The call for the Review of all Rights Protection Mechanisms (RPMs) Sub Team for Trademark Claims is scheduled for Friday, 26 May 2017 at 16:00UTC for 60 minute duration.

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

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

PROPOSED AGENDA: 

  1.  Finalize Charter Questions
  2. Proceed with discussion on data gathering

Documents:

  1. Trademark Claims Sub Team Charter Questions - 26 May 2017
  2. Link to google doc: https://docs.google.com/document/d/13u5h6Wh6QUqW0vzT5q0zCTEmjMQ8_iCat6ZehLHQC7Q/edit

Apology: Beth Allegretti, Susan Payne, Mary Wong(staff)

Mp3

Adobe Connect Recording

AC Chat

Attendance

transcript RPM Trademark Claims Subteam 26 May 2017.pdf

Action Items:

  1. Staff to replace “innocent infringers” with “potential registrants” and “legal notice” with “notice” in Question 1.a.
  2. Staff to confirm whether the dispute rate in the Analysis Group report included UDRP cases only, URS cases only or a combination of both
  3. Staff to capture and summarize the various comments made during the call regarding the abandonment rate presented in the Analysis Group report, and circulate to the Sub Team mailing list for further discussion
  4. Sub Team members to fill “Data Available/Collection Needed” with suggestions on what type of data the Working Group needs
  5. Sub Team to review the summary of data placed in the google doc by staff
  6. Sub Team co-chairs will report to the Working Group co-chairs that the Sub Team has a final list of proposed Charter questions

Notes:

  • Question 1.a.
    • Phrasing added to address the second purpose of the TMCH/Claims Notice to provide legal notice to innocent infringers (as opposed to only deterring bad-faith registrations)
    • Need to neutralize language replacing “legal notice” with “notice” (no standard to determine that the notice is a “legal notice”)
    • Also replace “innocent infringers” with “potential registrants” – use phrasing that does not inscribe any intent
    • ACTION ITEM: Replace “innocent infringers” with “potential registrants” and “legal notice” with “notice”
    • Propose current wording as Proposed Final Updated Charter Questions
    • If the answer to 1.a. is no and the answer to 1.b. is yes (if something is not working the way it’s supposed to), then the flow of questions would move down to question 2
  • Question 2
    • 2.a. through 2.d. are a combination of the original Charter questions and the different variations the Claims Notice would take

Sub Team members on the call in agreement with current wording of Charter Questions

  •  Discussion on data gathering:
    • Would be helpful to know URS cases corresponding to Marks for which a Claims Notices was or would have been issued had the registration taken place during the notice period
    • Practically speaking, this data would be challenging to obtain unless funding is available for research
    • Suggestion to get a researcher to review all URS cases to see if the Examiner noted that the brand owner relied on SMD file
    • Three-character combination of SMD was only mentioned 15 times in 698 cases
    • Considering that SMD was only mentioned 15 out of 698 times, this may not a determinative reference to look for – no clear evidence of what was recorded in the TMCH
    • Dispute rates for exact match strings registered during the Claims Service has been provided by the Analysis Group – unclear if the dispute rate covers URS only or UDRP only, or a combination of both
    • The finding of SMD files being mentioned in the URS at such a low rate is valuable
    • Dispute rate for exact-match strings registered during Claims Service period between October 2013 and February 2016 was 323 out of 136,732 exact-match registrations in the same period
    • From the AC Chat: And 62/47,606 within 90 days following the Claims Period within the same period
    • ACTION ITEM: Staff to confirm whether the dispute rate in the Analysis Group report included UDRP cases only, URS cases only or a combination of both
    • Possible that URS/UDRP cases could have been submitted after February 2016 – would not be included in this data
    • UDRP would require both bad-faith registration and bad-faith use of the domain name, so if the domain is not being used, the brand holder would not file a UDRP until it is put to use
    • From AC Chat: Proposed Data Point: ask URS filers if their marks were in the TMCH
    • Low percentage of dispute rate of registrations completed following a Claims Notice may be due to Claims Notice being effective at deterring bad-faith registrations, disputes had not yet been submitted and possible that trademark holders not concerned enough with domain name registrations to initiate disputes
    • Abandonment rate and anecdotal evidence are useful data points in consideration of the Claims Notice having any unintended consequences
    • Valuable data would be how many potential registrants abandoned the registration to return and complete the registration at a later date following consideration, and making a more educated/informed decision to register the domain name
    • Need to understand the 94% abandonment rate more clearly – figure meaningless unless there is a figure to judge it against – if there is no notice (other reasons why potential registrants might have abandoned the domain name registration)
    • More information needed on where the pings to the trademark record downloads were coming from, and were they repetitions of attempted registration of the same strings
    • From the AC Chat: Regarding the 94% abandonment rate, please note footnote 3 at the bottom of page 2 of the document
    • Some might regard the Claims Notice as a legal notice, which may deter them from completing a domain name registration
    • From AC Chat: Compare: general cart abandonment rates for online purchases / abandonment names in .com / abandonment rates in the same TLD after Claims.
    • From the AC Chat: Let’s ask the Analysis Group at what point the abandonment is taking place in their statistics.
    • Cannot draw inferences using data without the context behind it – cannot only presume that the 93.7% abandonment rate is a result of only attempted bad-faith registrations or only attempted good-faith registrations – Try to find a source for this information
    • Categorize desired data as available, obtainable and relatively complicated to obtain
    • Desirable data would include UDRP and URS decisions, and match against exact matches to trademarks, non-exact matches to trademarks, and more importantly with trademarks that were registered in the TMCH
    • Unlikely that abandonment rate is due to pricing of domain name registration - more likely that it is due the the Claims Notice as the pricing is known before a Claims Notice is triggered
    • Comparing the 94% abandonment rate to general cart abandonment rates for online purchases would be helpful, not in a one-to-one correlation, but only to determine the extent to which general cart abandonment of online purchases is common – gives a comparative sense of scale
    • If general cart abandonment of online purchases is (for example) 84%, how bad is the 94% abandonment rate of domain names following a Claims Notice?
    • Is the Claims Notice clear? What are people reading/understanding when they read the Claims Notice and are asked to click on something that they believe might leave them legally liable? Is the Claims Notice being provided in the required languages?
    • At what precise moment are the registration attempts being abandoned? Are they all abandoning at the time of Notice, or are they abandoning at some other point in the registration process but within the Claims Notice Period? Is there value in looking at other cart abandonment rates? Is there value in looking at cart abandonment rates in .com or new gTLDs after the Claims Period? Is cart abandonment associated with improper understanding of the Claims Notice?
    • What percentage of the abandonment rate represents actual abandonment, and not “click through” – can the TMCH provide this information?
    • The motives behind abandonment are not known – may not be due to the Claims Notice – this information is required to better understand the 94% abandonment rate in the Analysis Group report
    • Sub Team still not settled on what order it will recommend that the Working Group answer the Charter questions – Suggestion to answer Question 3 before Question 2
    • Decision to reorder questions should not be made until the Sub Team has a better understanding of what data is required – might influence decision of order of questions
    • ACTION ITEM: Sub Team members to fill “Data Available/Collection Needed” with suggestions on what type of data the Working Group needs
    • ACTION ITEM: Staff to capture and summarize the various comments made during the call regarding the abandonment rate presented in the Analysis Group report, and circulate to the Sub Team mailing list for further discussion
    • ACTION ITEM: Sub Team to review the summary of data placed in the google doc by staff
    • ACTION ITEM: Sub Team co-chairs will report to the Working Group co-chairs that the Sub Team has a final list of proposed Charter questions
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