September 2016 - GNSO-RPM-WG

Re: [gnso-rpm-wg] "free speech"
by J. Scott Evans Oct. 1, 2016

Oct. 1, 2016

Rebecca: Thanks for weighing in here. First, I do not use Wikipedia as a definitive source for anything related to the law. It is interesting reading and may require that I go to more definitive sources to verify, but I do not put much stock in it as the absolute "truth" on any subject. Second, many countries have almost an exact replica of the US Constitution, but don't recognize the provision related to free speech. Likewise, many jurisdictions do not recognize the concept of "fair use." My only point our call was that there are many non-lawyers participating. I think many time views are put forth on our calls that could be seen as misleading. It is one thing to hold the US concept of free speech up as the standard bearer that we should aspire to in our work (I could also argue that US concept of IP protection should also be held up as an appropriate standard). However, in my experiences at ICANN since we originally drafted, it has constantly been pointed out that we SHOULD NOT apply US-like trademark protections to the ICANN RPMs since different jurisdictions view trademarks differently. I can theoretically see the rationale behind this argument. Unfortunately for me, however, I fail to see how the concept of US free speech should be universally applied, but US-like trademark protections should not. I think that is intellectually inconsistent. As for the UN's Universal Declaration of Human Rights and its signatories, I think the same position could be taken with regard to the Paris Convention and its signatories. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>> Date: Wednesday, September 28, 2016 at 10:34 AM 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>> Subject: [gnso-rpm-wg] "free speech" Just to correct a misstatement on the call earlier: Most nations don't have a US-style First Amendment. Most nations with a rule of law do, however, recognize freedom of speech in some form, including the right to criticize private companies. As this Wikipedia entry notes, https://en.wikipedia.org/wiki/Freedom_of_speech_by_country, implementation can be inconsistent on the ground, but I expect that inconsistent enforcement of trademark rights on the ground doesn't mean that trademark owners want ICANN to ignore the law on the books; freedom of speech is equally a principle worth honoring. In addition, I don't know how many countries whose nationals participate in the ICANN process have signed on to the Universal Declaration of Human Rights, which includes freedom of speech, http://www.un.org/en/universal-declaration-human-rights/, but I doubt we want to make policy based on the countries that don't recognize any freedom of speech at all. Also, you can't have it both ways: if domain names can facilitate infringement, which they absolutely can, then they convey meaning; if they convey meaning, they can also facilitate noninfringing conduct or affirmatively protected freedom of speech. It is just as true, or untrue, that a trademark owner can register a different string if it can't have the one that it wants as it is that a person making fair or otherwise noninfringing use can do so. This is especially so if we've given trademark owners the ability to jump the line in many circumstances. Freedom of speech principles may help tell us when preclusion of a domain name to a speaker-whether a trademark owner or a non-owner-is of particular importance. That is, they can help us identify the important false positives (notifications generated in response to domain names that wouldn't infringe). Rebecca Tushnet Georgetown Law 703 593 6759 ________________________________ <ACL>

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Action items from the WG call of 28 September 2016
by Mary Wong Sept. 30, 2016

Sept. 30, 2016

Dear all, The Trademark Claims slide presentation has been updated with the additional questions and suggestions that were made by WG members who were on the call this Wednesday. You can find the updated slide deck – with the additional questions listed on a new Slide #16 – on the WG wiki at: https://community.icann.org/x/QAu4Aw (under the heading Follow Up). In addition, WG members also suggested that registrars be requested to provide data on the total number of registration attempts that were made through them – the objective being to discover how many such attempts did not trigger a Claims Notice (since we have data for the number of Claims Notices triggered, the percentage of registrations that then proceeded toward completion of registration, and the total number of actual registrations, but no information on how many attempted registrations were not subject to a Claims Notice). Staff will note this suggestion for inclusion in the WG’s (or the Sub Team’s, as appropriate) outreach efforts to registrars. WG members are kindly requested to review the full list of Charter questions pertaining to the TMCH, Sunrise and Claims – including the additional community and WG suggestions received – as part of the overall WG exercise to determine whether to consider only some or all of them, and whether other questions need to be added. As noted previously, staff has compiled and circulated the full list of questions into a single document for ease of review, and the document is also available at the wiki page link noted above. 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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"free speech"
by Rebecca Tushnet Sept. 30, 2016

Sept. 30, 2016

Just to correct a misstatement on the call earlier: Most nations don't have a US-style First Amendment. Most nations with a rule of law do, however, recognize freedom of speech in some form, including the right to criticize private companies. As this Wikipedia entry notes, https://en.wikipedia.org/wiki/Freedom_of_speech_by_country, implementation can be inconsistent on the ground, but I expect that inconsistent enforcement of trademark rights on the ground doesn't mean that trademark owners want ICANN to ignore the law on the books; freedom of speech is equally a principle worth honoring. In addition, I don't know how many countries whose nationals participate in the ICANN process have signed on to the Universal Declaration of Human Rights, which includes freedom of speech, http://www.un.org/en/universal-declaration-human-rights/, but I doubt we want to make policy based on the countries that don't recognize any freedom of speech at all. Also, you can't have it both ways: if domain names can facilitate infringement, which they absolutely can, then they convey meaning; if they convey meaning, they can also facilitate noninfringing conduct or affirmatively protected freedom of speech. It is just as true, or untrue, that a trademark owner can register a different string if it can't have the one that it wants as it is that a person making fair or otherwise noninfringing use can do so. This is especially so if we've given trademark owners the ability to jump the line in many circumstances. Freedom of speech principles may help tell us when preclusion of a domain name to a speaker-whether a trademark owner or a non-owner-is of particular importance. That is, they can help us identify the important false positives (notifications generated in response to domain names that wouldn't infringe). Rebecca Tushnet Georgetown Law 703 593 6759

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 28 September 2016
by Terri Agnew Sept. 28, 2016

