Notes and Outcomes from Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group meeting 14 Sep 2016
Dear All Please find below the notes and actions arising from today’s meeting. The Working Group (WG) was provided with an extensive overview of the TMCH and its functioning. ACTION: (i) WG participants are strongly encourage to provide information on their experiences and any particularly cases they can provide information on to assist the WG's deliberations, and (ii)Additional possible questions to be shared on mailing list for consideration. The WG then undertook a ‘deep dive' on the TMCH related Charter questions proposing the following additional questions: · TMCH goes into the legality of a trademark too much, this is the responsibility of the trademark owners and their attorneys. · TMCH should act as a nodal agency only without rendering any determination on the legal validity of marks. It should have no discretion. · Questions have been raised about costs beyond those advertised upfront on the TMCH page e.g. renewals through agents and deposits, the WG should work on the true cost of registration. · Has there been 'gaming' or abuse observed in relation to the TMCH? · How are marks which have and have not undergone substantive review been differentiated in the TMCH? · From those jurisdictions which do not provide for substantive review of the mark are any further procedures or analysis undertaken by the TMCH? The next WG meeting will take place on Wednesday, 21 September 2016 at 21:00 UTC and will focus on the Sunrise period. David A. Tait Policy Specialist (Solicitor qualified in Scotland) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org www.icann.org
As I mentioned on the call, I had some comments related to the Independent Review of Trademark Clearinghouse (TMCH) Services Draft Report but think they have some relevance to what should be included in our charter questions. There are references in the report and our charter questions referencing a TMCH registration fee of $150 (per year of course). However, that only applies to the basic submissions to the TMCH. This does not include the hefty deposit charge. Also, while the report mentions costs to the Registrars/Registries, I could find no actual numbers to what those costs are. And, while the report mentions that we need to weigh both costs against each other, it would seem the actual costs to registries and registrars should be critical (keeping in mind that the registry/registrar costs should not include costs associated with RPMs they are required by ICANN to provide (i.e., if there is a cost for a certain function but that function has to be done whether a Claims Service is provided or not, it should not be included)). Again, maybe I missed them so apologize if that is the case. Again, I only did a cursory review of report but I also don’t think I saw a breakdown of what # of TMCH registrations are by agents vs. trademark holders and I think that, as well as the “average” going rate for a one year registration with a trademark agent would be helpful again to better appreciate real costs to trademark owners. The report also states “We also find a very low dispute rate (0.3%) among registrations that receive Claims Service notifications (i.e., new gTLD registrations of domain names that are exact matches of trademark strings recorded in the TMCH). Although we are unable to say exactly why this dispute rate is so low, it is possible that Claims Service notifications are effective at deterring bad faith registrations that would otherwise be disputed, or that trademark holders are not very concerned about registrations made in new gTLDs (i.e., they are more concerned about registrations made in the .com legacy TLD) or have not yet submitted a dispute on these infringing registrations.” I think trying to draw conclusions like these is dangerous without having facts (i.e., How many of the domain names that are subject to claims service notifications are actually active and have objectionable content? As we all know, trademark owners have limited budgets and so if a majority of these domain names are inactive, trademark owners may have made a choice to go after more objectionable ones first.) That is it for now. Thanks! Cordially, Caroline G. Chicoine Fredrikson & Byron, P.A. Phone: 314.991.8486 Fax: 612.492.7077 cchicoine@fredlaw.com<mailto:cchicoine@fredlaw.com> **This is a transmission from the law firm of Fredrikson & Byron, P.A. and may contain information which is privileged, confidential, and protected by the attorney-client or attorney work product privileges. If you are not the addressee, note that any disclosure, copying, distribution, or use of the contents of this message is prohibited. If you have received this transmission in error, please destroy it and notify us immediately at our telephone number (612) 492-7000. The name and biographical data provided above are for informational purposes only and are not intended to be a signature or other indication of an intent by the sender to authenticate the contents of this electronic message.