December 2016 - GNSO-RPM-WG

Re: [gnso-rpm-wg] Meeting rotation times for the RPM Review Working Group
by Jonathan Agmon Dec. 27, 2016

Dec. 27, 2016

Your and the Group’s efforts are well appreciated. I hope this can make sense to everybody. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Mary Wong [mailto:mary.wong@icann.org] Sent: Friday, December 23, 2016 12:41 AM To: jonathan matkowsky <jonathan.matkowsky(a)riskiq.net>; Jonathan Agmon <jonathan.agmon(a)ip-law.legal> Cc: gnso-rpm-wg(a)icann.org; gnso-secs(a)icann.org Subject: Meeting rotation times for the RPM Review Working Group Dear Jonathan (Agmon), Jonathan (Matkowsky) and everyone, I hope you will be pleased to know that the Working Group co-chairs have been discussing this topic and reviewing the usefulness of our current meeting rotation times. Following discussion with those Working Group members who were able to attend the call yesterday, the Working Group co-chairs would like to propose a change for our meeting times, as follows: Week 1: 1700 UTC (no change) Week 2: 1800 UTC (no change) Week 3: 1700 UTC (no change) Week 4: 0400 UTC (change from 2200 UTC) We invite all Working Group members to provide feedback on this proposed change. Please note that, given the geographic spread of our membership, the fact that a large majority are based in North America followed by Europe, there is unfortunately no single time that will work for everyone. The idea to hold one out of four meetings in a much more APAC-friendly time zone seems to be an equitable solution, given the circumstances. The co-chairs intend to review the rotation again around the time of the ICANN58 meeting in March 2017. Assuming there are no major objections, staff will go ahead and implement the proposed change with effect from January2017. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of jonathan matkowsky <jonathan.matkowsky(a)riskiq.net<mailto:jonathan.matkowsky@riskiq.net>> Date: Thursday, December 22, 2016 at 09:56 To: Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>>, "gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>" <gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>> Subject: Re: [gnso-rpm-wg] Mp3, Attendance & AC Chat for Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group I had the same experience last night when I tried to stay up for the call and intended to make it, but fell asleep because it was in middle of the night. So I would like to be added to that column too please. Thank you! [http://safe.riskiq.com/rs/455-NHF-420/images/RiskIQ_Logo_Blue_Vertical.png]…]<https://urldefense.proofpoint.com/v2/url?u=http-3A__riskiq.com_&d=DgMFaQ&c=…> jonathan matkowsky, vp – ip & brand security usa:: 1.347.467.1193 | office:: +972-(0)8-926-2766 emergency mobile:: +972-(0)54-924-0831 company reg. no. 514805332[havarot.justice.gov.il]<https://urldefense.proofpoint.com/v2/url?u=http-3A__havarot.justice.gov.il_…> 11/1 nachal chever, modiin israel [http://cdn2.hubspot.net/hub/250381/file-1448744755-png/Email_Signature/twit…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_riskiq&d=D…>[http://cdn2.hubspot.net/hub/250381/file-1448719740-png/Email_Signature/face…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.facebook.com_pages…>[http://cdn2.hubspot.net/hub/250381/file-1448744760-png/Email_Signature/link…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_compa…>[http://cdn2.hubspot.net/hub/250381/file-1448719735-png/Email_Signature/goog…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__plus.google.com_-2BRis…> On Thu, Dec 22, 2016 at 6:20 AM, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Dear Michelle and Marry, First I apologize for cc’ing the entire list to this email but I think it is only fair that this would not be a private request. The attendance list is a bit of a sore spot for me since I joined this WG. As I noted before I do want to attend the calls but all the calls are outside the time zone for the Far East. They are always at 1am or 6am for Singapore/Beijing time. For Australia I think it is even worse. It is therefore unreasonable for those of us in this part of the world to join. It is also a bit odd for us to continuously apologize for not making the calls. After all there is nothing to apologize for. Can I therefore please ask you to add another category to the attendance. I suggest we call it “out of time zone” or something to this effect. You can place my name there and perhaps others from this part of the planet who so request. I hope this will better reflect the fact that I (and perhaps others) would like to join the calls but we cannot. I appreciate your kind consideration of this request. Thanks, [cid:image001.png@01D25EDE.EC32D270] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal[ip-law.legal]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.ip-2Dlaw.legal&d=Dg…> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Michelle DeSmyter Sent: Thursday, December 22, 2016 11:30 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Cc: gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> Subject: [gnso-rpm-wg] Mp3, Attendance & AC Chat for Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 21 December 2016 at 22:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/BJ3DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> MP3:http://audio.icann.org/gnso/gnso-rpm-review-21dec16-en.mp3[audio.icann.…<https://urldefense.proofpoint.com/v2/url?u=http-3A__audio.icann.org_gnso_gn…> The recordings and transcriptions 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-rpm-wg/ Wiki page: https://community.icann.org/x/BJ3DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> Thank you. Kind regards, Michelle DeSmyter Adobe Connect chat transcript for 21 December 2016: Michelle DeSmyter:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 21 December 2016 at 22:00 UTC for 60 minutes. Michelle DeSmyter:Agenda page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… Philip Corwin:Hi Michelle. I am uncharacteristically early ;-) Michelle DeSmyter:No worries - glad to have you! :) Michelle DeSmyter:Welcome Maxim! Maxim Alzoba (FAITID):Hello Michelle, Philip Maxim Alzoba (FAITID):will type instead of using mic - it is 1AM Maxim Alzoba (FAITID):for me Michelle DeSmyter:Ouch - sounds good Maxim George Kirikos:Hi folks. Paul Tattersfield:Hi Everyeone Steve Levy:HI all. Happy holidays! Mary Wong:@Phil, we have the redlined version ready. Let us know if you want us to change to it. Mary Wong:We are at the bottom of page 5, for those who have just joined Maxim Alzoba (FAITID):reasonably priced to allow for protection of small local businesses? George Kirikos:Accessible = affordable? Kristine Dorrain - Amazon Registry Services:I think affordable is too limiting Kristine Dorrain - Amazon Registry Services:There may be other hinderances at play Heather Forrest:Agree with Kristine that affordable is too narrow a term Jeff Neuman:ease of use? Griffin Barnett:Agree that "access" would potentially include cost, as well as some of the things Phil mentioned such as language, etc. George Kirikos:I think the TMCH is translated into more than 10 languages, see top right of https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Kurt Pritz:I think guidance for this question comes from the last prepositional clause: "in developing countries." Paul Tattersfield:Can we change ‘trademark owners’ to ‘rights holders’? Because it’s important to provide guidance for marks protected by statue and treaty as well as trademarks. Kristine Dorrain - Amazon Registry Services:The dictionary says accessible means: capable of being used, influenced, seen, understood, appreciated. I think that word is fine. Heather Forrest:usable? susan payne:Agree with Paul's replacement to rights holders Griffin Barnett:Agree we should keep to "accessible" Kurt Pritz:Maybe revese the sentence: Can those in developing countries readily access trademark clearinghouse services (as compared to other regions)? Kathy Kleiman:Why would we change trademark owners to rights holders? Griffin Barnett:No objection to "rights holders" Paul Tattersfield:to include 6ter marks Kathy Mary Wong:On 4.1, note the Sub Team suggestion to share the WG findings on this with the New gTLD SubPro WG. Steve Levy:I like the term "confidential" Petter Rindforth:confidential seems better describe what we mean susan payne:I think we all understand closed = confidential Laurie Anderson:Closed seems to be misleading to the general public Kathy Kleiman:Tx Paul Jeff Neuman:Competition affects cost; bringing the costs down could increase use and effectiveness George Kirikos: 5.1 is about costs. One alternative to multiple providers is to have regular competitive tenders. Steve Levy:Although I think TMCH competition is rather impractical, I feel it shoudl be opened up as a matter of principle Kristine Dorrain - Amazon Registry Services:If that's the case, then I suggest that costs will come out of our investigation as an issue. I'm sure we'll get data on that. And if cost is a problem, then I think competition is a valid solution. Jeff Neuman:I offer no opinion on the question of who should address :) Jeff Neuman:I will only offer the opinion that this group has the relevant expertise to understand the TMCH and the implications of having multiple providers. Looking at the membership of this PDP WG we have a lot of trademark owners and users of the TMCH. So to me it makes sense to be here. Steve Levy:Hasn't Deloitte actually lost money on its TMCH operation? Heather Forrest:Is CCT looking into this issue? susan payne:Hi, I would point out that the WG suggested 2 alternative options for language on this Mary Wong:Several WG members have expressed a preference for Option 2. Jon Nevett:@Steve -- we alone paid them about $1M -- can't believe that they have lost $ susan payne:ICANN paid them too! George Kirikos:Hollywood accounting? :-) susan payne:old hand Griffin Barnett:I would support a further revised version of Cat 5 Q 1: “Taking into consideration cost, reliability, global reach, diversity of services, consistency, and other possible factors, would it be desirable and practical to have more than one provider for the TMCH services? Why or why not?” Kristine Dorrain - Amazon Registry Services:Proposal 2 focuses on the question: Kristine Dorrain - Amazon Registry Services:Proposal 2 focuses on the question: "what is the problem" rather than suggesting a list.... susan payne:I prefer 2 Steve Levy:I also voted for Proposal 2 susan payne:aha, for reasons Kristine is giving Heather Forrest:I prefer the open-endedness of 2 Kurt Pritz:I prefer 1 as it delineates issues Petter Rindforth:I support Griffins suggested version Griffin Barnett:Proposal 2 wording seems to presuppose that there are concerns with a single provider of TMCH services, that's my only concern about that formulation Kristine Dorrain - Amazon Registry Services:Griffin, people from the community came up with this question, so it's safe to assume SOMEONE thinks there's a problem. :) Vinzenz Heussler:Griffin Barnett combined 1 and 2 rather clever Heather Forrest:Mary has her hand up Kristine Dorrain - Amazon Registry Services:I'm not following that - visual learner. Can someone capture Phil's most recent suggestion in writing? Kathy Kleiman:I like Phil's compromise wording Kurt Pritz:@ Mary - we are perilously close to agreement - cmonsensus Vinzenz Heussler:it's in the agenda/notes on the right side, isn't it Kurt Pritz:@ Mary "consensus" Griffin Barnett:Fine with the latest compromise wording David McAuley (RySG):Sometimes hard for notes on right to keep up with speedy speakers Paul Tattersfield:Does the current single operator nature of the TMCH optimize operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered? Griffin Barnett:@Kurt -- I thought "cmonsensus" was intentionally clever Kristine Dorrain - Amazon Registry Services:Proposal 4 was Phil's right? Kristine Dorrain - Amazon Registry Services:I support that. Mary Wong:Proposal 3 was from Griffin, Proposal 4 is Phil's suggestion Kristine Dorrain - Amazon Registry Services:thanks Mary, Santa better be kind to you... Laurie Anderson:Supporting Proposal 4 Lillian Fosteris:I like Proposal 4 Griffin Barnett:Agree you can remove "Why or why not" from my proposal -- it is implied by the initial question Mary Wong:I count 14 in favor of Proposal 4 Heather Forrest:Are we not taking this out to other members of the WG? I misunderstood perhaps - thought the straw poll was going out to the list? Mary Wong:@Heather, we will send out a note highlighting that this is the proposed final set of TMCH Charter questions Vinzenz Heussler:costs proportionate to benefits? Maxim Alzoba (FAITID):have we seen a single review of TMCH activities from financial perspective? David McAuley (RySG):it sounds like proportionate among those three David McAuley (RySG):icann, rights holders, and community George Kirikos:Should list more stakeholders, e.g. registries, registrars, registrants, etc. Chris Thomas:proportional? Kristine Dorrain - Amazon Registry Services:+1 George Lillian Fosteris:+1 Georege Lillian Fosteris:George* Maxim Alzoba (FAITID):+1 George susan payne:Agree George but I think that;'s intended by community David McAuley (RySG):I agree then with the idea of listing registries, registrars, registrant Heather Forrest:Should we split the question into multiple parts to encourage a reply on each stakeholder? Paul Tattersfield:Support George Kirikos:If they're part of "community", then they might get diluted by 1/3rd. David McAuley (RySG):registrants are part of conmunity as well Mary Wong:We got it, Phil George Kirikos:e.g. TM owners weighted equally as registrars, equally as registries, equally as registrants, is not the same as "TM Owners equal with registries PLUS registrars PLUS registrants". David McAuley (RySG):then I suggest we specify registries, rars, registrants David McAuley (RySG):maybe "fairly balanced" instead of proportionate - not sure what proportionate means David McAuley (RySG):i have no audio this evening - glitch going on here, sorry Paul Tattersfield:@David I think it was proportionate between costs and benefits David McAuley (RySG):by audio I meant mic David McAuley (RySG):ok thanks Paul susan payne:+1Kristine George Kirikos:@DavidM: might want to use the telephone connection (it's more reliable). David McAuley (RySG):like it Phil but use among instead of between Heather Forrest:rather than name them and perhaps miss someone, can we say 'all of the relevant stakeholders'? George Kirikos:That new alternative language looks fine to me. David McAuley (RySG):sorry Goerge - one with a higher power (at home now) has phone right now and i forgot cell in office David McAuley (RySG):George, that is Paul Tattersfield:Very much agree Susan David McAuley (RySG):Thanks Susan, that makes sense – I was not part of subteam and do not have that history on this and so appreciate the point you make Kristine Dorrain - Amazon Registry Services:Yes. I would say registries get the least benefit from having to use the TMCH, but is the cost to us proportionate to what the rights holders are getting? David McAuley (RySG):sounds good Kristine Dorrain - Amazon Registry Services:I like reasonably proportionate. Mary Wong:Are we talking about costs and benefits, or advantages and disadvantages? Kristine Dorrain - Amazon Registry Services:I think they're understood to be the same. Paul Tattersfield:the original question was benefits and costs Kathy Kleiman:+1 Mary Wong:OK, thanks Kristine Dorrain - Amazon Registry Services:I hear a chorus of angels. David McAuley (RySG):i can hear it too - quite nice Mary Wong:Will do, Phil. susan payne:hurrah!!! Kathy Kleiman:Congratulations All! George Kirikos:1/2 the docs = questions David McAuley (RySG):sing seasonal songs? Kathy Kleiman:Happy Holidays to All! Petter Rindforth:We are the best!! George Kirikos:So it's really only 2 pages or so. Kristine Dorrain - Amazon Registry Services:I vote that we bail. George Kirikos:Happy holidays, folks. See you in 2017. David McAuley (RySG):agreed Phil, makes sense Kiran Malancharuvil:Thanks! Griffin Barnett:Happy to reserve this until next time susan payne:happy. it's 10.50 here the week before xmas Maxim Alzoba (FAITID):could we use doodle poll? Mary Wong:04:00 UTC = 20:00/ PT, 23:00/ET, 04:00 London, 05:00 CET, 15:00 Sydney, 12:00 Beijing Kristine Dorrain - Amazon Registry Services:the registries Heather Forrest:Thanks very much for keeping the time within decent hours for APAC Maxim Alzoba (FAITID):with RySG .. now it is not a conflict Maxim Alzoba (FAITID):nice ... it is going to be 7.am[7.am]<https://urldefense.proofpoint.com/v2/url?u=http-3A__7.am&d=DgMFaQ&c=FmY1u3P…> instead of 1am :) George Kirikos:04:00 UTC on Thursday? (so that we are still on Wednesday night in Toronto/New York) susan payne:well I understand and support the reason for doing so - but I won't be on a call at 4am. Id love to see some calls that work foir aspac, ME and europe but are less good for US George Kirikos:Or is it 04:00 UTC on Wednesday? (meaning that we are instead on Tuesday in North America???) Heather Forrest:To Susan's point, it does seem that Europe and APAC are normally the time compromisers. That said, most participants are in North America, but maybe this is a chicken-egg problem Mary Wong:@Heather, yes - so one way we are trying to accommodate all of this is to do this as one rotation out of four Heather Forrest:@ Mary, that sounds practical Paul Tattersfield:Question to Staff: Would it be possible to make the document window wider and move the Agenda/Notes window down making it the same height as the chat window? As this would make it easier to read wider/table formatted documents without having to horizontal scroll so often George Kirikos:We should decide the date, too (Wednesday vs. Thursday UTC, i.e Tuesday vs. Wednesday in North America), on the list. Mary Wong:@Paul, I will ask - but I believe it is fixed Paul Tattersfield:thanks Mary George Kirikos:Bye everyone. Great work in 2016....looking forward to 2017. Michelle DeSmyter:January 4th Steve Levy:Have a great holiday and New Years everyone! David McAuley (RySG):Thanks all, best wishes Michelle DeSmyter:17:00 UTC Mary Wong:Happy holidays everyone! Thank you for your time! Maxim Alzoba (FAITID):Happy Holidays! Heather Forrest:All the best for 2017 everyone Vinzenz Heussler:happy holidays everyone! Paul Tattersfield:Bye Everyone - Happy Holidays and best for a successful 2017 Monica Mitchell:thank you everyone. Laurie Anderson:All the best in 2017 susan payne:bye ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Mp3, Attendance & AC Chat for Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Michelle DeSmyter Dec. 23, 2016

