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Trademark Claims Recommendation #1 & Trademark Claims Question #1

Trademark Claims Recommendation #1 & Trademark Claims Question #1

Owned by Ariel Liang
Mar 03, 2020


Trademark Claims Recommendation #1

The Working Group recommends that the language of the Trademark Claims Notice be revised, in accordance with the Implementation Guidance outlined below. This recommendation aims to help enhance the intended effect of the Trademark Claims Notice by improving the understanding of recipients, while decreasing any unintended effects of deterring good-faith domain name applications. 


The Working Group 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). 


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;
  • The current version of the Claims Notice should 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;
  • The Working Group advises that ICANN org considers input from external resources. Some Working Group members suggested external resources including the American University Intellectual Property Clinic, INTA Internet Committee, Electronic Frontier Foundation, and Clinica Defensa Nombres de Dominio UCN
.   


Note: This recommendation is related to Trademark Claims Question #1. 

Trademark Claims Question #1

1a-1. Have you identified any inadequacies or shortcomings of the Claims Notice?


1a-2. If so, what are they? 


1b. Do you have suggestions on how to improve the Claims Notice in order to address the inadequacies or shortcomings?


Note: This question is related to Trademark Claims Recommendations #1. 


Context:

The Working Group could determine that the Trademark Claims service is at least “possibly” having its intended effect, and generally agreed that the service may possibly have unintended consequences, such as deterring good-faith domain name applications. However, the Working Group could not determine the extent of deterrence that occurred, if any. 


The Working Group generally agreed that the 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. However, the Working Group also recognized the shortcomings of the Claims Notice. 


The Working Group generally agreed that for some of the actual and potential registrants, the Claims Notice is intimidating, hard to understand, or otherwise inadequate. Some Working Group members believe that the Claims Notice does not adequately inform domain name applicants of the scope and limitations of trademark holders’ rights (e.g., lack of identifying details of the trademark, issues with figurative/design marks). 


Therefore, the Working Group proposed Trademark Claims Recommendation #1 to improve the Claims Notice, and also proposed Trademark Claims Question #1 to seek community input to address the inadequacy of the Claims Notice.