August 2016 - GNSO-RPM-WG - lists.icann.org

Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey
by Paul McGrady Aug. 23, 2016

Aug. 23, 2016

Thanks Thomas. While I think you may be relying on the examples of 6.2 in your response to my hypothetical, rather than the text of 6.2, your comments on pricing as a deterrent to squatting is an interesting one, worthy of further thought. I’m a little afraid that we may be boring the other members of the listserv with our microscope session. I’d enjoy continuing this discussion sometime though – perhaps in Hyderabad. Thanks again for your comments on this today. Lot’s to think about. Best, Paul From: Thomas Brackey II [mailto:tbrackey@freundandbrackey.com] Sent: Tuesday, August 23, 2016 11:10 AM To: Paul McGrady <policy(a)paulmcgrady.com> Cc: Phil Corwin <psc(a)vlaw-dc.com>; Mary Wong <mary.wong(a)icann.org>; Jeff Neuman <jeff.neuman(a)comlaude.com>; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Hello Paul, It is indeed a tangled web. I suppose PDDRP 6.1 is the analog to infringement analysis that will be conducted by the PDDRP tribunal. Though not a definition per se, it nonetheless provides a familiar framework. Your hypothetical is interesting, while Registry pricing may be an indication of bad faith, it is not necessarily determinative. For example, some Registry Operators may place famous names in a high pricing tier precisely to deter cybersquatters. In any event, a Registry Operator would not be liable under the PDDRP for any second level registrations by unaffiliated third parties per 6.2. I believe the RO would have to be either the registrant, or the beneficial owner of the infringing second level domain name in order to face liability. All the best, TAB Thomas A. Brackey II FREUND & BRACKEY LLP 427 North Camden Drive Beverly Hills, CA 90210 USA tel: 310-247-2165, ext. 26 fax: 310-247-2190 tbrackey(a)freundandbrackey.com <mailto:tbrackey@freundandbrackey.com> On Aug 23, 2016, at 8:48 AM, Paul McGrady <policy(a)paulmcgrady.com <mailto:policy@paulmcgrady.com> > wrote: Thanks Thomas. I agree that similarity is only one factor in the normal U.S. based infringement analysis, as is scienter. There are a raft of other factors as well. However, I still ask whether or not “infringement” is defined anywhere in this ICANN policy or if we are all just assuming into it a U.S. understanding of what that word means. Do we also mean to include dilution and other brand abuses in “infringement”? Is the Indian definition different in any meaningful way and, if so, what ways? Russian, EU? Of course, applying infringement theory in the domain name context is a bit of a misfit, since infringement requires use on similar goods and services, which is why the US Congress brought the US the ACPA which has its own elements and factors. Let’s us a hypothetical example. Let’s assume the existence of a hypothetical registry for .Mark. If .Mark charged $10 for Kratos.Mark but $10,000 for Nike.Mark, it would seem that the value being extracted was tied to the trademark nature of “nike” rather than to any reference to Greek mythology (or else we would see a similar price for Kratos.Mark). But a second level domain name is not shoes, so would “infringement” ever apply? So, I think we should examine on an upcoming call what “infringement” is meant to mean in this context. It could be that it is meant to mean a US based notion of “infringement” (marks applied to goods and services) – in which case we may have diagnosed why there haven’t been any PDDRP filings to date. Best, Paul From: Thomas Brackey II [mailto:tbrackey@freundandbrackey.com] Sent: Tuesday, August 23, 2016 10:32 AM To: Paul McGrady <policy(a)paulmcgrady.com <mailto:policy@paulmcgrady.com> > Cc: Phil Corwin <psc(a)vlaw-dc.com <mailto:psc@vlaw-dc.com> >; Mary Wong <mary.wong(a)icann.org <mailto:mary.wong@icann.org> >; Jeff Neuman <jeff.neuman(a)comlaude.com <mailto:jeff.neuman@comlaude.com> >; gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey A letter string, or word, by itself is not “infringing” even if it is identical to a famous mark. Only a tribunal of competent jurisdiction can determine whether, under the particular circumstances of each case, a second level domain is infringing. It seems to me the way to frame the issue is to determine whether a Registry has engaged in a pattern or practice of selling domain names that are later judged to be infringing in an adversarial proceeding. Liability under the PDDRP would then turn on the Registry’s knowledge, scienter and/or reaction once it has been determined that the names in question have been used in a manner giving rise to a finding of infringement. Of course once a TLD reaches a certain scale, there are bound to be instances of second level domains used in an infringing manner. One need look no further than .com. Thomas A. Brackey II FREUND & BRACKEY LLP 427 North Camden Drive Beverly Hills, CA 90210 USA tel: 310-247-2165, ext. 26 fax: 310-247-2190 <mailto:tbrackey@freundandbrackey.com> tbrackey(a)freundandbrackey.com On Aug 23, 2016, at 8:11 AM, Paul McGrady < <mailto:policy@paulmcgrady.com> policy(a)paulmcgrady.com> wrote: Is “infringement” defined anywhere? Would it include dilution and other acts of using brands to obtain payments for second levels that otherwise would have very little value but for their identicalness or confusing similarity to brands? Best, Paul Paul D. McGrady, Jr. <mailto:policy@paulmcgrady.com> policy(a)paulmcgrady.com From: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces(a)icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, August 23, 2016 9:40 AM To: Mary Wong < <mailto:mary.wong@icann.org> mary.wong(a)icann.org>; Jeff Neuman < <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com> Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Thank you Mary. Clearly, profiting from the sale of second level domains is not and should not be a cause of action for any RPMs, Our concern is intentional TM infringement. 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: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces(a)icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, August 22, 2016 9:44 PM To: Jeff Neuman Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Thank you, Jeff - our apologies to all for the inadvertent omission. We will fix it as soon as we can and resend the link to all community group chairs with a short explanatory note. Cheers Mary Sent from my iPhone On Aug 23, 2016, at 09:36, Jeff Neuman < <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com> wrote: All, A Registry just pointed out to me that we have an error in question 7 of the PDDRP Survey that just went out which we can easily fix, but definitely need to fix. Question 7 currently states: “7. Has there been any conduct by new gTLD registry operators that you believe constitutes a “substantial pattern or practice of specific bad faith intent to profit” from the sale of domain names at the second level?” However, the PDDRP only applies where it constitutes a “substantial pattern or practice of specific bad faith intent to profit” from the sale of trademark infringing domain names at the second level. [The Underlined portion was left out]. The portion that was left out is KEY to the cause of action. As he jokingly put it, some believe that the sale of all second level domains constitute a bad faith intent to profit :) However, at this point the PDDRP does not apply in any situations other than selling trademark infringing domain names. Can we please fix and reissue the survey? Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman(a)valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ No virus found in this message. Checked by AVG - <http://www.avg.com/> www.avg.com Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16 Internal Virus Database is out of date. _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