Dec. 23, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 21 December 2016 at 22:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/BJ3DAw MP3:http://audio.icann.org/gnso/gnso-rpm-review-21dec16-en.mp3 The recordings and transcriptions 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-rpm-wg/ Wiki page: https://community.icann.org/x/BJ3DAw Thank you. Kind regards, Michelle DeSmyter Adobe Connect chat transcript for 21 December 2016: Michelle DeSmyter:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 21 December 2016 at 22:00 UTC for 60 minutes. Michelle DeSmyter:Agenda page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… Philip Corwin:Hi Michelle. I am uncharacteristically early ;-) Michelle DeSmyter:No worries - glad to have you! :) Michelle DeSmyter:Welcome Maxim! Maxim Alzoba (FAITID):Hello Michelle, Philip Maxim Alzoba (FAITID):will type instead of using mic - it is 1AM Maxim Alzoba (FAITID):for me Michelle DeSmyter:Ouch - sounds good Maxim George Kirikos:Hi folks. Paul Tattersfield:Hi Everyeone Steve Levy:HI all. Happy holidays! Mary Wong:@Phil, we have the redlined version ready. Let us know if you want us to change to it. Mary Wong:We are at the bottom of page 5, for those who have just joined Maxim Alzoba (FAITID):reasonably priced to allow for protection of small local businesses? George Kirikos:Accessible = affordable? Kristine Dorrain - Amazon Registry Services:I think affordable is too limiting Kristine Dorrain - Amazon Registry Services:There may be other hinderances at play Heather Forrest:Agree with Kristine that affordable is too narrow a term Jeff Neuman:ease of use? Griffin Barnett:Agree that "access" would potentially include cost, as well as some of the things Phil mentioned such as language, etc. George Kirikos:I think the TMCH is translated into more than 10 languages, see top right of https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Kurt Pritz:I think guidance for this question comes from the last prepositional clause: "in developing countries." Paul Tattersfield:Can we change ‘trademark owners’ to ‘rights holders’? Because it’s important to provide guidance for marks protected by statue and treaty as well as trademarks. Kristine Dorrain - Amazon Registry Services:The dictionary says accessible means: capable of being used, influenced, seen, understood, appreciated. I think that word is fine. Heather Forrest:usable? susan payne:Agree with Paul's replacement to rights holders Griffin Barnett:Agree we should keep to "accessible" Kurt Pritz:Maybe revese the sentence: Can those in developing countries readily access trademark clearinghouse services (as compared to other regions)? Kathy Kleiman:Why would we change trademark owners to rights holders? Griffin Barnett:No objection to "rights holders" Paul Tattersfield:to include 6ter marks Kathy Mary Wong:On 4.1, note the Sub Team suggestion to share the WG findings on this with the New gTLD SubPro WG. Steve Levy:I like the term "confidential" Petter Rindforth:confidential seems better describe what we mean susan payne:I think we all understand closed = confidential Laurie Anderson:Closed seems to be misleading to the general public Kathy Kleiman:Tx Paul Jeff Neuman:Competition affects cost; bringing the costs down could increase use and effectiveness George Kirikos:5.1 is about costs. One alternative to multiple providers is to have regular competitive tenders. Steve Levy:Although I think TMCH competition is rather impractical, I feel it shoudl be opened up as a matter of principle Kristine Dorrain - Amazon Registry Services:If that's the case, then I suggest that costs will come out of our investigation as an issue. I'm sure we'll get data on that. And if cost is a problem, then I think competition is a valid solution. Jeff Neuman:I offer no opinion on the question of who should address :) Jeff Neuman:I will only offer the opinion that this group has the relevant expertise to understand the TMCH and the implications of having multiple providers. Looking at the membership of this PDP WG we have a lot of trademark owners and users of the TMCH. So to me it makes sense to be here. Steve Levy:Hasn't Deloitte actually lost money on its TMCH operation? Heather Forrest:Is CCT looking into this issue? susan payne:Hi, I would point out that the WG suggested 2 alternative options for language on this Mary Wong:Several WG members have expressed a preference for Option 2. Jon Nevett:@Steve -- we alone paid them about $1M -- can't believe that they have lost $ susan payne:ICANN paid them too! George Kirikos:Hollywood accounting? :-) susan payne:old hand Griffin Barnett:I would support a further revised version of Cat 5 Q 1: “Taking into consideration cost, reliability, global reach, diversity of services, consistency, and other possible factors, would it be desirable and practical to have more than one provider for the TMCH services? Why or why not?” Kristine Dorrain - Amazon Registry Services:Proposal 2 focuses on the question: Kristine Dorrain - Amazon Registry Services:Proposal 2 focuses on the question: "what is the problem" rather than suggesting a list.... susan payne:I prefer 2 Steve Levy:I also voted for Proposal 2 susan payne:aha, for reasons Kristine is giving Heather Forrest:I prefer the open-endedness of 2 Kurt Pritz:I prefer 1 as it delineates issues Petter Rindforth:I support Griffins suggested version Griffin Barnett:Proposal 2 wording seems to presuppose that there are concerns with a single provider of TMCH services, that's my only concern about that formulation Kristine Dorrain - Amazon Registry Services:Griffin, people from the community came up with this question, so it's safe to assume SOMEONE thinks there's a problem. :) Vinzenz Heussler:Griffin Barnett combined 1 and 2 rather clever Heather Forrest:Mary has her hand up Kristine Dorrain - Amazon Registry Services:I'm not following that - visual learner. Can someone capture Phil's most recent suggestion in writing? Kathy Kleiman:I like Phil's compromise wording Kurt Pritz:@ Mary - we are perilously close to agreement - cmonsensus Vinzenz Heussler:it's in the agenda/notes on the right side, isn't it Kurt Pritz:@ Mary "consensus" Griffin Barnett:Fine with the latest compromise wording David McAuley (RySG):Sometimes hard for notes on right to keep up with speedy speakers Paul Tattersfield:Does the current single operator nature of the TMCH optimize operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered? Griffin Barnett:@Kurt -- I thought "cmonsensus" was intentionally clever Kristine Dorrain - Amazon Registry Services:Proposal 4 was Phil's right? Kristine Dorrain - Amazon Registry Services:I support that. Mary Wong:Proposal 3 was from Griffin, Proposal 4 is Phil's suggestion Kristine Dorrain - Amazon Registry Services:thanks Mary, Santa better be kind to you... Laurie Anderson:Supporting Proposal 4 Lillian Fosteris:I like Proposal 4 Griffin Barnett:Agree you can remove "Why or why not" from my proposal -- it is implied by the initial question Mary Wong:I count 14 in favor of Proposal 4 Heather Forrest:Are we not taking this out to other members of the WG? I misunderstood perhaps - thought the straw poll was going out to the list? Mary Wong:@Heather, we will send out a note highlighting that this is the proposed final set of TMCH Charter questions Vinzenz Heussler:costs proportionate to benefits? Maxim Alzoba (FAITID):have we seen a single review of TMCH activities from financial perspective? David McAuley (RySG):it sounds like proportionate among those three David McAuley (RySG):icann, rights holders, and community George Kirikos:Should list more stakeholders, e.g. registries, registrars, registrants, etc. Chris Thomas:proportional? Kristine Dorrain - Amazon Registry Services:+1 George Lillian Fosteris:+1 Georege Lillian Fosteris:George* Maxim Alzoba (FAITID):+1 George susan payne:Agree George but I think that;'s intended by community David McAuley (RySG):I agree then with the idea of listing registries, registrars, registrant Heather Forrest:Should we split the question into multiple parts to encourage a reply on each stakeholder? Paul Tattersfield:Support George Kirikos:If they're part of "community", then they might get diluted by 1/3rd. David McAuley (RySG):registrants are part of conmunity as well Mary Wong:We got it, Phil George Kirikos:e.g. TM owners weighted equally as registrars, equally as registries, equally as registrants, is not the same as "TM Owners equal with registries PLUS registrars PLUS registrants". David McAuley (RySG):then I suggest we specify registries, rars, registrants David McAuley (RySG):maybe "fairly balanced" instead of proportionate - not sure what proportionate means David McAuley (RySG):i have no audio this evening - glitch going on here, sorry Paul Tattersfield:@David I think it was proportionate between costs and benefits David McAuley (RySG):by audio I meant mic David McAuley (RySG):ok thanks Paul susan payne:+1Kristine George Kirikos:@DavidM: might want to use the telephone connection (it's more reliable). David McAuley (RySG):like it Phil but use among instead of between Heather Forrest:rather than name them and perhaps miss someone, can we say 'all of the relevant stakeholders'? George Kirikos:That new alternative language looks fine to me. David McAuley (RySG):sorry Goerge - one with a higher power (at home now) has phone right now and i forgot cell in office David McAuley (RySG):George, that is Paul Tattersfield:Very much agree Susan David McAuley (RySG):Thanks Susan, that makes sense – I was not part of subteam and do not have that history on this and so appreciate the point you make Kristine Dorrain - Amazon Registry Services:Yes. I would say registries get the least benefit from having to use the TMCH, but is the cost to us proportionate to what the rights holders are getting? David McAuley (RySG):sounds good Kristine Dorrain - Amazon Registry Services:I like reasonably proportionate. Mary Wong:Are we talking about costs and benefits, or advantages and disadvantages? Kristine Dorrain - Amazon Registry Services:I think they're understood to be the same. Paul Tattersfield:the original question was benefits and costs Kathy Kleiman:+1 Mary Wong:OK, thanks Kristine Dorrain - Amazon Registry Services:I hear a chorus of angels. David McAuley (RySG):i can hear it too - quite nice Mary Wong:Will do, Phil. susan payne:hurrah!!! Kathy Kleiman:Congratulations All! George Kirikos:1/2 the docs = questions David McAuley (RySG):sing seasonal songs? Kathy Kleiman:Happy Holidays to All! Petter Rindforth:We are the best!! George Kirikos:So it's really only 2 pages or so. Kristine Dorrain - Amazon Registry Services:I vote that we bail. George Kirikos:Happy holidays, folks. See you in 2017. David McAuley (RySG):agreed Phil, makes sense Kiran Malancharuvil:Thanks! Griffin Barnett:Happy to reserve this until next time susan payne:happy. it's 10.50 here the week before xmas Maxim Alzoba (FAITID):could we use doodle poll? Mary Wong:04:00 UTC = 20:00/ PT, 23:00/ET, 04:00 London, 05:00 CET, 15:00 Sydney, 12:00 Beijing Kristine Dorrain - Amazon Registry Services:the registries Heather Forrest:Thanks very much for keeping the time within decent hours for APAC Maxim Alzoba (FAITID):with RySG .. now it is not a conflict Maxim Alzoba (FAITID):nice ... it is going to be 7.am instead of 1am :) George Kirikos:04:00 UTC on Thursday? (so that we are still on Wednesday night in Toronto/New York) susan payne:well I understand and support the reason for doing so - but I won't be on a call at 4am. Id love to see some calls that work foir aspac, ME and europe but are less good for US George Kirikos:Or is it 04:00 UTC on Wednesday? (meaning that we are instead on Tuesday in North America???) Heather Forrest:To Susan's point, it does seem that Europe and APAC are normally the time compromisers. That said, most participants are in North America, but maybe this is a chicken-egg problem Mary Wong:@Heather, yes - so one way we are trying to accommodate all of this is to do this as one rotation out of four Heather Forrest:@ Mary, that sounds practical Paul Tattersfield:Question to Staff: Would it be possible to make the document window wider and move the Agenda/Notes window down making it the same height as the chat window? As this would make it easier to read wider/table formatted documents without having to horizontal scroll so often George Kirikos:We should decide the date, too (Wednesday vs. Thursday UTC, i.e Tuesday vs. Wednesday in North America), on the list. Mary Wong:@Paul, I will ask - but I believe it is fixed Paul Tattersfield:thanks Mary George Kirikos:Bye everyone. Great work in 2016....looking forward to 2017. Michelle DeSmyter:January 4th Steve Levy:Have a great holiday and New Years everyone! David McAuley (RySG):Thanks all, best wishes Michelle DeSmyter:17:00 UTC Mary Wong:Happy holidays everyone! Thank you for your time! Maxim Alzoba (FAITID):Happy Holidays! Heather Forrest:All the best for 2017 everyone Vinzenz Heussler:happy holidays everyone! Paul Tattersfield:Bye Everyone - Happy Holidays and best for a successful 2017 Monica Mitchell:thank you everyone. Laurie Anderson:All the best in 2017 susan payne:bye

