January 2018 - Gnso-newgtld-wg-wt3

Legal Rights Objection - Strawman for WT3
by Karen Day Feb. 20, 2018

Feb. 20, 2018

Dear Paul On our WT3 call this past week we again reviewed the strawman modifications to the Legal Rights Objection<https://community.icann.org/display/NGSPP/2017-02-07+New+gTLD+Subsequent+Pr…> sections of the AGB which you had presented to the group for our consideration. Since you were not able to join us on the call, the members wanted to ask if you could please provide to the us, via the email list, a written explanation for the overall reasoning for making changes to the LRO, as well as rationale for each of your red lines. As you will see from the notes and chat transcript, in almost every instance members wanted to know if there had been specific occurrences in the 2012 round which prompted your request for that particular change. If so, they would like to know the details of what those incidents were. The members felt that having a good understanding of the foundation for your recommendations was essential to the group being able to continue to refine our thoughts and positions on the LRO. If I can be of any assistance or if you have any questions back while preparing your responses, please don’t hesitate to let me know. Thanks, Karen ____________________________ Karen L. Day, NCCP ACP Brand Protection & Registry Operations Manager Tel: + 1 919-531-6016 ▪ Mobile: + 1 919-599-4356 ▪ karen.day(a)sas.com SAS Institute Inc.▪ SAS Campus Drive ▪ Cary, NC 27513 USA www.sas.com [S285-sas100K-TPTK40K-vert]

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Recordings, attendance & AC chat New gTLD Subsequent Procedures Sub Team Track 3 String Contention, Objections & Disputes call on Tuesday, 30 January 2018 20:00 UTC
by Michelle DeSmyter Jan. 30, 2018

Jan. 30, 2018

Dear All, Please find the attendance and audio recording of the call attached to this email and the Adobe Connect recording (visual and audio) and AC Chat below for the New gTLD Subsequent Procedures Sub Team - Track 3 - String Contention, Objections & Disputes held on Tuesday, 30 January 2018 at 20:00 UTC for 60 minutes. Adobe Connect recording: https://participate.icann.org/newgtldsubteams/ Mp3: https://audio.icann.org/gnso/gnso-new-gtld-subsequent-track3-30jan18-en.mp3 The recordings of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar[gnso.icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-newgtld-wg-wt3 Agenda Wiki page: https://community.icann.org/x/aB1yB Thank you. Kind regards, Michelle -------------------------------

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Notes and Action Items Work Track 3 Sub Team Meeting 30 January 2018
by Julie Hedlund Jan. 30, 2018

