2018-11-14 Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP WG

Notes/ Action Items

Actions:  Staff will send an inquiry to the WG on the timing of ongoing calls, with separate queries as to whether 1) the preference is for 1700 UTC or 1800 UTC for regular calls, and 2) what is the preference for the APAC-friendly time for the last call of the month.

Notes:

1. Statements of Interest:  Maxim Alzoba: NOTE: I have updated my SOI, I am no longer in GNSO SSC

2. TMCH Refresher Presentation (How it Works):

Link to the Functional Spec: https://tools.ietf.org/pdf/draft-ietf-regext-tmch-func-spec-04.pdf   All the three links can also be found on the documents portion of the Working Group wiki space for the TMCH:  https://community.icann.org/pages/viewpage.action?pageId=61606864  

-- Question: Does the SMD have an expiration date?  Answer: It has an expiration and also a revocation option. The SMD has an expiration date, and the SMDRL (SMD Revocation List) can be used to actively revoke an SMD if necessary.

-- Question: If the mark is S&Y could one of the marks by SANDY?  Answer: The & can be replaced by the word "and".

-- Question: how does this work when it is a "pre-registration."  Answer: Acknowledged at the time of an application.

-- Question: Is the text of the claims notice shown to registrants consistent across registrars? Answer: See: Exhibit B of the TMCH Operational Requirements for the prescribed text of the Claims Notice: https://newgtlds.icann.org/en/about/trademark-clearinghouse/rpm-requirements-30sep13-en.pdf

-- Question: Will S&Y generate a U-label of SANDY? Answer: Yes.

-- Question: How is the language detected?

-- Question: If the language is French, does M&T become METS?  Answer: It is determined by the official language of the jurisdiction where the mark is registered.  And there could be more than one official language.  Also, note, "On translations, the TMCH Operational Requirements state: "  The Claims     Notice MUST be provided by the registrar to the potential domain name registrant in English and SHOULD be provided by the registrar to the potential domain name registrant in the language of the   registration agreement".

-- Question: Can we see some example SMD files?  Answer: See: https://tools.ietf.org/html/rfc7848 -> Definition of SMD

-- Question: SMD File -- some registries for Sunrise had different rules.  Example: Spanning a dot -- if the dot was part of the trademark name -- .tattoo -- allowed johns.tattoo.  Answer: Will make a note and get back to you.

-- Question: On the example of expanding the dots Sunrises -- did these also get claims notices and NORNs?  Answer: There were certain registry services and services offered by the TMCH that would have different results.  We will check on that and get back to you.  what Karen is describing is limited to what the specific ICANN rules require as to Sunrise and Claims (not additional sunrise eligibility requirements and/or other processes offered on a voluntary basis by some registries).

-- Question: What is  U-label?  Answer: It is a unicode label; in Arabic script that would be the U-label.

-- Question: Does a registrar have a list of the marks in the clearing house, or is there a real-time check?  Answer: The registrar does not have access to a list; they can get trademark information from the Claims Notice Information Service.  If you are registry you do have a list, but it is a list of labels - potential list of labels that would trigger a claims notice.

-- Question: So everyone new registry would have a copy of the labels -- would that match the marks?  Answer: Registries would get the DNL list that would match the marks that were registered.

-- Question: Since the list is non-public, what confidentiality is involved? Answer: Registrars and registries have access to the TMCH based on their terms of service.  Mary Wong: Here are the Terms of Service that all registries and registrars must agree to in relation to usage of the TMCH/TMDB:  https://marksdb.org/tmdb/public/tandc

-- Question: Trademark +50 service and how those entries are in the database and how that works?  Answer: Allows for a rights holder that has a mark subject to UDRP types of cases to be submitted as additional labels that can be verified and added to the list of matching labels.  There is text as to why those labels are in there.

-- Question: If a rights holder wants to bring a UDRP and wants to use the notification or the registration in the TMDB proves..is there a method to determine that the mark was in the TMCH at that time.  Is there another method to prove to a third party that your mark is in the TMCH.  Answer: If it is my mark I can show that it was verified as of some date.  Not sure if there is another way.

-- Question: With regards to the notices that go out to the trademark holder is there a database that a trademark holder got a notice on a certain date? Answer: Not that we know of.  The more general information is that the registry claims period was from this date to this date and the notice would have been sent.

-- Question: Talks at one time about the issue of one clearing house or multiple clearing houses, does staff have a perspective?  Answer: No we don't have a position; at the time that the clearing house was set up for volume or geographic scope or other reasons it might make sense to have a number of validators.  To our knowledge there haven't been discussions on that.

-- Question: The contracts that ICANN has with Deloitte -- how long does it last and who is overseeing that contract and ensuring that Deloitte is abiding by its rules?  Answer: We don't have the exact expiration date, but believe it was a 5-year contract.  The renewal process was that it was automatic unless cancelled.  “The initial term of the agreement expires on the fifth anniversary of ICANN’s entry into a registry agreement under the new gTLD program, with consecutive one-year renewals thereafter unless either party provides 180 days’ notice of intent not to renew."

-- Question: Is there something if you as a rights holder filed under TMCH and you didn't get a notice, is there a way that you can demonstrate that no notice was sent out?  Answer: As to whether the notice was sent, you could submit an inquiry into ICANN Contractual Compliance.

-- Question: Could we get a copy of the agreements with Deloitte?  Also, did ICANN ever audit Deloitte?  Answer: We will send the links and we will check on the audit question.  See: Summary of IBM agreement:  https://newgtlds.icann.org/en/about/trademark-clearinghouse/database-framework-02jul13-en.pdf

-- Question: What happens if the TMCH is done?  Answer: If we get notices we will try to notify people.

3. Timing of WG meetings:

-- ACTION: Staff will send an inquiry to the list re: 1700 UTC versus 1800 UTC.  Include a separate inquiry concerning the timing of the APAC-friendly call at the end of the month.

-- There is no meeting scheduled for 21 November.  The next meeting is scheduled for 28 November, if necessary.