8 9

FOR REVIEW: Updated TMCH Charter questions
by Mary Wong Dec. 22, 2016

Dec. 22, 2016

Dear all, Please find attached an updated table of the proposed list of TMCH Charter questions, edited following the Working Group call of 21 December. For ease of reference, in addition to the redlined table (which shows changes made on the last two calls), a second document showing the full list of final questions, numbered chronologically, is also attached. As agreed on the call, and for the attention of those Working Group members who were not able to be on the call - please review the proposed final list of questions, and send any comments you may have to this mailing list, no later than 31 December 2016. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, December 20, 2016 at 18:08 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda for RPM Working Group call on Wednesday 21 December Dear all, The proposed agenda for the Working Group call on Wednesday 21 December at 2200 UTC, which will be the final call for this calendar year, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Complete review of proposed TMCH Charter questions (see document circulated on 15 December) 3. [if time permits] review registry responses received to date on questions sent by TMCH Data Gathering Sub Team (see document circulated on 13 December) 4. Co-chairs’ recommendation for new rotating meeting time 5. Next steps / next meeting Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, December 15, 2016 at 13:35 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: FOR REVIEW/DISCUSSION: Updated table of TMCH Charter Questions Dear all, Please find attached an updated version of the TMCH Charter Questions table, which staff has prepared based on the Working Group discussion during the Working Group call this past Wednesday. In addition to the updates made to Category 1 Question 4 (on design marks), Category 2 Questions 1 and 2 (rejection of TMCH submissions and handling of cancelled trademarks), and Category 3 Questions 1, 2 and 3 (balancing of rights, the generic/scope issue, and TM+50), we have retained in this version the changes made last week to Category 1 Questions 1-3 so that you can review all the agreed changes to date. Please note that a few Working Group member comments remain to be either considered or responses finalized – we have retained these in the document as well for your easy reference. We have yet to discuss and finalize the following remaining questions: Category 3 Question 4, and the questions in Category 4 and Category 5. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, December 14, 2016 at 01:31 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for RPM Working Group call on 14 December Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

1 0

Meeting rotation times for the RPM Review Working Group
by Mary Wong Dec. 22, 2016