Sept. 28, 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, 28 September 2016 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/QAu4Aw MP3: http://audio.icann.org/gnso/gnso-rpm-review-28sep16-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 28 September 2016: Terri Agnew: Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group held on Wednesday, 28 September 2016 at 16:00 UTC for 60 minutes. Terri Agnew: agenda wiki page: https://community.icann.org/x/QAu4Aw George Kirikos: Hi folks. George Kirikos: It looks like the layout of the room was adjusted slightly? David Tait: Hi George, yes there have been some updates to add additional functionality to the AC rooms Steve Levy: Hi all! Paul Tattersfield: Hi everyone Greg Shatan: Nice new room! I can still smell the paint. Yuri Chumak: hi Ankur Raheja: Hello Kathy Kleiman: But do you like the color, Greg? Greg Shatan: So many shades of gray. Maxim Alzoba (FAITID): Hello all Kathy Kleiman: oh dear. Greg Shatan: We will need to provide color with our chat colors. And with our comments. Georges Nahitchevansky: Who was in charge of the paint job Kathy Kleiman: indeed, color commentary... George Kirikos: A theme selector would be nice....perhaps aqua..... Greg Shatan: I want to rock and roll all night, and ICANN every day. Greg Shatan: Custom skins for Adobe Connect rooms! Mary Wong: Ack, earworm!!! Greg Shatan: @Mary, sorry...:-) Mary Wong: :) ----------------------------------------------------- (09/28/2016 11:07) ----------------------------------------------------- Terri Agnew: everyone can turn the slides themselves ----------------------------------------------------- (09/28/2016 11:09) ----------------------------------------------------- Terri Agnew: Please remember to mute when not speaking Jeff Neuman (Com Laude): yep. Paul Keating: Hello all. Sorry I am late. ----------------------------------------------------- (09/28/2016 11:11) ----------------------------------------------------- Paul McGrady: Sorry to be tardy. Good m/a/e. ----------------------------------------------------- (09/28/2016 11:12) ----------------------------------------------------- George Kirikos: Is there a reason for the English bias in the notice? (Given the large number of registrants from China, are they getting adequate notice? Are the Chinese registrars translating into Chinese?) Griffin Barnett: I believe it is required (not optional) to provide the notice in English and the language of the registration agreement Maxim Alzoba (FAITID): How to say .... lot's of potential registrants were freaked out due to the text and did not realise that they are not doing wrong things ... it would be nice to have more non-legal persons friendly text Mary Wong: The TMCH Requirements provide the following: "The Claims Notice MUST be provided by the registrar to the potential domain name registrant in English and SHOULD be provided by the registrar to the potential domain name registrant in the language of the registration agreement." George Kirikos: Do we have any stats on whether the registrars are following the "should" advice? Or are they cutting costs, and ignoring the suggestion? Mary Wong: So whether there is a Chinese version depends on whether the registration agrement is in Chinese (which may well be the case if the registrar is a Chinese-based registrar). Philip Corwin: Slide 4 notes that Notice must be provided in English and, preferably, language of registration agreement ----------------------------------------------------- (09/28/2016 11:16) ----------------------------------------------------- George Kirikos: 46.8% of registrants are from China for new gTLDs, so perhaps the "should" can be replaced by "must" https://ntldstats.com/country Jeff Neuman (Com Laude): One interesting note was that the original policy was that a Registry had to run a Sunrise OR a Claims Period, but not both. Jeff Neuman (Com Laude): THat changed after GAC Advice George Kirikos: (might even be higher than 46.8%, depending on the 17.9% of proxy registrations) Jeff Neuman (Com Laude): We need to decide whether to formally codify both into the policy (or not) Mary Wong: @George, we (staff) don't know at this point if the aggregate numbers for Claims Notices sent are available broken down into different languages. Note that the official working language at ICANN is English, so the official notice (as provided for in the TMCH Requirements) is provided in English. I don't believe we provide an official translation in multiple languages. ----------------------------------------------------- (09/28/2016 11:19) ----------------------------------------------------- George Kirikos: That's surprising that there's no official translation, given that one of the justifications for the new gTLDs program was for IDNS, and "lesser served" countries in general. Maxim Alzoba (FAITID): than, given that most people on the planet do not read English ... I think big share of those notices were not understood Jeff Neuman (Com Laude): @George, perhaps that's a policy recommendation; (Namely, we should have formal translations done in at least the 6 UN languages)/ George Kirikos: +1 Jeff Mary Wong: All, for Slide 10, the "either type of registration activity" quoted refers to both legitimate registrations and cybersquatting activity. Maxim Alzoba (FAITID): +1 for chilling effect ----------------------------------------------------- (09/28/2016 11:22) ----------------------------------------------------- Griffin Barnett: agree that official translations of the claims notice language in at least the 6 UN languages would be helpful George Kirikos: How many registration attempts didn't trigger a claims notice? (i.e. is XX million+ total registration attempts, but 1.8 million triggered a Claims Notice?) Jeff Neuman (Com Laude): And today Donuts announced a new DPML Plus service George Kirikos: (and of those that didn't trigger a claims notice, what % (presumably higher than 6.3%) went on to complete the domain name registration?) Mary Wong: @George, I think we can only get that total number if all registrars agree to provide that information. Jeff Neuman (Com Laude): http://www.donuts.domains/services/dpml-plus/dpml-plus-overview George Kirikos: @Mary: We'd need those kinds of figures, to determine whether or not the 6.3% is indeed a "chilling effect" ----------------------------------------------------- (09/28/2016 11:26) ----------------------------------------------------- Philip Corwin: I'm confused about Donuts' DPML service. Slide says that mark registered in TMCH can be blocked, but also says that blocked mark need not be an exact match of the TMCH registered mark. How broad is the potential scope of blocking? Maxim Alzoba (FAITID): this kind of extra protection will prevent those parties from obtaining their matching domains, the way we see now with IGOs ... Mary Wong: @George, we don't disagree - but I doubt we can get all the data so as to be a reliable figure. Perhaps we can compare the number of Claims Notices issued and the number that proceeded nevertheless (per the Analysis Group's data) with the total number of registrations? Jeff Neuman (Com Laude): Can we add the question of whether both Sunrise AND Claims should continue to apply or whether we stick with the original policy which was Sunrise OR Claims Philip Corwin: My recollection is that TM+50 not being used much Paul Tattersfield: It's probably a helpful chill, developing a (non-infringing) business on a domain where there is also a larger brand in an unrelated sector is a serious headache and it doesn't go away with tine. If possible choosing a unique name is a far better route. Paul Tattersfield: time Mary Wong: @Phil, on the breadth of a DPML block, the operative word used by these registries is "contains" the TM. I believe they also include substituions (e.g. numbers for characters). Maxim Alzoba (FAITID): given the amount of generic names registered as TMs- extra protection will make future TLDs usless Kathy Kleiman: Looking at the Additional Questions and Issues from the Charter, perhaps the key question is: are the TM Claims Services policies fair and balanced as adopted and as used? ----------------------------------------------------- (09/28/2016 11:30) ----------------------------------------------------- Steve Levy: I feel balance is an important consideration given the huge number of cybersquatted domains compared with the lower number of generic domains claimaed curing sunrise by trademark owners George Kirikos: Do we have any stats on what percentage of the claims notices get triggered in different time periods? (e.g. first 10 days of GA, vs. 80th-90th days of GA) Perhaps that would help determine where the "sweet spot" is, in terms of picking an optimal time period for the claims notice period. Paul Keating: Perhaps organizing them by category. TMCH procedureal issues, Rights protections, etc. Rebecca Tushnet: It seems to me a problem with data collection is that registries aren't required to let ICANN inspect--subject to confidentiality agreements--the actual attempts that triggered matches/notices. Without being able to audit a sample there is just no way to make any kind of informed judgment about whether these are true positives or false positives, or what percentage of each we might be getting. Statton Hammock: I don't think the first and last are NOT the same. One asks for an opinion, the other asks for facts. Mary Wong: @Rebecca, that is the staff concern - that any data we get from registrars will likely be incomplete and thus not as accurate or helpful as we may need. Rebecca Tushnet: So can contracts with registries be changed to allow such audits in the future, again subject to confidentiality obligations? Jeff Neuman (Com Laude): Rebecca - I think you meant registrars in your point. Registries do not have the information you point out (Namely, whether registrations were attempted but decided not to proceed) . That is the registrar level Rebecca Tushnet: And by allow I mean "require access to" John McElwaine: @jscott Agree with that approach Rebecca Tushnet: Sorry, registrars Petter Rindforth: agree khouloud Dawahi: yes Kathy Kleiman: @J.Scott: What slide are you looking at now? Tx. Philip Corwin: @Steve Levy--what is factual basis for statement that there is "huge number of cybersquatted domains"? UDRPs constitute less than 1/100 of all registered gTLD domains. Maxim Alzoba (FAITID): Even adding "if you do not understand the text = please click this URL in 6 UN languages will help" Beth Allegretti: + 1 Caroline Bret Fausett, Uniregistry: I like the suggestion of changing the text of the notice. Jeff Neuman (Com Laude): Yes, I will go after Jeff Neuman (Com Laude): because my question is semi different topic George Kirikos: Here's what the TM Claims Notice looks, for one registrar (Tucows/OpenSRS): https://kb.opensrs.com/22964-domains/188131-trademark-claims-notifications Vaibhav Aggarwal: HI I am In Sorry for being late kept waiting on the older link only to realise that the Talk is in a new Room :-) Kristine Dorrain - Amazon Registry: Thanks. all. I have to bail. Will listen to the rest this afternoon. George Kirikos: (scroll down a couple of pages, to see what the registrant sees) ----------------------------------------------------- (09/28/2016 11:37) ----------------------------------------------------- Kathy Kleiman: @Mary and David: Could you add Jeff's question to the right? ----------------------------------------------------- (09/28/2016 11:39) ----------------------------------------------------- Mary Wong: Done! ----------------------------------------------------- (09/28/2016 11:41) ----------------------------------------------------- Ivett Paulovics: Sorry for being late Ivett Paulovics: Hi everyone Jeff Neuman (Com Laude): We need to decide also from a policy perspective as to whether to codify tM plus 0 Jeff Neuman (Com Laude): 50 George Kirikos: Interestingly, for Tucows/OpenSRS "You cannot enable Contact Privacy for domains that match marks in the Clearinghouse." I wonder if other registrars do the same, to mitigate risk. Jeff Neuman (Com Laude): that was not a GNSO policy Jeff Neuman (Com Laude): That was a Board addition after consultation ----------------------------------------------------- (09/28/2016 11:44) ----------------------------------------------------- Greg Shatan: A more "conversational" notice could make sense. Would "Abandon Hope, All Ye Who Enter Here" be too harsh for a claims notice? It translates nicely into Italian. ----------------------------------------------------- (09/28/2016 11:45) ----------------------------------------------------- George Kirikos: Thanks for pointing out that list, Kathy. Kathy Kleiman: @Greg, Dante's words may not be welcoming to registrants :-) Mary Wong: @Paul M, that language was in the TMCH Requirements. We haven't (David and I) seen an actual Claims Notice but we can ask. J. Scott Evans: @Greg ah hahahahahahaha Kathy Kleiman: How do we encourage fair use and discourage infringing use? ----------------------------------------------------- (09/28/2016 11:48) ----------------------------------------------------- Kathy Kleiman: blame us! George Kirikos: Perhaps the Claims Notice should only be triggered if the prospective registrant is in the same country as the mark. e.g. US Mark would show to a US Registrant, but not to a Canadian registrant. Pakistani mark wouldn't show to a US registrant. Kathy Kleiman: we did try to create a balanced notice... Greg Shatan: Agree with Paul, the notice does need to be firmly stated enough to put the potential registrant on notice. Kathy Kleiman: +1 Paul! Greg Shatan: The balance may be right -- it may be the legalistic language that needs fixing. Lori Schulman: Kathy just explained the problem in a nutshell. How do we balance the message? Kathy Kleiman: for those reading the chat room later - the 10 most frequently downloaded trademark strings in claims service data - smart, forex, hotel, one, love, cloud, nyc, london, abc, luxury Philip Corwin: @Paul--I wasn't advocating any particular "softening" language at this time, just some thinking about whether language can be made a tad less legalistic and thereby clearer for average registrant. Agree that some intended registration may be very infringing, while others would not -- often dependent on registrant intent raher than the TMCH-registered mark. Jeff Neuman (Com Laude): I also believe that a number of notices may be been sent as part of an error from a particular registrar Steve Levy: Sorry, have to log off now but will continue on the phone line. Phil Marano (Mayer Brown): Should we explore the possibility / likelihood that potential registrants who ultimately decline to register domain names upon receipt of a claims notification, are simply seeking to reverse engineer the Clearinghouse database through a multitude of queries and attempted registrations? Mary Wong: @Phil M, how would we do that, though? Greg Shatan: Phil, that's an interesting point. And could skew the data. Phil Marano (Mayer Brown): @Mary: Not sure, open to any thoughts of course. George Kirikos: I wonder if the 93.7% figure might be overstated, if some of the domain names that triggered Claims Notices were also Premium Domains? George Kirikos: e.g. "smart" or "hotel" might be $50,000/yr domains. Kathy Kleiman: @Mary and David: could you include Beth's question re: language and translation? Jeff Neuman (Com Laude): I do believe it is overstated Mary Wong: The Technical Requirements say "SHOULD" (for language of registration agreement) Maxim Alzoba (FAITID): the only language of Registry Agreement is English John McElwaine: @Phil I was about to mention that . We cannot assume that every purported "registrant" is actually trying to register a domain name. Greg Shatan: Can we find out what the more popular local registrars are doing, in fact? There can't be that many. George Kirikos: Plus, if 10 people were deterred from registering Hotel.TLD, it doesn't mean the string doesn't get registered --- the 11th person might (smartly) recognize the term can be used for non-infringing sites, and she/he goes ahead with the registration. Greg Shatan: It's the end-user registration agreement, not the Registry Agreement. I assume if I'm sitting in China and uising a Chinese registrar, the registration agreement is highly likely to be in Chinese. ----------------------------------------------------- (09/28/2016 11:55) ----------------------------------------------------- George Kirikos: Perhaps "human rights" refers to Free Speech? Statton Hammock: Agree J. Scott Mary Wong: We will add this - but, again, that depends on registrars agreeing to provide that information, and we may not also get all to respond. Jeff Neuman (Com Laude): Every PDP is now being asked about Human Rights Mary Wong: (this = questions/data about language of registration agreements) Greg Shatan: There's the CCWG-Accountability WS2 Subgroup on Human Rights Jeff Neuman (Com Laude): Seems to be a popular addition Jeff Neuman (Com Laude): And those that added the Human Rights language are never in these groups :) Jeff Neuman (Com Laude): Stephanie Perrin I believe on the Council always wanted to add this language George Kirikos: I'm in favour of Article 24: http://www.un.org/en/universal-declaration-human-rights/ (right to rest and leisure) :-) Greg Shatan: I'm in there too, We are in the "messy" stage of the multistakeholder process. This too shall pass (it almost always does.) Jeff Neuman (Com Laude): I have to drop.....Bye all Mary Wong: "1. Are recent and strong ICANN work seeking to understand and incorporate Human Rights into the policy considerations of ICANN relevant to the UDRP or any of the RPMs?" Paul McGrady: @George K: love it! "Everyone has the right to rest and leisure, including reasonable limitation of working hours and periodic holidays with pay." Paul Tattersfield: breach of natural justice is important Paul McGrady: I am very concerned about just cherry picking one human right to apply here. Paul McGrady: This is a morass we should not allow ourselves to get trapped in. This is the work of that WS2 Subgroup. Paul Keating: J Sc ott: The EU certainly DOES have fair use. It is in 4Ibis of the EC Regulation on Trademarks Paul McGrady: Article 27(2) "(2) Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author." Mary Wong: @Greg, as noted, these were community suggestions made to ICANN, unedited by staff. Bret Fausett, Uniregistry: I would invite people who are knowledgable of, sensitive to, and passionate about "human rights in the DNS" look at the work of the working group, and every working group, and tell us if what the group is doing impacts the issues. I am open to this issue, but I don't know enough about it to have an opinion one way or another. Vaibhav Aggarwal: Where are v going with this on TMCH ? Paul Tattersfield: Its relevant for refiling UDRPs Vaibhav Aggarwal: This is the not the Statge Vaibhav Aggarwal: Guys Vaibhav Aggarwal: I am confused Vaibhav Aggarwal: This is TMCH - Just a Repository Vaibhav Aggarwal: an Agency Vaibhav Aggarwal: Takes Iformation form one Source and Sends it to other Vaibhav Aggarwal: thats it Greg Shatan: Umbrella with broken spokes and bum handle... Mary Wong: Note that all these questions are community-made. The Charter states that "The issues that are listed here reflect the suggestions that have been made to date by the community regarding improvements or modifications to the RPM(s) in question and should form part of the discussions of the PDP Working Group. The Working Group may decide to address all, some or even additional issues to these." Paul Keating: do NOT strike. It should be kept but agree dealt with last. Vaibhav Aggarwal: @Greg ha ha ha Bret Fausett, Uniregistry: I wouldn't strike it, J. Scott. Let's just defer this. Bret Fausett, Uniregistry: Maybe just a change of terminology. Paul Keating: If it is an umbrella question it impacts all of the various points. Greg Shatan: Maybe by then the WS2 subgroup on HR will be finished with its work. Paul McGrady: WS2 HR is supposed to be done well ahead of us. Kathy Kleiman: +1 Paul Terri Agnew: The call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 05 October 2016 at 17:00 UTC for 60 minutes. Kathy Kleiman: Each umbrella question should be evaluated with each RPM - as appropriate Greg Shatan: And don't foreget to update your Adobe Connect link. George Kirikos: Bye folks. Maxim Alzoba (FAITID): bye all Kathy Kleiman: Tx J. Scott and All Greg Shatan: Bye all. Georges Nahitchevansky: Bye everyone Elizabeth Featherman: bye all! Vaibhav Aggarwal: Thanks Team Vaibhav Aggarwal: ciao Paul Tattersfield: bye everyone Philip Corwin: Ciao

