2017-07-19 Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP WG

Notes/ Action Items

Action Items:

1. Staff to replace threshold question of Question 4 of Trademark Claims with: Is the exact match requirement on Trademark Claims serving the intended purposes of the Trademark Claims RPM?
2. Staff to updated Question 4 of Trademark Claims with the proposed question addressing IDN issues, and include additional examples provided by Amadeu Abril during WG face-to-face meeting in ICANN 59
3. Staff to propose a rewording of question 6 of Trademark Claims, and suggest where to place it – as a sub-question in question 2 or 3
4. Staff to provide a breakdown of responses for each question in the poll by stakeholder group, as responders identified themselves in the responses to Question 2 of the poll

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 (via Adobe Connect and phone bridge only); updates to Statements of Interest

• No updates to SOIs

2. Continue discussion of TM Claims refined Charter questions (30 minutes)

Question 2: 

• Add a question asking if the proof-of-use requirement of Sunrise should be extended to trademark claims
• Regarding the data requirement on potential spike in registrations subject to URS following the conclusion of a claims period, the data should be collected in relative terms to each gTLD, in addition to absolute or total figures
• Questions should address both claims notices to domain name applicants as well as notices of registered name sent to brand owners

Question 4:

• Suggestion to change threshold question to: Is the exact match criteria for trademark claims notices appropriate?
• Suggestion 2 for consistency with approaches to other questions: Is the exact match criteria for Trademark Claims Notice serving its intended purpose?
• Suggestion 3: Is the exact match requirement on Trademark Claims serving the intended purposes of the Trademark Claims RPM?
• ACTION ITEM: Staff to replace threshold question of Question 4 with “Suggestion 3”
• It was mentioned during discussion that some registrars did not participate in TLDs during the Sunrise and Claims Periods - how will the availability of registrars onboarding with registries be impacted?
• Q4.b.i: Footnote to be added to address comment made concerning IDN variants of marks not being accepted in the TMCH – this should be factored into the analysis, such as examples suggested at WG face-to-face meeting including accents on letters in languages other than English
• Are there smaller changes to the exact match criteria that should be made to accommodate IDNs more easily?
• Possible to add new sub-question to Q4 to address IDN issues
• ACTION ITEM: Staff to updated Q4 with the proposed question addressing IDN issues, along with additional examples from Amadeu
• Q4 should also address comments submitted by Maxim via email regarding machine-readable semantics of the non-exact matches document/analysis of the historical registration data and potential Issues for Registries and Registrars, as well as examples submitted in the proposal by Greg Shatan
• Suggested study to be performed by a third party on translation of ideas into semantics of programming language and testing against historical data - is this the time to run this study, or should it be deferred until after harm on limiting use to exact matches only is established? Will it provide valuable information on feasibility/practicality of the proposals on non-exact matches? Will it provide insight on helpful modifications to the proposals on non-exact matches? Will it postpone or delay the review of TM Claims?
• From AC Chat: Feasibility from the TMCH point of view, Registry point of view, Registrar point of view, all of the above?
• Trademark Claims Sub Team has made aggressive suggestions for data requirements – what resources are available to the WG to perform studies?
• Staff and Co-chairs have begun going through data requirement suggestion to determine practical and feasible means of data collection, as well as what data requirements are of higher priority
• Studies can be requested via the GNSO Council, but would be preferable to identify and consolidate all requests for studies prior to sending them to the Council
• Financial and technical considerations for registrars and registries should be made when discussing proposals for non-exact matches (already included in data requirement 4(c))

Question 6:

• Question is phrased in a one-sided manner, needs to be more neutral - might benefit from also adding question on the timing of when notices are sent
• Suggestion to move question 6 to questions 2 or 3 as a sub-question
• Question can be rephrased to generically address timing of the presentation of the notices
• From AC Chat: If there are problems identified with pre-registration, then post-registration claims may be a potential solution...but we should not address until pre-registration is shown as the problem
• Does shifting the Claims Notice to only be displayed post-registration undermine the intended purpose of the RPM, instead of making improvements? How does this affect both domain name applicants and brand owners?
• Question might have been brought up due to timing and presentation in different scenarios, where the process doesn’t work, such as when resellers are providing services on behalf of registrars
• ACTION ITEM: Staff to propose a rewording of this question, and suggest where to place it in question 2 or 3

3. Confirm scope of any further work on Sunrise and Claims questions, and whether that is to be done by the full WG or the Sub Teams

• Co-chairs and staff will discuss a workplan to both answer questions that do not require data gathering, as well as a plan to collect data that has been identified, and send a proposal to the WG for review
• There is no perceivable additional work required at the time being for work by the two Sub Teams