Jan. 30, 2018

Dear Work Track members, Please find below the action items and discussion notes from the call on 30 January 2018. These high-level notes are designed to help Work Track members navigate through the content of the call and are not a substitute for the chat transcript or the recording. The slides referenced on the call are attached and excerpts from the chat room are included below. Kind regards, Emily -------------------------------------------------------------------------- Action Items and Discussion Notes: 30 January 2018 1. Statements of Interest Updates: No updates. 2. Plenary Co-chair Update: -- This weeks' SubPro PDP WG call was canceled. -- Tentatively rescheduled to 06 February at 0300 UTC. -- Held Leadership Meeting between RPM PDP WG and SubPro PDP WG to coordinate the timelines. Meet more regularly. -- For next SubPro continue discussion of test cases. 3. Coalesce Objections, Continued: a. Limited Public Interest: Slide 4: -- Cross-reference to human rights and freedom of expression -- framework from Accountability Work Stream 2 Cross-Community Working Group Sub Team on Human Rights. Make sure we aren't in conflict with that work--harmonization and effects that may need to be realized. What is in scope for ICANN and what is out of scope. Consider doing a cross-reference document. >From the chat: Trang Nguyen: As part of the WS1 work, the following language was put into the ICANN Bylaws, under section viii of the Core Values: "Subject to the limitations set forth in Section 27.2, within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law. This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law. This Core Value does not obligate ICANN to enforce its human rights obligations, or the human rights obligations of other parties, against other parties." Anne Aikman-Scalese (IPC): The By-Law says that no Objection will be filed based on the Human Rights Commitment until it is adopted by the Board. I can't remember the exact language but please see revised ByLaws. Trang Nguyen: The work of WS2 is to develop a framework of interpretation for the Human Rights clause in the Core Values. Link to the draft Framework published for public comment is available at https://www.icann.org/public-comments/foi-hr-2017-05-05-en. b. Community Objections: Slide 6: -- Need to come up with a definition for how community is defined. Or, do we want to ask how communities want to be recognized? -- How to address the issue of standing -- not determined until the objection is in full swing; seems that objections should be weeded out earlier. Allow applicant to respond to the objection and bring to light that it is potentially unwarranted. -- Need to define what is a community and have more objective criteria. -- Issue of cost in this type of objection is an ongoing concern. >From the chat: Kristina Rosette (Amazon Registry): We should consider making the requirement Jamie suggests applicable to ALL objections. If it makes sense to apply to CO, it should also make sense to apply to the other 3. To be clear, not advocating on the merits, but the scope. c. Independent Objector: Slide 8: -- Question whether the term "standing panel" is the right phrase. Panel implies a group to whom things are brought. -- Need coordination with Work Stream 2 with respect to the Independent Objector? -- There are still portions of the world that we have an obligation to look out for. It was the fact that the IO was engaged full time as the rest of the world wasn't. There is a question of resources and awareness. >From the chat: Kristina Rosette (Amazon Registry): Can't come off mute due to background noise, but we absolutely need a conflicts of interest mechanism. Kristina Rosette (Amazon Registry): Having multiple IOs could potentially address the conflict of interest issue. Kristina Rosette (Amazon Registry): W/r/t IO, the applicant should have an opportunity to have the conflict of interest issue addressed before having to submit a substantive response. Susan Payne: I think the idea of the standing panel was to address conflicts, ie there are alternatives if one IO is conflicted Kristina Rosette (Amazon Registry): Perhaps there's an initial process (sort of like a quick look, but needs to be substantive) that could be adopted. Kristina Rosette (Amazon Registry): Do we know if the IO filed and won any objections that couldn't have been won on any other ground? That seems to be the question we need to answer before deciding if we still need an IO. Kristina Rosette (Amazon Registry): Won by any other person. Sorry. Cheryl Langdon-Orr (CLO): Anne the focus in WS1/2 on Irp has also set some new benchmark or expectations her as well 4. Applicant Freedom of Expression: Slide 10: -- No implementation guidance in 2012 AGB. -- Important to have more guidance. -- Not going to have perfect recommendations on this. >From the chat: Anne Aikman-Scalese (IPC): @Robin - could you talk about how this was mishandled in the 2012 round? Cheryl Langdon-Orr (CLO): I was just about to ask the same question @Anne Susan Payne: what if any problems have been identified on this Cheryl Langdon-Orr (CLO): indeed was there an issue Susan Payne: I'd be really keen to understand some real examples because this all sounds very theoretical Cheryl Langdon-Orr (CLO): exactly @Susan Susan Payne: @Jamie - but no-one has blocked the term "GAY" have they? I realise that there have been issues with the community sttaus but no-one has banned the term Jamie Baxter | dotgay: @ Susan .. no one has blocked it, but one government did express opposision in the comment period. BTW .. .GAY has not been approved yet either

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Discussion Agenda: WT3 30 Jan. (20:00 UTC)
by Robin Gross Jan. 29, 2018

Jan. 29, 2018

Please see the below discussion agenda for this week’s WorkTeam 3 call. I hope many of you will join in the discussion tomorrow. Thank you, Robin WT3 Agenda - 30 January 2018 — 20:00 UTC 1. Welcome and Review of Agenda 2. Statements of Interest Updates 3. Plenary Co-chair Update 4. Coalesce Objections, Continued a. Limited Public Interest b. Community Objections c. Independent Objector 5. Applicant Freedom of Expression 6. AOB - Next meeting

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Notes and Action Items Work Track 3 Sub Team Meeting 09 January 2018
by Julie Hedlund Jan. 9, 2018