Dec. 22, 2016

Dear Jonathan (Agmon), Jonathan (Matkowsky) and everyone, I hope you will be pleased to know that the Working Group co-chairs have been discussing this topic and reviewing the usefulness of our current meeting rotation times. Following discussion with those Working Group members who were able to attend the call yesterday, the Working Group co-chairs would like to propose a change for our meeting times, as follows: Week 1: 1700 UTC (no change) Week 2: 1800 UTC (no change) Week 3: 1700 UTC (no change) Week 4: 0400 UTC (change from 2200 UTC) We invite all Working Group members to provide feedback on this proposed change. Please note that, given the geographic spread of our membership, the fact that a large majority are based in North America followed by Europe, there is unfortunately no single time that will work for everyone. The idea to hold one out of four meetings in a much more APAC-friendly time zone seems to be an equitable solution, given the circumstances. The co-chairs intend to review the rotation again around the time of the ICANN58 meeting in March 2017. Assuming there are no major objections, staff will go ahead and implement the proposed change with effect from January2017. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of jonathan matkowsky <jonathan.matkowsky(a)riskiq.net> Date: Thursday, December 22, 2016 at 09:56 To: Jonathan Agmon <jonathan.agmon(a)ip-law.legal> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org>, "gnso-secs(a)icann.org" <gnso-secs(a)icann.org> Subject: Re: [gnso-rpm-wg] Mp3, Attendance & AC Chat for Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group I had the same experience last night when I tried to stay up for the call and intended to make it, but fell asleep because it was in middle of the night. So I would like to be added to that column too please. Thank you! [http://safe.riskiq.com/rs/455-NHF-420/images/RiskIQ_Logo_Blue_Vertical.png]…]<https://urldefense.proofpoint.com/v2/url?u=http-3A__riskiq.com_&d=DgMFaQ&c=…> jonathan matkowsky, vp – ip & brand security usa:: 1.347.467.1193 | office:: +972-(0)8-926-2766 emergency mobile:: +972-(0)54-924-0831 company reg. no. 514805332[havarot.justice.gov.il]<https://urldefense.proofpoint.com/v2/url?u=http-3A__havarot.justice.gov.il_…> 11/1 nachal chever, modiin israel [http://cdn2.hubspot.net/hub/250381/file-1448744755-png/Email_Signature/twit…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_riskiq&d=D…>[http://cdn2.hubspot.net/hub/250381/file-1448719740-png/Email_Signature/face…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.facebook.com_pages…>[http://cdn2.hubspot.net/hub/250381/file-1448744760-png/Email_Signature/link…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_compa…>[http://cdn2.hubspot.net/hub/250381/file-1448719735-png/Email_Signature/goog…]<https://urldefense.proofpoint.com/v2/url?u=https-3A__plus.google.com_-2BRis…> On Thu, Dec 22, 2016 at 6:20 AM, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Dear Michelle and Marry, First I apologize for cc’ing the entire list to this email but I think it is only fair that this would not be a private request. The attendance list is a bit of a sore spot for me since I joined this WG. As I noted before I do want to attend the calls but all the calls are outside the time zone for the Far East. They are always at 1am or 6am for Singapore/Beijing time. For Australia I think it is even worse. It is therefore unreasonable for those of us in this part of the world to join. It is also a bit odd for us to continuously apologize for not making the calls. After all there is nothing to apologize for. Can I therefore please ask you to add another category to the attendance. I suggest we call it “out of time zone” or something to this effect. You can place my name there and perhaps others from this part of the planet who so request. I hope this will better reflect the fact that I (and perhaps others) would like to join the calls but we cannot. I appreciate your kind consideration of this request. Thanks, [cid:image001.png@01D25C48.35131750] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal[ip-law.legal]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.ip-2Dlaw.legal&d=Dg…> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Michelle DeSmyter Sent: Thursday, December 22, 2016 11:30 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Cc: gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> Subject: [gnso-rpm-wg] Mp3, Attendance & AC Chat for Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 21 December 2016 at 22:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/BJ3DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> MP3:http://audio.icann.org/gnso/gnso-rpm-review-21dec16-en.mp3[audio.icann.…<https://urldefense.proofpoint.com/v2/url?u=http-3A__audio.icann.org_gnso_gn…> The recordings and transcriptions 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-rpm-wg/ Wiki page: https://community.icann.org/x/BJ3DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> Thank you. Kind regards, Michelle DeSmyter Adobe Connect chat transcript for 21 December 2016: Michelle DeSmyter:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 21 December 2016 at 22:00 UTC for 60 minutes. Michelle DeSmyter:Agenda page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… Philip Corwin:Hi Michelle. I am uncharacteristically early ;-) Michelle DeSmyter:No worries - glad to have you! :) Michelle DeSmyter:Welcome Maxim! Maxim Alzoba (FAITID):Hello Michelle, Philip Maxim Alzoba (FAITID):will type instead of using mic - it is 1AM Maxim Alzoba (FAITID):for me Michelle DeSmyter:Ouch - sounds good Maxim George Kirikos:Hi folks. Paul Tattersfield:Hi Everyeone Steve Levy:HI all. Happy holidays! Mary Wong:@Phil, we have the redlined version ready. Let us know if you want us to change to it. Mary Wong:We are at the bottom of page 5, for those who have just joined Maxim Alzoba (FAITID):reasonably priced to allow for protection of small local businesses? George Kirikos:Accessible = affordable? Kristine Dorrain - Amazon Registry Services:I think affordable is too limiting Kristine Dorrain - Amazon Registry Services:There may be other hinderances at play Heather Forrest:Agree with Kristine that affordable is too narrow a term Jeff Neuman:ease of use? Griffin Barnett:Agree that "access" would potentially include cost, as well as some of the things Phil mentioned such as language, etc. George Kirikos:I think the TMCH is translated into more than 10 languages, see top right of https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Kurt Pritz:I think guidance for this question comes from the last prepositional clause: "in developing countries." Paul Tattersfield:Can we change ‘trademark owners’ to ‘rights holders’? Because it’s important to provide guidance for marks protected by statue and treaty as well as trademarks. Kristine Dorrain - Amazon Registry Services:The dictionary says accessible means: capable of being used, influenced, seen, understood, appreciated. I think that word is fine. Heather Forrest:usable? susan payne:Agree with Paul's replacement to rights holders Griffin Barnett:Agree we should keep to "accessible" Kurt Pritz:Maybe revese the sentence: Can those in developing countries readily access trademark clearinghouse services (as compared to other regions)? Kathy Kleiman:Why would we change trademark owners to rights holders? Griffin Barnett:No objection to "rights holders" Paul Tattersfield:to include 6ter marks Kathy Mary Wong:On 4.1, note the Sub Team suggestion to share the WG findings on this with the New gTLD SubPro WG. Steve Levy:I like the term "confidential" Petter Rindforth:confidential seems better describe what we mean susan payne:I think we all understand closed = confidential Laurie Anderson:Closed seems to be misleading to the general public Kathy Kleiman:Tx Paul Jeff Neuman:Competition affects cost; bringing the costs down could increase use and effectiveness George Kirikos: 5.1 is about costs. One alternative to multiple providers is to have regular competitive tenders. Steve Levy:Although I think TMCH competition is rather impractical, I feel it shoudl be opened up as a matter of principle Kristine Dorrain - Amazon Registry Services:If that's the case, then I suggest that costs will come out of our investigation as an issue. I'm sure we'll get data on that. And if cost is a problem, then I think competition is a valid solution. Jeff Neuman:I offer no opinion on the question of who should address :) Jeff Neuman:I will only offer the opinion that this group has the relevant expertise to understand the TMCH and the implications of having multiple providers. Looking at the membership of this PDP WG we have a lot of trademark owners and users of the TMCH. So to me it makes sense to be here. Steve Levy:Hasn't Deloitte actually lost money on its TMCH operation? Heather Forrest:Is CCT looking into this issue? susan payne:Hi, I would point out that the WG suggested 2 alternative options for language on this Mary Wong:Several WG members have expressed a preference for Option 2. Jon Nevett:@Steve -- we alone paid them about $1M -- can't believe that they have lost $ susan payne:ICANN paid them too! George Kirikos:Hollywood accounting? :-) susan payne:old hand Griffin Barnett:I would support a further revised version of Cat 5 Q 1: “Taking into consideration cost, reliability, global reach, diversity of services, consistency, and other possible factors, would it be desirable and practical to have more than one provider for the TMCH services? Why or why not?” Kristine Dorrain - Amazon Registry Services:Proposal 2 focuses on the question: Kristine Dorrain - Amazon Registry Services:Proposal 2 focuses on the question: "what is the problem" rather than suggesting a list.... susan payne:I prefer 2 Steve Levy:I also voted for Proposal 2 susan payne:aha, for reasons Kristine is giving Heather Forrest:I prefer the open-endedness of 2 Kurt Pritz:I prefer 1 as it delineates issues Petter Rindforth:I support Griffins suggested version Griffin Barnett:Proposal 2 wording seems to presuppose that there are concerns with a single provider of TMCH services, that's my only concern about that formulation Kristine Dorrain - Amazon Registry Services:Griffin, people from the community came up with this question, so it's safe to assume SOMEONE thinks there's a problem. :) Vinzenz Heussler:Griffin Barnett combined 1 and 2 rather clever Heather Forrest:Mary has her hand up Kristine Dorrain - Amazon Registry Services:I'm not following that - visual learner. Can someone capture Phil's most recent suggestion in writing? Kathy Kleiman:I like Phil's compromise wording Kurt Pritz:@ Mary - we are perilously close to agreement - cmonsensus Vinzenz Heussler:it's in the agenda/notes on the right side, isn't it Kurt Pritz:@ Mary "consensus" Griffin Barnett:Fine with the latest compromise wording David McAuley (RySG):Sometimes hard for notes on right to keep up with speedy speakers Paul Tattersfield:Does the current single operator nature of the TMCH optimize operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered? Griffin Barnett:@Kurt -- I thought "cmonsensus" was intentionally clever Kristine Dorrain - Amazon Registry Services:Proposal 4 was Phil's right? Kristine Dorrain - Amazon Registry Services:I support that. Mary Wong:Proposal 3 was from Griffin, Proposal 4 is Phil's suggestion Kristine Dorrain - Amazon Registry Services:thanks Mary, Santa better be kind to you... Laurie Anderson:Supporting Proposal 4 Lillian Fosteris:I like Proposal 4 Griffin Barnett:Agree you can remove "Why or why not" from my proposal -- it is implied by the initial question Mary Wong:I count 14 in favor of Proposal 4 Heather Forrest:Are we not taking this out to other members of the WG? I misunderstood perhaps - thought the straw poll was going out to the list? Mary Wong:@Heather, we will send out a note highlighting that this is the proposed final set of TMCH Charter questions Vinzenz Heussler:costs proportionate to benefits? Maxim Alzoba (FAITID):have we seen a single review of TMCH activities from financial perspective? David McAuley (RySG):it sounds like proportionate among those three David McAuley (RySG):icann, rights holders, and community George Kirikos:Should list more stakeholders, e.g. registries, registrars, registrants, etc. Chris Thomas:proportional? Kristine Dorrain - Amazon Registry Services:+1 George Lillian Fosteris:+1 Georege Lillian Fosteris:George* Maxim Alzoba (FAITID):+1 George susan payne:Agree George but I think that;'s intended by community David McAuley (RySG):I agree then with the idea of listing registries, registrars, registrant Heather Forrest:Should we split the question into multiple parts to encourage a reply on each stakeholder? Paul Tattersfield:Support George Kirikos:If they're part of "community", then they might get diluted by 1/3rd. David McAuley (RySG):registrants are part of conmunity as well Mary Wong:We got it, Phil George Kirikos:e.g. TM owners weighted equally as registrars, equally as registries, equally as registrants, is not the same as "TM Owners equal with registries PLUS registrars PLUS registrants". David McAuley (RySG):then I suggest we specify registries, rars, registrants David McAuley (RySG):maybe "fairly balanced" instead of proportionate - not sure what proportionate means David McAuley (RySG):i have no audio this evening - glitch going on here, sorry Paul Tattersfield:@David I think it was proportionate between costs and benefits David McAuley (RySG):by audio I meant mic David McAuley (RySG):ok thanks Paul susan payne:+1Kristine George Kirikos:@DavidM: might want to use the telephone connection (it's more reliable). David McAuley (RySG):like it Phil but use among instead of between Heather Forrest:rather than name them and perhaps miss someone, can we say 'all of the relevant stakeholders'? George Kirikos:That new alternative language looks fine to me. David McAuley (RySG):sorry Goerge - one with a higher power (at home now) has phone right now and i forgot cell in office David McAuley (RySG):George, that is Paul Tattersfield:Very much agree Susan David McAuley (RySG):Thanks Susan, that makes sense – I was not part of subteam and do not have that history on this and so appreciate the point you make Kristine Dorrain - Amazon Registry Services:Yes. I would say registries get the least benefit from having to use the TMCH, but is the cost to us proportionate to what the rights holders are getting? David McAuley (RySG):sounds good Kristine Dorrain - Amazon Registry Services:I like reasonably proportionate. Mary Wong:Are we talking about costs and benefits, or advantages and disadvantages? Kristine Dorrain - Amazon Registry Services:I think they're understood to be the same. Paul Tattersfield:the original question was benefits and costs Kathy Kleiman:+1 Mary Wong:OK, thanks Kristine Dorrain - Amazon Registry Services:I hear a chorus of angels. David McAuley (RySG):i can hear it too - quite nice Mary Wong:Will do, Phil. susan payne:hurrah!!! Kathy Kleiman:Congratulations All! George Kirikos:1/2 the docs = questions David McAuley (RySG):sing seasonal songs? Kathy Kleiman:Happy Holidays to All! Petter Rindforth:We are the best!! George Kirikos:So it's really only 2 pages or so. Kristine Dorrain - Amazon Registry Services:I vote that we bail. George Kirikos:Happy holidays, folks. See you in 2017. David McAuley (RySG):agreed Phil, makes sense Kiran Malancharuvil:Thanks! Griffin Barnett:Happy to reserve this until next time susan payne:happy. it's 10.50 here the week before xmas Maxim Alzoba (FAITID):could we use doodle poll? Mary Wong:04:00 UTC = 20:00/ PT, 23:00/ET, 04:00 London, 05:00 CET, 15:00 Sydney, 12:00 Beijing Kristine Dorrain - Amazon Registry Services:the registries Heather Forrest:Thanks very much for keeping the time within decent hours for APAC Maxim Alzoba (FAITID):with RySG .. now it is not a conflict Maxim Alzoba (FAITID):nice ... it is going to be 7.am[7.am]<https://urldefense.proofpoint.com/v2/url?u=http-3A__7.am&d=DgMFaQ&c=FmY1u3P…> instead of 1am :) George Kirikos:04:00 UTC on Thursday? (so that we are still on Wednesday night in Toronto/New York) susan payne:well I understand and support the reason for doing so - but I won't be on a call at 4am. Id love to see some calls that work foir aspac, ME and europe but are less good for US George Kirikos:Or is it 04:00 UTC on Wednesday? (meaning that we are instead on Tuesday in North America???) Heather Forrest:To Susan's point, it does seem that Europe and APAC are normally the time compromisers. That said, most participants are in North America, but maybe this is a chicken-egg problem Mary Wong:@Heather, yes - so one way we are trying to accommodate all of this is to do this as one rotation out of four Heather Forrest:@ Mary, that sounds practical Paul Tattersfield:Question to Staff: Would it be possible to make the document window wider and move the Agenda/Notes window down making it the same height as the chat window? As this would make it easier to read wider/table formatted documents without having to horizontal scroll so often George Kirikos:We should decide the date, too (Wednesday vs. Thursday UTC, i.e Tuesday vs. Wednesday in North America), on the list. Mary Wong:@Paul, I will ask - but I believe it is fixed Paul Tattersfield:thanks Mary George Kirikos:Bye everyone. Great work in 2016....looking forward to 2017. Michelle DeSmyter:January 4th Steve Levy:Have a great holiday and New Years everyone! David McAuley (RySG):Thanks all, best wishes Michelle DeSmyter:17:00 UTC Mary Wong:Happy holidays everyone! Thank you for your time! Maxim Alzoba (FAITID):Happy Holidays! Heather Forrest:All the best for 2017 everyone Vinzenz Heussler:happy holidays everyone! Paul Tattersfield:Bye Everyone - Happy Holidays and best for a successful 2017 Monica Mitchell:thank you everyone. Laurie Anderson:All the best in 2017 susan payne:bye ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Proposed agenda for RPM Working Group call on Wednesday 21 December
by Mary Wong Dec. 20, 2016

Dec. 20, 2016

Dear all, The proposed agenda for the Working Group call on Wednesday 21 December at 2200 UTC, which will be the final call for this calendar year, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Complete review of proposed TMCH Charter questions (see document circulated on 15 December) 3. [if time permits] review registry responses received to date on questions sent by TMCH Data Gathering Sub Team (see document circulated on 13 December) 4. Co-chairs’ recommendation for new rotating meeting time 5. Next steps / next meeting Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, December 15, 2016 at 13:35 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: FOR REVIEW/DISCUSSION: Updated table of TMCH Charter Questions Dear all, Please find attached an updated version of the TMCH Charter Questions table, which staff has prepared based on the Working Group discussion during the Working Group call this past Wednesday. In addition to the updates made to Category 1 Question 4 (on design marks), Category 2 Questions 1 and 2 (rejection of TMCH submissions and handling of cancelled trademarks), and Category 3 Questions 1, 2 and 3 (balancing of rights, the generic/scope issue, and TM+50), we have retained in this version the changes made last week to Category 1 Questions 1-3 so that you can review all the agreed changes to date. Please note that a few Working Group member comments remain to be either considered or responses finalized – we have retained these in the document as well for your easy reference. We have yet to discuss and finalize the following remaining questions: Category 3 Question 4, and the questions in Category 4 and Category 5. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, December 14, 2016 at 01:31 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for RPM Working Group call on 14 December Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
by David Tait Dec. 20, 2016