1 0

Inadvertent Error on PDDRP Survey
by Jeff Neuman Aug. 23, 2016

Aug. 23, 2016

All, A Registry just pointed out to me that we have an error in question 7 of the PDDRP Survey that just went out which we can easily fix, but definitely need to fix. Question 7 currently states: "7. Has there been any conduct by new gTLD registry operators that you believe constitutes a "substantial pattern or practice of specific bad faith intent to profit" from the sale of domain names at the second level?" However, the PDDRP only applies where it constitutes a "substantial pattern or practice of specific bad faith intent to profit" from the sale of trademark infringing domain names at the second level. [The Underlined portion was left out]. The portion that was left out is KEY to the cause of action. As he jokingly put it, some believe that the sale of all second level domains constitute a bad faith intent to profit :) However, at this point the PDDRP does not apply in any situations other than selling trademark infringing domain names. Can we please fix and reissue the survey? Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman(a)valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman(a)comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw

6 5

CCT-RT meeting in Vienna on 29-30 August
by Emily Barabas Aug. 22, 2016

Aug. 22, 2016

Dear All, FYI for those of you in the Vienna area -- The Competition, Consumer Trust, and Consumer Choice Team will be holding a face-to-face meeting in Vienna on 29-30 August. Observers are welcome to attend. There will also be a cocktail hour for all stakeholders on 28 August. Additional information is available at https://www.icann.org/news/blog/join-the-competition-consumer-trust-and-con…. Kind regards, Emily Emily Barabas | Policy Specialist ICANN | Internet Corporation for Assigned Names and Numbers Email: emily.barabas(a)icann.org | Phone: +31 (0)6 84507976