Jan. 9, 2018

Dear Work Track members, Please find below the action items and discussion notes from the call on 09 January 2018. These high-level notes are designed to help Work Track members navigate through the content of the call and are not a substitute for the chat transcript or the recording. The documents referenced on the call are attached and excerpts from the chat room are included below. Kind regards, Emily -------------------------------------------------------------------------- Action Items and Discussion Notes: 09 January 2018 Action Items: The WG will convey to Paul McGrady for consideration the questions concerning the Legal Rights Objection Strawman noted below. Notes: 1. SOI Updates: No updates. 2. Sub-Pro Plenary Update: -- Looked at our Predictability Framework and homework. -- Looked at categories/classifications. Looking for suggestions for actual cases to run through the Framework. -- Reminded everyone of the 3 Work Track calls this week. >From the chat: Cheryl Langdon-Orr (CLO - PDP Co-Chair): minor correction for meeting record, it's a WT 4 call on later this week on the 11 Jan at 1500UTC... WT5 is at 2000UTC on the 17tg (WT1 meets at the same time on the 16th 24hrs earlier) 3. Legal Rights Objections: Slide 4: Highlight from Prior Discussions -- WT considered statistics related to this objection ground. -- Few concerns identified with the policy language and the AGB language. -- Some issues raised regarding the scope of the objection, particularly relating to basis of infringement, which requires proving uses (difficult to do for a pending application). -- WT discussed a strawman proposal redlining section 3.2.2.2. Proposed changing "infringed" to "abused", which some WT members consider a significant change. Questions raised about the problem the proposal wa seeking to solve. No consensus reached. Slide 5: Legal Rights Strawman See: https://community.icann.org/display/NGSPP/2017-02-07+New+gTLD+Subsequent+Pr… Section 3.2.2.2 Changed "A rightsholder" to "Any rightsholder" Question: what is the rationale for this change? Changed "infringed" to "abused" Question: What took place in the 2012 process that might have prompted this suggested change in terminology? Discussion: -- Keep as "infringed". -- Could be wrongful conduct that is not called infringement. Also, dilution of a trademark is an actionable thing. -- Flag that the discussion in the GNSO when the policy recommendation was made was very focused on infringement. I think we will need to be prepared to explain why we decided to go with a different term, regardless of what that term is. -- Suggested "violated" because what if it falls near infringement and is having a similar effect. Several terms could be put into a bucket called "violated". Could use a list of terms, “infringed, diluted, misappropriated or otherwise violated” to add clarity. -- Difficult to prove infringement without the string being delegated. Is it worth discussing the purpose for making a switch to different terminology. -- If you go to the legal definition of infringement you have to perform a likelihood of confusion test, which may prove to be impossible to meet. So if this is an objection process before anything exists you have to extrapolate to what the uses will be. We aren't using "infringement" to mean what it really means. Not necessarily difficult to prove, but it is what you have to do to prove it. >From the chat: Jon Nevett: i prefer keeping it as infringed Greg Shatan: I would suggest “violated”. Kurt Pritz: This objection was always intended to be a narrow inquiry - focused on the string itself. It is difficult to extrapolate from a string name to infringement or abuse or misappropriated without some additional action (which occurs typically after the string is delegated). With such a narrow inquiry, I prefer the legal term infringement - which seems to have the clearest meaning. Jon Nevett: there is a body of law on infringement Kristina Rosette (Amazon Registry): Staff, would it be possible for you to post a link to Paul's paper putting forward the strawman and rationale? That would be extremely helpful. Greg Shatan: dilution and misappropriation still go to the string itself. Greg Shatan: Dilution and misappropriation also have clear legal meanings. Anne Aikman-Scalese (IPC): Agree wtih Greg that dilution and misappropriation go to the string itself Kristina Rosette (Amazon Registry): I'd be interested in hearing an explanation as for why abuse, dilution, violation, etc don't raise the same issue as infringement. Jon Nevett: were there objections rejected in the 2012 round that Paul and others think should be decided differently in this round? That might help frame why we need changes in the first place. Kurt Pritz: Infringement is difficult to prove and rightfully so - at this stage of the application process. We can't deny an application for what an applicant might do. Anne Aikman-Scalese (IPC): @Jon - agree those examples would be helpful. He also seems to be suggesting later that some objections were filed solely for the purpose of triggering a private auction and getting paid off. Does anyone know of any examples of this? Kurt Pritz: What is the type of string that the inclusion of "abuse" might disqualify that infringe might not? I am concerned it might be some type of public forum TLD. Jon Nevett: i think Paul is suggesting that the application was filed to go to private resolution not the objection Section 3.5.2 Introductory paragraph: Changing text to "or was filed for the purpose of triggering a private auction proceeding designed to obtain a payment from the objector" Question: Are there any examples of this from the 2012 round? >From the chat: Jon Nevett: i think Paul is suggesting that the application was filed to go to private resolution not the objection Kurt Pritz: I am concerned that this redline about triggering auctions might lead to multiple IRPs Michael Flemming: I agree with Paul on Nevett: how do you prove that an application was filed to go to private resolution Kurt Pritz: @Jon - it is very difficult - but it would provide a tool for use by objector's to slow the process 1. Change to "or a translation or transliteration of" Discussion: No objections to this change. >From the chat: Anne Aikman-Scalese (IPC): I would support the change that adds "translation or transliterations" of Gg Levine (NABP) 2: Change is appropriate. 3. Change to "including but not limited [to] niche market fame" instead of "of the applicant or of a third party" Question: What is the rationale for this change? Discussion: -- Objection/don't understand the change. -- Put a marker down on this one; the niche fame incorporates the dilution standard, the other parts effectively strike a competing legal rights defense by the applicant. -- Think the concept of "niche market fame" is already included, so this could be seen as clarifying. >From the chat: Jon Nevett: I object Jon Nevett: I don't understand it at this point Kristina Rosette (Amazon Registry): Can we put a marker down on that one? The niche fame incorporaes the dilution standard, the other parts effectively strike a fair use defense by the applicant Kristina Rosette (Amazon Registry): Sorry. Mistyped. Not fair use. Competing legal rights. Anne Aikman-Scalese (IPC): The issue is the definition of the "relevant sector". Hard to tie down. for example, are we talking about household goods or industrial goods? paul describes the possibility of a niche market (a narrow, not a broad one where a name or trademark is known to those participants in the market.) Anne Aikman-Scalese (IPC): for example, under German law, I am told you only have to show the mark is well known in its own market and there is a percentage test used. This is a difficult area since trademark law is not uniform worldwide. 