Dec. 20, 2016

Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy(a)kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil(a)markmonitor.com>, David Tait <david.tait(a)icann.org> Cc: Mary Wong <mary.wong(a)icann.org>, Susan Payne <susan.payne(a)valideus.com>, Edward Morris <edward.morris(a)alumni.usc.edu>, Phil Corwin <psc(a)vlaw-dc.com>, "Sarahliannec(a)gmail.com" <Sarahliannec(a)gmail.com>, Paul Keating <paul(a)law.es>, "kurt(a)kjpritz.com" <kurt(a)kjpritz.com>, "gpmgroup(a)gmail.com" <gpmgroup(a)gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va(a)bladebrains.com>, Sarah Clayton <Sarahliannec(a)gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactS… So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org]<http://www.icann.org>[icann.org] <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>

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FOR REVIEW/DISCUSSION: Updated table of TMCH Charter Questions
by Mary Wong Dec. 15, 2016

Dec. 15, 2016

Dear all, Please find attached an updated version of the TMCH Charter Questions table, which staff has prepared based on the Working Group discussion during the Working Group call this past Wednesday. In addition to the updates made to Category 1 Question 4 (on design marks), Category 2 Questions 1 and 2 (rejection of TMCH submissions and handling of cancelled trademarks), and Category 3 Questions 1, 2 and 3 (balancing of rights, the generic/scope issue, and TM+50), we have retained in this version the changes made last week to Category 1 Questions 1-3 so that you can review all the agreed changes to date. Please note that a few Working Group member comments remain to be either considered or responses finalized – we have retained these in the document as well for your easy reference. We have yet to discuss and finalize the following remaining questions: Category 3 Question 4, and the questions in Category 4 and Category 5. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, December 14, 2016 at 01:31 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for RPM Working Group call on 14 December Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Proposed agenda and documents for RPM Working Group call on 14 December
by Mary Wong Dec. 15, 2016

Dec. 15, 2016

Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Dec. 14, 2016

Dec. 14, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 14 December 2016 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/_ZzDAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-14dec16-en.mp3 The recordings and transcriptions 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-rpm-wg/ Wiki page: https://community.icann.org/x/rhiOAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 14 December 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 14 December 2016 at 17:00 UTC for 60 minutes. Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Philip Corwin:Good day all Paul Tattersfield:Hi Everyone George Kirikos:Welcome Phil & Paul. Maxim Alzoba (FAITID):Hello all Elizabeth Featherman:Hello everyone! Sorry I have a client call within this hour and may have to bow out early. I apologize for the interruption. George Kirikos:That's the bottom of page 2. Mary Wong:Yes, document is unsync'ed Mary Wong:Oh dear, yes, sorry for poor spelling :( Will fix in the next version. George Kirikos:'Exclusively' makes more sense. Massimo Vittori:I ma trying to take the floor :-) Beth Allegretti:Sorry I'm late George Kirikos:You can raise your hand using the button at the top, Massimo. George Kirikos:(that gets the attention of the co-chair) George Kirikos:*6 to unmute George Kirikos:(if you're on the phone) David McAuley (RySG):very feint Terri Agnew:@Massimo, I sent you a private AC chat, check tab below this chat Mary Wong:@Kathy, just a note from staff that the first 3 questions Massimo asked are actually questions that our Data Gathering Sub Team have asked of Deloitte. Terri Agnew:Massimo has activatetd mic Vaibhav Aggarwal:Hi TEam Vaibhav Aggarwal:Sorry was late Kristine Dorrain - Amazon Registry Services:@Mary, thanks. I thought so, but I wasn't sure. Vaibhav Aggarwal:+1 Massimo Paul Tattersfield:Can we widen the questions gernerally to include marks such as GI and other treaty and statutes etc. by changing In Q3.2 'within a trademark' to "within a mark' and In Q4.1 'trademark owners' to 'rights holders' George Kirikos:(one can click the button at the top to lower one's hand, or clear status) Mary Wong:Just a note that the Data Gathering Sub Team did not specifically ask Deloitte about GIs or AoOs, but presumably this can be an easy follow up by the Sub Team. Kristine Dorrain - Amazon Registry Services:Ah, ok, rusty memory. Mary Wong:On this question, the Data Gathering Sub Team asked the following of Deloitte: "Can you tell us who is using the TMDB and under what circumstances (other than for providing the Sunrise and Claims Notice services required by ICANN)? How many "blocking"-type services are you supporting (e.g. protected marks lists), and with/for whom? Are you aware of other services that may be provided by registry operators using the TMDB other than via contract with you?" Marie Pattullo:Agree with Kathy - can we specify that this is as rejected for recordal in the TMCH? George Kirikos:That's more precise, and good, Marie. David McAuley (RySG):it is a good show Beth Allegretti:I have the same question Kristine Mary Wong:The Sub Team's question to Deloitte on cancelled TMs: "How are marks cancelled within national/regional registries handled at the TMCH level, if validation is only done annually? In other words, what is the TMCH process (if any) relating to marks that are cancelled or expire: reactive (e.g. TM owner/agent obligations) or proactive?" George Kirikos:I think it's the chilling effect for prospective registrants of having received a TMCH notice. George Kirikos:Which might cause the prospective registrant to abandon their shopping cart, and thus "losing" a potential customer. Vinzenz Heussler:by potential registrants? Kurt Pritz:The second part of the question: "Is this satisfactory?" is not necessary as it is clearly implied in the first question. Mary Wong:Note: This question is the same as what was in the Charter (i.e. not changed by the Sub Team). It was suggested in a comment to the Preliminary Issue Report. George Kirikos:Really only the first part of the question is needed, i.e. "How quickly can a cancelled TM be removed from the TMCH?" (i.e. the "should" is obviously "immediately", as we'd want to have an accurate database). Kristine Dorrain - Amazon Registry Services:It really reads like it was the type of comment that states a point then merely restates it... but am I wrong? Kurt Pritz:The Charter question (first part) could be more generic, i.e., "to avoid delteterious effects" or "to avoid negative impacts on prospective registrants." Mary Wong:I can hunt for and pull up the public comment in question if need be George Kirikos:(and the rest of the question is just providing a justification for the first part of the question, so that 2nd part isn't necessarily needed to pose the question itself) Phil Marano (Mayer Brown):The question appears to assume that TMCH records discourage registrations. Is this an assumption that everyone accepts and wishes to endorse in a Charter question? Shortening may be necessary. Vinzenz Heussler:"should" could be become ambigious without the end of the sentence? Greg Shatan:TMCH records themselves don't discourage registrations.... Kristine Dorrain - Amazon Registry Services:Correct. Shortening doesn't presume the problems or the solutions. Kristine Dorrain - Amazon Registry Services:Phil, the URS *relies* on an SMD file. The UDPR is independent of the TMCH. Kristine Dorrain - Amazon Registry Services:I suggest staff log the second part of this for the disucssion when we get there. George Kirikos:*6 to unmute, Lori. Maxim Alzoba (FAITID):who is responcible of notifiyng TMCH about a cancellation? (no one?) Maxim Alzoba (FAITID):*for George Kirikos:@Maxim: I think that's why the TMCH database should be public, so that the public can issue challenges to its accuracy, etc. Philip Corwin:@Kristine--what if a URS is brought on behalf of a mark that has not been registered in the TMCH? URS is available for any mark, not just TMCH marks. Mary Wong:@Maxim, I believe rights holders have to inform the TMCH of updates and changes within a reasonable time (happy to be corrected by others who have direct experience with this). George Kirikos:Question 3.1 is describing, in broad terms, our entire charter. :-) Kurt Pritz:"which" should be "that" (sorry) Bradley Silver:What does the reference to "legitimate" mean in reference to non-trademark registrants? Kristine Dorrain - Amazon Registry Services:@ Phil, then the complainant needs to independently establish use. It's not that you can't use the URS, but the Charter question seemed to me to be focusing on the link. the only link between URS and TMCH is that SMD file to establish use. But clearly, I was also confused as to how "losing" could happen. Maxim Alzoba (FAITID):it sounds like an attempt to undermine one of the generic fruit marks :) Phil Marano (Mayer Brown):With respect to Q 3.1, can anyone please explain what is meant by "legitimate rights of non-trademark registrants?" What specific rights are envisaged? Mary Wong:@Phil, @Bradley - that was the wording in the question that was suggested via public comment. Beth Allegretti:Who is going to make the judgement that the goods and services are "related"? Greg Shatan:We're not beholden to the original wording of any of these questions. Bradley Silver:Thanks @Mary, I think it raises questions though, about what "legitimate" rights means, as opposed to mere "rights". Paul Tattersfield:'dictionary term' should be changed to 'words' as 'dictionary' is a varying subset of words George Kirikos:@PhilM: It could be rights to use a term for goods/services unrelated to the TM, or might be for criticism of the TM holder, or any other non-TM infringing use (including non-commercial uses). George Kirikos:"terms" should include non-words, like commonly-used acronyms that might not appear in a dictionary. John McElwaine (Nelson Mullins):+1 Phil - that is what I've been saying all along Kristine Dorrain - Amazon Registry Services:@Phil and Bradley: perhaps not "legitimate" but absence of bad faith. We keep coming back to terms used in the UDRP.... :) Bradley Silver:@George - not sure all those things are "rights". Phil Marano (Mayer Brown):Are any particular legal rights envisaged? If so, it may be helpful to state them specifically. George Kirikos:@PhilM: perhaps it's the right to "life, liberty, and the pursuit of happiness"??!!?? :-) Greg Shatan:"word" could end up encompassing every "word mark" - a proper noun is still a word. So that's too broad. George Kirikos:Oops, I meant @Bradley. Vaibhav Aggarwal:@Greg Agree Kristine Dorrain - Amazon Registry Services:@Beth: Phil made a good observation on the email string. We can't let the possible outcome that there is no viable solution stop the question. We can say, there is a problem, here is a solution; there is a problem, there is no solution; or there is no problem (among other answers). George Kirikos:https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.o… (unalienable rights!) Vaibhav Aggarwal:Silence May be Disagreement and Blankness too - There could be a few who just did not have time enough to take a deeper look at it Maxim Alzoba (FAITID):or in .eco for proper eco apples Paul Tattersfield:Phil's rewording is a fudge and it loses what the original question was driving at whether or whether not the original question was correct or realistic George Kirikos:3.2 is somewhat related to 3.1, though. So the information we're asking about could easily be submitted via the answers to 3.1, instead of 3.2. David McAuley (RySG):Phil makes a fair point Vaibhav Aggarwal:Only NGTLD Only @Phi Vaibhav Aggarwal:@Phil Vaibhav Aggarwal:That can still be done Marie Pattullo:Q: Lotus (car), Lotus (paper tissues), lotus (flower). If you limit a TMCH record to cars, the result is still tissues can get an identical DN, just not in Sunrise. No? Mary Wong:Yes Marie Pattullo:What category of goods & services is dot shop related to; anything ever that could be sold via a shop? George Kirikos:You'd need to assign (possibly multiple) TM classes to each TLD. George Kirikos:https://urldefense.proofpoint.com/v2/url?u=http-3A__www.oppedahl.co… John McElwaine (Nelson Mullins):@Marie - good point. As Phil was saying there's no way to implement the concept Greg Shatan:There's no rational correlation between TLDs and trademark classes. Kurt Pritz:On question cat 3 Q 1: It might be better to say the "legitimate interests of non-trademark registrants." Marie Pattullo:+1 to Greg. Kurt Pritz:On Cat 3, Q2: I thought Marie's question is good. Can that be discussed? Maxim Alzoba (FAITID):@Greg , at least there hard to find objective method to find it Philip Corwin:I agree, Greg, and you can say that in your answer. But can we please get the text of 3.2 agreed to? And then we can discuss whether it belongs in Balance or another category of questions. Beth Allegretti:+1 to Bradley George Kirikos:I wouldn't use the term "non-trademark registrants" --- there might also be folks who hold TMs, but are not recorded in the TMCH databases. Philip Corwin:Agree with Bradley. Besides, what are illegitimate rights? George Kirikos:(i.e. not all TM holders feel the need to spend $$$$ to record their rights in the TMCH database) Greg Shatan:I think Phil's wording of 3.2 is no longer a TMCH question. Maxim Alzoba (FAITID):+1 @George Edward Morris:Agree with deletion of 'legitimate'. Kiran Malancharuvil:I agree with that Beth Allegretti:Agree Paul Tattersfield:agree Phil Marano (Mayer Brown):+1 John McElwaine (Nelson Mullins):+1 Paul Tattersfield:@Greg exactly! Kurt Pritz:"Should the TM+50 be retained as is, amended, or removed?" Maxim Alzoba (FAITID):how many marks used this right? George Kirikos:There's more than one "Phil", so folks might want to specify last names for the transcript. Kurt Pritz:@ Phil: I don't think that is a Charter question. I think your question flows from it Kristine Dorrain - Amazon Registry Services:@Phil C I think we asked for that. Kristine Dorrain - Amazon Registry Services:Accepted as amended or as is. George Kirikos:Kurt's language seems fine. Mary Wong:Data Gathering Sub Team question to Deloitte on TM+50: "How many TMCH records include a TM+50 list; and how many are on this list on average? How many registrations were made for entries on the TM+50 list?" Philip Corwin:Thanks Kristine. Just wanted to make sure. Beth Allegretti:+ 1 to Kurt's suggestion Maxim Alzoba (FAITID):bye all George Kirikos:Bye folks! Have a great day. Kiran Malancharuvil:Thanks Terri Agnew:Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 21 December 2016 at 22:00 UTC for 60 minutes. Thomas Brackey:Hasta Luego... Paul Tattersfield:bye all Steve Levy:Thanks for your time. Ciao all! Marie Pattullo:As the chances of me making a 23:00 meeting next week are minimal, happy holidays!! Vaibhav Aggarwal:Ciao Monica Mitchell:tchau:) Terri Agnew:@Marie, will not your apology for meeting next week