** From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Wednesday, September 14, 2016 1:08 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Notes and Outcomes from Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group meeting 14 Sep 2016 Dear All Please find below the notes and actions arising from today’s meeting. The Working Group (WG) was provided with an extensive overview of the TMCH and its functioning. ACTION: (i) WG participants are strongly encourage to provide information on their experiences and any particularly cases they can provide information on to assist the WG's deliberations, and (ii)Additional possible questions to be shared on mailing list for consideration. The WG then undertook a ‘deep dive' on the TMCH related Charter questions proposing the following additional questions: • TMCH goes into the legality of a trademark too much, this is the responsibility of the trademark owners and their attorneys. • TMCH should act as a nodal agency only without rendering any determination on the legal validity of marks. It should have no discretion. • Questions have been raised about costs beyond those advertised upfront on the TMCH page e.g. renewals through agents and deposits, the WG should work on the true cost of registration. • Has there been 'gaming' or abuse observed in relation to the TMCH? • How are marks which have and have not undergone substantive review been differentiated in the TMCH? • From those jurisdictions which do not provide for substantive review of the mark are any further procedures or analysis undertaken by the TMCH? The next WG meeting will take place on Wednesday, 21 September 2016 at 21:00 UTC and will focus on the Sunrise period. David A. Tait Policy Specialist (Solicitor qualified in Scotland) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org<http://www.icann.org>
Caroline Respondes are in ordene OF your paragraphs: 1. None 2. The overall costs to registrars/registries regarding policing trademarks MUST be kept in mind. While true the policing costs for brand owners may be significant let's not forget that it is primarily their responsibility to police and thus protect the monopoly they have been granted. While I understand that governmental/administrative policies should keep the brand owner cost in mind it must not ignore the benefit being granted. Thus I take umbrage with your comments as to excluding costs of the registrars/registries. 3. No problem. 4. With all respect you take umbrage with the presumptive conclusion (it is) but then offer your own. It could also be that the notice has actually served its purpose which is to advise as to the existence of the mark and the classes as to which it was registered. Thus an equally valid wild guess could be that those who proceed to register a domain following notice do so with the goal of using it in a non-infringing manner. That is exactly how it is supposed to work. I grant you that we should look at actual pages. My suggestion is to visit screenshots.com and regularly load those domains in so that they are captured. Disclosure: I am a director of DomainTools which owns screenshots.com If someone can provide me with a list of domains at issue I can have them loaded. Actually if someone can sends me the list of the domains that triggered a notice I could work with that. It would be at no cost to the group. Sincerely, Paul Keating, Esq.
On Sep 14, 2016, at 8:21 PM, Chicoine, Caroline <CChicoine@fredlaw.com> wrote:
As I mentioned on the call, I had some comments related to the Independent Review of Trademark Clearinghouse (TMCH) Services Draft Report but think they have some relevance to what should be included in our charter questions.
There are references in the report and our charter questions referencing a TMCH registration fee of $150 (per year of course). However, that only applies to the basic submissions to the TMCH. This does not include the hefty deposit charge. Also, while the report mentions costs to the Registrars/Registries, I could find no actual numbers to what those costs are. And, while the report mentions that we need to weigh both costs against each other, it would seem the actual costs to registries and registrars should be critical (keeping in mind that the registry/registrar costs should not include costs associated with RPMs they are required by ICANN to provide (i.e., if there is a cost for a certain function but that function has to be done whether a Claims Service is provided or not, it should not be included)). Again, maybe I missed them so apologize if that is the case.
Again, I only did a cursory review of report but I also don’t think I saw a breakdown of what # of TMCH registrations are by agents vs. trademark holders and I think that, as well as the “average” going rate for a one year registration with a trademark agent would be helpful again to better appreciate real costs to trademark owners.
The report also states “We also find a very low dispute rate (0.3%) among registrations that receive Claims Service notifications (i.e., new gTLD registrations of domain names that are exact matches of trademark strings recorded in the TMCH). Although we are unable to say exactly why this dispute rate is so low, it is possible that Claims Service notifications are effective at deterring bad faith registrations that would otherwise be disputed, or that trademark holders are not very concerned about registrations made in new gTLDs (i.e., they are more concerned about registrations made in the .com legacy TLD) or have not yet submitted a dispute on these infringing registrations.” I think trying to draw conclusions like these is dangerous without having facts (i.e., How many of the domain names that are subject to claims service notifications are actually active and have objectionable content? As we all know, trademark owners have limited budgets and so if a majority of these domain names are inactive, trademark owners may have made a choice to go after more objectionable ones first.)
