these NORNs did you follow up with some action, what actions did you take, do you believe these actions were successful, if not why?”

-- More neutral, rather than "successful".  "What response did you get and are you satisfied, if so why, if not why?"  or "Was it resolved? What was the resolution?"

-- Or “How many of these did you follow up with a cease-and-desist or similar letter? If you left it alone, why?  But that becomes subjective.

-- Cease and desist came from the summary of the scope presented to the GNSO.

-- Why are we asking TM owners about the claims notice?  It is the applicant's opinion that is most relevant.  You could ask "Do you think claims notice are serving their intended purpose?"

-- One of the data points is getting to what was the experience of TM owners -- can we extrapolate about the registrants’ experience by the behavior of the TM owners?  

-- Asking about how many NORNs you got and what did you do with them is valuable.

-- Proposal: Remove everything from the "How many of these Claims Notices did you follow with a cease and desist letter? Did you leave it alone? If so, why?” to the end “In how many such actions did you lose?” 

-- If we are interested in people who received the notices and continued.  We might be able to learn something about people who continued.

-- To be absolutely accurate, the 2013 TMCH Requirements use the term Claims Notice (for the one that goes to registrants) and Notifications (not notices) of Registered Names (NORN) for the one that goes to TM owners.

Third column: anecdotal questions:

What did you do in response to receiving the NORN?  

-- Where do we want to have that question? Already have it in the 4th column.  Does it matter if we have it in both places?  The questions will be all mixed up so leaving it in both provides relevant context.

Based on your experience do you believe that the Trademark Claims Notice to domain name applicants has met its intended purpose of notifying applicants of possible conflict with a registered trademark?”

If you do not believe the Trademark Claims Notice it (a copy of which is attached) has met its intended purpose, can you say why you believe this?

If you believe the Trademark Claims Notice has met its intended purpose, please explain why you do so. 

Have any of the Domain Applicants [registrants] you have challenged based on a registered trademark said anything about not having understood the Claims Notice?  If so, what did they say?

Do you believes the Claims Notice sent to domain name applicants (a copy of which is attached) adequately inform domain name applicants of the scope and limitations of trademark holders’ rights? If not, please explain.

What else do you believe applicants should be advised in the Notice? how can it be improved?

-- Would like to see all 4 of these with tick boxes.  Do we do this for the survey company?  

-- Instead of "What else do you believe applicants should be advised in the notice" change to "What might you change in the notice to better advise applicants in the Notice?"

Do you receive any communications from the TMCH? If so, are they Is it clear, or not clear? Please explain. 

Do the communications you receive from the TMCH make sense? How have you reacted to them? 

When you sent the cease and desist letter to applicants, how did they react?

Did they say anything about the Trademark Claims Notice they received? 

-- Perhaps remove this line of questions? Remove the above set of questions through "Did they say anything about the Trademark Claims Notice they received?"

Should Claims Notifications only be sent to domain name applicants at the time they apply for the domain name, or at the time their domain name is registered?  Please explain your answer.

-- Wondering since this is going to Brand owners if this question requires explanation.  Has this only come about as a result of the pre-order issue.

-- If this is a registrar issue is it appropriate to be asking the TM owner what they believe?

-- Brand owners have a strong feeling that the notice should be displayed early and often.  This is relevant to Brand owners. Maybe it needs to be more open-ended.

-- Agree that if we ask this question it requires a preamble since the timing might be a fine point that TM owners may not be aware.  Regardless of whether we are asking this because of a potential chilling effect or otherwise, it would be important to know what TM owners think of the timing of the notice.  Might be easier to answer in multiple choice -- at this time or after the notice is made; then ask for the timing whether very important, somewhat important, not important (ranking).

-- Preamble is wise since most people don't have when communications are supposed to come and why.

-- NOTE: Ask a similar question of registrars.  Drop a note on Page 12 in the PDF, #4.

Obtain feedback on actual brand owner experiences regarding evidence of harm intended to be addressed by the Claims RPM.

Third column, anecdotal questions:

Are you aware of what harms were meant to be addressed by the Trademark Claims service of notification of TMCH registration to applicants, requirement of statement of non-infringement, and notification of trademark owners upon registration of TMCH registered names?

Do you have any evidence of the harm being addressed actually occurring prior to the Claims service? Please describe it.

Do you have any evidence that you, your company or your trademarks, or your ability to register domain names have been harmed in any way by the fact that Claims Notices are only issued to Exact Match applications?

Do you have any evidence that broadening the comparison bases for issuing Trademark Claims Notifications to include variants of trademarks and not only exact matches would be useful and protect the rights of both trademark owners and domain name applicants?  Please provide this evidence or your observations.

-- Delete the second bulleted question.  A variation would look at the timing of the claims notice, but we have other questions about timing.  

-- "Are you aware of any harms after the claims period?"  Reword to "Do you have any evidence of harm being addressed before the institution of claims notice?"  

-- “Do you have any evidence that you, your company, etc.”: Needs to be rephrased to be more neutral.

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