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Agenda for WG meeting of 28 September 2016
by Mary Wong Sept. 28, 2016

Sept. 28, 2016

Dear WG members, The proposed agenda for the next WG meeting, scheduled for 28 September at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to SOIs 2. Overview presentation of the Trademark Claims Service 3. Discussion of Charter questions relating to the Trademark Claims Service 4. [if time permits Continuation of discussions over the TMCH and Sunrise (based on the last two WG calls and subsequent mailing list discussion) 5. Next steps/next meeting To assist with the WG’s review of all the Charter questions relating to TMCH and Sunrise (see agenda item #4), please find attached a document containing all the Charter questions this WG has been tasked to look at, together with additional questions that have since been suggested by either WG members or by other members of the community at ICANN56 in Helsinki. In relation to the TMCH and Sunrise, all the questions had already been listed in the respective slide decks for both those presentations. The document separates out all the questions into categories corresponding to each RPM in Phase One, and also includes a General section. Please note also that the Charter questions merely replicate all the previous questions the community had raised with ICANN on the issue of RPM protection, and these have not been edited or otherwise reviewed by either the staff’s or the co-chairs. 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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Further information on registry and registrar requirements and obligations (Re: TMCH review objectives)
by Mary Wong Sept. 27, 2016

Sept. 27, 2016

Dear all, Further to Paul’s request (below) and my earlier note, staff hopes that the following additional information is also helpful. Under Specification 7 of the base New gTLD Registry Agreement, all New gTLD registry operators are obliged to implement the TMCH Requirements referenced previously. These Requirements incorporate the two provisions I mentioned in my note, and set out further criteria, processes and other terms relating to the provision of Sunrise and Claims Services. A copy of the base New gTLD Registry Agreement (as of January 2014) can be found here: http://newgtlds.icann.org/sites/default/files/agreements/agreement-approved…; and individually-executed Registry Agreements are listed here: https://www.icann.org/resources/pages/registries/registries-agreements-en. In addition, all New gTLD registry operators and registrars wishing to sell domains under the 2012 New gTLD Program are required to agree to the Terms of Service for Registries and Registrars prior to offering any Sunrise or Claims Services: https://marksdb.org/tmdb/public/tandc (note that these registries and registrars also have to complete testing with, and be certified by, IBM in order to use the TMCH). In relation to the discussion about registrar (rather than registry) obligations, the TMCH Requirements state the nature and limit of registrar obligations in relation to the provision of Claims Notices to potential registrants (e.g. they must be clear and conspicuous, be in the prescribed form, and provided in English and preferably also the language of the registration agreement). The TMCH Requirements also provide that registrars may query the Claims Notice Information Service only in relation to domain names actually applied for by a potential registrant, and not for any other purpose. Finally, under the Terms of Service for Registries and Registrars referenced above, WG members may be interested to review the following provision (quoted here in relevant part only): “You agree that you will not use the Trademark Clearinghouse or the Services in a manner (as determined by us in our sole discretion) that: 7.1.1 Is illegal, or promotes or encourages illegal activity; 7.1.2 Infringes on the intellectual property rights of any other person or entity; 7.1.3 Interferes with the operation of the Trademark Clearinghouse or the Services; 7.1.4 Modifies or alters any part of the Clearinghouse Content or the Services; 7.1.5 Results in the distribution of Clearinghouse Content in a manner not authorized or contemplated by the Functional Specifications or TMCH Requirements …. “ We realize that these are fairly voluminous additional documents for which we are providing the links here and in my last message; however, we hope that in combination they provide a useful summary of the various obligations of and restrictions on both registries and registrars in relation to the provision of Sunrise and Claims Services under the 2012 New gTLD Program. 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: Paul Keating <paul(a)law.es> Date: Tuesday, September 27, 2016 at 08:40 To: Greg Shatan <gregshatanipc(a)gmail.com>, Mary Wong <mary.wong(a)icann.org> Cc: "J. Scott Evans" <jsevans(a)adobe.com>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives Greg, A few comments: 1. Publicly Available Data. I did not say that the TMCH database was publicly available. However, the TMCH database is nothing but a collection of public trademark registrations and evidence of actual use. As such, the original trademark registrations are publicly available. Thus, the registries could simply use other public sources and be able to price “trademark-related” domain names as they wish. 2. Restrictions on use. Your reference to limited purpose use does not appear in Mary’s underlying email. To obtain any use restrictions we would have to review any relevant agreements between TMCH and the registries (or ICANN if TMCH has an agreement with ICANN which is somehow incorporated within the Registry agreement). In the absence of any restrictions in the agreement, I see no basis for a subjective description indicating that use is somehow improper. The same goes for any access provided to registrars. @Mary, can you supply such agreements? 3. Legal Restrictions. Antitrust laws would not seem to apply unless the affected “market” were limited to a specific extension. I cannot recall how that issue was addressed in the litigation against Verisign/ICANN over pricing but reference to that case might give further information. Even if antitrust (or other) laws applied such would be factually specific and best addressed via a post occurrence curative rights process such as the UDRP/URS (in the case of cybersquatting) or litigation (in the case the claim was based upon the pricing in the absence of subsequent cybersquatting). @Phil do you remember how the court addressed the market in that case? 4. RPM – I think you are mixing things up a bit. The SunRise was a RPM (allowing trademark holders to pre-emotively register domain names based solely upon a trademark registration and evidence of use). It did not extend to protect non-trademark holders in situations where in the asserted mark was in fact descriptive/generic and thus available for non-cybersquatting use. TMCH was NOT a RPM. It was a means to make the Sunrise process more efficient (by creating a uniform process) and less costly for the trademark holders (by permitting them to merely reference their TNCH record instead of producing evidence each time). The additional RPM you are not considering are the curative rights processes found in the UDRP and URS which protect the trademark holder IF (a) they did not register during Sunrise AND (b) the domain was later registered illegitimately and registered and used in bad faith. As far as I can see none of these policy tools were intended to address pricing – an issue intentionally left to the market. 5. Future use prohibitions. I may be mistaken but I believe that TMCH already has an agreement with ICANN and/or the Registries. If so, any proposal you are suggesting would require a specific amendment (requiring consent of all parties). And, of course, such a restriction would do little good given that the same exact data can be collected from any number of publicly available sources. I remain unconvinced there is an actual issue here (my view being that pricing includes a value that cannot be said to be entirely unreasonable). And, I am not at all convinced that this is an appropriate area for the WG given our charter. Sincerely, Paul Raynor Keating, Esq. Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFAw&c=FmY1…> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul(a)law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>> Date: Tuesday, September 27, 2016 at 5:18 PM To: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Cc: Paul Keating <paul(a)law.es<mailto:paul@law.es>>, "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I take from this the following: * The TMCH database is NOT publicly available, in spite of claims to the contrary. A policy decision was made NOT to make the TMCH database publicly available, to avoid gaming and targeting of trademark owners. If it is "publicly available" through some channels, these are not authorized sources. It's reasonable to assume that these are either leaked or reverse engineered. I'm not sure what the "evil source" is -- there may be multiple evil sources. * The DNL List, containing only the DNL field of the the TMCH database, is made available to New gTLD Registries, who are required to have it and update it daily. * The sole purpose the DNL List is given to Registries is so they can check whether a requested domain name matches a domain name label of a pre-registered mark during the Trademark Claims Period. Any other use would be an unauthorized use. * Neither the TMCH database or the DNL List is made available to Registrars. If a Registrar has either one of these, it has come from a source not authorized to share it (either a Registry which received it legally, or a third party who reverse engineered it) or the Registrar reverse engineered it. In either case, a Registrar is not authorized to either to have or to use the TMCH database or the DNL List. * A Registry using the DNL list in order to set differentiated wholesale prices for particular domains and target particular trademark owners during the Sunrise Period (or for that matter during GA or any other period) is making an unauthorized and unintended use of the DNL list. J Scott has called this a "bad faith" use and I am inclined to agree, especially since it begins with "unclean hands." (Note: this is a different issue from a Registry setting a single high price for all trademark owners during Sunrise (or GA, etc.) This is also a problematic practice but not the one being discussed.) * Registrars probably don't need the DNL List, since they can key retail prices off the wholesale prices (and each Registrar is free to decide their markup over the wholesale price) and can use "premium" lists set by the registries. However, if a Registrar has the DNL list (which they shouldn't) and uses it to set further differentiated prices for particular domains, that would be an unauthorized use of the DNL list. That would also be a "bad faith" use of the data, especially since the Registrar isn't even supposed to have the data. These practices may violate both the law and ICANN policy. On the legal front, these may be violations of antitrust/competition laws, either under a price discrimination theory or under a wrongful exercise of monopoly power theory. Anti-price-gouging laws could also be implicated here. I have not conducted an analysis of these points, but it would be good to do so. (Similar issues may arise with across-the-board exorbitant prices in Sunrise Periods.) The possession and use of the DNL List for anything other than its intended purpose by its intended recipient could also violate data protection laws, and could be violations of the terms under which the DNL List is distributed. On the policy front, these activities could be violations of the ICANN policies relating to the creation and purpose of the TMCH database and the Sunrise Periods. These could be more granular violations of particular policy points and/or a violation of the entire purpose of these policies. On the latter point, these polices are Rights Protection Mechanisms. They were set up to protect the rights of trademark holders. They were certainly not set up to use those rights to victimize trademark owners, by singling them out and targeting them with exorbitant pricing schemes. These pricing schemes (whether differentiated or across-the-board) make a mockery of these rights protection mechanisms. Instead, they become "rights detection mechanisms," allowing those unfortunately detected to be charged extra-high prices solely based on their identity. On a going-forward basis, we should make absolutely certain that (1) any use of the DNL List (or the TMCH database) by a Registry for any other purpose than sending Claims Notices is strictly prohibited and a violation of applicable terms and contracts; (2) any use or possession of the DNL List (or the TMCH database) by anyone other than a Registry is strictly prohibited and a violation of applicable terms and contracts (if these parties are subject to terms and/or contracts with ICANN). Greg On Tue, Sep 27, 2016 at 1:12 AM, Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, in response to Paul’s request, here is some information that we hope is helpful. First, the TMCH Technical Requirements and Functional Specifications have certain criteria and requirements for Registries in terms of the data they can fetch from the TMCH (the Technical Requirements can be found at https://newgtlds.icann.org/en/about/trademark-clearinghouse/rpm-requirement…<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_…> and the Functional Specifications at http://tools.ietf.org/html/draft-lozano-tmch-func-spec)[tools.ietf.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__tools.ietf.org_html_dra…>. For example: · REQUIREMENT - Registries must refresh the latest version of the SMD Revocation List at least once every 24 hours. NOTES: - The SMD (Signed Mark Data) Revocation List is the list of SMDs that have been revoked, maintained by the TMCH database. It contains all the revoked SMDs present in the TMCH database at the date and time it is generated. The SMD Revocation List is used during the Sunrise Period to validate SMDs received. During the Sunrise Period the Registry fetches the most recent SMD Revocation List from the TMCH database at regular intervals. - As noted during the Sunrise Overview WG discussion a couple of weeks ago, after a successful registration of a mark, the TMCH validator returns an SMD File to the TM holder. A SMD is a cryptographically signed token issued by the TMCH validator to the TM holder, to be used in the Sunrise Period to apply for a domain name matching a domain name label of a mark that has been pre-registered with the TMCH. · REQUIREMENT - Registries must download and refresh the latest version of the DNL List at least once every 24 hours. NOTES: - The DNL List contains every Domain Name Label (DNL) that matches a pre-registered mark present in the TMCH database at the date and time it is generated. The list is maintained by the TMCH database. Registries use the DNL List during the Trademark Claims Period to check whether a requested domain name matches a domain name label of a pre-registered mark. Secondly, the TMCH provides public monthly reports on TMCH trademark validation and dispute resolution activity, which are posted by ICANN here: https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-regi…<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_…>. Thirdly, the TMCH publishes regularly on its own website statistics about TMCH records, including number of marks submitted and number of Claims Notices issued; for example: http://www.trademark-clearinghouse.com/content/tmch-stats-april-20th[tradem…<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin…>. Finally, ICANN maintains a page containing the dates of all the Sunrise, Claims and related pre-launch RPMs offered by each New gTLD registry operator: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods[newgtld…<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_…>. 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<tel:%2B1-603-5744889> From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Paul(a)law.es<mailto:Paul@law.es> ZIMBRA" <paul(a)law.es<mailto:paul@law.es>> Date: Monday, September 26, 2016 at 16:39 To: "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> 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>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I apologize for the name error. As for use of data, I believe the same data is publicly available from any number of non-TMCH data. In that regard can staff please publish the data points that TMCH does publish to registries? Paul Keating On 26 Sep 2016, at 11:54 PM, J. Scott Evans <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: First, we can agree to disagree. Also, my name is “J. Scott” (kind of my trademark) :-). Second, I am not talking about regulating a price. However, I do think pricing is relevant if the “data” is being used for a purpose (targeting trademarks for increased pricing) for which it was not intended and that is against the interest of the parties who the TMCH was designed to assist in handling the explosion of new gTLDs. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.c[adobe.c]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=…>om From: "Paul(a)law.es<mailto:Paul@law.es> ZIMBRA" <paul(a)law.es<mailto:paul@law.es>> Date: Monday, September 26, 2016 at 1:22 PM To: "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> Cc: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Scott, I strongly disagree. First I don't think it is bad faith and certainly not per se so as to warrant a global pricing restriction. The fact that there are potential buyers who may value a domain at a higher price is nothing but applying traditional market principles applied in virtually every other form of business. Domains are not utilities to be regulated in such manner. Nor do I see any basis to guaranty pricing for the benefit of trademark holders. Second, given that the same "TMCH data" is publicly available I don't understand the basis for focusing on TMCH as the evil source. Paul Keating On 26 Sep 2016, at 9:26 PM, J. Scott Evans <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: Respectfully, I think you are missing some of the point here. I agree the market should operate as a free market. However, using the data in the TMCH to create lists of “premium” domains in the hope of having trademark owners pay exorbitant prices to acquire their marks is a bad faith practice that should be halted. J Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.c[adobe.c]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=…>om From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <Paul(a)law.es<mailto:Paul@law.es>> Date: Friday, September 23, 2016 at 9:04 AM To: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Phil, In furtherance to my last email responding to Mr. Levy, even an unreasonably priced domain is not infringing. It is important that we not mix up the concepts at issue. We are discussing both “preventative rights: and “curative rights”. The preventative rights mechanism should be severely limited because it acts as a restraint of market tendencies in the absence of actual infringement. Imposing preventative measures is akin to imposing a “prior restraint” which (certainly in the area of speech) is disfavored as a matter of public policy. The curative rights mechanism is the 2nd tool which permits rights holders to rectify an infringement that has actually occurred. Rights holders already have the ability to pursue legal claims against a registry who is intentionally targeting them by restricting access to domains other than by way of exorbitant pricing. The hurdles that the rights holders must overcome to succeed on such claims are understandably high – just as they are with any other claimant faced with a similar situation in a non-domain-related situation. However, such is life. It is not our place to alter the legal environment and create contractually-based claims that do not already exist in the law. I believe this was the import of the comment made during the last call asking to differentiate economic costs from “rights”. Sincerely, Paul Raynor Keating, Esq. Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFaQ&c=FmY1…> Tel. +34 93 368 0247<tel:%2B34%2093%20368%200247> (Spain) Tel. +44.7531.400.177<tel:%2B44.7531.400.177> (UK) Tel. +1.415.937.0846<tel:%2B1.415.937.0846> (US) Fax. (Europe) +34 93 396 0810<tel:%2B34%2093%20396%200810> Fax. (US)(415) 358.4450<tel:%28415%29%20358.4450> Skype: Prk-Spain email: Paul(a)law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 5:39 PM To: Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000<tel:212.484.6000> or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ 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=DQMFaQ&c=…> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 _______________________________________________ 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 ________________________________ <ACL> _______________________________________________ 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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Re: [gnso-rpm-wg] TMCH review objectives
by Paul Keating Sept. 27, 2016

