The call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 03 May 2017 at 16:00 UTC for 90 minute duration.
09:00 PDT, 12:00 EDT, 17:00 London, 18:00 CET
For other times: http://tinyurl.com/m5nrx8a
Agenda:
- Roll call (via Adobe Connect & phone bridge only); updates to Statements of Interest
- Sub Teams update (5 minutes each) – Lori Schulman (Sunrise), Michael Graham/Kristine Dorrain (Trademark Claims), Working Group co-chairs’ update on Private Protections Sub Team
- Presentation of proposal for TMCH Open Question #10 – Michael Graham (not more than 5 minutes)
- Continue Working Group discussion of TMCH Questions #7 & #8 – start with summation of proposals (2 minutes each for each proposer)
- Next steps/next meeting
Documents:
Remaining Open TMCH Charter Questions - 24 April 2017
Apologies: Susan Payne
Audio only: none
Action Items:
- Staff to circulate draft questions for Private Protections Sub Team following co-chairs’ sign-off; aim is to have the Sub Team begin meeting shortly (possibly next week)
- Working Group members to review the 2 proposals on Design Marks with a view toward possible amalgamation. If specific/additional instructions to Deloitte are viewed as needed, Working Group to consider what those are to be.
Follow up notes:
- Roll call (via Adobe Connect & phone bridge only); updates to Statements of Interest: None
- Sub Teams update (5 minutes each) – Lori Schulman (Sunrise), Michael Graham/Kristine Dorrain (Trademark Claims), Working Group co-chairs’ update on Private Protections Sub Team
- Sunrise Registration Sub Team:
- Sub Team has held three calls so far to combine questions where they could be combined, eliminate any redundancies, and to estimate how the Working Group workplan may need to be adjusted to answer these questions
- Working Group is not rewording Charter questions, but rather including notations where clarifications might be helpful
- Some questions cover technical issues on how the TMCH works (such as SMD files) - more technical questions than policy-related issues - might be helpful to have a briefing to assist WG members’ understanding on how these work
- Possible to hold a call to clarify the operations of the TMCH if WG members find it useful
- Trademark Claims Sub Team:
- Sub Team has held three calls so far
- Proposed batching of charter questions was discussed, which might be mixing questions – resolved this by adjusting approach to a "tree" that identifies general questions, and within those, identifying sub questions to be presented to the Working Group as a whole
- Will begin discussions on necessary adjustments to the Working Group workplan to answer the Claims-related charter questions
- Update on Private Protections Sub Team:
- Co-chairs considering near-final list of sub team proposed questions
- Final sign-off of proposed questions by each of the three co-chairs pending
- Sunrise Registration Sub Team:
- Presentation of proposal for TMCH Open Question #10 – Michael Graham (not more than 5 minutes)
- Proposal based on registration attempts in new gTLDs and observations while working with Trademark holders
- Some domain name registration applications containing protected strings (either prominently or in complete form) prompting Claims notices, and resulted in actions by Trademark holders appeared to be good-faith applications - this proposal is meant to address those situations and avoid similar issues
- Proposal not meant to address intentional infringement of Trademarks or intentional typo variants, but rather good-faith registrations that may involve typos
- Proposal also meant to provide solution to avoid confusion on whether a domain name registration attempt will result in a conflict with a Trademark holder, including avoidance of unnecessary costs involved with curative actions
- TM holders need to be able to identify domain names that might create confusion, and those that will not
- Claims notices should be issued for domain names that are an exact match of the trademark, as well as a domain name string that contains this exact match
- Same proposal stands for domain name strings that contain the exact match of the TM + key words - Rules should be clear and leave little room for the TMCH provider to misinterpret and/or need for the TMCH to conduct an analysis
- Proposal limited to Claims notices, not Sunrise Registrations
- Part of the proposal includes expanding the Claims notice from new gTLD to also include legacy gTLDs - PDP WG Charter mandates the WG to provide recommendations so that RPMs Consensus Policy is applicable to legacy as well as new gTLDs - WG needs to make this determination following a review of RPMs, and whether they need to be adjusted in any way
- Proposal is not meant to address common typos apart from plural forms of trademarks registered in the TMCH
- Continue Working Group discussion of TMCH Questions #7 & #8 – start with summation of proposals (2 minutes each for each proposer)
- Discussion of new proposal by Jonathan Agmon on GIs will be deferred as he is not present on the call
- Proposal to question 7 by Kathy Kleiman
- STI and IRT recommended that text marks be included in the TMCH - expressly recommended that text extracted from Design Marks should not be included