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FOR DISCUSSION: Updated TMCH Charter Questions table - 6 December 2016
by Mary Wong Dec. 13, 2016

Dec. 13, 2016

Dear all, In response to Phil’s request, staff has updated the previously-circulated table of suggested TMCH Charter Questions with additional suggestions and comments received from Working Group members up to 1800 UTC today (6 December), which is 24 hours before the Working Group call. The updated document is attached, and we will plan on using it as the basis for discussion on the Working Group call tomorrow. Please feel free to send any additional thoughts and comments you may have to the Working Group mailing list – while they may not all be captured in the document, staff will do our best to ensure they are covered during the Working Group’s discussion. As we move into discussion and finalization of the proposed TMCH Charter Questions, Working Group members may wish to note that the TMCH Data Gathering Sub Team had agreed on a list of questions that were sent to the TMCH Providers as well as others that were sent to the Registries and Registrars Stakeholder Groups. In line with their mandate, the Sub Team’s questions are all directed toward obtaining relevant data on the workings of the TMCH – for purposes of the current discussion, the questions that were directed to the TMCH Providers include questions on design marks and their verification, the handling of cancelled or expired trademarks by the TMCH, and the various outreach efforts that were undertaken (among others). If you are interested, the final sets of questions that were sent by the TMCH Data Gathering Sub Team to Registries, Registrars and the TMCH Providers can be viewed here: https://community.icann.org/x/VAmsAw. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Tuesday, December 6, 2016 at 23:49 To: John McElwaine <john.mcelwaine(a)nelsonmullins.com>, David Tait <david.tait(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Thanks for the feedback, John. Perhaps it would be best if at this point in the discussion staff would post the current language of the question, so that we can review any specific suggestions for alteration of its wording. Best to all. 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(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil(a)markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne(a)valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris(a)alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul(a)law.es<mailto:paul@law.es>>, "kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>" <kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va(a)bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactS…<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkB…> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. ________________________________ No virus found in this message. Checked by AVG - www.avg.com[avg.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com&d=DgMGaQ&c=…> Version: 2016.0.7924 / Virus Database: 4664/13516 - Release Date: 12/01/16

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Multistakeholder Ethos Award 2017: Nominations
by Nathalie Peregrine Dec. 12, 2016

Dec. 12, 2016

https://www.icann.org/news/announcement-2016-12-12-en Submit Nominations Via the Ethos Award Nomination Form<https://goo.gl/forms/sKJcUjdA5gT50Dl72> ICANN is pleased to announce the opening of the nomination period for ICANN's Multistakeholder Ethos Award. Launched in 2014 at ICANN50 in London, the Multistakeholder Ethos Award recognizes ICANNparticipants who have deeply invested in consensus-based solutions, acknowledging the importance of ICANN's multistakeholder model of Internet governance, and contributed in a substantive way to the higher interests of ICANN's organization and its community. The ideal recipient(s) will have served in roles in multiple ICANN working groups or committees and collaborated with more than one Supporting Organization and/or Advisory Committee in a significant capacity. Candidates for the award will demonstrate at least five years of participation in the ICANN Community. Candidates will be evaluated by a panel of community members appointed by the Chairs of each Supporting Organizations and Advisory Committees using a merit-based point system evaluated against three criteria: 1. Demonstrated ability to work across community lines with both familiar and unfamiliar ICANNStakeholders with the aim of consensus building and collaboration that substantiate ICANN's multistakeholder model; 2. Facilitator of dialogue and open discussion in a fair and collegial manner, through the spirit of collaboration as shown through empathy and demonstrating a sincere desire to engage with people from other backgrounds, cultures, and interests; and 3. Demonstrated additional devotional factors exhibited by time spent supporting ICANN's multistakeholder model and its overall effectiveness through volunteer service via working groups or committees. Please submit your nominations via this Nomination Form<https://goo.gl/forms/sKJcUjdA5gT50Dl72> including detailed information outlining why the nominee meets the award criteria. Any additional information in support of nominations and/or questions about the award process may be submitted via email at ethosaward2017(a)icann.org<mailto:ethosaward2017@icann.org>. Award recipient(s) will be announced in June 2017 at ICANN59 Johannesburg.For more insights on the award program, please consult the ICANN Community Wiki<https://community.icann.org/x/YyOAAw>. Submit Nominations Via the Ethos Award Nomination Form<https://goo.gl/forms/sKJcUjdA5gT50Dl72> ###

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PLEASE PROVIDE FEEDBACK: Latest TMCH Charter questions and updated Work Plan
by Mary Wong Dec. 8, 2016

Dec. 8, 2016

Dear all, As agreed on the Working Group call that just ended, staff is recirculating the latest draft of the TMCH Charter Questions, which indicates which questions have been refined and clarified by the TMCH Charter Questions Sub Team. We are also attaching the slides that were used for our Working Group session at ICANN57, where you can see at a glance the refined Charter questions that had been agreed on by the Sub Team as of end-October. As mentioned on the call, these are all the suggested questions under the Guidance and Verification categories, plus the first question in the Balance category. Since Hyderabad, the Sub Team has made progress on additional questions in the Balance category, which you will see highlighted in green on the Tabulated Categories document. Please provide your comments and feedback, if any, on all these Charter questions that have been refined and agreed by the Sub Team, who will hopefully be in a position to present the remaining Charter questions at the Working Group call next week. We are also attaching the updated Work Plan that was displayed during the call. As with the Sub Team-agreed TMCH Charter questions, please provide your comments and feedback, if any, on the Work Plan as soon as possible. For the information of Working Group members who were not on the call, we hope to receive input shortly from Registries and Registrars on a set of specific questions that had been developed by the TMCH Data Gathering Sub Team – however, we have been informed that, given the workload and amount of requests that these two Stakeholder Groups have been receiving, the input may not be as timely or as comprehensive as we may have hoped. The TMCH Data Gathering Sub Team also developed a set of questions to be sent to the TMCH Providers – following some clarifications based on feedback received from ICANN GDD (who have been working with the TMCH Providers), those questions should be sent to the Providers by the end of this week. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, November 30, 2016 at 02:45 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for Working Group call this Wednesday Dear Working Group Members, The proposed agenda for our next Working Group meeting this Wednesday is as follows (please note that this is subject to changes that may be made by the WG co-chairs): 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Continue review of suggested questions for the review of the Trademark Clearinghouse (TMCH) from the TMCH Charter Questions Sub Team (latest version attached) 3. Review updated Work Plan (attached) 4. Any other business 5. Next steps / next meeting For #2, you may recall that several clarified/refined questions (as agreed by the Sub Team up to that point in time) were presented to the community at ICANN57, although there was not a lot of time for a full discussion. These questions are those in the Guidance and Verification & Data categories, and the first question from the Balance category. For #3, please note that the co-chairs have not yet had a chance to comment on the attached document. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Dec. 7, 2016

