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2017-06-09 Sub Team for Trademark Claims

2017-06-09 Sub Team for Trademark Claims

Owned by Michelle DeSmyter
Last updated: Jun 12, 2017 by Amr Elsadr

The call for the Review of all Rights Protection Mechanisms (RPMs) Sub Team for Trademark Claims is scheduled for Friday, 09 JUNE 2017 at 16:00 UTC for 60 minute duration.

09:00 PDT, 12:00 EDT, 17:00 London 18:00 CET

For other times: http://tinyurl.com/y7zgzn67

PROPOSED AGENDA: 

  1. Roll call
  2. Complete discussion of data collection topic in relation to the finalized TM Claims charter questions
  3. Discuss new Working Group request to consider and (if appropriate) add question on “non-exact matches”
  4. Review draft updated Work Plan regarding estimated timeline for TM Claims review (see attached)
  5. Next steps


Documents:

Trademark Claims Charter Qs 

PROPOSALS ON NONEXACT MATCHES – 8 JUNE 2017

Draft Updated Work Plan - 6 June 2017

Apology: Jonathan Matkowsky, Jonathan Agmon, Roger Carney

Mp3

Adobe Connect Recording

AC Chat

Attendance

Transcription

Action Items:

  1. Sub Team to draft a question(s) that would allow the WG to analyze the proposals during the Trademark Claims Review
  2. Sub Team to use the following question as a starting point for discussion: "In light of the evidence of the TM Claims gathered in Questions 1-3 above, how extensive is the need for non-exact matches? What is the proof of harm under the existing system? What unintended consequences might non-exact matches have?  What is the appropriate balance going forward? a. If non-exact matches are not adopted, then no further action is necessary. b. If non-exact matches of some form are adopted, should the marks in the TMCH be used to generate non-exact matches for the purpose of providing a broader range of claims notices?  If so, how should the claims notices be written?"

Notes: 

  • Roll call and updates to SOI
    • No Updates
  • Complete discussion of data collection topic in relation to the finalized TM Claims charter questions
    • Questions 2.c/d:
      • What data is needed to determine if Trademark Claims should be mandatory for all gTLD registries, or should some registry operators be exempt?
      • Would be good to get anecdotal data from registries and registrars on how valuable the Claims Period has been? - Need to work out an outreach plan to gather data
      • Are there any registry operators for which Claims Notices were not useful? Can anecdotal data be obtained via a survey?
    • Question 3:
      • Sub Team/WG could recommend that registrants be polled during subsequent rounds on their understanding of the Claims Notice
      • Note that surveys of registrants for anecdotal data may prove useful during the registration process during subsequent rounds of new gTLDs
      • During surveys, it is important to survey Internet users who have, or are considering registering domain names in the future
      • Action Item: Staff to edit comment by KD to clarify that notice to potential domain name registrants to replace “average internet users”
      • Surveys should consider testing some potential alternatives, such as other types of notices, especially considering that different match criteria may be added
      • How many registrations triggered Claims Notice, then did not result in a dispute (UDRP/URS) being filed?
      • Surveys should be designed carefully, to be as valid as possible - expertise should be sought to draft any future polls/surveys
      • Should consider what good surveys look like, and also try to avoid what bad surveys may look like as well
      • When addressing abandonment in surveys, need to determine both the reason of abandonment, and the intended purpose in registering the domain
      • Polling should focus on a population that has an interest in registering a domain name, have registered domain names in the past or those who are actively going through the registration process - not random Internet users - one method would be to intercept potential registrants during the process of registration
      • ICANN should hire a professional survey company, and include TM Claims Sub Team members as advisers to whoever conducts/designs the survey – to be included as a note to the broader WG
      • TM Claims Notice should be displayed in the language of the domain name registration agreement - to what extent is this being done by registrars?
      • Co-Chairs have asked staff to gather all suggestions and data in a format that is easy to read and understand - to be circulated to the Sub Team for review and adoption
    • Question 4:
      • This is an ongoing placeholder question – not an original Charter question, was suggested by the Sub Team
      • Suggestion to evaluate the additional proposals on non-exact matches (agenda item 3) in order to identify what data will be required to answer Q4
      • Intent of proposals on accepting non-exact matches is not to include them in the TMCH, but rather that non-exact variations of the registered TMs already in the TMCH would generate a Claims Notice - wording of Q4 should be edited to reflect this
      • Will also need to consider changes to the language in the Claims Notice should they be generated by non-exact matches to entries in the TMCH
      • STRAW PROPOSAL FOR Q4 REWRITE: Should the marks in the TMCH be used to generate non-exact matches for the purpose of providing a broader range of claims notices?  If so, how? And how should the claims notices be written?
      • Sub Team is to use the three proposals on non-exact matches to synthesize questions to be considered by the full WG during its review of the Claims Notice, and suggest data required to answer these questions
  • Discuss new Working Group request to consider and (if appropriate) add question on “non-exact matches”
    • Action Item: Sub Team to draft a question(s) that would allow the WG to analyze the proposals during the Trademark Claims Review
    • Action Item: Sub Team to use the following question as a starting point for discussion: "In light of the evidence of the TM Claims gathered in Questions 1-3 above, how extensive is the need for non-exact matches? What is the proof of harm under the existing system? What unintended consequences might non-exact matches have?  What is the appropriate balance going forward? a. If non-exact matches are not adopted, then no further action is necessary. b. If non-exact matches of some form are adopted, should the marks in the TMCH be used to generate non-exact matches for the purpose of providing a broader range of claims notices?  If so, how should the claims notices be written?"