Sept. 27, 2016

Phil, In furtherance to my last email responding to Mr. Levy, even an unreasonably priced domain is not infringing. It is important that we not mix up the concepts at issue. We are discussing both ³preventative rights: and ³curative rights². The preventative rights mechanism should be severely limited because it acts as a restraint of market tendencies in the absence of actual infringement. Imposing preventative measures is akin to imposing a ³prior restraint² which (certainly in the area of speech) is disfavored as a matter of public policy. The curative rights mechanism is the 2nd tool which permits rights holders to rectify an infringement that has actually occurred. Rights holders already have the ability to pursue legal claims against a registry who is intentionally targeting them by restricting access to domains other than by way of exorbitant pricing. The hurdles that the rights holders must overcome to succeed on such claims are understandably high just as they are with any other claimant faced with a similar situation in a non-domain-related situation. However, such is life. It is not our place to alter the legal environment and create contractually-based claims that do not already exist in the law. I believe this was the import of the comment made during the last call asking to differentiate economic costs from ³rights². Sincerely, Paul Raynor Keating, Esq. Law.es <http://law.es/> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul(a)law.es THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. 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IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Friday, September 23, 2016 at 5:39 PM To: Rebecca Tushnet <rlt26(a)law.georgetown.edu>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives > I believe I just addressed that question in the email I posted if > unreasonably high sunrise pricing deters a rights holder from registering a > domain corresponding to a verified TM registered in the TMCH then it may be > registered in the general availability period by an infringer, which in turn > imposes a variety of costs on the TM owner (including those of bringing a > subsequent URS, UDRP, or judicial action) and also creates the possibility of > confusion and harm for the general public. > > This is not to say that all Premium pricing is unreasonable, as it is > generally recognized that certain words and terms have inherent additional > value in the DNS context it really requires a case by case analysis. > > > 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 Rebecca Tushnet > Sent: Friday, September 23, 2016 11:10 AM > To: Silver, Bradley; gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] TMCH review objectives > > TMCH¹s goal of ³protection² against what, though? How does high pricing > contribute to trademark infringement? High pricing may deter purchases of > domain names, no doubt, but with what result for the system overall? > > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] > Sent: Friday, September 23, 2016 11:00 AM > To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org > Subject: RE: TMCH review objectives > > I would add that the question of pricing feeds into the concept of > effectiveness, because if the TMCH is serving as a database for registries to > target brand owners for higher pricing based on the value of their brands, > then this is antithetical to the TMCH¹s primary goal to provide protection for > verified right holders. > > > From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On > Behalf Of Rebecca Tushnet > Sent: Friday, September 23, 2016 10:26 AM > To: gnso-rpm-wg(a)icann.org > Subject: [gnso-rpm-wg] TMCH review objectives > > Hello, all. On the last WG call, concerns about pricing of domain names > during the Sunrise Period arose. This led to a question of whether pricing is > within the remit of this WG and the broader question of what the purpose of > our TMCH review is. There seemed to be a desire to focus on the TMCH¹s > effectiveness. The predicate question, then, is: effectiveness at what? Here > are some suggestions for discussion: (1) minimizing the cost of operating the > system for all concerned; (2) minimizing the number of actions that ultimately > need to be brought against infringing registrants; (3) minimizing the number > of noninfringing registrants whose legitimate uses are blocked or deterred. > If the system is reasonably balancing those objectives, I suggest, then it is > effective; potential changes should be directly related to improving > performance on one or more of these metrics without unduly hampering the > others. > > Yours, > Rebecca Tushnet > > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > ================================================================= > Reminder: Any email that requests your login credentials or that asks you to > click on a link could be a phishing attack. If you have any questions > regarding the authenticity of this email or its sender, please contact the IT > Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com > > > ================================================================= > > ================================================================= > This message is the property of Time Warner Inc. and is intended only for the > use of the > addressee(s) and may be legally privileged and/or confidential. If the reader > of this message > is not the intended recipient, or the employee or agent responsible to deliver > it to the intended > recipient, he or she is hereby notified that any dissemination, distribution, > printing, forwarding, > or any method of copying of this information, and/or the taking of any action > in reliance on > the information herein is strictly prohibited except by the intended recipient > or those to whom > he or she intentionally distributes this message. If you have received this > communication in > error, please immediately notify the sender, and delete the original message > and any copies > from your computer or storage system. Thank you. > ================================================================= > > > No virus found in this message. > Checked by AVG - www.avg.com <http://www.avg.com> > Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

