Dear all,

We have not received any interest in the suggestion of a call to be arranged between this Sub Team, the TMCH Providers, and our GDD colleagues who have been assisting us with interfacing with the TMCH Providers and other contractors (e.g. Analysis Group). Please let us know therefore if you have any comments concerning the suggested clarifications to the Sub Team’s original questions to the TMCH Providers – please see the emails below for these, which are indicated in red.

As noted, the idea is to have all such comments or suggestions discussed by the Sub Team via this mailing list by tomorrow (Tuesday 29 November), so that a decision can be made as to whether it will be the original questions or amended ones that are sent to the TMCH Providers by the end of this week.

Thanks and cheers

Mary

From: Mary Wong <mary.wong@icann.org>
Date: Wednesday, November 23, 2016 at 01:55
To: "gnso-rpm-tmch@icann.org" <gnso-rpm-tmch@icann.org>
Subject: PLEASE REVIEW & RESPOND: Clarifications requested on Sub Team questions to the TMCH Providers

Dear all,

The Working Group co-chairs have just held a planning meeting with staff, based on which they would like to request that Sub Team members please review the note and questions below, and respond with your views to this mailing list as soon as possible on the following points:

- Whether you think a call with the TMCH Providers and GDD support staff to go through and clarify the questions is needed. If you believe a call should be done, please let us know by this Friday 25 November if possible.

- If you do not think a call with the Providers is necessary, please indicate whether you think the questions should be sent to the Providers as drafted by the Sub Team, or if clarifications along the lines suggested by GDD staff (or other adjustments) should be made. If you believe clarifications or amendments are needed, please send suggested edits to this list by next Tuesday 29 November, to allow other Sub Team members time to comment and the finalized questions to be sent to the Providers by the end of the week if possible.

Thanks and cheers,

Mary

From: Mary Wong <mary.wong@icann.org>
Date: Tuesday, November 22, 2016 at 02:36
To: "gnso-rpm-tmch@icann.org" <gnso-rpm-tmch@icann.org>
Subject: Clarifications requested on Sub Team questions to the TMCH Providers

Dear TMCH Data Gathering Sub Team members,

We have received feedback from our GDD colleagues who we had asked to assist with forwarding the Sub Team’s questions to the TMCH Providers. As some of the clarifying questions seem to go toward substantive issues, we thought it preferable to send them back to the Sub Team for your confirmation and discussion. If it will help, we can arrange a call between the Sub Team, our GDD colleagues who are working with the Providers, and perhaps the Providers as well, to work through the questions so that the Providers have a good sense of what is being asked, and can tell us what they think they can provide in terms of data and input.

Please review the initial feedback from GDD below (in red), and let us know if you would like us to go ahead to arrange the suggested call, perhaps for next week or the week following.

• What is the rate of rejection of an attempted registration of a trademark into the TMCH by country/region? Is it safe to assume that the request here is referring to the country/region of the trademark holder?

• What were the most frequently asked questions?  (Note – not necessarily what made it to the website but, rather, what questions did you get the most?) Is this related to the use of the Trademark Clearinghouse (by trademark holders) or the Trademark Database (by Registries and Registrars)?

• If you are able, please provide the number and/or percentages of SMD files that were used in Sunrise periods corresponding to specific time periods (e.g. Jan/June/Sept 2014; Apr/Sept 2015; Apr/Sept 2016).

• Are the registration totals contained within the various monthly/quarterly reports made to ICANN cumulative?

• What is meant by the term ‘expired marks’ in the various monthly/quarterly reports made to ICANN?

• In relation to the statistics regarding the number of marks submitted to the TMCH, as noted in the various monthly/quarterly reports to ICANN, does this statistic relate to individual marks that are submitted, or the number of labels generated, or the number of SMD files created?

• How are marks cancelled within national/regional registries handled at the TMCH level, if validation is only done annually? In other words, what is the TMCH process (if any) relating to marks that are cancelled or expire: reactive (e.g. TM owner/agent obligations) or proactive?

• If it is possible, please provide a break down of where the corporate headquarters of those registrants using TM agents are located. Is this breakdown meant to be by country?

• Some data has been provided regarding outreach efforts; if you can, please provide additional information on the precise nature of the activities undertaken and who was the audience for this? Were any outreach efforts made to potential registrants or trademark owners?

- How much time and resources were expended on educating TM owners and/or registrants on the TMCH?

- Was outreach and education part of the TMCH remit? What are the contractual obligations for education imposed by ICANN, if any?

- In what regions/languages were outreach sessions held?

• How many design marks have been submitted and validated? What is your criteria for validating these? How are you differentiating between design marks in the practical application of the TMCH guidelines?

