Fwd: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Sept. 11, 2019

      thanks, Phil. I think because we have different interpretations of what
those practices are - and having them on the call next week would greatly
clarify status from that perspective, and the options or implications of
any policy changes.

---------- Forwarded message ---------
From: Corwin, Philip <pcorwin@verisign.com>
Date: Wed, Sep 11, 2019 at 3:23 PM
Subject: RE: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks
To: ipcdigangi@gmail.com <ipcdigangi@gmail.com>, rtushnet@law.harvard.edu <
rtushnet@law.harvard.edu>
Cc: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org>

In a personal capacity – before we consider asking Deloitte to speak with
us, which will further prolong discussion and deliberation, why don’t we
ask if there has been any material change in their practice since they
answered our questions in the past? If there is no change then no point in
verbal engagement.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *claudio
di gangi
*Sent:* Wednesday, September 11, 2019 2:57 PM
*To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>
*Cc:* gnso-rpm-wg@icann.org
*Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design
Marks

I agree with Lori that Deloitte is doing their absolute best to follow "the
letter of the law" so to speak, i.e. what is contained in the Applicant
Guidebook, and that they have generated accurate results in that regard.

I understand that we may have different points of view, so this would be
another area where it would be benefit from Deloitte being invited to
participate on our call next week to inform our discussions on the current
state of play, implications of any potential changes from a policy and
implementation perspective, and so we are all clear on where things stand
on questions #7 and #8.

Thanks!

Best regards,

Claudio

On Wed, Sep 11, 2019 at 2:38 PM Tushnet, Rebecca <rtushnet@law.harvard.edu>
wrote:

The answers from Deloitte don’t reflect this claim. They reflect a policy
of putting in whatever can fit, extracting any text at all from any mark,
disclaimed or not. That’s not indicative of any thought or policy based in
substance.

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School

Sent from my phone. Apologies for terseness/typos.

On Sep 11, 2019, at 1:04 PM, Lori Schulman <lschulman@inta.org> wrote:

I agree with that.  Deloitte has come up with guidelines and procedures
that show that thought has been put into the process and they are not
letting just anything in.  We can’t agree on our terminology, how can we
expect them to do it?

Lori S. Schulman

Senior Director, Internet Policy

*International Trademark Association (INTA)*

+1-202-704-0408, Skype: lsschulman

*From:* BECKHAM, Brian <brian.beckham@wipo.int>
*Sent:* Wednesday, September 11, 2019 12:56 PM
*To:* Corwin, Philip <pcorwin@verisign.com>; Lori Schulman <
lschulman@inta.org>; zak@muscovitch.com; julie.hedlund@icann.org;
gnso-rpm-wg@icann.org
*Subject:* Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Speaking personally, I’m not sure I agree with the supposition that
“Deloitte accepts marks too readily” especially given the lack of clarity
on an agreed definition of text only/standard character marks. In fact,
that is the very core of the discusions around Kathy and Zak’s proposal.

Thank!

Brian

Sent from my WIPO mobile

On 11 September 2019 at 18:37:05 CEST, Corwin, Philip via GNSO-RPM-WG <
gnso-rpm-wg@icann.org> wrote:

Thanks Lori.

We seem to be closing the gap. Given that there is general agreement within
the WG  that Deloitte accepts design marks too readily, but some remaining
disagreement about how to address that, this co-chair hopes that wide
support can at least be found for those elements of a  response on which
there is broad agreement.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Lori
Schulman
*Sent:* Wednesday, September 11, 2019 12:06 PM
*To:* Zak Muscovitch <zak@muscovitch.com>; julie.hedlund@icann.org;
gnso-rpm-wg@icann.org
*Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design
Marks

Dear All,

We have had some side line conversations regarding the proposal below.  I
informed Zak separately and wish to conveny that this is where the IPC
currently stands:

   1. As per Greg’s proposal, where a design mark with words disclaims
...
...
all<< words, it *does not* enter TMCH. – IPC agrees.
1. As per Greg’s proposal, where a design mark with words disclaims
...
...
some but not all words<< it *does *enters the TMCH.  – IPC agrees.
1. Where a design mark with words is permitted into the TMCH, it
   entitles the mark holder to a Claims Notice, but not a Sunrise
priority. – The
   IPC disagrees as this would undermine the purpose of registering with the
   TMCH to begin with.

