Dear all,

In view of Greg’s proposal (attached) from Monday, the agenda for the call this Wednesday 31 May will be adjusted slightly, as follows:

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

In addition, as Greg’s proposal refers to Governmental Advisory Committee (GAC) advice from May 2011, the Working Group co-chairs have asked staff to provide some background on that point. We hope the following notes are helpful:

• The reference to the GAC’s May 2011 advice is to the GAC’s comments to the April 2011 version of the AGB (now archived as AGB version 6): https://gacweb.icann.org/download/attachments/28278837/GAC%20Comments%20on%20the%20new%20gTLDs%20-%2026%20May%202011.pdf?version=1&modificationDate=1312360275000&api=v2

• Following further consultations between the Board and the GAC, ICANN published notes in response to the GAC Scorecard that, on this issue, disagrees with the GAC that the TMCH RPMs should go beyond identical match: https://archive.icann.org/en/topics/new-gtlds/board-notes-gac-scorecard-clean-15apr11-en.pdf (Section 6.1.3, Page 14)

• Further along the implementation lifecycle, ICANN published an Explanatory Memorandum (September 2012) on how the identical match rules will be applied: https://newgtlds.icann.org/en/about/trademark-clearinghouse/matching-rules-24sep12-en.pdf

• Finally, the TMCH review that was done recently by the Analysis Group’s was a result of the GAC’s request for such an exercise, contained in its May 2011 comments (https://www.icann.org/news/announcement-2017-02-23-en). The review includes analysis of the benefits/burdens of expanding the identical match rule for Claims notices, and concludes that there is:
  • “no clear evidence that expanding the matching criteria will outweigh the potential costs of doing so. Registration activity by trademark holders and third-party registrants is disproportionately centered around exact matches of trademark strings rather than variations of trademark strings.”

Thanks and cheers

Mary

From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com>
Date: Monday, May 29, 2017 at 22:11
To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: [gnso-rpm-wg] A Proposal for Smarter Non-Exact Matches

All,

As I've mentioned earlier, I think that a proposal to use non-exact matches other than "mark contained" matches ("dumb matches") makes sense to pursue.  Various types of matches have been discussed; however, there has been no actual proposal for "smarter" matches that can be used by the group.

The attached proposal seek to fill that gap.  It is more in the nature of an addendum to the initial proposal on non-exact matches.  However, it does provide a more formal proposal on the types of non-exact matches to be considered.  The intent is to provide a sufficient framework to discuss these types of non-exact matches and to add these non-exact matches to the proposal.

I hope that this helpful to the work of the group.

Greg