• In relation to Claims Notice statistics, can any discernible trends be noted in relation to: (i) registrar gaming and (ii) registrant turn-back as a result of a possible “chilling effect” resulting from the issuance of a Claims Notice? The question seems to ask about the effect of displaying a Claims Notice Information Service (CNIS) service to a potential registrant. Can the Sub Team provide a definition for “registrar gaming”? The TMDB has no visibility to whether a label is registered by a registrant or not – only the registrar would know that. The TMDB only logs that there has been a CNIS request for a label.  Is additional clarity available for the second question?

• How many contracts are there for private uses of the TMCH? How many of them involve blocking mechanism services? Is this asking about “Ancillary Services” that are allowed under Section 2.4 of the contract, or to services offered by the TMCH to third parties, i.e. contracts other than that with ICANN?

- Are there contracts for other uses, and if so, how many?

- If there are no such contracts, is the TMCH aware of other uses?

• How many "court-validated" marks are there currently in the TMCH?

• How many marks in the TMCH fall under the following category: "Other marks that constitute intellectual property and meet a registry's individual requirements"? Follow-up question: how would Deloitte keep these marks from being used in the Sunrise and Claims periods of other registries?

• Did any trademarks that applied for entry into the TMCH fail in the “actual use” test? If so, how many? Did you receive any complaints of trademarks registered in the TMCH that they were not in actual use?

• How many TMCH records include a TM+50 list; and how many are on this list on average? How many registrations were made for entries on the TM+50 list?

• Have any gTLDs used the TMCH option to limit registrations by goods and services in a particular registration period? Does this refer to a given registry’s registration policies which are posted at https://newgtlds.icann.org/en/program-status/sunrise-claims-periods prior to the start of Sunrise, Claims or Limited Registration Periods?

• How many marks were rejected? What is a breakdown of the reasons? This question appears to be a superset of the question above related to “actual use.” Can we consolidate these two questions into this one and then handle the additional question about trademark complaints and again perhaps provide a breakdown if one is available?

• How many SMD files has the TMCH cancelled?  How many TMCH disputes have been brought relating to SMD file validity for TMs that are cancelled/expired?

On the TMCH page on the New gTLD microsite, the process of invalidating a trademark is described as below. Can the Sub Team clarify that this is what is being asked about and, if so, use the term “revocation?”

SMD Revocation

Revoking an SMD is the process of invalidating an SMD before its expiration date. The Trademark Clearinghouse (TMCH) may invalidate an SMD for several reasons, including security or data validation issues. The list (SMDRL) of revoked SMDs is maintained as part of the Trademark Database (TMCH) and published as specified in section 6.2 of the TMCH Functional Specifications. If your product uses SMDs, you must verify that the SMD has not been revoked as described in section 5.3.2 of the aforementioned Internet-draft.

• Have there been any Sunrise DRPs relating to marks relied on at Sunrise which had already expired or been cancelled?

The Dispute Resolution Process covers three types of disputes:

· Disputes brought by Trademark Holders or Trademark Agents alleging that the Clearinghouse incorrectly rejected a Trademark Record;

· Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record; and

· Disputes brought by Third Parties alleging that a Trademark Record is no longer valid based on new information (i.e. information not available to the Verification Provider at the time it reviewed the Trademark Record).

Would it be preferable to get a list of disputes by type?

Further clarity may also be needed regarding the “already been canceled” part of the question - the Registry is responsible for downloading the SMDRL every 24 hours and has to check against that prior to validating an SMD. Is the question related to the theoretical 23 hours, 59 minutes and 59 seconds during which that file is not refreshed by the registry? Or is the question asking about registries that did not check the SMDRL prior to issuing the sunrise registration?

• How many DPML services are you supporting?

Assuming that DPML stands for Donuts offering the service called Domains Protected Marks List, there is only one DPML service called that. Minds+Machines has a similar service called Minds + Machines Protected Marks List or MPML. Both of these services are very similar in that they require the trademark holder to have a valid SMD file. Does the Sub Team consider that as being supported by the TMCH, or is this a broader question about blocking services in general?

• What is the geographic distribution of those who record marks in the TMCH – bearing in mind that TMCH agents may be in a different country to the TM owner and that TM owners may record a mark registered in a different country to the one they are based in?

• What is the percentage of trademark registrations, Sunrise registrations and Claims Notices sent by country / region (bearing in mind that TMCH agents may be in a different country than the TM owner and that TM owners may record a mark registered in a different country from the one in which they are based)?

There may be multiple questions here and perhaps a misunderstanding of terms.

The first part of the question asks “What is the percentage of trademark registrations… by country/region?” By using the term “trademark registrations”, did the Sub Team mean a total of the Sunrise registrations and Claims registrations?

The second part of the question asks for the percentage of Sunrise registrations… by country/region. Is this asking for the location of the registrant by country/region or the location of the trademark holder (or agent)?

The third part of the question asks for Claims Notices sent. By the phrasing, can it be assumed that this does not mean Claims Notice Information Service (CNIS) notices displayed to potential registrants, but rather the Notice of Registered Domain Name (NORN) files sent to trademark holders?

Thanks and cheers

Mary and David