1 0

TMCH -- false declarations of use, statistics from the USPTO
by George Kirikos Aug. 21, 2016

Aug. 21, 2016

Hi folks, I was doing some research on false declarations of trademark "use", and came upon some startling statistics that are relevant to our TMCH discussions. The following link summarizes some of the important research conducted by the USPTO: http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=05be481… "The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States." The same study was discussed in the following blog: http://www.thebrandprotectionblog.com/uspto-announces-new-trademark-use-aud… "...USPTO randomly audited 500 registrations with recently filed affidavits averring use. In addition to the usual specimen submitted for each class of goods or services, the USPTO asked registration owners to submit proof of use of their marks for two additional goods or services per class selected at random by the USPTO. During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration." The final report by the USPTO can be read in its entirety at: https://www.uspto.gov/sites/default/files/documents/Post_Registration_Proof… (sorry it's not a PDF) This huge amount of fraudulently registered marks has caused them to make some proposals a couple of months ago, see: https://www.federalregister.gov/articles/2016/06/22/2016-14791/changes-in-r… "A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public." "The public relies on the register to determine whether a chosen mark is available for use or registration. Where a party's search of the register discloses a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, proceedings to cancel the registration or oppose the application of the disclosed mark, civil litigation to resolve a dispute over the mark, or changing plans to avoid use of the party's chosen mark. If a registered mark is not actually in use in the United States, or is not in use in connection with all the goods/services identified in the registration, these costs and burdens may be incurred unnecessarily. An accurate and reliable trademark register helps avoid such needless costs and burdens." Obviously, the exact same reasoning applies to the TMCH itself. In light of these truly startling statistics, I think we need to have much greater scrutiny of what marks get placed into the TMCH, despite claims of "use". Even specimens of use can be "gamed", as discussed at length in an article at: http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-use… which had numerous examples of "sham" transactions, sporadic, casual, or de minimis uses. e.g.: "- a single shipment of one jar of salt from one corporate officer to another for no charge; - sale for $2.50 of 12 bank book holders, followed by instructions not to offer them to prospective customers; - sale of a few dollars’ worth of women’s sportswear to a cooperating company which immediately returned the goods to the seller;" The TMCH needs to be aware of how the system can be gamed, given the financial incentives to do so, as do we as this policy is reviewed. Perhaps a random audit of TMCH registered marks should be done. Perhaps they should all be in a public database, so that there can be greater scrutiny by the public compared to a private/secret database. If it turns out that 51% or 65% or 73% don't pass muster, it would have great implications for our work. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

3 2

Notes and Actions from the Rights Protection Mechanisms Working Group on 17 August 2016
by David Tait Aug. 21, 2016

Aug. 21, 2016

Dear all, Here are the staff notes and action items from the Working Group (WG) call held earlier today. For your convenience, we have categorized them into four main issues, as you’ll see below: these are (1) TMCH provider questions and proposed community survey, (2) Questions for ICANN Compliance, (3) Issues/Concerns/Suggestions regarding the TM-PDDRP and (4) the next meeting. 1) TMCH Provider questions and community survey ACTION: WG members to review document of provider questions and community Survey previously circulated by MW by CoB Friday; 2) Questions for ICANN Compliance The WG considered questions to be submitted to ICANN Compliance. ACTION: i. WG members to provide scenarios to illustrate bad faith/abusive conduct in question to ICANN Compliance by next week's call; ii. Staff to prepare revised questions for compliance in relation to the handling of complaints from third-parties regarding abusive conduct; iii. WG Volunteers to review existing, publicly available metrics published by ICANN Compliance. 3) Consideration of Issues/Concerns/Suggestions regarding the TM-PDDRP Doodle poll shows no support for continuing discussion regarding burden of proof at this point, however, in the event of new concerns emerging or a demand to revisit the topic arising it would be possible to revisit this topic; Remedies – Consideration of this issue is to be paused until more input has been received from the Community survey i. ACTION: Staff to prepare a specific question to the registries regarding vagueness of remedies to be sent alongside other requests for information for consideration by WG Optional Mediation- The WG considered that there was a need to convene a sub-team to review the issue of Optional mediation and put forward an outline proposal for consideration by WG. ii. ACTION: (Staff to issue call for volunteers on the list before next meeting) 4) Next meeting The next meeting of the WG to take place at 2100 UTC Wednesday 24 August ACTION: WG members to be prepared to discuss Analysis Group report. Kind regards, David A. Tait Policy Specialist (Solicitor qualified in Scotland) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org www.icann.org

