The call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 31 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/l72v99g

Agenda:

  1. Roll call/updates to Statements of Interest
  2. Review/discussion of proposed refined Charter questions from Trademark Claims Sub Team
  3. Review/discussion of proposed Private Protections questions from the WG co-chairs
  4. Presentation/brief discussion of proposal from Greg Shatan
  5. Agree on next steps for open TMCH questions (design marks, GIs, expanding the identical match standard) – e.g. an online survey to poll WG members on the level of support for the various proposals put forward to date or other mechanism to gauge support?
  6. Next steps/next meeting

Documents:

TM Claims Refined Charter Questions

Questions for Private Protections Sub Team - For WG Discussion 

Proposal for Smarter Non-Exact Matches

Mp3

Adobe Connect recording

Transcript

AC Chat

Attendance

Apologies: Jonathan Matkowsky, Jonathan Agmon, Paul Keating, Beth Allegretti, Paul McGrady

Action Items: 

  1. Staff to remind WG members on-list to review the questions prepared by the Trademark Claims Sub Team, and submit questions before next week; staff to work with co-chairs and Sub Team to adjust the WG Work Plan to estimate start date and duration for this work
  2. Staff to circulate the draft questions on Private Protections to the WG mailing list for review and feedback
  3. Private Protection questions to be passed on to the Sub Team by staff to evaluate if they are worth pursuing, and what data is required to answer them – this action item has been deferred until WG members have had an opportunity to review the questions
  4. Staff to add Claudio DiGangi and Greg Shatan as members of the Private Protections Sub Team – Sub Team is still accepting new members
  5. Staff to circulate study in World Trademark Review referred to by Greg Shatan for consideration by the WG
  6. WG members to suggest different names for “Private Protection” on the WG mailing list that may be more effective at achieving what the WG is attempting to describe
  7. WG members should review the Private Protection questions prior to next week's WG call – Revisions to be discussed as part of the agenda for the WG call next week
  8. Brian Beckham to circulate Version 3.0 of the WIPO Jurisprudential Overview of UDRP Cases paper circulated at INTA meeting to WG mailing list

Notes:

These high-level notes are designed to help PDP WG members navigate through the content of the call and are not meant as a substitute for the transcript and/or recording. The MP3, transcript, and chat are provided separately and are posted on the wiki here.

 

1. Roll call/updates to Statements of Interest:

  • None

2. Review/discussion of proposed refined Charter questions from Trademark Claims Sub Team

  • Sub Team has finalized the list of Updated Charter Questions
  • Still working on suggested order of questions, and data needed to be collected to answer the questions
  • Unlikely that the Sub Team will finalize the data requirements this week – might finalize the proposed data next week
  • Sub Team not collecting data, but rather identifying data that the WG will likely need – what is already available (for example, from the AG revised report), and data that is desired, and whether this data is accessible
  • Sub Team not planning on analyzing the data that is already available - plan is to refer this work to the full Working Group
  • Not clear if the Sub Team will continue with tasks past identification of data to answer the Charter Questions – likely that the full WG will assume follow-up once the Sub Team has completed its current task of data identification

-- Overview of Charter Question revisions:

  • Sub Team evaluated both Charter questions specific to Trademark Claims, as well as general Charter questions – general questions were assimilated into specific questions, when it was appropriate to do so
  • Sub Team listed main question, then divided into sub questions, so there is no one-to-one correlation between the original and updated questions
  • Sub Team evaluated and modified the Charter questions to make them less suggestive of specific answers, while maintaining the intent of the original Charter questions
  • The text of the "Updated Questions" is the final proposed questions for the WG's consideration
  • Refer to recording/transcripts for detailed review of each question
  • ACTION ITEMS - Staff to remind WG on-list to review the questions and submit questions before next week; staff to work with co-chairs and Sub Team to adjust the WG Work Plan to estimate start date and duration for this work

3. Review/discussion of proposed Private Protections questions from the WG co-chairs

  • These questions were developed by the WG co-chairs with assistance from staff
  • Sub Team will be tasked with vetting, clarifying and grouping the draft questions, identifying if other questions should be addressed, in addition to determining if the current questions are worth pursuing
  • Sub Team is also to identify what data is required to answer the questions
  • Questions are subject to review and feedback by the WG – are they all the questions? Are they all relevant? Are they properly framed?
  • ACTION ITEM: Staff to circulate the draft questions to the WG mailing list for review and feedback
  • ACTION ITEM: Questions to be passed on to the Sub Team to evaluate if they are worth pursuing, and what data is required to answer them - deferred until WG members have had an opportunity to review the questions
  • Should the use of "private protections" be changed to another with less negative connotation - suggestions: Registry Specific RPMs, Voluntary RPMs, Voluntary Practices, Additional Voluntary RPMs
  • Sub Team may also suggest different names for these RPMs
  • From AC Chat: Private refers to private sector provision of additional protection options not mandated by ICANN – not secret
  • ACTION ITEM: WG members to suggest different names for these protections on the WG mailing list that may be more effective at achieving what the WG is attempting to describe
  • Should the WG members spend some time reviewing the proposed questions prior to them being sent to the Sub Team?
  • ACTION ITEM: WG members should review the questions prior to next week's WG call – Revisions to be discussed as part of the agenda for the WG call next week
  • Sub Team membership is still open to new volunteers
  • ACTION ITEM: Staff to add Claudio DiGangi and Greg Shatan as members of the Private Protections Sub Team

