All,

There seems to have been a lot of visceral reaction to my comments at the Council meeting to leaving open the possibility of combining the RPM implementation of Phase 1 IRT with the SubPro IRT (assuming SubPro Recommendations get adopted).

I would like to provide a little bit of context and perhaps be a little more specific at which elements of the RPM PDP Phase 1 should logically be combined with the SubPro Recommendations.  In particular, there are some recommendations that the RPM group has made that direct changes to be made to the Applicant Guidebook for subsequent rounds of new gTLDs, or for changes to be made to the Base Registry Agreement.  Those are the recommendations that should logically be joined with the SubPro IRT.

For example:

Sunrise Recommendations:  1-4 and 8 (although technically 2-4 just say status quo should be maintained). One Example below:

• Sunrise Final Recommendation #1: The Working Group recommends that the Registry Agreement for future new gTLDs include a provision stating that a Registry Operator shall not operate its TLD in such a way as to have the effect of intentionally circumventing the mandatory RPMs imposed by ICANN or restricting brand owners’ reasonable use of the Sunrise RPM.
• Subpro Recommendation 36.4:  ICANN must add a contractual provision stating that the registry operator will not engage in fraudulent or deceptive practices. In the event that ICANN receives an order from a court that a Registry has engaged in fraudulent or deceptive practices, ICANN may issue a notice of breach for such practices and allow the registry to cure such breach in accordance with the Registry Agreement. Further, in the event that there is a credible allegation by any third party of fraudulent or deceptive practices, other than as set forth in above, ICANN may, at its discretion, either commence Dispute Resolution actions under the Registry Agreement (Currently Article 5 of the Registry Agreement), or appoint a Panel under the PICDRP. For the purposes of a credible claim of fraudulent or deceptive practices the Reporter (as defined by the PICDRP) must only specifically state the grounds of the alleged non-compliance, but not that it personally has been harmed as a result of the Registry Operator's act or omission.

Rationale:  Both of the above recommendations stem from the same types of discussions and both ask that the new gTLD Agreement be changed.  SubPro viewed circumventing the RPMs as being “fraudulent” and both SubPro and RPM used the context of .feedback to come up with these recommendations.  It makes no sense to have two different IRTs consider this.

The other recommendations from the RPM Final Report that should be combined with SubPro are TMCH Recommendation #8 (which deals with revising a section of the Applicant Guidebook), and TM Claims Recommendations 1-3 (although these recommended maintaining the Status Quo).

The rest of the recommendations can and should be a separate IRT if that is what the Council wishes.  But any recommendation that is aimed at new gTLDs, revising the Applicant Guidebook and the new gTLD Registry Agreement should be combined for efficiencies.   They can be a separate work track of SubPro IRT, but it makes no sense not to combine.

Thanks.

Jeffrey J. Neuman Founder & CEO JJN Solutions, LLC p: +1.202.549.5079 E: jeff@jjnsolutions.com http://jjnsolutions.com

From: council <council-bounces@gnso.icann.org> On Behalf Of Julie Hedlund
Sent: Friday, January 22, 2021 12:05 PM
To: council@gnso.icann.org
Cc: Kathy Kleiman <kathy@kathykleiman.com>; brian.beckham@wipo.int
Subject: [council] Response Forwarded from RPMs PDP WG Co-Chairs re: GNSO Council resolutions 21 January 2021

Dear all,

Please see the attached response and below forwarded on behalf of the Co-Chairs of the RPMs PDP WG.

Kind regards,

Julie

------ Begin Response Forwarded from RPMs PDP WG Co-Chairs------------

January 22, 2021

Dear Members of the GNSO Council:

We write as co-chairs of the recently completed Phase 1 review of all RPMs in all gTLDs WG.

On our own behalf, as well as for the many dedicated WG members who participated in our multi-year effort, we extend our heartfelt thanks to Council members for your unanimous approval of the Recommendations contained in our Final Report at your January 21st meeting.

However, we are aware that during the Council’s pre-vote consideration of the Report, there was discussion of creating a combined Implementation Review Team (IRT) for the recommendations produced by the RPM and Subsequent Procedures (SubPro) WGs, and that the Council may further discuss this possibility.

With respect, we do not believe that such a combined IRT would be a useful or productive approach, and urge that the Council establish separate RPM and SubPro IRTs for the following reasons:

• While 34 of the 35 RPM recommendations received full consensus, many of them present complex issues to be worked out by the IRT, and doing so successfully could be undermined by vastly expanding the number of issues to be addressed by a combined IRT.
• Community members who may wish to contribute to the IRT after participating in the WG, or because they have interest and expertise in trademark issues, should not be compelled to participate in discussions of second round procedural issues in which they may have no interest or expertise. Doing so risks reducing overall community participation.
• The RPM modifications recommended by our WG will apply to both first round and future new gTLDs, while the recommendations made by SubPro will apply only to future rounds.
• The WGs were supported by different ICANN staff, and a combined IRT could consequently put a greater overall burden on staff.

In conclusion, we believe that the recommendations made by the RPM WG will be better and more expeditiously implemented if addressed by an IRT focused solely on rights protection matters, rather than one also tasked with additional important, difficult, and unrelated procedural implementation matters.

Thank you for your consideration of our views on this matter.

Sincerely,

Brian Beckham

Kathryn Kleiman

Philip Corwin

--------- End Response Forwarded from RPMs PDP WG Co-Chairs-----------