2 1

Re: [gnso-rpm-wg] Notes and Actions from the Rights Protection Mechanisms Working Group on 17 August 2016
by maj_aj Aug. 18, 2016

Aug. 18, 2016

Being on travel all this month I look forward to the transcripts or audios Best mona Sent from Samsung Mobile. <div>-------- Original message --------</div><div>From: David Tait <david.tait(a)icann.org> </div><div>Date:17/08/2016 9:55 PM (GMT+02:00) </div><div>To: gnso-rpm-wg(a)icann.org </div><div>Subject: [gnso-rpm-wg] Notes and Actions from the Rights Protection Mechanisms Working Group on 17 August 2016 </div><div> </div> Dear all, Here are the staff notes and action items from the Working Group (WG) call held earlier today. For your convenience, we have categorized them into four main issues, as you’ll see below: these are (1) TMCH provider questions and proposed community survey, (2) Questions for ICANN Compliance, (3) Issues/Concerns/Suggestions regarding the TM-PDDRP and (4) the next meeting. 1) TMCH Provider questions and community survey ACTION: WG members to review document of provider questions and community Survey previously circulated by MW by CoB Friday; 2) Questions for ICANN Compliance The WG considered questions to be submitted to ICANN Compliance. ACTION: i. WG members to provide scenarios to illustrate bad faith/abusive conduct in question to ICANN Compliance by next week's call; ii. Staff to prepare revised questions for compliance in relation to the handling of complaints from third-parties regarding abusive conduct; iii. WG Volunteers to review existing, publicly available metrics published by ICANN Compliance. 3) Consideration of Issues/Concerns/Suggestions regarding the TM-PDDRP Doodle poll shows no support for continuing discussion regarding burden of proof at this point, however, in the event of new concerns emerging or a demand to revisit the topic arising it would be possible to revisit this topic; Remedies – Consideration of this issue is to be paused until more input has been received from the Community survey i. ACTION: Staff to prepare a specific question to the registries regarding vagueness of remedies to be sent alongside other requests for information for consideration by WG Optional Mediation- The WG considered that there was a need to convene a sub-team to review the issue of Optional mediation and put forward an outline proposal for consideration by WG. ii. ACTION: (Staff to issue call for volunteers on the list before next meeting) 4) Next meeting The next meeting of the WG to take place at 2100 UTC Wednesday 24 August ACTION: WG members to be prepared to discuss Analysis Group report. Kind regards, David A. Tait Policy Specialist (Solicitor qualified in Scotland) 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

1 0

Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 17 August 2016
by Terri Agnew Aug. 17, 2016