4a. “the applicant...conducted a trademark search for trademarks corresponding to the applied-for string" Question: What is the rationale for this change? Discussion: --The underlying issue of what percentage of words in the dictionary are trademarked isn't relevant; not sure we need to have a trademark search. -- Unclear what the impact of doing a trademark search would be. -- It may be that evidence of a trademark search that comes up clear could help demonstrate that the applicant had no intent to violate another's rights. This is an optional consideration, right? -- Doesn't the inquiry into whether a trademark search was conducted tend to discourage such searches by applicants? -- If the element of the analysis relates to the element of proof of "intent", then evidence re the trademark search is quite relevant to that determination. -- What do you do with the information from a worldwide trademark search? -- History of Applicant's trademark search, if any, is probative on the question of "intent". It seems that "applicant's intent" is relevant. Since it's relevant, the evidence of trademark search results would definitely be relevant (but not necessarily relevant if Applicant failed to conduct a trademark search since that doesn't prove any sort of intent.) -- Example: there is an objection because the string is a trademark. The panel looks into whether there has been a trademark search. If there has been, that is evidence of infringement. >From the chat: Jon Nevett:what's the relevance of the trademark search? Majority of dictionary terms are trademarks somewhere, no? Michael Flemming:Just because legal rights objections can be loosely done if an applicant applied for the string as a trademark in the wake of applying for it. Kurt Pritz:In this case, conducting a trademark search is evidence of infringement, abuse, etc. Correct? Kristina Rosette (Amazon Registry):In its current form, the trademark search requirement seems overly burdensome. Trademark search in what jurisdictions? What if the string is a common dictionary word such that a trademark search could yield thousands of results? I defended one LRO for which a search of the USPTO database would yield almost 1000 registrations or applications containing the TLD string term. Michael Flemming:applying for it as a tld * Anne Aikman-Scalese (IPC):It may be that evidence of a trademark search that comes up clear could help demonstrate that the applicant had no intent to violate another's rights. This is an optional consideration, right? Jon Nevett:Agree with Kristina Kurt Pritz:To build on my last comment - doesn't the inquiry into whether a trademark search was conducted tend to discourage such searches by applicants? Anne Aikman-Scalese (IPC):If the element of the analysis relates to the element of proof of "intent", then evidence re the trademark search is quite relevant to that determination. Cheryl Langdon-Orr (CLO - PDP Co-Chair):in very many classes of use as we amusing, indeed... worth looking at clarification Kurt Pritz:Susan is making my point better than I did. Ex. there is an objection because the string is a trademark. The panel looks into whether there has been a trademark search,. If there has been, that is evidence of infringment. Michael Flemming:agree with Kristina Anne Aikman-Scalese (IPC):I do think history of Applicant's trademark search, if any, is probative on the question of "intent". It seems that "applicant's intent" is relevant. Since it's relevant, the evidence of trademark search results would definitely be relevant (but not necessarily relevant if Applicant failed to conduct a trademark search since that doesn't prove any sort of intent.) Kurt Pritz:Well, it might be games but it is just evidence to be considered 4d. "whether or not the applicant has engaged in past "private auctions" designed to raise funds from competing applications; or" Question: Have we seen any evidence of this? Discussion: -- Object to using participation in auctions as evidence of abuse. -- One issue with 4d. is that it assumes that an applicant participates (or participated) in a private auction solely to "raise funds from competing applications" and that is a false assumption. >From the chat: Kurt Pritz: I also object to using participation in auctions as evidence of abuse. 5. "In the event that the string does not correspond to a famous trademark owned by the objector" Question: What is the rationale for this change? >From the chat: Jon Nevett: disagree with suggested change to 5 6. is consistent with strictly corresponds to such acquisition or use the applicant’s marks or other intellectual property rights. Failure of the applicant to include registration and use restrictions prohibiting registration and use of the string in conjunction with the goods and services covered by the Objector’s trademarks shall be conclusive evidence that applicant does not have defenses under this paragraph. 8. Failure of the applicant to include registration and use restrictions prohibiting registration and use of the string in conjunction with the goods and services covered by the Objector’s trademarks shall be conclusive evidence that applicant’s intended use of the gTLD will create a likelihood of confusion with the objector’smark as to the source, sponsorship, affiliation, or endorsement of the gTLD. Question: What is the rationale for these changes? Discussion: 8 goes with 6 with the conclusive evidence concept. >From the chat: Kristina Rosette (Amazon Registry):It's still early here in WA, but #6 would seem to result in the conclusion that an applicant that applied for a generic term to use it as its dictionary meaning would then have to either (a) impose restrictions or (b) be found to not have any defenses. That seems to be a catch-22 to me. 7. [Deleted: this can be gamed with mere corporate filings – the issue is trademarks, not company names.] Question: What is the rationale for this change? Discussion: -- Doesn't this section refer to a TLD that is not an exact match of a trademark but similar enough? Apologies, very late and trying to read small print on my phone so I may have misinterpreted 7. -- Problematic because there are some trademark rights that are protected by statute rather than there be a requirement that they be registered. >From the chat: Michael Flemming: Doesn't this section refer to a tld that is not an exact match of a trademark but similar enough? Apologies, very late and trying to read small print on my phone so I may have misinterpreted 7. Kristina Rosette (Amazon Registry): Some countries afford corporate names trademark-like protection