Dec. 7, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 07 December 2016 at 18:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/IpnDAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-07dec16-en.mp3 The recordings and transcriptions 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-rpm-wg/ Wiki page: https://community.icann.org/x/rhiOAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 07 December 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 07 December 2016 at 18:00 UTC for 60 minutes. Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… yuri chumak:greetings from Toronto Maxim Alzoba (FAITID):Hello All Monica Mitchell:hi everybody George Kirikos:Hi folks. Steve Levy:Hi folks. Sorry but I may need to leave early Kristine Dorrain - Amazon Registry:Hi all. Housekeepking question. Are we sticking with 1800 UTC going forward? Kristine Dorrain - Amazon Registry:I seem to receive the calendar entries intermittently and thought I'd just update my own calendar... Paul Tattersfield:Hi everyone George Kirikos:I think it rotates, Kristine. Mary Wong:@Kristine, we are sticking with the rotation we used before Hyderabad - 1700 UTC, 1800 UTC, 1700 UTC, 2200 UTC (allowing for daylight savings) until further notice Monica Mitchell 2:sorry my first connection dropped so you see me twice :-( George Kirikos:Is there a way to make the top middle pod take up the entire width of that area? Kristine Dorrain - Amazon Registry:OK, thanks. I'll keep watching for the reminder then. :) George Kirikos:(I have "Fit Width" for the top middle pod, but there's extra gray space on the left and right. Terri Agnew:@George, sync is on, you can make it full screen if you wish. The four arrows top tool bar George Kirikos:With full screen, the chat isn't visible, though. If the pod had no gray space on the left and right, the text in that pod could be larger. George Kirikos:(i.e. try making your browser width larger, and you'll see the wasted gray space) Susan Payne:hi all, I don't have any audio.is it just me? Susan Payne:ah - I now do :) Kiran Malancharuvil:There's a bad echo Kiran Malancharuvil:Oh it's gone, it might have been my bad George Kirikos:If only we had an insider at Adobe to help us.... ;-) Vinzenz Heussler:I've been thinking about this too, George. Would be great if this could be adaptable Mary Wong:@George, @Vincenz, apparently it has to do with the original document as uploaded - we are trying to see what we can do to change things. George Kirikos:Thanks Mary. Paul Tattersfield:j scott is very quiet here Vinzenz Heussler:Thank you! David McAuley (RySG):somewhat feint Kiran Malancharuvil:I can hear you fine. Greg Shatan:I hear you fine. John McElwaine (Nelson Mullins):sound fine here Kristine Dorrain - Amazon Registry:I can hear you. Mary Wong:Document is unsync'ed Rebecca Tushnet:I'm not sure my audio is working. Rebecca Tushnet:I'd love to hear other perspectives on the meaning of this question though. George Kirikos:She's typing. Terri Agnew:increasing audio for J Scotts line, let us know if further adjustments are needed Terri Agnew:@Rebecca, I see your mic is active and unmuted. If needed let me know if dial out on the telephone is needed Griffin Barnett:I am hearing some background noise (music?) from an open line Terri Agnew:finding line George Kirikos:Q1 will be important if there are multiple providers, as there could be a "race to the bottom" and forum shopping if the criteria are too lax or contain gray areas. Rebecca Tushnet:If you didn't hear me I may need to use my phone to dial in. Vinzenz Heussler:yes, classical music in the background somewhere Mary Wong:Thanks, J. Scott - Greg made my point (origin and reason for the second column) Greg Shatan:Someone's mic was open (if you look at the phone abouve Terri Agnew's name, you can often see who has open mics. Vaibhav Aggarwal:Hi Guys Greg Shatan:You literally can't answer this question if you don't know with certainty what the verification criteria are. If you do answer it and you don't know, then you're blowing smoke... Terri Agnew:@Rebecca, we did not hear you. Mary Wong:Yup Susan Payne:J Scott, yes agree Philip Corwin:Finally in! George Kirikos:Welcome, Phil. Mary Wong:Oops, sorry for typo Maxim Alzoba (FAITID):I hope nobody registers WHOIS mark in TMCH Vinzenz Heussler:there should be a difference between verification criteria (probably relates to eligibility) and administrative challenges during the verification process Kathy Kleiman:That's a good point - perhaps Staff can go back and look at the versions of the subteam Griffin Barnett:The word "different" appeared in the original formulation of the question from the Charter: "Should further guidance on the TMCH verification guidelines for different categories of marks be considered?" Susan Payne:Yes, makes sense Griffin Barnett:I'm guessing that is the genesis? Mary Wong:Sorry, where is the "different" to be deleted? Kiran Malancharuvil:I don't see different either? Kathy Kleiman:good suggession Kathy Kleiman:suggestion Susan Payne:no, that was the original question David McAuley (RySG):Q1, middle column, near bottom Kiran Malancharuvil:Those are notes, not the forumulation of the question,, right? Greg Shatan:There was no suggestion to delete anything from the question. Rather to delete everything after the hyphen in column 2. Georges Nahitchevansky:I agree on getting the verification info. In particular, it would also be useful to have easy access as to the criteria for how the TMCH evaluates an applied for mark. Seeing the criteria would be helpful for discussions about problems that have been encountered in verifications of marks applied for. Susan Payne:We need to know what the verification criteria are before we answer the question. we don't need to know what they are before we agree that the question is one that is to be answered George Kirikos:Is is when already registered TMCH registrations are challenged, or refused registrations get appealed?? George Kirikos:(or both, in #2) Dominic DeLuca:As it currentlly stands, there is not a landing page that has the requirements for TMCH validation - is that correct? Greg Shatan:"Vye-bav" is close, I think. Mary Wong:@Dominic, we will check with Deloitte and try to figure out how to get it George Kirikos:Because of past gaming, e.g. the "Plectrum" marks in the EU sunrise, etc. George Kirikos:There's no law that required a TMCH in the first place. Greg Shatan:Vaibhav, your mic is onh. Vaibhav Aggarwal::) Vaibhav Aggarwal:Done Kathy Kleiman:@Mary, could you kindly include within the Notes (on the right) that we have agreed to review the sentence fragment "though one noted the need to define what "different means" (in the clarifying paragraph). Further, from the original charter questions, including the one that follows, have the issues and concerns be included in the question and clarification ( "Should further guidance on the TMCH verification guidelines for different categories of marks be considered?") Kathy Kleiman:Question 1 Vinzenz Heussler:@Vaibhav: it is easy to validate a registered trademark but what about court validated marks or marks protected by statute or treaty? Kristine Dorrain - Amazon Registry:Agree Susan. The point is to make the charter questions less conclusory/leading. It's not to presume any conclusions or assert any positions. We can assert our positions after we finalize the questions. Mary Wong:@Kathy, can you rephrase the latter part of your request? I'm not sure I understand. Thanks! Vaibhav Aggarwal:@Vinzenz Excelletn - So Lets Make the Criteria Specific to the Situation Vaibhav Aggarwal:I am finding it overreaching Vaibhav Aggarwal:for the TMCH to Draw up a Specific Creteria for All Vaibhav Aggarwal:Not Blanket J. Scott Evans:Vaibav: TMCH as well as the entire ICANN relationship is a matter of contract. Griffin Barnett:Perhaps clarification is needed: is "registration" as used in Q2 sub-part (ii) referring to challenges to the underlying TM registration (in the national/regional TM office that issued the registration) or a challenge to a mark that has been recorded in the TMCH? Vaibhav Aggarwal:YEs I understand That - But There is Legislation involved now bacause this is drawing up a creterion for Trademarks for the Laws Vaibhav Aggarwal:@Jeff Vaibhav Aggarwal:@J Scott *Sorry Marie Pattullo:Thanks for that Griffin; fully agree as I'm confused to hear registration used in (to my mind) the "wrong" way. George Kirikos:I think we'd want to cover both scenarios. Mary Wong:@Kathy, did you mean whether the issues and concerns noted by the comments are adequately covered by the suggested Charter question? Edward Morris:Support Phil's suggestion. J. Scott Evans:Vaibhav. There is no legislation involved.You present your certificate and it must fit certain criteria. It is no different than when you list a registraiton in an M&A schedule Vaibhav Aggarwal:right which is more or less common globally Marie Pattullo:Agree with Phil; a registered TM is a registered TM until the day it is cancelled, or not renewed. Kristine Dorrain - Amazon Registry:I think Question 2 is trying to ask both: what are the criteria for initial entry or refusal in the TMCH and what are the criteria used to challenge a TMCH entry. Griffin Barnett:Need to be careful when referring to "registration" vs. "recordal" - registration, to me, means the underlying TM registration, while "recordal" would refer to the record of the mark in the TMCH Kristine Dorrain - Amazon Registry:Agree that multiple viewpoints point to an ambiguity that need to be resolved. Vaibhav Aggarwal:So @JScott, how can it be setting a Criterion ? At All ? The Certificate is either Yes or No. Cant Reviwe it ! Vinzenz Heussler:+Griffin Susan Payne:J Scott, that is correct. It should be recordals rather than registrations Mary Wong:Noted Griffin Barnett:perhaps (ii) could read: "what to do when a mark is rejected by the TMCH?" Greg Shatan:the passive voice should not be used in the second part of this question. Can't tell who is the person who would be "doing" something. George Kirikos:So, changing the word to "recordal" would then allow for both scenarios to be covered, great. Greg Shatan:What WHO should do? Marie Pattullo:Do we need a legend at the bottom - registration = TM registration, recordal = a record of the TM in the TMCH etc.? Susan Payne:Kathy - recall that we have a whole host of other questions about cancelled registrations later on Mary Wong:@Marie, staff will review the document to make sure that the right terms are used consistently George Kirikos:That's why this group review is good, as we can clear up all these ambiguities. Steve Levy:Sorry but I need to drop off. Speak with you all again soon Kristine Dorrain - Amazon Registry:And this question category is about Guidance...meaning how well is the TMCH communicating procedures and criteria, right? So this question is specific communication. Vaibhav Aggarwal:+1 Greg Marie Pattullo:Thanks Mary; I was think more of the people to whom we ask the questions, who may have the same confusion. Just to head off questions at the pass if we can. Mary Wong:It has to mean TMCH rejection, right? Why would the TMCH communicate challenges brought before national TM offices of a registration of a TM? Griffin Barnett:Agree Mary Beth Allegretti:Hi - I need to drop off. Talk to you all soon. Griffin Barnett:My understanding is the Q is directed at how the TMCH communicates to TM owners about (i) criteria for accepting or rejecting a mark into the TMCH, and (ii) what to do when the TMCH rejects a mark from being added to the TMCH George Kirikos:Perhaps since column #3 is blank, we can add those clarifications in that box for Q2. Mary Wong:@Griffin, that was staff's understanding too, so we will make the suggested clarifications George Kirikos:(i.e. the two scenarios) Griffin Barnett:(i) seems to be directed to TM owners as guidance before a TM owner applies to record a mark in the TMCH, while (ii) is directed at next steps for TM owner in the event the TM is rejected from the TMCH Griffin Barnett:THanks Mary Kristine Dorrain - Amazon Registry:+1 Griffin Kiran Malancharuvil:+1 Griffin Kathy Kleiman:I liked J.Scott's rephrasing with three parts (paraphased as): is the TMCH clearly communicating its criteria for registration/recording; letting TM Owners know what to do when TM rejected; and letting others know what to do if as 3d parties they have challenges or questions. Griffin Barnett:Not sure about the suggested 3rd part of the formulation Kathy states above -- if a mark is accepted by the TMCH, this is not generally known by the public at large (I believe there are other questions going to whether this data should be public) Georges Nahitchevansky:I read 2 as simply saying what does TMCH communicate as to the criteria for accepting a mark and what it communicates when it rejects a mark. and how the applicant can challenge that determination The issue of third party attacks on marks registered in the TMCH is a separate issue Griffin Barnett:I should say, not known unless or until it triggers a TM Claims notice George Kirikos:It's another side of the coin of the same issue, Georges (i.e. appeals of the TMCH decisions). Kathy Kleiman:This discussion suggests that further reordering of the questions might be useful... George Kirikos:"potential domain registrants" would be more precise. :-) Greg Shatan:I think we should ask both. But we need to think about how the fact and opinion questiions relate to each other, and how they're presented. 2 and 3 are kind of aligned and kind of different. If they were more similar we might have more fruitful results. George Kirikos:(i.e. add the word domain before the 2nd "registrants") Paul Tattersfield:Please can we change 'trademark owners' to 'rights holders'? Griffin Barnett:AGree it needs to be clear what the scope of the "education" is: about TMCH services? Susan Payne:@Kathy - I think we should consider what order we work on them - ie we don't have to start with the first one. But I don't believe we need to spend time in this context worrying too much about what order they are in on the document George Kirikos:It might also include education when a domain name registrant does research after receiving a notice at their registrar. Griffin Barnett:Perhaps to resolve the scope of "education" issue: Should the TMCH be resonsible for educating trademark owners, domain name registrants, and potential domain name registrants about the TMCH and the services it provides? If so, how? If not, who should be responsible? Susan Payne:Can we just put both terms in both questions and have done with it? Marie Pattullo:Surely there can be a landing page and link from the obvious sites, Griffin? Greg Shatan:But why is question 2 so narrowly focused? Greg Shatan:+1 Susan regarding using "communication and education" in both 2 and 3. George Kirikos:+1 Phil Kathy Kleiman:I like Phil's note about what is missing on Q3 Paul Tattersfield:Can we change 'trademark owners' to 'rights holders'? Because it's important to provide guidance for marks protected by statue and treaty as well as trademarks. Vinzenz Heussler:Potential distinction: Q3 is more about "TMCH and RPM literacy" and Q2 is helping in concrete situations Kiran Malancharuvil:I need to jump off the call a few minutes early. I support keeping this as simple and straightforward as possible. Kiran Malancharuvil:+1 J Scott Kathy Kleiman:+2 J Scott Susan Payne:+1 re keeping it simple Kiran Malancharuvil:Agreed. These are simple concepts. We are spending WAY too much time on this. Greg Shatan:Do we know what TMCH currently does with regard to "education"? Are we saying that they're not doing it and should be? Or that they are doing it but shouldn't? Edward Morris:+1 Phil Maxim Alzoba (FAITID):rising awareness? Greg Shatan:Phil, I think that's good enough to get the information we need. Support your last formulation. Kiran Malancharuvil:Awareness is impossible to measure. Greg Shatan:Awareness is different from education. Kristine Dorrain - Amazon Registry:you can't evaluate awareness. Kristine Dorrain - Amazon Registry:Education is the provision of actual information. Greg Shatan:Awareness is binary -- I know about it vs. WTF. Kiran Malancharuvil:Education is something that is concrete Kristine Dorrain - Amazon Registry:I support Phil's last iteration. Kathy Kleiman:"education services" was in the original charter question - so "education" is fine. Other words may offer confusion. George Kirikos:lol Greg Greg Shatan:I also think that education embraces awareness. Assuming that is not a violation of ICANNs new anti-harassment policy. David McAuley (RySG):Greg, you are on a roll. Your comment yesterday about my age, 4154, is however a violation. George Kirikos:#4 should be quick. Griffin Barnett:No problem with the formulation of Q4 George Kirikos:Figurative marks. George Kirikos:Figurative marks with text. Susan Payne:@John - yes Griffin Barnett:Agree with John MacElwaine -- TMCH uses some alternative terminology for design marks (device etc.) John McElwaine (Nelson Mullins):Instead of "design mark" - either "device/image marks" or "Marks that do not exclusively consist of letters, words, numerals, special characters". Trademark Clearinghouse Guidelines p. 20 George Kirikos:https://urldefense.proofpoint.com/v2/url?u=https-3A__euipo.europa.e… George Kirikos:It'd be interesting to know how they handle sound and colour marks. :-) George Kirikos:I trademark a certain Pantone colour close to "red" --- give me Red.TLD :-) Griffin Barnett:FYI, I believe what John was referencing, at least in part, is here: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Greg Shatan:Can I ask who were asking these questions to? That governs how accessible these questions need to be. Maxim Alzoba (FAITID):bye all , have to drop the call J. Scott Evans:ciao, ciao Terri Agnew:Next call: 14 December 17:00 UTC Kathy Kleiman:Bye All Vaibhav Aggarwal:ciao Kathy Kleiman:Great thanks to David Tait! Greg Shatan:Thank you, David! David Tait:Thanks Mary et al! Vaibhav Aggarwal:Thanks to David it was fun meeting you in Hyderabad Greg Shatan:Will miss you and your scarves. David Tait:Thanks greg! Mary Wong:Will do, Phil Vaibhav Aggarwal:India ill have a role in Brexit - Let m eknow If I can assist. Marie Pattullo:Blimey. You poor thing. Good luck with that David... George Kirikos:We can try to work through Q1-Q4 on the mailing list. John McElwaine (Nelson Mullins):@Griffin that is correct. We might be able to deep link to the TMCH Guidelines PDF Greg Shatan:Scotch Egg-sit? Paul Tattersfield:Bye everyone Vinzenz Heussler:bye everyone Griffin Barnett:Thanks all, bye George Kirikos:Bye folks. Marie Pattullo:Don't make me cry, Greg. Bye all. David McAuley (RySG):thanks, bye all Greg Shatan:Bye all. Darcy Southwell:Thank you. John McElwaine (Nelson Mullins):Notes q1.4 excessively should be exclusively