Aug. 17, 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, 17 August 2016 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/6AmsAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-17aug16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<http://gnso.icann.org/en/group-activities/calendar#nov> ** 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 17 August 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on for Wednesday, 17 August 2016 at 16:00 George Kirikos:Hi folks. Elliot Silver:Hello, everyone. George Kirikos:Welcome, Elliot. Philip Corwin:Hello all. I'm back from vacation in reenergized format ;-) George Kirikos:Welcome back, Phil. George Kirikos:Why would ICANN be handling complaints re: ccTLDs? (last sentence of document) Is that a typo? Mary Wong:@George, no, that was in Kathy's email to the list. Kurt Pritz:That sounds right, J Scott Susan Payne:sounds reasonable Dominic DeLuca(FORUM):Did anyone else just have the audio fail? Caroline Chicoine:+1 George Kirikos:Audio fine on the telephone feed. Mary Wong:@George, all - correcting myself; I think Kathy sent her comments only to the chairs and staff. Apologies - we should have forwarded it to the full list. In any case, that was taken from her suggestions on this topic. Terri Agnew:@Dominic, AC audio is working, please let me know if a dial out on the telephone is needed Alistair Payne:+1 - i agree Petter Rindforth:+1 John McElwaine:+1 Dominic DeLuca(FORUM):Working now. Thank you Mary Wong:Can we ask that members send possible scenarios to the full WG list? As J. Scott notes, within this coming week (before next Weds)? George Kirikos:Looking at the actual ICANN Compliance notices archive, they've almost entirely been targeted at registrars. https://www.icann.org/compliance/notices Mary Wong:@George, yes - and registries to some extent (ie ICANN Contracted Parties) Greg Shatan:@George, I don't think .SUCKS is a ccTLD. Though sometimes I feel I live there.... Alistair Payne:yes Susan Payne:yes Mary Wong:@J Scott, yes from staff Alistair Payne:old Philip Corwin:.sucks is not a ccTLD Kurt Pritz:It is not an obvious typo to me. Is the question writer here? Greg Shatan:It is the ccTLD of the Land of Sucks. Grace Mutung'u::D George Kirikos:Instead of getting a "filtered" view of those complaints from the point of view of the ICANN compliance department, perhaps the ICANN Compliance department could mail out something to those who've contacted them, so the aggrieved companies could be aware of this PDP, and that we're collecting data, etc?? Jeff Neuman:They already publish those metrics George Kirikos:(mail = email, etc.) Kurt Pritz:Here is a possible addendum / replacement for Q2: From the Data Analysis written and verbal report, it was apparent that TMCH records are being downloaded for purposes other than that required by Sunrise and Claims processes. Does / will compliance investigate these possible uses absent a complaint? Jeff Neuman:I know at every meeting they present those. Perhaps staff can gather those reports George Kirikos:Here are some stats: https://features.icann.org/compliance/prevention-stats George Kirikos:They call them "informal complaints" Philip Corwin:The complains about .sucks were not about direct or encouraged infringement. They were about pricing for TM holders who wished to obtain their marks to prevent prospective infringement (or legitimate criticism) Kurt Pritz:Typo or not - I think it would be meaningful to see complaints about ccTLDs. Mary Wong:Compliance reports and dashboard available here: https://www.icann.org/resources/compliance-reporting-performance George Kirikos:Although, data is not very detailed, i.e. "Abuse" is not specific! Rebecca Tushnet:If no one else is willing, I'd do it as long as I had company. Mary Wong:Thanks, Rebecca! Caroline Chicoine:Happy to help! Mary Wong:And Caroline! Caroline Chicoine:Mary where are links you mentioned? Caroline Chicoine:Thanks! Mary Wong:Compliance dashboard (monthly): https://features.icann.org/compliance Jeff Neuman:Here is a link to the presentation from Marakash: file:///C:/Users/Jeffrey/Downloads/presentation-compliance-registry-10mar16-en.pdf<file:///C:\Users\Jeffrey\Downloads\presentation-compliance-registry-10mar16-en.pdf> Jeff Neuman:oops Jeff Neuman:I will get you a better one Mary Wong:All reports: https://www.icann.org/resources/compliance-reporting-performance Jeff Neuman:https://meetings.icann.org/en/marrakech55/schedule/thu-compliance-re… George Kirikos:Lori has her hand up. Mary Wong:@Rebecca, @Caroline - we will follow up with you by email with all the links Mary Wong:Please mute if not speaking, thank you! Jeff Neuman:Lots of static on audio George Kirikos:We can hear you, Lori, but lots of noise in the background. Luc Seufer:I thought Lori was INTA not NASA George Kirikos:lol Luc Lori Schulman:I am INTA. INTA wrote a letter to compliance last year regarding abusive practices with specific examples. The response that we got from compliance is that there wasn't much ICANN could do other than file a suit to enforce a PIC. Lori Schulman:Would having that letter be helpful? Lori Schulman:I am not sure here. Philip Corwin:Yes, that letter would be helpful