4. Presentation/brief discussion of proposal from Greg Shatan

  • Proposal intended as follow-up to proposal by Michael Graham regarding Charter Q. 10 on non-exact matches – also intended as a starting point for discussion, not a set-in-stone proposal
  • List of non-exact largely match criteria adopted from the Analysis Group revised report with some changes/additions - meant to address matches that reflect more realistic non-exact words that are registered and exist in the real world, and present as infringements to trademark holder rights
  • From AC Chat: In addition to the questions and comments I amended to Greg's draft, I believe we need to consider whether there is any data indicating the extent of the problem this proposal is intended to address. That is, to what extent have these types of non-exact matches been associated with cybersquatting at new gTLDs that resulted in UDRP or URS filings? There is always some element of cost/benefit analysis in policy decisions.
  • Rationale for the proposal includes both addressing problems of infringement on trademarks, as well as associated problems such as website and email addresses used to sell counterfeit goods, fraud, malware, data breach and theft, phishing, etc…
  • Proposal meant to possibly replace and expand on types of matches specific to Trademark Claims in previous proposal by Michael Graham while eliminating possible false positives
  • Consideration of how any of this is applicable to Sunrise should be considered separately – not the point of this proposal (or that of Michael Graham’s)
  • Is data available that identifies a significant problem, which would require/justify an expansion of the generation of Claims Notices?
  • Need to consider practical operational/implementation/feasibility questions in light of any demonstrated evidence of a problem (e.g. cost of software development, additional TMCH requirements/costs)
  • From AC Chat: Yes there is a significant problem.  It is not just a UDRP and URS issue, but involves countless demand letters, takedowns, monitoring and follow up.  I would suggest that better than 90 % of brand owners have experienced these types of issues
  • Focus on UDRP/URS cases does not represent the scope of the problem - private resolution processes also used and part of the problem
  • From AC Chat: @Phil, policy staff is not aware of any data on the extent of the problem that this proposal seeks to address. However, we'd draw the WG's attention to the Analysis Group's work on this point in their report.
  • From AC Chat: @Greg, are you referring to the Hogan Lovells study that WTR just reported on? http://www.worldtrademarkreview.com/Blog/Detail.aspx?g=cfc250b5-6521-4448-8e84-a91d2c5f8236
  • ACTION ITEM: Staff to circulate study in World Trademark Review referred to by Greg Shatan for consideration by the WG
  • Every 3 or 4 letter combinations have been registered under .com, and would create a great number of false positives – if Claims Notices become applicable to them, would create a large scale chilling effect on good-faith registrants
  • From AC Chat: link to a study on typo-squatting: https://lirias.kuleuven.be/bitstream/123456789/471369/3/typos-final.pdf
  • What are the additional costs imposed on the broader community as a result of each additional layers of protection for trademark holders?
  • Should this proposal be considered at a later time as part of the Trademark Claims review?
  • There could be different levels of Claims Notices that go out depending upon which one of these rules were being triggered to issue a given Claims Notice
  • Need to look at this proposal holistically – modifications might be made to the Claims Notice depending on which rule triggers the Claims Notice generation
  • Smarter Claims Notices is another feature that needs to be considered
  • Presumption is that these potential variations will not be registered in the TMCH – criteria of Trademarks registered in the TMCH should remain high in quality - unlikely that trademark holders will want to register all the variations
  • Trademark folks need to consider that a potential vast expansion of Claims the potential receptivity of the GNSO Council to such a proposal, given that there is relatively small participation from contracted parties – something that would generate a great number of Claims Notices to potential registrants with no intent to infringe on trademarks would not be deemed as a undesirable – bad actors will unlikely to be deterred by these notices – a notice going only to trademark holders prompting them to investigate potential misuse of a domain name might be more acceptable
  • Brand owners have no interest in Claims Notices being generated in a manner that would create a burden of reviewing large numbers of notices as a result of false positives that are not deterring bad actors, and simultaneously creating a chilling effect on good-faith registrants
  • ACTION ITEM: Brian Beckham to circulate Version 3.0 of the WIPO Jurisprudential Overview of UDRP Cases paper circulated at INTA meeting to WG mailing list
  • Discussion on this proposal to continue during next week’s call

5. Agree on next steps for open TMCH questions (design marks, GIs, expanding the identical match standard) – e.g. an online survey to poll WG members on the level of support for the various proposals put forward to date or other mechanism to gauge support?

  • Might be premature to poll views on proposals before having access to data that would support them
  • How would polls work within the WG, if there are larger numbers of one group participating?
  • Idea rating sheets/deliberative polling/liquid feedback are used at the IGF, however context is different, as no resolutions are made there
  • Polls/surveys used at this stage are not the same as consensus calls made at the final stage of the WG
  • Polls may be used to gauge the level of support at this point in time on specific proposals
  • Polls used on a weekly basis in the Next-Generation RDS PDP to work on achieving WG agreement
  • WG can use the results of the poll for outreach to the broader community (GNSO SGs/Cs other SOs/ACs)

6. Next steps/next meeting

  • Wednesday, 07 June 2017 at 03:00 UTC for 90 minute duration
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