13 23

TMCH review objectives
by Rebecca Tushnet Sept. 26, 2016

Sept. 26, 2016

Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG - and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH's effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759

15 34

Re: [gnso-rpm-wg] TMCH review objectives
by Steve Levy Sept. 26, 2016

Sept. 26, 2016

I’d also like to add my view that “protection” can take a number of different forms. Stopping someone from infringing upon one’s trademark is the most obvious one but protecting brand owners from having their trademarks held for ransom at an unreasonably high premium price is another. If, for example, [brand].TLD is priced at US$50000 as a premium domain it effectively prevents the brand owner from purchasing that domain and the website remains either non-resolved or perhaps as a registry advertisement. The public may then see this site and mistakenly believe that the brand owner has either gone out of business or is not devoting sufficient resources to promoting its brand online. Preventing this type of negative impact on the brand is another form of “protection”. Regards, Steve [cid:14EF9B53-43F8-43BA-A891-429046E0AED9] Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy(a)AccentLawGroup.com<mailto:slevy@accentlawgroup.com> Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/> <http://www.accentlawgroup.com/>LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/> ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). If the reader or recipient of this communication is not the intended recipient, an employee or agent of the intended recipient who is responsible for delivering it to the intended recipient, or you believe that you have received this communication in error, please notify the sender immediately by return e-mail and promptly delete this e-mail, including attachments without reading or saving them in any manner. The unauthorized use, dissemination, distribution, or reproduction of this e-mail, including attachments, is prohibited and may be unlawful. Receipt by anyone other than the intended recipient(s) is not a waiver of any attorney/client or other privilege. From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 11:39 AM To: Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759 From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759 ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16

6 11

Re: [gnso-rpm-wg] TMCH review objectives
by J. Scott Evans Sept. 26, 2016

Sept. 26, 2016

Clearly, even in the age of search engines, domains have value (real or perceived). If they did not, we wouldn’t have needed a DNS expansion and there would not be any such thing as a “premium” domain name. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>> Date: Friday, September 23, 2016 at 9:15 AM To: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> 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>> Subject: Re: [gnso-rpm-wg] TMCH review objectives And is the additional system cost (one component of effectiveness) of individualized review of pricing worth this hypothetical increased risk of later infringement? If post-Sunrise registrations of expensive domain names have led to infringement, I hope we will be able to collect evidence of that. Likewise with the hypothetical effect of encountering an unregistered domain in a new gTLD. In an age of search engines, I thought we had gotten past the idea that a consumer would type in a domain name and then give up if no website, or a nonconfusing but non-trademark owner website, resolves. I also highly doubt there's evidence that consumers think less of a trademark owner for not registering every variation. Rebecca Tushnet Georgetown Law Sent from my phone. Apologies for terseness/typos. On Sep 23, 2016, at 11:39 AM, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759 From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759 ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 ________________________________ <ACL>

2 1

Re: [gnso-rpm-wg] TMCH review objectives
by J. Scott Evans Sept. 26, 2016

Sept. 26, 2016

Well said Phil. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 8:33 AM To: "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Thanks for your input, Bradley and Rebecca. Here is my personal view at this time, subject to further discussion with the other Co-Chairs and the WG members— The TMCH is a means to an end. It is a database of trademarks meeting certain minimum levels of verified quality. While the TMCH is regarded as a RPM it provides no protection in and of itself – the protections come from two related RPMs, Sunrise Registrations and the TM Claims Notice (recognizing that certain other private protection measures, such as Donuts’ DPML, are also tied to TMCH registration). The protection offered by Sunrise Registration is to give rights holders’ the ability to secure a domain in a new gTLD that is an exact match of their TM prior to general availability of registrations, and thereby eliminate the ability of a third party with no legitimate rights or interest to secure the same domain for infringing purposes. If that domain name has been designated as a Premium one by the registry operator then pricing can clearly have some practical impact on the availability of the protection, with the degree of impact varying with the price point. Taking an extreme hypothetical, if initial registration of a particular Premium domain were set by the RO at $50,000 then the rights holder might naturally feel that the protection held out by the availability of Sunrise registration has been substantially diluted by the pricing, and decide that it would be prudent to wait for general availability and try to secure the domain then, or decline to register at all and simply file a URS or UDRP action if another party secures the domain and uses it for infringing purposes. And, as we know, the feeling among rights holders that Sunrise Registrations are being used to unreasonably exploit them increases when there is a very wide difference between the price set for the Sunrise period versus that in general availability, or if the Premium domain is a unique non-dictionary term associated with a company or brand. But is pricing within the remit of our WG, and if not is it within the remit of the parallel Subsequent Procedures WG? I will not answer the latter question because we have members and Co-Chairs of that WG participating in this one and they are quite capable of sharing their views. My own view is that it is probably not within the remit of this WG to analyze or change the “hands off” pricing policy established for the new gTLD program, which has led to a very broad spectrum of registry pricing and business models (it seems to be more of a subsequent procedures program and applicant guidebook matter, rather than a direct RPM concern) . However, I think it may well be within the remit of this WG to analyze and comment upon the impact of certain registry’s Sunrise pricing models on the effectiveness of Sunrise Registrations as an RPM, and it may also be within the remit of this WG to recommend a system through which rights holders can register concerns about certain registry pricing practices that dilute the RPM’s effectiveness (how the RO or ICANN should respond to such concerns is a separate issue). I hope those remarks spur some further discussion within this WG. Best to all, Philip 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Silver, Bradley Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759 ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 ________________________________ <ACL>

2 1

Re: [gnso-rpm-wg] TMCH review objectives
by Paul Keating Sept. 23, 2016

Sept. 23, 2016

Jeff, While certainly unseemly, is this really something we need to deal with ? After all, the trademark holder could easily have anyone buy the domain and subsequently transfer it to the company. Again, we need to refocus at the 50,000 foot level. PRK From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Jeff Neuman <jeff.neuman(a)comlaude.com> Date: Friday, September 23, 2016 at 6:37 PM To: Phil Corwin <psc(a)vlaw-dc.com>, Rebecca Tushnet <rlt26(a)law.georgetown.edu> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives > We also need to look at examples out there where it is not just premium > pricing of domains, but there was at least one case (.feedback) that said if > you are a trademark owner (whether or not purchased in the Sunrise or after), > the price is $X, but if you are not the trademark owner, then your price is > $Y, where $Y was thousands of dollars less. > > See: > http://domainincite.com/19560-forget-sucks-feedback-will-drive-trademark-ow… > s-nuts-all-over-again and > http://domainincite.com/19615-feedback-regs-fox-trademark-to-itself-during-… > rise > > I believe the policies of .sucks and .feedback need to be discussed. It is > one thing to have premium pricing on a name whereby any purchaser of the name > would have to pay the same price (even if high); but, it is another thing to > have different prices for a name depending on who the purchaser is > (discrimination amongst purchasers). That I do believe is in our scope. > > > 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 > > > > From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On > Behalf Of Phil Corwin > Sent: Friday, September 23, 2016 12:20 PM > To: Rebecca Tushnet <rlt26(a)law.georgetown.edu> > Cc: gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] TMCH review objectives > > ³If post-Sunrise registrations of expensive domain names have led to > infringement, I hope we will be able to collect evidence of that.² > > Agreed that we should seek this type of data, certainly anecdotal and more > comprehensive if available. > > > 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: Rebecca Tushnet [mailto:rlt26@law.georgetown.edu] > Sent: Friday, September 23, 2016 12:16 PM > To: Phil Corwin > Cc: Silver, Bradley; gnso-rpm-wg(a)icann.org > Subject: Re: TMCH review objectives > > > And is the additional system cost (one component of effectiveness) of > individualized review of pricing worth this hypothetical increased risk of > later infringement? If post-Sunrise registrations of expensive domain names > have led to infringement, I hope we will be able to collect evidence of that. > Likewise with the hypothetical effect of encountering an unregistered domain > in a new gTLD. In an age of search engines, I thought we had gotten past the > idea that a consumer would type in a domain name and then give up if no > website, or a nonconfusing but non-trademark owner website, resolves. I also > highly doubt there's evidence that consumers think less of a trademark owner > for not registering every variation. > > Rebecca Tushnet > > Georgetown Law > > > > Sent from my phone. Apologies for terseness/typos. > > > On Sep 23, 2016, at 11:39 AM, Phil Corwin <psc(a)vlaw-dc.com> wrote: >> >> I believe I just addressed that question in the email I posted if >> unreasonably high sunrise pricing deters a rights holder from registering a >> domain corresponding to a verified TM registered in the TMCH then it may be >> registered in the general availability period by an infringer, which in turn >> imposes a variety of costs on the TM owner (including those of bringing a >> subsequent URS, UDRP, or judicial action) and also creates the possibility of >> confusion and harm for the general public. >> >> This is not to say that all Premium pricing is unreasonable, as it is >> generally recognized that certain words and terms have inherent additional >> value in the DNS context it really requires a case by case analysis. >> >> >> 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@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On >> Behalf Of Rebecca Tushnet >> Sent: Friday, September 23, 2016 11:10 AM >> To: Silver, Bradley; gnso-rpm-wg(a)icann.org >> Subject: Re: [gnso-rpm-wg] TMCH review objectives >> >> TMCH¹s goal of ³protection² against what, though? How does high pricing >> contribute to trademark infringement? High pricing may deter purchases of >> domain names, no doubt, but with what result for the system overall? >> >> >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] >> Sent: Friday, September 23, 2016 11:00 AM >> To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org >> Subject: RE: TMCH review objectives >> >> I would add that the question of pricing feeds into the concept of >> effectiveness, because if the TMCH is serving as a database for registries to >> target brand owners for higher pricing based on the value of their brands, >> then this is antithetical to the TMCH¹s primary goal to provide protection >> for verified right holders. >> >> >> From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On >> Behalf Of Rebecca Tushnet >> Sent: Friday, September 23, 2016 10:26 AM >> To: gnso-rpm-wg(a)icann.org >> Subject: [gnso-rpm-wg] TMCH review objectives >> >> Hello, all. On the last WG call, concerns about pricing of domain names >> during the Sunrise Period arose. This led to a question of whether pricing is >> within the remit of this WG and the broader question of what the purpose of >> our TMCH review is. There seemed to be a desire to focus on the TMCH¹s >> effectiveness. The predicate question, then, is: effectiveness at what? Here >> are some suggestions for discussion: (1) minimizing the cost of operating the >> system for all concerned; (2) minimizing the number of actions that >> ultimately need to be brought against infringing registrants; (3) minimizing >> the number of noninfringing registrants whose legitimate uses are blocked or >> deterred. If the system is reasonably balancing those objectives, I suggest, >> then it is effective; potential changes should be directly related to >> improving performance on one or more of these metrics without unduly >> hampering the others. >> >> Yours, >> Rebecca Tushnet >> >> >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> ================================================================= >> Reminder: Any email that requests your login credentials or that asks you to >> click on a link could be a phishing attack. If you have any questions >> regarding the authenticity of this email or its sender, please contact the IT >> Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com >> >> >> ================================================================= >> >> ================================================================= >> This message is the property of Time Warner Inc. and is intended only for the >> use of the >> addressee(s) and may be legally privileged and/or confidential. If the reader >> of this message >> is not the intended recipient, or the employee or agent responsible to >> deliver it to the intended >> recipient, he or she is hereby notified that any dissemination, distribution, >> printing, forwarding, >> or any method of copying of this information, and/or the taking of any action >> in reliance on >> the information herein is strictly prohibited except by the intended >> recipient or those to whom >> he or she intentionally distributes this message. If you have received this >> communication in >> error, please immediately notify the sender, and delete the original message >> and any copies >> from your computer or storage system. Thank you. >> ================================================================= >> >> >> No virus found in this message. >> Checked by AVG - www.avg.com <http://www.avg.com> >> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 > > > No virus found in this message. > Checked by AVG - www.avg.com <http://www.avg.com> > Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 21 September 2016
by Terri Agnew Sept. 22, 2016

