Dear all,

This message follows up on the first Action Item noted by Amr (below), i.e. staff to circulate documentation on the “proof of use” requirement. We hope the following links and notes, provided in chronological order of their publication, are helpful.

April 2011: Explanatory Memorandum from ICANN noting the introduction of the “proof of use” requirement in Version 6 of the Applicant Guidebook (AGB)

• This clarifies that the introduction of this element was a result of Board consideration of GAC advice that all trademarks from all jurisdictions should be treated equally; see Pages 4-7 of the Memorandum: https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-use-15apr11-en.pdf.

October 2011-September 2012: Discussions within the Implementation Advisory Group (IAG)

• The IAG discussed methods of implementing the “proof of use” requirement, framed by the following business requirements and elements:

“(1) Protect the existing legal rights of registered mark holders

(2) Limit creation of new requirements affecting trademark holders

(3) Ensure financial and operational feasibility

(4) Avoid imposing a role for the clearinghouse that is inconsistent with the role agreed upon by the community

(5) Establish a standard that is globally accessible

(6) Avoid unfair prejudice in favor of or against any particular TM holder

A single standard should be applicable across all jurisdictions, to avoid confusion and to provide service to users across the globe.  A process that minimizes subjective reviews by the Clearinghouse will serve this goal and will also help to minimize the costs for Clearinghouse users.”

• Note that Pages 31-35 of the Summary of IAG Input document includes additional comments by individual IAG members that may be helpful to our Working Group’s review of this topic: https://newgtlds.icann.org/en/about/trademark-clearinghouse/summary-iag-input-26sep12-en.pdf

November 2013: TMCH Guidelines updated by Deloitte

• In addition to setting out examples of acceptable evidence of use, the Guidelines state that TMCH verification of samples submitted by a TM holder is to ensure that “the sample submitted is a sample that evidences an effort on behalf of the trademark holder to communicate to a consumer so that the consumer can distinguish the product or services of one from those of another” (see Pages 32-33 of the TMCH Guidelines: http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf.)

• Note that if a TM agent is used to submit marks to the TMCH, the TM holder has to sign a declaration for proof of use, which provides in part that the information is “to the best of [the TM holder’s] knowledge, complete and accurate, that the trademarks set forth in this submission are currently in use in the manner set forth in the accompanying specimen, in connection with the class of goods or services specified when this submission was made” (see http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/Proof%20of%20use-signed%20declaration%20TM%20Agent.pdf).

September 2015: Staff Paper on RPMs, reviewing data and community input to inform the GNSO Issue Report preceding this PDP

• The paper clarifies that the “proof of use” requirement is “intended to ensure that only holders of marks that demonstrate “use” are given the exclusionary right of Sunrise eligibility, in order to prevent abuses and provide equal treatment to all rights holders. This requirement is intended to benefit trademark holders in that it helps a trademark holder that has truly used its mark to identify and distinguish its products or services from others.” Pages 42 and 52 of the Paper contain a brief summary of the community input relating to how this requirement has been implemented by the TMCH: http://newgtlds.icann.org/en/reviews/rpm/rpm-review-11sep15-en.pdf.

• The full text of all public comments received on the draft version of the Staff Paper can be retrieved here: https://forum.icann.org/lists/comments-rpm-review-02feb15/; those comments relevant to “proof of use” were summarized on Pages 7-10 of the Staff Summary of Public Comments: https://www.icann.org/en/system/files/files/report-comments-rpm-review-29may15-en.pdf.  

If we may, staff would like also to take this opportunity to remind those members who have not had a chance to review the relevant historical documentation to try to do so, in particular the 2015 Staff RPM Paper linked above, as the questions and community input may be helpful in providing additional background to our Working Group’s review of each individual RPM from the 2012 New gTLD Program round.

Thanks and cheers

Mary

From: <gnso-rpm-wg-bounces@icann.org> on behalf of Amr Elsadr <amr.elsadr@icann.org>
Date: Friday, August 4, 2017 at 13:40
To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: [gnso-rpm-wg] Action Items - GNSO Review of all RPMs in all gTLDs PDP WG Call - 3 August 2017

Dear Working Group Members,

Below are the action items from the WG call on 3 August 2017. The action items, notes, meeting document, recording and transcripts have been posted to the meeting’s wiki page here: https://community.icann.org/x/vQchB[community.icann.org]

Thanks.

Amr

Action Items:

1. Staff to circulate existing documentation on proof-of-use required for eligibility to participate in Sunrise Registration including documentation made available by the TMCH, in addition to comments offered by the community on the extent to which the current practice by the TMCH is, or is not consistent with the intended proof-of-use standards (presented in the staff paper reviewing the RPMs in preparation for this PDP)
2. Staff to request WG members’ feedback on the mailing list, regarding the Preamble questions about whether abuses of Sunrise registration periods have been documented by different stakeholders – WG members to submit feedback by 7 August COB