That is it for now. Thanks!
Cordially,
Caroline G. Chicoine Fredrikson & Byron, P.A. Phone: 314.991.8486 Fax: 612.492.7077 cchicoine@fredlaw.com
**This is a transmission from the law firm of Fredrikson & Byron, P.A. and may contain information which is privileged, confidential, and protected by the attorney-client or attorney work product privileges. If you are not the addressee, note that any disclosure, copying, distribution, or use of the contents of this message is prohibited. If you have received this transmission in error, please destroy it and notify us immediately at our telephone number (612) 492-7000. The name and biographical data provided above are for informational purposes only and are not intended to be a signature or other indication of an intent by the sender to authenticate the contents of this electronic message.**
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Wednesday, September 14, 2016 1:08 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Notes and Outcomes from Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group meeting 14 Sep 2016
Dear All
Please find below the notes and actions arising from today’s meeting.
The Working Group (WG) was provided with an extensive overview of the TMCH and its functioning.
ACTION: (i) WG participants are strongly encourage to provide information on their experiences and any particularly cases they can provide information on to assist the WG's deliberations, and (ii)Additional possible questions to be shared on mailing list for consideration.
The WG then undertook a ‘deep dive' on the TMCH related Charter questions proposing the following additional questions:
· TMCH goes into the legality of a trademark too much, this is the responsibility of the trademark owners and their attorneys.
· TMCH should act as a nodal agency only without rendering any determination on the legal validity of marks. It should have no discretion.
· Questions have been raised about costs beyond those advertised upfront on the TMCH page e.g. renewals through agents and deposits, the WG should work on the true cost of registration.
· Has there been 'gaming' or abuse observed in relation to the TMCH?
· How are marks which have and have not undergone substantive review been differentiated in the TMCH?
· From those jurisdictions which do not provide for substantive review of the mark are any further procedures or analysis undertaken by the TMCH?
The next WG meeting will take place on Wednesday, 21 September 2016 at 21:00 UTC and will focus on the Sunrise period.
David A. Tait Policy Specialist (Solicitor qualified in Scotland) Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 Email: david.tait@icann.org www.icann.org _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Thanks for the update, David. Sorry I was absent from the meeting but I was on an airplane at the time. It looks like some good progress was made, and I look forward to being back in the loop next week. Best to all, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Wednesday, September 14, 2016 2:08 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Notes and Outcomes from Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group meeting 14 Sep 2016 Dear All Please find below the notes and actions arising from today’s meeting. The Working Group (WG) was provided with an extensive overview of the TMCH and its functioning. ACTION: (i) WG participants are strongly encourage to provide information on their experiences and any particularly cases they can provide information on to assist the WG's deliberations, and (ii)Additional possible questions to be shared on mailing list for consideration. The WG then undertook a ‘deep dive' on the TMCH related Charter questions proposing the following additional questions: • TMCH goes into the legality of a trademark too much, this is the responsibility of the trademark owners and their attorneys. • TMCH should act as a nodal agency only without rendering any determination on the legal validity of marks. It should have no discretion. • Questions have been raised about costs beyond those advertised upfront on the TMCH page e.g. renewals through agents and deposits, the WG should work on the true cost of registration. • Has there been 'gaming' or abuse observed in relation to the TMCH? • How are marks which have and have not undergone substantive review been differentiated in the TMCH? • From those jurisdictions which do not provide for substantive review of the mark are any further procedures or analysis undertaken by the TMCH? The next WG meeting will take place on Wednesday, 21 September 2016 at 21:00 UTC and will focus on the Sunrise period. David A. Tait Policy Specialist (Solicitor qualified in Scotland) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org<http://www.icann.org> ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7752 / Virus Database: 4647/12863 - Release Date: 08/23/16 Internal Virus Database is out of date.
participants (4)
-
Chicoine, Caroline -
David Tait -
Paul Keating -
Phil Corwin