Sept. 22, 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 September 2016 at 21:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/sAO4Aw MP3: http://audio.icann.org/gnso/gnso-rpm-review-21sep16-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<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 21 September 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group held on Wednesday, 21 September 2016 at 21:00 UTC Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Maxim Alzoba (FAITID):Hello All Philip Corwin:Hello. I'm dialing in Vaibhav Aggarwal:'Morning folks Kathy:Hi All! Paul McGrady:Good M/A/E! Kristine Dorrain - Amazon Registry:Greeting all, apologies for being late. Phil Marano (Mayer Brown):Indeed, it is sixty days notice either way. Marina Lewis:Hi all...sorry to be joining late. George Kirikos:Not sixty days notice, but 60 days minimum total period. Kurt Pritz:@ George: Did I say "60 days notice"? George Kirikos:@Kurt: I was responding to Phil Marano's statement in the chat. Paul Tattersfield:Are registry reserved names excluded from a sunrise period? And if so do the reserved names have to be related to purposes or running a registry (other than ICANN mandated reserved names?) Kurt Pritz:ok - whew Maxim Alzoba (FAITID):what was intended for protection of local small TMs who were not included into TMCH? Phil Marano (Mayer Brown):Put another way, either way, folks are aware of the sunrise period for sixty days. Maxim Alzoba (FAITID):@Paul, for GEOs we had to reserve things like POLICE for local police depts George Kirikos:I think the Calzone.org had a calendar of new gTLD program "events" --- one can probably go back and create the data (or just ask the registries directly) re: ALP / QLP. Maxim Alzoba (FAITID):QLP of 100 names for cities of few K of street names was not enough Maxim Alzoba (FAITID):ALP did not work at all ... remember .madrid Kathy:For these slides, can Staff take control of slides? David Tait:Kathy, Phil asked for them to be scrollable Paul Tattersfield:thanks Maxim Kathy:David, I thought it might help us read the slide... Maxim Alzoba (FAITID):PPT needs to be reformatted (smaller fonts?) David Tait:"Identical matches" means a domain name label is an identical match to the trademark, meaning that the label must consist of the complete and identical textual elements of the trademark in accordance with section 4.2.1 of the Clearinghouse Guidelines. For example, if the Trademark Holder's trademark is AB, then the domain name label that is applicable must be AB for it to be deemed an Identical Match. If the Trademark Holder's Trademark label is èé, than the identical label is èé and not ee."Premium names" - a registry operator may reserve certain premium names for later release (after the Sunrise Period) at its sole discretion. Registry operators may classify generic terms as premium names, and, in that event, such names are not available for registration during the Sunrise period even if they are the subject of a trademark record."Reserved names" - a registry operator may reserve a domain name from registration as allowed by Specification 9, Registry Operator Code of Conduct, Section 1 David Tait:1(b), of the New gTLD Registry Agreement."Landrush"- Land Rush is the commencement of the "go live" period of a new TLD launch where the registry begins accepting live domain registrations from registrants through registrars. Paul Tattersfield:text is now cut off here as well was ok before David Tait:"Trademark Clearing House-verified trademarks" means all marks accepted and verified by the TMCH. These will be accepted from (i) nationally or regionally or registered trademarks; (ii) court-validated marks; and (iii) marks protected by statute or treaty. The verified trademark data will support both trademark claims and sunrise services required for all new gTLDs. In addition, the Clearinghouse may accept and verify other types of marks upon the request of registries. Mary Wong:Sorry for the formatting/display issues David Maher:APOlogies for being late David Tait:"Sunrise Period" - a pre-launch phase providing trademark holders the opportunity to register domain names in a gTLD before registration is made generally available to the public. David Tait:"Sunrise pricing practices" - the current TMCH fee structure includes Sunrise services for all new gTLD Sunrise periods, not just one. David Tait:"Sunrise process" - A process in which owners of Legal Rights have the opportunity to register domain names before the Landrush process open to the public. Registries that used a Sunrise Process identified the Legal Rights on which a Sunrise Process registration could be based. Greg Shatan:Which brings up back to do, do, do, do. Greg Shatan:up = us. Maxim Alzoba (FAITID):QUESTION: Please add questions of ALP, QLP where these periods in need of review? Rebecca Tushnet:Are we going to address TMCH eligibility for marks separately? Josh Partington:Hi all, sorry to join late Kristine Dorrain - Amazon Registry:Rebecca, this slide show is just about sunrise (we discussed the TMCH as an entity last week). We have a whole list of charter questions regarding the TMCH apart from sunrise. :) David Tait:We're trying to put up a better version George Kirikos:It seems that most of the sunrise periods are producing fewer than 1000 registrations. Is it really "working" as intended? Rebecca Tushnet:Thanks, Kristine--I must have missed the separate questions there. Paul Keating:Sorry for being late. Maxim Alzoba (FAITID):why the rights are to be extended beyond what is protected by law? George Kirikos:If "variants" were allowed, someone with a low value mark of "Appl" might try to register the superior domain "variant" of "Apple". George Kirikos:Flickr ---> Flicker Greg Shatan:You can't register a domain for a TM=50 string in Sunrise. Maxim Alzoba (FAITID):no it is too easy to be gamed George Kirikos:Agreed, too easy to be gamed. Paul Keating:yes, they sh ould NOT. The tm registration during sunrise is registration. The notice is corrective/preventative. Edward Morris:(on adobe only). Is it possible to expand the charter questions to include some of the underlying TMCH questions concerning TM scope in the sunrise period? Two I have in mind: 1. When the TM registered in the TMCH database is a generic or descriptive word, and sunrise is used for registering that mark as a domain name completely unrelated to the goods and service category of TM protection, is that fair for other/future/potential DN registrants. 2. (and related) should Sunrise rights be limited to the categories of goods and services of the TM? (still trying to get on audio - apologies) Maxim Alzoba (FAITID):@Edward, nodoby reads the chat Greg Shatan:How would you game that? You need to win a domain name dispute in order to get a TM+50 TMCH regn. Marina Lewis:I don't think TM owners should be the ones to register multiple variations of their marks - I think the TMCH should expand the claims service to include near-identical domains. George Kirikos:Are we seeing more UDRP/URS filings from companies that didn't register in sunrise periods? Or are they from companies that did register in sunrise, but then the variants got registered? (we'd need to compile data, and cross-reference their registrations) Maxim Alzoba (FAITID):it is possible to grab mark via affiliated company and to go to the local court Kristine Dorrain - Amazon Registry:Maxim, we do!!! Maxim Alzoba (FAITID):hmm ... my question on QLPs ALPs was not read :) Mary Wong:@Ed, that's one thing the co-chairs are asking that WG members do (review the Charter questions). Your suggestions - like the last bullet point on the next-to-last slide (which was a suggestion from the co-chairs) - can be added to the list for consideration by the WG. Edward Morris:@Maxim. As our wonderful audio service is not working here in northern England at the moment I hope that is not true! Greg Shatan:Maxim, you have a rich and vivid imagination. Kathy:@David and Mary: we are seeing an array of questions in the chat room - can you add them to our Notes and Actions? David Tait:Ed, can we do a dial out to you? George Kirikos:Raise your hand, to join the queue. Maxim Alzoba (FAITID):not able to speak (1am) Marina Lewis:In my experience, most TM owners aren't interested in acquiring domains during sunrise for their own use. It's usually a cost-benefit issue: is it cheaper to register this domain or fight to wrestle it out of the hands of a cyberaquatter? If the answer is yes, then it make sense to register the domain defensively. Edward Morris:@Phil. Technical problems here: If you could consider my question as well I'd be greatful. Maxim Alzoba (FAITID):yes bradley silver:+1 to Marina's response Mary Wong:Yes we are noting the additional suggested questions Maxim Alzoba (FAITID):@Greg , cost of litigation in some countries is lower than UDRP Edward Morris:@ Mary. Thank you! Mary Wong:We have information on which registries offer a QLP but don't have data on how much they are used - for this we will have to approach each individual registry operator. Kristine Dorrain - Amazon Registry:I note that ALP and QLP are not really RPMs. They offer the registry a chance to promote the TLD. Not to counter Maxim's question, but just a thought... Maxim Alzoba (FAITID):QLP is an addendum to RPMs George Kirikos:@Marina: plus, a markholder will also need to assess whether the damage from the cybersquatting is too minor to litigate or defensively register. Given the lack of traffic most of those domains receive, it's likely not worth pursuing most of them (i.e. minor irritants). Paul Keating:Phil, I t hink he is referencing post registration use. Maxim Alzoba (FAITID):ALP was intended to be a way for GEOs and alike to have special rules (for example for protection of small local business too in addition of TMCH) George Kirikos:If it's a US TM holder, it'd be smarter to use the ACPA and seek $100K in statutory damages, rather than waste time on URS/UDRP. Do it a few times, and that'll deter cybersquatting. Kristine Dorrain - Amazon Registry:Maxim, I don't disagree. I just note that neither one is there to protect brands. Maxim Alzoba (FAITID):@Kristine , the point is , we review things relevant to RPMs Marina Lewis:@George - agreed, with the additional comment that this is often an unknown at the time of registration. The TM owner has no way of knowing whether the domain will be used for a pay-per-click site or (God forbid) a child porn site. Sometimes it's safer to just cough up the money for the registration fee. Scott R. Austin:Is there an equivalent of a "legislative history" of the concerns or business goals for registries that the LRP, ALP and QLP were created to address? George Kirikos:Right, Marina. I think that's why some markholders see the potential scaremongering as a "protection racket", i.e. "if you don't register, then ......." Edward Morris:Thanks Kathy. George Kirikos:Do we have anyone here from CSC or MarkMonitor? It seems they drive a lot of the sunrise registrations, so might have insights to share. Marina Lewis:@George +1 Maxim Alzoba (FAITID):do we see situations with TMCH entries for companies who made only one shipment to be acredited as gaming?(proof of use) Paul McGrady:@Kathy, what if it were for a site for presidential vehicles? I was just at the Henry Ford Museum and there is a huge display. :) George Kirikos:(there are a few other "corporate" registrars, but those 2 are the largest I think) Netnames, and a few others also might have insights. Kathy:Henry Ford - that's a good example too! Phil Marano (Mayer Brown):@Paul or for a president's day sale :) Kathy:@Paul: I think this is a very important area for discussion. Paul Keating:@Phil. I think that a "use" requirement should be incorporated to preserve a sunrise registration. Paul Keating:ALSO, what eveidenc eof "actual use" does the TMCH require? Edward Morris:Thnks Phil. Kathy:@Paul, is this a question you would like to add to our questions list? Mary Wong:@PaulK - thisis what the TMCH says about proof of use: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Paul McGrady:@Kathy - interesting for sure. would be more straighforward if there was a GPML (since we are looking at flaws in the current system). :) George Kirikos:It shouldn't apply to "all gTLDs", given there's no notion of "premium names" in com/net/org, etc. Paul Keating:I am fine with it being a question to be considered Paul Keating:I do not however feel it should be chainged Paul Keating:VERY good quesetion Edward Morris:Agree with Rebecca. Marina Lewis:Re Rebecca's question, I think "rights" as used in RPM does specifically refer to IP rights, yes? Mary Wong:@Paul K - can you restate the question? Is it whether the use requirement should be reviewed? Kathy:@Mary, can we add PaulK's question regarding exploration into use and Rebecca's question on pricing and what rights it protects to our Notes and Actions for future evaluation? George Kirikos:If "Verizon.TLD" or "EXXON.TLD" were listed as premium domains, i.e. fanciful marks, then it's more likely to be abusive. Paul Tattersfield:depends on the strength of the business rather than the strength of the mark sometimes Paul Keating:@Paul, is that not the result of the trademark being a "generic" term? Maxim Alzoba (FAITID):Are we into requlation of pricing? I thought it is not regulated , at least ICANN says they are not into this business Mary Wong:@Kathy,@Paul K - can one of you restate Paul's question? Is it to review the use requirement, or something more specific about what is required to show proof of use Maxim Alzoba (FAITID):or apple? George Kirikos:Perhaps placing a cap on how many domains can be declared "premium" would reduce the potential for that abuse. Vaibhav Aggarwal:@Jeff Your voice is not clear Scott R. Austin:@Paul M +1 Mary Wong:@Paul M - short of searching a number of trademark databases and comparing them to each registry's list of premium names, how would we get the data? Kathy:@Mary: how about a general question asking the WG to further explore "use" and the types of proof used by the TMCH/Deloitted Vaibhav Aggarwal:As per Key Terms & Definitions - the price needs to be Defined too Vaibhav Aggarwal:@Rebeca Your example is not the right Comparison Vaibhav Aggarwal:Unresonable Pricing is definitly an Abuse of the System and poisiton. Infact it can be classified in Monopolistic Business Practices Vaibhav Aggarwal:+1 Phil George Kirikos:To the extent that a registry operator raises the registration price, it reduces the odds that anyone will register the domains (which means a cybersquatter won't grab them). Paul KEATING:gouged is not prevented. Vaibhav Aggarwal:As a TM owner I am authorised to get a Normal Domain Name Pricing George Kirikos:Although, in some sense the markholder might claim that it's now the registry itself that is being the "cybersquatter". Paul KEATING:so if a trademark registration with the PTO cost 10,000 it would be unfair?. Scott Harlan:Agree that it is relevant. There is also the issue of timing of the notification that a name is premium, which often occcured after a Sunrise order was placed and was close to the end of the relevant Sunrise Period. This either foreclosed the Sunrise period for those names or made it less effective. Paul KEATING:this issue is NOT resolved. Vaibhav Aggarwal:Yes they are Infriginng at least w.r.t. the to teh registered TMs Paul Tattersfield:Couldn't we just say that all sunrise names can not cost more than general release prices? George Kirikos:Some domains like Cars.blog are 6-figures per year, I believe. Vaibhav Aggarwal:+1 Marina Paul KEATING:no Paul, we cannot limit pricing. Terri Agnew:next call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Groupis scheduled for Wednesday, 28 September 2016 at 16:00 UTC for 60 minutes. George Kirikos:But, that's likely due to the inherent value of the term "cars", not some markholder for 'cars'. Phil Marano (Mayer Brown):Pricing aside, premium names tend to be registry reserved names, which are generally exempt from sunrise and claims services, depending on when it is released for registration per RPM Requirements Section 2.4.3. David Tait:That is correct David Tait:1600 UTC Vaibhav Aggarwal:Thanks Guys khouloud Dawahi:16utc George Kirikos:Bye everyone. Maxim Alzoba (FAITID):bye all Scott Harlan:By "it" was referring to the issue of "premium names" Kathy:And TM Claims Overview next week Steve Levy:Thanks all! Vaibhav Aggarwal:How is the Asia Pacific Participants Getting Accomodated ? Its 0330 AM in New Delhi Marina Lewis:thanks all!! Vaibhav Aggarwal:Ciao Guys Paul KEATING:thanks all. good night khouloud Dawahi:thank you all . Vaibhav Aggarwal:Night