IMHO Philip Corwin:I do so agree Lori Schulman:To be clear, not much ICANN could do and that yes. I have notes from a conversation. They would not respond in writing. Lori Schulman:Sending letter and notes to Mary Wong now. Mary Wong:Thanks, Lori Lori Schulman:Sorry about that JScott. Hand is down. Lori Schulman:Letter is for context. Lori Schulman:No discuss of burden proof. Mary Wong:@Jeff, yes - it was also a more general point about topics that had been discussed previously in the community during the development of the TM-PDDRP Lori Schulman:Jeff is right. George Kirikos:Right, I think there was some confusion re: "burden of proof" vs. "what legal test" must be met (i.e. a certain legal test must happen, and then there's a burden of proof in meeting that test). George Kirikos:One can make a different legal test, but retain the "burden of proof" as before. George Kirikos:I would disagree a bit with Jeff. What he's advocating for creates a bias for the "status quo". George Kirikos:In finance, there's something callled "Zero Based Budgeting",where you start from a zero base.....that takes longer, but can yield a better result. Kristine Dorrain - Amazon Registry:George, we're shooting in the dark if we don't have a problem to solve before we try to solve it. Jeff Neuman:Yes George. Status quo absent any evidence that something NEEDS to change Jon Nevett:@George -- there should be a bias for the status quo unless there is consensus to change it Jon Nevett:Good point JN! Mary Wong:ADNDRC and FORUM provided input on remedies in their initial responses to the WG Brian Cimbolic:+1 Jeff - we don't want to create a solution where there may be no problem. We're not here to tweak/redesign just for the sake of it, if there are identifiable problems that's one thing. If there are not readily identifiable problems, we should leave it be. Beth Bacon:=1 to Jeff and Brian Jeff Neuman:The providers should be more specific as to what the issues are with the remedies Mary Wong:Link to the Provider responses: https://community.icann.org/x/Gx_OAw Jeff Neuman:I think some follow up questions are in order Beth Bacon:apologies that was a + 1 not an = George Kirikos:I'd not limit it to just "what isn't working" --- one should be prospective, e.g. the "limitation period" stuff contemplates problems that will arise in the future. Adding a limitation period "future proofs" the policy, as it'll help eliminate complaints that couldn't be brought before the courts. Luc Seufer:I agree with Jeff too. Better move on to policies whih have been put to the test and actually need to be reformed Mary Wong:@Kristine, the staff understanding of the providers' input is the same. Mary Wong:ADNDRC, on why the PDDRP may not have been used: "he remedies available (as set out in paragraph 18 of TM-PDDRP) might not serve any useful purposes to the trademark holder harmed by a "Second Level" infringement. It might be more convenient and cost-effective to the trademark holder to take the usual UDRP or URS directly against the domain name registrant rather than initiating an action against the registry operator under TM-PDDRP." Jeff Neuman:To be clear, I do not believe we need to look into the remedies Jeff Neuman:until and unless there is an issue actually shown Mary Wong:FORUM, on the same question: "Based on our general experience in alternative dispute resolution, the unspecific nature of theremedies available in TM-PDDRP could be another reason why it has not been used." Kristine Dorrain - Amazon Registry:Agree with Jeff. We need to know FIRST if there is a problem. Jon Nevett:I think that the registries will understand the implications of the request Greg Shatan:Old check Kristine Dorrain - Amazon Registry:Yes, agree that we should provide context. Philip Corwin:Agree with jon -- registries are pretty sophisticated about the PDP Rebecca Tushnet:nOt necessarily that, but to make clear the context: Rebecca Tushnet:are there things that need fixing in the lack of clarity. Mary Wong:SUGGESTION on timing of Registry question - the TMCH Sub TEam may have some (different) questions for RySG as well. Can we hold this until the Sub Team confirms that they do, and send it as a single follow up/request? Lori Schulman:Consolidating questions to registries makes sense. Caroline Chicoine:Like that idea Mary Susan Payne:+1 to Mary Jeff Neuman:Agree all questions should be presented at same time Kristine Dorrain - Amazon Registry:Yes, agree. Mary Wong:ok thanks Philip Corwin:+1 on a single combined inquiry Jeff Neuman:Agree with J Scott Jeff Neuman:same test should be applied Caroline Chicoine:agree Mary Wong:@J Scott, yes Terri Agnew:Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Groupis scheduled for Wednesday, 24 August 2016 at 21:00 UTC for 60 minutes. Petter Rindforth: On holdiday next week, but otherwise happy to assist on the mediation issue if we can get back on that the week after Terri Agnew:@Petter, will not apology, have a lovely holiday George Kirikos:Bye folks. Laurie Anderson:bye all! Susan Payne:thanks all Jay Chapman:thanks, all Petter Rindforth:thanks :-) J. Scott Evans:Cial Philip Corwin:Bye all! J. Scott Evans:*ciao Mary Wong:Thanks J Scott, everyone!