- Proposal is to go back to original text of STI recommendations regarding not including the text portion of Design Marks – any deviation from this should require consensus of this Working Group to do so
- TMCH should comply with the rules that they were provided to it as a result of the STI and IRT recommendations, and those that are present in the AGB
- Proposal to question 7 by Greg Shatan
- Limiting distinctions of marks to text vs design disregards other variations of marks that include both text and design aspects
- There are trademarks that are not exclusively text (contain an element of design) that do not disclaim the protection of the text element - need different instructions regarding inclusion in the TMCH than pure design marks or design marks with disclaimed text elements
- TMCH rules should change to include all Trademarks that include text elements within a design, and exclude those where the text elements within a Design Mark are expressly disclaimed in their entirety
- Challenges by other interested parties (such as those seeking domain name registrations or the TMCH itself) should be able to challenge reasonably objective fraudulently acquired Trademark registrations to take advantage of RPMs like Sunrise Registrations
- General discussion of proposals:
- Primary distinction between the two proposals is that one excludes any Trademarks from the TMCH that are not purely text/standard character marks, while the other would allow inclusion in the TMCH of Trademarks that are stylized or figurative in nature (design elements + text portions not expressly disclaimed in their entirety)
- Important to differentiate between what the STI or IRT recommended, and what was included in the new gTLD AG – final version of the AGB is the finally baked version of what is included in the TMCH
- Working Group is not bound by previously developed policy – may recommend changes to current practice
- Deloitte should stick to what national TM registries provide protection for - should not be given flexibility to interpret or implement differently
- One of the purposes of the Claims notice is to inform a potential registrant on the wisdom in an attempt to register a domain name that is protected – we would not be doing potential registrants a service if this notice is not given in the cases that may result in problems for the potential registrants
- May be necessary to tweak the text of the Claims notice – should not be too weak resulting in it being ignored, or too strong resulting in “freaking out”
- With better instructions, the TMCH can do a better job at separability and predominance, and function with less subjectivity regarding what is included/excluded
- The level of protection given to the text portion of a design or stylized mark varies - this applies to any type of trademarks - variable degrees of protection all types of marks, and even to purely text trademarks - extent to which protection is provided is not a decision for the TMCH, but for the courts/TM registries to decide
- Should protections provided to word portions of Design marks be limited to the Claims notice, and not be granted Sunrise period protection?
- To what extent is the WG "wedded" to the original STI/IRT recommendations on RPMs and their intent?
- Implications of ease of implementation should be considered along with any recommendations the PDP Working Group makes, including leaving little to no room for subjectivity in implementation
- From AC Chat: Some distinctions to consider: (1) pure word/character marks vs stylized text marks; (2) stylized text comprising descriptive words vs stylized text not containing descriptive words; (3) word marks (with or without stylization) vs word+design mark
- More data needed on why there is a high percentage of domain name registrations that are abandoned following Claims notices
- Will excluding all stylized text marks penalize SMEs?
- None of the proposals nor any of the Working Group members have indicated that Deloitte are handling Design Marks appropriately
- WG members should consider what instructions were given to Deloitte as per the final version of the AGB, before considering what changes need to be recommended
- WG members will be reviewing the glossary of terms prepared by staff, and recommending if any changes should be made
- Glossary prepared by staff is just a sample of terms across different jurisdictions, and should not be considered a definitive list
- From AC Chat: INTA is looking over the draft glossary and will comment
- WG may use a survey or straw poll, that isn't meant to be definitive/conclusive - these are only meant to demonstrate tentative levels of agreement on general direction or preliminary conclusions at any given point in time
- Straw poll may include one conclusion or alternative sets of proposals
- Working Group needs to discuss/consider proposals that may distinguish between how the TMCH handles Claims and Sunrise
- Staff and leadership team (co-chairs) may be able to assist in refining the proposals in a way that helps the Working Group reach consensus
- Opportunity still open for Working Group members to suggest new proposals on open charter questions (7, 8 and 10)
- Next steps/next meeting:
- No WG call next week (conflicts with GDD summit)
- Next call will be on 17 May at 17:00 UTC