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RPM Working Group call 21/09/2016: Notes and Actions
by David Tait Sept. 21, 2016

Sept. 21, 2016

Dear All Please find attached the notes and action’s from today’s Working Group (WG) call. The notes and actions are as follows: There was an extensive walk through of Sunrise Registrations through the TMCH. Thereafter the following additional possible questions were raised for discussion by WG participants: · How often are SMD files compromised and have to be revoked? How prevalent is this as a problem? · Does this mean we have no idea how many LRP registrations were made available and in which registries? · Is there really no data on additional voluntary mechanisms? e.g. ALP · Please add questions of ALP, QLP where these periods in need of review? · Is it possible to expand the charter questions to include some of the underlying TMCH questions concerning TM scope in the sunrise period? (1) When the TM registered in the TMCH database is a generic or descriptive word, and sunrise is used for registering that mark as a domain name completely unrelated to the goods and service category of TM protection, is that fair for other/future/potential DN registrants? and (2) (related) Should Sunrise rights be limited to the categories of goods and services of the TM? · Is there any evidence of 'gaming' e.g. of registering a number of valuable trade mark names under the sunrise period of marks to which they do not have a traditional legal claim? · What is the relationship between premium pricing and trademark rights? To what extent do premium names correspond to registered trademarks? · Further explore "use" and the types of proof required by the TMCH The next working group meeting with take place next Wednesday 28 September 2016 at 1600 UTC. Kind regards, David 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

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Further Note on Sunrise Periods
by Mary Wong Sept. 21, 2016

Sept. 21, 2016

Dear all, you may also wish to note the following page, maintained by ICANN, that lists the respective Sunrise Periods for each New gTLD registry operator, along with any additional voluntary mechanisms (such as Limited Registration Periods) offered by each registry: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, September 22, 2016 at 06:53 To: David Tait <david.tait(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: RPM Working Group call 21/09/2016: Notes and Actions Further to the notes sent by David (below), please note that staff has updated the slide deck from today with the suggested additional questions, and posted it to the Working Group wiki space here: https://community.icann.org/x/sAO4Aw. Please review the added slides to make sure that we have accurately captured your suggestions, and let us know if we inadvertently missed a suggestion you made on the call that was just held. 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: David Tait <david.tait(a)icann.org> Date: Thursday, September 22, 2016 at 06:09 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Cc: Mary Wong <mary.wong(a)icann.org> Subject: RPM Working Group call 21/09/2016: Notes and Actions Dear All Please find attached the notes and action’s from today’s Working Group (WG) call. The notes and actions are as follows: There was an extensive walk through of Sunrise Registrations through the TMCH. Thereafter the following additional possible questions were raised for discussion by WG participants: · How often are SMD files compromised and have to be revoked? How prevalent is this as a problem? · Does this mean we have no idea how many LRP registrations were made available and in which registries? · Is there really no data on additional voluntary mechanisms? e.g. ALP · Please add questions of ALP, QLP where these periods in need of review? · Is it possible to expand the charter questions to include some of the underlying TMCH questions concerning TM scope in the sunrise period? (1) When the TM registered in the TMCH database is a generic or descriptive word, and sunrise is used for registering that mark as a domain name completely unrelated to the goods and service category of TM protection, is that fair for other/future/potential DN registrants? and (2) (related) Should Sunrise rights be limited to the categories of goods and services of the TM? · Is there any evidence of 'gaming' e.g. of registering a number of valuable trade mark names under the sunrise period of marks to which they do not have a traditional legal claim? · What is the relationship between premium pricing and trademark rights? To what extent do premium names correspond to registered trademarks? · Further explore "use" and the types of proof required by the TMCH The next working group meeting with take place next Wednesday 28 September 2016 at 1600 UTC. Kind regards, David 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

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Agenda for RPM Review Working Group call on 21 September
by Mary Wong Sept. 21, 2016

Sept. 21, 2016

Dear all, As with the presentation and discussion last week on the TMCH, the proposed agenda for the Working Group call scheduled for this week is as follows: 1. Roll call (via Adobe Connect and phone bridge) and updates to Statements of Interest 2. Overview and discussion of Sunrise Periods 3. Overview and discussion of the associated Working Group Charter questions 4. 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: David Tait <david.tait(a)icann.org> Date: Wednesday, September 14, 2016 at 22:32 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Cc: Mary Wong <mary.wong(a)icann.org> Subject: Agenda for RPMs Dear All The co-chairs have formed the view that the next three weeks will be an important planning time as we review the TMCH, Sunrise Period and TM Claims and their Charter questions -- and plan a path together forward. In light of this today’s meeting will adopt the following format: (1) Overview and discussion of the TMCH; and (2) Overview and discussion of the associated Charter questions. Kind regards, David 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

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Notes and Outcomes from Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group meeting 14 Sep 2016
by David Tait Sept. 15, 2016

Sept. 15, 2016

Dear All Please find below the notes and actions arising from today’s meeting. The Working Group (WG) was provided with an extensive overview of the TMCH and its functioning. ACTION: (i) WG participants are strongly encourage to provide information on their experiences and any particularly cases they can provide information on to assist the WG's deliberations, and (ii)Additional possible questions to be shared on mailing list for consideration. The WG then undertook a ‘deep dive' on the TMCH related Charter questions proposing the following additional questions: · TMCH goes into the legality of a trademark too much, this is the responsibility of the trademark owners and their attorneys. · TMCH should act as a nodal agency only without rendering any determination on the legal validity of marks. It should have no discretion. · Questions have been raised about costs beyond those advertised upfront on the TMCH page e.g. renewals through agents and deposits, the WG should work on the true cost of registration. · Has there been 'gaming' or abuse observed in relation to the TMCH? · How are marks which have and have not undergone substantive review been differentiated in the TMCH? · From those jurisdictions which do not provide for substantive review of the mark are any further procedures or analysis undertaken by the TMCH? The next WG meeting will take place on Wednesday, 21 September 2016 at 21:00 UTC and will focus on the Sunrise period. 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