1 0

Agenda and documents for Working Group call on 17 August
by Mary Wong Aug. 16, 2016

Aug. 16, 2016

Dear Working Group Members, The proposed agenda for our next meeting, scheduled for 17 August 2016 at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only)/updates to Statements of Interest 2. Discuss and finalize questions for ICANN Compliance (see attached document) 3. Conclude discussion on Issues/Concerns/Suggestions regarding the TM-PDDRP (see attached document – updated from the last version of 10 August) 4. Agree on co-chairs’ proposal regarding next steps for the TM-PDDRP review 5. Review TMCH Sub Team report on meeting with the Analysis Group on the TMCH Independent Review (see Pg 2 and Annex 1 of attached document – unchanged from the last version circulated last week) 6. Agree on next steps for the WG regarding the Analysis Group’s Draft Report on the TMCH (see https://www.icann.org/public-comments/tmch-review-2016-07-25-en) 7. Next meeting All the documents referenced in this email have also been uploaded to the WG wiki at: https://community.icann.org/x/6AmsAw. The transcript and recording of the meeting from last week are available on the WG wiki at: https://community.icann.org/x/uwSsAw. 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

Update: Survey on Newcomer Tools
by Nathalie Peregrine Aug. 16, 2016

Aug. 16, 2016

Dear ICANN Community member, Further to our previous email we have encountered some technical difficulties with the survey which was previously sent out. To that end we have prepared a replacement and would ask you to still complete it by 11 September 2016. The revised survey is available here - https://goo.gl/forms/nUO214NICcPm7jc83 The responses which have already been received will be tracked through by staff to ensure their inclusion in the final report. Should you have any further comments please do not hesitate to contact us. Kind regards, David From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Nathalie Peregrine Sent: Thursday, August 11, 2016 7:20 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] Survey on Newcomer Tools Dear ICANN Community member, We need your input to improve GNSO newcomer and training tools. GNSO Council has directed<http://gnso.icann.org/en/council/resolutions#201607> staff to develop a survey to assess the familiarity that the community has with the different newcomer and training tools as well as their perceived usefulness. Staff would kindly request that you complete the attached survey available here<http://www.clicktools.com/go?iv=1063kkc3v1m98>. Please provide your response by 11 September 2016. Should you have any further comments please do not hesitate to contact us. Kind regards, David Tait David A. Tait Policy Specialist (Solicitor qualified in Scotland) 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<http://www.icann.org>

1 0

Wiki page for information and documents on the TM-PDDRP
by Mary Wong Aug. 16, 2016