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Agenda for RPM Review Working Group call today
by Mary Wong Dec. 7, 2016

Dec. 7, 2016

Dear all, With apologies, it appears that I omitted to send the proposed agenda for the call taking place today along with the updated table of TMCH Charter questions. The proposed agenda is: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Review and discuss Charter questions (as edited by the Charter Questions Sub Team) 3. Co-Chairs’ introduction of Statement concerning Additional RPMs/Private Uses of the TMCH 4. Next steps/next meeting Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, December 7, 2016 at 02:33 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: FOR DISCUSSION: Updated TMCH Charter Questions table - 6 December 2016 Dear all, In response to Phil’s request, staff has updated the previously-circulated table of suggested TMCH Charter Questions with additional suggestions and comments received from Working Group members up to 1800 UTC today (6 December), which is 24 hours before the Working Group call. The updated document is attached, and we will plan on using it as the basis for discussion on the Working Group call tomorrow. Please feel free to send any additional thoughts and comments you may have to the Working Group mailing list – while they may not all be captured in the document, staff will do our best to ensure they are covered during the Working Group’s discussion. As we move into discussion and finalization of the proposed TMCH Charter Questions, Working Group members may wish to note that the TMCH Data Gathering Sub Team had agreed on a list of questions that were sent to the TMCH Providers as well as others that were sent to the Registries and Registrars Stakeholder Groups. In line with their mandate, the Sub Team’s questions are all directed toward obtaining relevant data on the workings of the TMCH – for purposes of the current discussion, the questions that were directed to the TMCH Providers include questions on design marks and their verification, the handling of cancelled or expired trademarks by the TMCH, and the various outreach efforts that were undertaken (among others). If you are interested, the final sets of questions that were sent by the TMCH Data Gathering Sub Team to Registries, Registrars and the TMCH Providers can be viewed here: https://community.icann.org/x/VAmsAw. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Tuesday, December 6, 2016 at 23:49 To: John McElwaine <john.mcelwaine(a)nelsonmullins.com>, David Tait <david.tait(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Thanks for the feedback, John. Perhaps it would be best if at this point in the discussion staff would post the current language of the question, so that we can review any specific suggestions for alteration of its wording. Best to all. 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(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil(a)markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne(a)valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris(a)alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul(a)law.es<mailto:paul@law.es>>, "kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>" <kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va(a)bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactS…<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkB…> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. ________________________________ No virus found in this message. Checked by AVG - www.avg.com[avg.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com&d=DgMGaQ&c=…> Version: 2016.0.7924 / Virus Database: 4664/13516 - Release Date: 12/01/16

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Follow up from RPM Working Group meeting in Hyderabad
by David Tait Dec. 7, 2016

Dec. 7, 2016

Dear Working Group participants At the Face-to-Face Meeting of the Working Group (WG) in Hyderabad (9 November 2016), it was determined that a small sub-team of WG members should take a quick look at the TM-PDDRP procedures particularly as they pertain to complaints filed by multiple trademark owners against a single registry. Beth Allegretti and Brian Beckham have agreed to undertake this work, however, they would like to extend an invitation to any other WG members to join them. Staff would therefore ask you to reply to this email if you are interested in participating in this work and we make any necessary arrangements. Kind regards, Davi

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FOR REVIEW/DISCUSSION - NEW co-chairs' statement on additional RPMs, and UPDATED table of TMCH Charter questions
by Mary Wong Dec. 7, 2016

Dec. 7, 2016

Dear all, In advance of the Working Group call this week, and pending circulation of the finalized agenda, please find attached the following documents for your review and further discussions: (1) A draft statement from our Working Group co-chairs regarding the provision of additional rights protection mechanisms by the TMCH and registry operators (i.e. in addition to the minimum mandatory RPMs prescribed by ICANN and which form the basis of our current Policy Development Process); and (2) A table of all the TMCH-related Charter questions, as refined and suggested by the Sub Team and including notes and questions from several Working Group members as of 4 December. This document essentially replicates the Proposed Edited Questions that were circulated in the form of the more comprehensive table that was discussed by the Sub Team, but hopefully aids your deliberations as it sets out all the proposed questions in one spot. Thanks and cheers Mary On 12/5/16, 07:52, "gnso-rpm-wg-bounces(a)icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces(a)icann.org on behalf of icann(a)leap.com> wrote: I think the 2nd formulation of Question #15 is better, as it's more open-ended, yet also asks for specifics on how concerns can be addressed. As an aside, the "Original Question" of #15 suggested "of course with a central database" --- there's no technical reason why a central database would be required. There could instead be multiple independent databases, which registrars and/or registries could query in parallel via a standardized API. There'd only need to be a central *list* of which TMCH providers needed to be queried. From a coding perspective, the registrar/registry could simply query the entire list of providers, and collate the results. Most registrars already have this technology/capability, as they often query multiple registries (and secondary marketplaces) in parallel when customers attempt a new domain name registration (e.g. customer searches for EXAMPLE.COM, but they'll query not only the Verisign-operated .com registry, but also .net/org/biz/info/us and hundreds of other TLDs, marketplaces like Sedo/Afternic, and they'll even generate and query variations of "EXAMPLE.TLD" for availability, presenting the customer with a list of hundreds of alternatives). Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DgICAg&… On Sun, Dec 4, 2016 at 12:25 PM, David Tait <david.tait(a)icann.org> wrote: > Dear All > > > > In advance of the meeting of the Rights Protection Mechanisms Working Group > on Wednesday at 1800 UTC, I am pleased to enclose the updated review of the > TMCH Charter questions which has been prepared by the Sub-Team tasked to > conduct an initial review of these questions. > > > > Staff have been expressly asked to draw your attention to Question 15. Two > possible formulations of this question have been prepared and the Sub-Team > is seeking the view of the Working Group as to which of these should be > adopted. > > > > Kind regards, > > > > David Tait > > > > David A. Tait > > Policy Specialist (Solicitor qualified in Scotland, non-practicing) > > Internet Corporation for Assigned Names and Numbers (ICANN) > > > > Mobile: + 44-7864-793776 > > Email: david.tait(a)icann.org > > www.icann.org > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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RPMs Working Group: Updated TMCH Charter Questions tabulated categories document
by David Tait Dec. 6, 2016

Dec. 6, 2016

Dear All In advance of the meeting of the Rights Protection Mechanisms Working Group on Wednesday at 1800 UTC, I am pleased to enclose the updated review of the TMCH Charter questions which has been prepared by the Sub-Team tasked to conduct an initial review of these questions. Staff have been expressly asked to draw your attention to Question 15. Two possible formulations of this question have been prepared and the Sub-Team is seeking the view of the Working Group as to which of these should be adopted. Kind regards, David Tait David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org www.icann.org

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Dec. 1, 2016

Dec. 1, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 30 November 2016 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/2pLDAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-30nov16-en.mp3 The recordings and transcriptions 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-rpm-wg/ Wiki page: https://community.icann.org/x/rhiOAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 30 November 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 30 November 2016 at 17:00 Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Monica Mitchell:hi :-) George Kirikos:Hi Monica. How are you? Monica Mitchell:just fine. excited for our meeting :-) George Kirikos:The TMCH - lots of excitement. :-) George Kirikos:Looks like our attendance is a bit lower than usual today. Elizabeth Featherman:Hi everyone! Sorry I have a meeting at half past so I will drop off early but I look forward to today's call! Paul Tattersfield:Hello everyone George Kirikos:Welcome Paul and Elizabeth. Vinzenz Heussler:Hi everyone Greg Shatan:I also have a (different) meeting at half past, so will be dropping off early as well. George Kirikos:Hi Vinzenz. Philip Corwin:Good day all Mary Wong:Hi all - just a note that David T and I are having connectivity issues so please pardon us if we don't respond as quickly as we normally would George Kirikos:Fit width isn't working properly, hmmm. Vaibhav Aggarwal:and I am back Vaibhav Aggarwal:hi everyone Kathy Kleiman:@Mary: is there a summary documentary? Mary Wong:@Kathy, can you clarify your question? Kathy Kleiman:@Mary: we presented a document of recommended questions in Hyderabad Mary Wong:Yes - and these are captured in the document on screen. As noted on email, the questions displayed in HYD are for the first two categories, and the first question under the Balance category. George Kirikos:Here's a link to the document on the wiki https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_di… Vaibhav Aggarwal:+1 Kathy Edward Morris:Agree with Kathy's synposis. We're close. George Kirikos:Dead audio from Mary here. Maxim Alzoba (FAITID):Hello all, sorry for being bit late Mary Wong:Sorry for the awful audio, folks :( Kathy Kleiman:We can still hear you Georges Nahitchevansky:I can hear you Vaibhav Aggarwal 2:Nope Vaibhav Aggarwal 2:Need More time Mary Wong:@Vaibhav, what do you think we need extra time for? George Kirikos:Is it just questions for providers, or also questions for the community?? Vaibhav Aggarwal 2:I guess Kathy is answering my question Mary Wong:The TMCH Provider questions, as clarified by the Sub Team, have been put into a single updated document and are good to go Vaibhav Aggarwal 2::-) Mary Wong:@George, just for the TMCH Providers Mary Wong:Similarly, the Sub Team developed questions that were sent to Registries and Registrars George Kirikos:Since some of the questions in the document are more suited to be targeted for community input. The TMCH has a conflict of interest in answering questions like "should there be multiple providers", etc. Mary Wong:@George, the document that was shown earlier is of the Charter questions - that's not the same questions that the Data Gathering Sub Team developed for the TMCH Providers. George Kirikos:Oh, ok. Kathy Kleiman:Sounds good - a final review of the TMCH Charter questions before we move on to addressing them. Kathy Kleiman:I think that was always the idea of the subgroup - agreed! Greg Shatan:I suppose we are operating on the "single reading" principle. Some WGs have been operating on a "two-reading" principle, where nothing gets decided and sent out until it is covered in two meetings. Robin Gross:Really? That seems odd. Mary Wong:@Greg, we will recirculate the Sub Team Charter questions to the full WG. George Kirikos:(FYI: Raised hands appear automatically at the top of the participants list; no need to scroll down) Mary Wong:Note that we are not talking about final documents for publication - and in any case the GNSO has traditionally not used a "two reading" principle, though of course the WG can choose to do so if it wishes. George Kirikos:Bye folks. Have a great day! Maxim Alzoba (FAITID):bye all Paul Tattersfield:bye everyone Georges Nahitchevansky:Bye everyone Robin Gross:Thanks, bye! Darcy Southwell:Thanks, bye. Vaibhav Aggarwal 2:Play Well and enjoy ciao Monica Mitchell:thanks

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