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AC Recording, attendance & AC Chat for New gTLD Subsequent Procedures Sub Team Track 3 String Contention, Objections & Disputes call on Tuesday, 09 January 2018 at 15:00 UTC
by Terri Agnew Jan. 9, 2018

Jan. 9, 2018

Dear All, Please find the attendance, Adobe Connect chat and audio recording of the call attached to this email and the Adobe Connect recording below for the New gTLD Subsequent Procedures Sub Team – Track 3 – String Contention, Objections & Disputes held on Tuesday, 09 January 2018 at 15:00 UTC for 60 minutes. Adobe Connect recording: <https://participate.icann.org/p3rrggxv6aj/?OWASP_CSRFTOKEN=625a918c0c8c32ec…> https://participate.icann.org/p3rrggxv6aj/ The recordings of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: <http://mm.icann.org/pipermail/gnso-newgtld-wg-wt3> http://mm.icann.org/pipermail/gnso-newgtld-wg-wt3 Agenda Wiki page: https://community.icann.org/x/YB1yB Thank you. Kind regards, Terri

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Agenda for WT3 - 09JAN2018 1500 UTC
by Karen Day Jan. 8, 2018

Jan. 8, 2018

Dear WT3 Members, I hope the new year has gotten off to a good start for you all. We have our next meeting on Tuesday January 9th at 1500 UTC and we continuing our 3rd pass over the topic of Objections. This week we will look specially at Legal Rights Objections and String Confusion Objections. As you will recall we have proposals for modifications to the policy and implementation of both types on the table and with some good discussion on Tuesday I hope that we can come close to polishing up any rough edges remaining with them. I am attaching copies of both for you here in word and pdf formats. I would also encourage you to refer back to our wiki page on this topic to the background materials and prior discussions linked there. https://community.icann.org/display/NGSPP/4.4.3+Objections Subject to your approval, our agenda will be as follows: 1. Welcome & Review/Revise Agenda 2. SOI Updates 3. Sub-Pro Plenary Update 4. Legal Rights Objections 5. String Confusion Objections 6. Review of Next Steps/Action Items 7. AOB & Next Meeting Thanks, Karen ____________________________ Karen L. Day, NCCP ACP Brand Protection & Registry Operations Manager Tel: + 1 919-531-6016 ▪ Mobile: + 1 919-599-4356 ▪ karen.day(a)sas.com SAS Institute Inc.▪ SAS Campus Drive ▪ Cary, NC 27513 USA www.sas.com [S285-sas100K-TPTK40K-vert]

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