Aug. 16, 2016

Dear all, Based on the extensive list supplied by Jeff and ongoing staff collation of relevant materials, we have created a page on the Working Group wiki space that contains links to all the materials we have collected so far: https://community.icann.org/x/ugqsAw. You will see that the page currently includes all prior versions of the TM-PDDRP and links to relevant public comment forums as well as ICANN summaries, which we hope will be useful for documenting the substantive and procedural discussions that took place from the time that the 2009 Implementation Recommendations Team (IRT) proposed such a mechanism up to the adoption of the final TM-PDDRP Procedure in 2012. We hope to create similar pages for the other RPMs as the Working Group moves along with its work, beginning with the TMCH. Please feel free to send us information, documents and materials that you have or know of so that we can post them and, if needed, locate and upload them to the relevant page(s). 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 Mary Wong <mary.wong(a)icann.org> Date: Wednesday, August 10, 2016 at 17:37 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Materials on Willful Blindness / PDDRP Thanks very much for the links and materials, Jeff – staff will add them to the Working Group wiki space. As staff has also been trying to locate historical information relating to the development of the various RPMs we are reviewing in this Working Group, we would like to invite Working Group members to send on similar information so that we can continue to compile a useful bibliography, including (when the time comes) for the other RPMs. Regarding the TM-PDDRP, Working Group members may in addition be interested in seeing all the community comments that were provided in response to a public comment opportunity on the TM-PDDRP in early 2010: https://forum.icann.org/lists/ppdrp-15feb10/threads.html (Jeff has already included links to a few, and to the staff analysis of those comments). We are truly grateful for the tremendous depth of expertise in this Working Group. While staff may be able to find and collate a certain amount of material, being able to leverage your knowledge and memories is invaluable. 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 Jeff Neuman <jeff.neuman(a)comlaude.com> Date: Wednesday, August 10, 2016 at 16:36 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Materials on Willful Blindness / PDDRP All, I just want to restate my point that I made on the call today. I believe our job is not to rehash discussions that took place in 2008-2012 on the rights protection mechanisms. Rather I believe our job is to assess whether any changes to the RPMs (or additions to the RPMs) need to be made based on actual evidence. In my personal opinion (not of my company or any client), a person proposing changes to the policies or processes should have the burden showing good cause as to why those change should be made. Absent a showing of that good cause, I do not believe we should make the changes. On the call (and the chat) Lori (from INTA) and Susan K.(from Facebook) stated that they had filed concerns with ICANN on certain registry practices and the failure of ICANN to address them or the inapplicability of the existing RPMs to cover those activities. I believe we should be looking at those concerns (as well as any other issues that are brought forward), evaluate whether any of them could (or should) have been brought under the existing RPMs, why they were not, and whether we should address them by changing an existing RPM or even adding a new one. Discussions on the PDDRP thus far have focused on what theoretical changes we can make to the PDDRP to “make it better” without any evidence being evaluated by the group on whether or not there is a need to “make it better.” One of those proposals contemplates adding a willful blindness standard to the PDDRP without any showing that such a lower standard is necessary or whether there is any activity going on now (or in the past) that would fall under that lower standard necessitating a change to the policy. Absent any evidence showing good cause to change the policy to include willful blindness, the policy should not change. In fact, this issue was HEAVILY discussed and argued in 2010-2011. Ultimately, ICANN decided that the PDDRP should not include a willful blindness standard. I have included just some of the comments that were filed by WIPO, myself, the Registries, Neustar and others on this Issue including ICANN’s analysis. There were other proponents of willful blindness other than WIPO (including I believe MARQUES, INTA and other IP organizations. I believe that this was even supported by the governments during the Board-GAC consultations. I know I do not have them all on here. But at the end of the day, this was not accepted. The point is that we should not be rehashing these old arguments. Our RPM PDP should not a “second bite at the apple”. Here is a start for collecting the discussions that have already taken place: WIPO Proposal: · https://forum.icann.org/lists/ppdrp-15feb10/pdfkYQ1rYb8Ni.pdf (March 2010) · https://forum.icann.org/lists/4gtld-base/pdfjIZkXr0Dc2.pdf (June 2010) · https://forum.icann.org/lists/5gtld-base/pdf0nS63XScIt.pdf (December 2010) Circle ID Articles · http://www.circleid.com/posts/say_no_to_wipos_proposal_to_amend_the_pddrp_t… (May 5, 2010) ICANN Analysis: · https://archive.icann.org/en/topics/new-gtlds/pddrp-comment-summary-and-ana… (also has info on contract compliance) (May 2010) · https://archive.icann.org/en/topics/new-gtlds/summary-analysis-agv4-12nov10… (November 2010) - Pg 118 ICANN PDDRP (Revised May 2010): https://archive.icann.org/en/topics/new-gtlds/pddrp-clean-28may10-en.pdf (Introduction addresses “The procedure is not intended to hold liable a registry operator that simply happens to have or knows of infringing domain names within its gTLD. Affirmative conduct is required.”) RYSG Statement to WIPO Proposal: https://forum.icann.org/lists/4gtld-base/docLoFbNFb2jb.doc (June 2010) Neustar position: https://forum.icann.org/lists/4gtld-guide/pdf6T19n10mO4.pdf (July 2010) Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman(a)valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman(a)comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw

7 10