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

Sept. 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 September 2016 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/jBysAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-14sep16-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 14 September 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 14 September 2016 at 17:00 Terri Agnew:wiki agenda page: https://community.icann.org/x/jBysAw George Kirikos:Hi folks. George Kirikos:This might be the first time I logged in before Petter. :-) Petter Rindforth:Congratulations! George Kirikos:lol It's hard to beat your record of early arrivals. ;-) George Kirikos:Can we unlock the slides, so that we can browse them ourselves? susan payne:sorry, I think that was me George Kirikos:*6 to mute/unmute susan payne:oh, maybe not just me Martin Silva Valent:Hi all Steve Levy:Hello all! Elizabeth Featherman:Hi everyone! susan payne:I hardly know where to start :) David Tait:Can do kathy David Tait:Will do Kurt Pritz:Did we / Should we ask Deloitte to present? Vaibhav Aggarwal:this should b skipped as this is legal in nature George Kirikos:The "use" here can easily be gamed, i.e. "token use" or "de minimus" use that wouldn't actually rise to the level to grant trademark rights, see: http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-use… Vaibhav Aggarwal:this is not unquestionably different so lure George Kirikos:(I made this point on the mailing list a couple of weeks ago) David Tait:I dont think so Kathy Vaibhav Aggarwal:plural nature if diff should b allowed Vaibhav Aggarwal:problem is that the TMCH should I n,y a repository and be an agency nodal to check validity of trade mark Vaibhav Aggarwal:not become a statutory agency Greg Shatan:Sorry to join late; was watching the IANA Transition Senate hearings. Vaibhav Aggarwal:the senate intelligence committee. is also interested in the process :-) though IANa is irrelevant to this group George Kirikos:Can we unlock the slides, so we can scroll back? George Kirikos:Thank you. David Tait:I've unlocked them unless kathy has an objection Kathy Kleiman:great George Kirikos:The reason those "validations" exist are due to the gaming issue, i.e. where folks use TMCH to claim domains in sunrises. If that benefit of TMCH registration was removed, it would simplify things immensely, and eliminate the incentives for that gaming. Kristine Dorrain - Amazon Registry:Vaibhav, the TMCH is only a repository. Kristine Dorrain - Amazon Registry:It does only check validity... Kristine Dorrain - Amazon Registry:George contends that validity check can be gamed, which is a different issue, but the TMCH does not grant anyone rights. George Kirikos:That's false, Kristine. You get sunrise access, being in the TMCH, see #2 of http://www.trademark-clearinghouse.com/content/reasons-record-your-marks-tr… Kristine Dorrain - Amazon Registry:Yes, that's the reason you put your marks in. But you don't get a TM because you put a mark in. George Kirikos:Eliminate #2, and a lot of problems disappear. Steve Levy:Sunrise access does not grant any TM rights. Even a domain acquired through gaming sunrise is subject to UDRP George Kirikos:For a generic domain name, you defend it without having to point to a de minimis TM. George Kirikos:The key is to get to it first. Jeff Neuman:I am confused by Kathy's intervention. You can have multiple entries for any mark in the TMCH Greg Shatan:There's no such thing as a "generic domain name." George Kirikos:And so, if you can get priority access via a piece of paper, folks will game the system to get that piece of paper. George Kirikos:Greg: I meant, for valuable strings, like common dictionary words, short acronyms, etc. Jeff Neuman:As you can see, it is very difficult to separate the TMCH as a database from the Sunrise and TMCH susan payne:@George, there is a sunrise dispute process in addition to the UDRP Dominic DeLuca(FORUM):If a Registry is allowing this "gaming" to take place, would that be a possible use for the PDDRP? Greg Shatan:Those may be "generic" in the hands of one registrant and valuable trademarks in the hands of another registrant. George Kirikos:e.g. "ASK" in the class of "Plectrums" for the .EU sunrise: https://eu.adr.eu/adr/decisions/decision.php?dispute_id=2438 Vaibhav Aggarwal:we can make more relevant use of the "repository" if v reduce the cost and encourage the TM owners just deposit the TM claims irrespective of the d Omani name activity - that will take care of the long term use of the repository and cut on the time and energy of the right parties or serious applicants John:If we are talking about issues relating to becoming a TMCH agent, we should also look at the terms of the contract to be an Agent which are prohibitive (in addition to the cost) Vaibhav Aggarwal:+1 John susan payne:John, don't disagree with you but would you mind identifying yourself Kathy Kleiman:Vaibhav is that a new or old hand? Vaibhav Aggarwal:old Vaibhav Aggarwal:sorry Greg Shatan:There's no reason ASK cannot be a valid trademark if it meets the appropriate criteria. The DRP panel you link to found that it was, and that respondent violated complainant's rights (and a bad actor generally) and duly transferred the domain name. Vaibhav Aggarwal:in the car chauffeur is a little rough John:@Susan - McElwaine: I entered just my first name once and Adobe is not automatically using that :) susan payne:hello Jeff Neuman:I dont believe allocation of names outside the Sunrise Process is in the scope of this PDP (except to the extent that those allocation mechanisms are inconsistent with the RPMS) Dominic DeLuca(FORUM):Thanks, Jeff. Vaibhav Aggarwal::-) George Kirikos:Obviously fanciful marks like "EXXON" or "VERIZON" are considered the strongest. Vaibhav Aggarwal:so for the business of registrations ncrease, TMCH could act as a way to promote business and also assist the applicants George Kirikos:We need to get raw access to the TMCH database, and can see how many of them are of the strongest type, compared to those that are questionable (like the "ASK" example in the .EU sunrise). Terri Agnew:@Greg, check your mute Vaibhav Aggarwal:@George how will TMCH act in reference to TM by common law Vaibhav Aggarwal:is TMCH responsible for the decision in sunrise? Vaibhav Aggarwal:if not then who is ? Petter Rindforth:I have seen more URS cases where the complainant referred to their TM rights and use in a traditional way, rather than a registration at TMCH Josh Partington:George, is this issue really strength of the marks in the TMCH or is it the "legitimacy" for lack of a better word? Vaibhav Aggarwal:+1 JEFF Kristine Dorrain - Amazon Registry:+1 Jeff Vaibhav Aggarwal:emerging markets Josh Partington:In the ASK case, my quick read is that the conclusion was the Benelux registration was obtained for the purpose of using the sunrise period as opposed to a legitimate trademark right Vaibhav Aggarwal:and developing countries / jurisdictions George Kirikos:Josh: well, if we're talking about sunrise, then I think only fanciful marks should have protection. Of course, illegitimate 'marks' should never be in the repository to begin with. George Kirikos:But, that requires stronger validation. Vaibhav Aggarwal:+1 JEFF Renee Reuter:Although a term can be used as a generic term, if it is registered as a trademark,it should be given the same protection as any other registration in the TMCH Rebecca Tushnet:That's not really true re: infringement--Apple has a narrower scope than Xerox even though they are quite strong. Vaibhav Aggarwal:not just in the US but in all Viena Agreement countries Phil Marano (Mayer Brown):It would be helpful to understand how the charter question re "losing legitimate opportunities", which appears twice in the slides incidentally, relates to the TMCH itself, as opposed to Sunrise versus Claims. Much of the discussion today seems to conflate these three separate concepts. Kristine Dorrain - Amazon Registry:But all brands are subject to being the victims of cybersquatting....we do not get to decide if a mark is strong. In the US that requires a stringent legal test. Greg Shatan:We have no business selecting among valid registered trademarks . George Kirikos:If we're not a "legal authority", then why are we granting these TMs special rights here to begin with? :-) i.e. leave it to the courts. Vaibhav Aggarwal:book Silk Route by Anupam Chander by UCDavis will answer that Rebecca Tushnet:Just note that "treat everything alike" means that, functionally, Apple has more rights over unrelated uses than Xerox does. Renee Reuter:Many jurisdictions, not just the US, have stringent legal tests before a registration is granted. Vaibhav Aggarwal:if staff can share the abstract from it Kathy Kleiman:Jeff, is your hand still up? Kristine Dorrain - Amazon Registry:Yes, Renee, I only wanted to speak to my personal knowledge... :) susan payne:taken my hand down. it's been said Jeff Neuman:@Greg - I agree we should not distinguish between registered trademarks in general. Marie Pattullo:The TMCH does not have the legal authority to question national TM registration and grant procedures, and neither should it have. That's why we have courts. George Kirikos:The test is whether all marks (regardless of strength) should be granted equal access to the sunrise period (i.e. the main benefit of TMCH registration). In my view, no. Marie Pattullo:Disagree, George. A TM is a TM. George Kirikos:I disagree, Jeff. If we're going to give certain companies first dibs on certain domains, we should weigh the costs/benefits of that decision for each type of domain/mark. Jeff Neuman:Only whether the decision to accept trademarks from jurisdictions that do not perform substantive review was the right choice. And we would need data to prove or disprove Jeff Neuman:Only whether the decision to accept trademarks from jurisdictions that do not perform substantive review was the right choice. And we would need data to prove or disprove\ Phil Marano (Mayer Brown):@Greg, well said re arbitrary marks. susan payne:agree it is not our job to re-write TM law Vaibhav Aggarwal:@jeff that s unfair to the authority granting the mark George Kirikos:e.g. the "cost/benefits" of granting "EXXON" first dibs are much different than the cost/benefits of giving "ASK" (for Plectrums) first dibs. susan payne:no George they are not Terri Agnew:next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 21 September 2016 at 21:00 UTC for 60 minutes. George Kirikos:For arbitrary marks, there are many non-infringing users of that word. So, the "costs" of granting a markholder first dibs is high. Vaibhav Aggarwal:thanks Kathy lovely Martin Silva Valent:Great meeting!!!! I learned a lot! George Kirikos:Bye folks. Greg Shatan:I don't think that should be called a "cost." Martin Silva Valent:Thanks to everyone George Kirikos:It's an opportunity cost, Greg. Phil Marano (Mayer Brown):Goodbye all. George Kirikos:A narrow benefit to one firm, vs. costs that are incurred by othes, who don't get that access. David Tait:Just as a reminder that the GNSO RPMs survey closes on 15 September please complete it https://s.zoomerang.com/r/CL3MJLL Josh Partington:So the owner of a registration for an arbitrary mark should be on the same footing as anyone else? Greg Shatan:I recommend reading McCarthy on Trademarks. Vaibhav Aggarwal:thanks George Kirikos:Although, registry operators are capturing that value, simply by calling those domains "premium" -- they don't care if a markholder gets it, or a non-markholder, as long as they get paid. Greg Shatan:It's a little long.... :-) David Tait:Thanks all! Steve Levy:Thanks all George Kirikos:Bye folks. Salvador Camacho Hernandez:Thanks to everybody

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Agenda for RPMs
by David Tait Sept. 14, 2016

Sept. 14, 2016

Dear All The co-chairs have formed the view that the next three weeks will be an important planning time as we review the TMCH, Sunrise Period and TM Claims and their Charter questions -- and plan a path together forward. In light of this today’s meeting will adopt the following format: (1) Overview and discussion of the TMCH; and (2) Overview and discussion of the associated Charter questions. Kind regards, David 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

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