   1. The Claims Notice would have to specify inter alia, that it is
   notifying prospective registrants of someone claiming to have rights
   corresponding to the domain name, but that not in all cases does having a
   design mark confer rights over the words inside, or something to that
   effect. – The IPC is willing to discuss this proposal.  We agree in
   principle that language that is not well understood or could frighten an
   unsophisticated applicant should be revised.  However, the notice should
   not be providing legal advice or any advice about effects of certain types
   of trademark registrations.

   1. Design marks consisting of a single letter, e.g. a stylized or
   graphical “i”, whether disclaimed or not, do not go into the TMCH. – The
   IPC does not agree as this outcome is contrary to trademark law.

In general, it appears that Greg’s proposal addresses 3 and 5.  To what
degree to people object?  We see the proposal as creating a solution for a
small problem with significant, unintended consequences.

There are objections procedures for domains registered during Sunrise
period and we believe that these procedures should be highlighted as remedy
for the concerns that registrant’s have regarding this issue.

Thank you for opening the dialog and we look forward to more discussion
where we can find compromise.

Lori S. Schulman

Senior Director, Internet Policy

*International Trademark Association (INTA)*

+1-202-704-0408, Skype: lsschulman

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Zak
Muscovitch
*Sent:* Tuesday, September 10, 2019 1:36 PM
*To:* Zak Muscovitch <zak@muscovitch.com>; julie.hedlund@icann.org;
gnso-rpm-wg@icann.org
*Subject:* [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Dear Co-chairs, Staff and WG members, please see below a revised proposal
regarding Question #7 (TMCH/Design Marks):

   1. As per Greg’s proposal, where a design mark with words disclaims
...
...
all<< words, it *does not* enter TMCH.
1. As per Greg’s proposal, where a design mark with words disclaims
...
...
some but not all words<< it *does *enters the TMCH.
1. Where a design mark with words is permitted into the TMCH, it
   entitles the mark holder to a Claims Notice, but not a Sunrise priority.

   1. The Claims Notice would have to specify inter alia, that it is
   notifying prospective registrants of someone claiming to have rights
   corresponding to the domain name, but that not in all cases does having a
   design mark confer rights over the words inside, or something to that
   effect.

   1. Design marks consisting of a single letter, e.g. a stylized or
   graphical “i”, whether disclaimed or not, do not go into the TMCH.

This proposal has been circulated amongst some stakeholders for feedback
(with mixed results), however I am now sharing it with the entire Working
Group.

Zak Muscovitch

General Counsel, ICA

Muscovitch Law P.C.

zak@muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....>

https://www.muscovitch.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...>

https://dnattorney.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...>

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Zak
Muscovitch
*Sent:* September-04-19 1:07 PM
*To:* Lori Schulman <lschulman@inta.org>; Corwin, Philip <
pcorwin@verisign.com>; julie.hedlund@icann.org; gnso-rpm-wg@icann.org
*Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
September 17:00-18:30 UTC

Attached is the redline version. Apologies for only sending it now.

Zak

Muscovitch Law P.C.

zak@muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....>

https://www.muscovitch.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...>

https://dnattorney.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...>

*From:* Lori Schulman <lschulman@inta.org>
*Sent:* September-04-19 12:48 PM
*To:* Corwin, Philip <pcorwin@verisign.com>; Zak Muscovitch <
zak@muscovitch.com>; julie.hedlund@icann.org; gnso-rpm-wg@icann.org
*Subject:* RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
September 17:00-18:30 UTC

Hi,

Support Phil’s suggestion and a post call redline per my earlier message.