4. Review results of poll on Open TMCH Questions and agree on next steps for the general TMCH review

• Document with answers to poll questions is a collation of the responses presented as bar charts and percentages
• Questions meant to address remaining 2 of the open Charter questions primarily on design marks and geographical indications
• One respondent submitted two sets of answers, one was removed from the results after consulting with the WG member involved
• One set of responses was excluded, as the respondent was not a WG member

Question 3: 

• Responses are fairly evenly distributed between Yes and No
• Yes: 50%, No: 47.37%, I can live with this: 2.63%
• General Comment on questions: Poll appeared to have been designed to ask in different ways whether stylized marks should be accepted in the TMCH, but phrased in a way to exclude them by testing consistency of responses across the different questions
• Poll results are not meant to be determinative, or a formal consensus call
• Question 3 requires a better breakdown of the even split - WG members needs to know a little more about how the different stakeholder groups responded to this question
• ACTION ITEM: Staff to provide a breakdown of responses for each question by stakeholder group, as they identified themselves in the responses to Q2 

Question 4:

• Yes: 18.92%, No: 75.68%, I can live with this: 5.41%
• Some respondents answered yes or no, but qualified their responses in the comments by saying their answer would be different under certain conditions (if all or part of the text portion is disclaimed) - may indicate different positions than those who simply responded yes or no

Question 5:

• Yes: 28.95%, No: 63.16%, I can live with this: 7.89%
• Comments raised about the TMCH operator making valued judgments, as well as potential expansion of trademark owners’ rights
• Comment on a rule that requires a 3-character minimum in a domain name does not make sense

Question 6:

• Yes: 18.92%, No: 72.97%, I can live with this: 8.11%
• Qs 5 and 6: Assumption in answering these questions is that all the text portion of the marks being polled on were disclaimed in their entirety - not clear if all WG members were clear on this
• Focus of value of the survey should be on getting a sense of how different groups provided responses – will not revisit how the questions were worded

Question 7:

• More even responses for this question than Q6
• Yes: 47.37%, No: 52.63%, I can live with this: 0%
• Comments submitted raising concerns about Deloitte making decisions that "disaggregate" the mark

Question 8:

• Yes: 13.51%, No: 78.38%, I can live with this: 8.11%
• Concerns raised in comments on this question are consistent with concerns raised on other questions on composite marks

Question 9:

• More answers indicating no than yes
• Yes: 33.33%, No: 61.11%, I can live with this: 5.56%
• Comments noted lack of clarity on the use of the word “descriptive” – previous discussions took place on the differences between what “descriptive” and “distinctive” mean, or what is or isn’t a “dictionary term” – question was meant to tease out the views of WG members on this
• Question does not focus on distinction between stylized vs composite mark, but rather that the mark is purely descriptive in nature

Question 10:

• Several suggestions on who should decide if the text is descriptive, with little agreement on a specific suggestion
• Several caveats to answers provided in comments regarding what may be meant by "descriptive" - questions 9 and 10 may not be conclusive until these caveats are addressed
• WG members should continue to review the results of the poll, and raise comments, concerns and/or suggestions – noting the concerns raised during this call
• In the United States, Supplemental Register is considered a registered mark despite not qualifying for the Principle Register – not clear why Supplemental Register marks are not included in the TMCH

Question 11

• Yes: 76.92%, No: 10.26%, I can live with this: 12.82%
• Comments on how this question was phrased, particularly the inclusion of “at this time”, means that it is theoretically possible that some facts or issues may be identified in the future, which may result in a need to revisit this question

Question 12

• Yes: 33.33%, No: 48.72%, I can live with this: 17.95%

Question 13

• Yes: 53.85%, No: 35.90%, I can live with this: 10.26%
• Note that Deloitte has informed the WG that some geographical indications are included in the TMCH under the category being addressed by this question “marks protected by statute or treaty”, despite not being registered trademarks

5. Next steps/next meeting (and confirm rotation times) 

• Launch consensus call on closing out GIs, with a separate email to include a question about what people understand by the category of "marks protected by statute or treaty"
• Staff to update document with additional column (if possible) to attribute each comment to the group that the respondent identified with (e.g. registrar, brand owner etc.), and perform a second review of the responses of the poll questions (might be necessary to conduct this second review via email to include WG members who do not make it to calls)
• Next call will be on 26 July at 17:00 UTC
• First three calls of each month will be scheduled at 17:00 UTC, and fourth call will be at the APAC-friendly time at 03:00 UTC