Thank you.

Lori S. Schulman

Senior Director, Internet Policy

*International Trademark Association (INTA)*

+1-202-704-0408, Skype: lsschulman

*From:* Corwin, Philip <pcorwin@verisign.com>
*Sent:* Wednesday, September 04, 2019 12:39 PM
*To:* zak@muscovitch.com; Lori Schulman <lschulman@inta.org>;
julie.hedlund@icann.org; gnso-rpm-wg@icann.org
*Subject:* RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
September 17:00-18:30 UTC

Zak:

As we reviewed all the proposals last week, I would suggest that you focus
in your presentation on what changes you and Kathy have made to the
original and the rationale for doing so.

Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

"Luck is the residue of design" -- Branch Rickey

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak
Muscovitch
Sent: Wednesday, September 04, 2019 12:36 PM
To: Lori Schulman <lschulman@inta.org>; Julie Hedlund <
julie.hedlund@icann.org>; gnso-rpm-wg@icann.org
Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
September 17:00-18:30 UTC

Lori, I'm trying to get one together, not sure I will be able to
unfortunately.

Muscovitch Law P.C.

zak@muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....>

https://www.muscovitch.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...>

https://dnattorney.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...>

From: Lori Schulman <lschulman@inta.org>
Sent: September-04-19 12:08 PM
To: Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <
julie.hedlund@icann.org>; gnso-rpm-wg@icann.org
Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September
17:00-18:30 UTC

Hi,

Thank you for this. As this is so close to the call, do you have a redline
so we can compare the changes quickly? It would be most helpful to be
prepared on a quick notice.

Lori S. Schulman

Senior Director, Internet Policy

International Trademark Association (INTA)

+1-202-704-0408, Skype: lsschulman

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak
Muscovitch
Sent: Wednesday, September 04, 2019 11:45 AM
To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org
Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September
17:00-18:30 UTC

Dear Co-Chairs, Working Group Members, and Staff,

Further to the call last week and further to the below Agenda for today's
call, please see the attached updated proposal re: Question #7, from Kathy
Kleiman and myself.

You will note therein, that the revised proposal contains some revised
language, some revised rationale, and a potential alternative to the
existing rule for discussion purposes.

Zak Muscovitch

General Counsel, ICA

Muscovitch Law P.C.

zak@muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....>

https://www.muscovitch.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...>

https://dnattorney.com/
<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...>

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Julie Hedlund
Sent: September-03-19 1:02 PM
To: gnso-rpm-wg@icann.org
Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September
17:00-18:30 UTC

Dear RPM WG members,

Please find the agenda and materials for the WG meeting tomorrow,
Wednesday, 04 September at 17:00-18:30 UTC.

Please note the following actions captured from last week's meeting and
sent to the list last week:

Actions:

1. Revision of Existing Proposals: For consideration at the meeting on
Wednesday, 04 September, RPM PDP WG members who had previously submitted
proposals relating to the Open TMCH Questions (see attached) may offer
revised proposals that take into consideration the work completed by the WG
since the proposals were originally submitted.
2. New Proposals: For consideration at the meeting on Wednesday, 04
September, RPM PDP WG members may submit new proposals relating to Charter
questions 7, 8, and 10.

Please send suggested revisions or new proposals by COB today, 03
September, if at all possible.

Proposed Agenda:

1. Review Agenda and Updates to Statements of Interest
2. Proposals relating to Open TMCH Charter Questions (see attached Summary
document. It is the same as the May 2017 version but with formatting for
readability and text from relevant TMCH and AGB references):

* Question 7 - Proposals from Kathy Kleiman and Greg Shatan
* Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon,
and Claudio di Gangi
* If Time Permits: Question 10 - Proposal from Michael Graham

3. AOB

Best Regards,

Mary, Julie, Ariel

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