February 2017 - GNSO-RPM-WG

Re: [gnso-rpm-wg] [Ext] RE: Second table summarizing TMCH Charter questions, relevant input and potential follow up
by Mary Wong Feb. 8, 2017

Feb. 8, 2017

Hello Massimo and everyone, The topic of geographical indications may be something the Working Group can discuss following up with Deloitte about. What you see in the table is the exact text of the response that was received from Deloitte. - note, however, that it was not in response to a specific question about geographical indications, since that was not something we had asked them. The specific question to which that answer was provided related to the number of “[o]ther marks that constitute intellectual property and meet a registry's individual requirements" (for comparison with court-validated and registered marks). I hope this helps. Cheers Mary From: Massimo <Massimo(a)origin-gi.com> Date: Tuesday, February 7, 2017 at 11:04 To: Mary Wong <mary.wong(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo(a)origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com[origin-gi.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=…> [witter][twitter.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetw…>[inkedin][linkedin.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_compa…>[ogos_youtubeBin1][youtube.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_o…> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up Dear all, Following on the circulation of the previous summary table of the questions, input and discussions so far on TMCH Charter Questions categories 1 and 2 (below), please find attached a similar summary table for the remaining categories (3 – 6). As the Working Group has yet to begin discussing these, staff has taken the liberty of adding what we believe to be relevant background information from the community comments to the TMCH that were provided for the 2015 RPM Paper. We will post both tables to the Working Group wiki for your easy reference as well. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "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: Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators Dear all, As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies). Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions. We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following: · What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH? · What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58? Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions. The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Resp…<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_do…>. 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

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Proposed agenda and documents for Working Group call on 8 February 2017
by Mary Wong Feb. 8, 2017

Feb. 8, 2017

Dear all, The proposed agenda for our next Working Group meeting, scheduled for 8 February 2017 at 1800 UTC, is as follows: 1. Roll call (via Adobe Connect and telephone bridge only); updates to Statements of Interest 2. Review staff table for Categories 1 & 2, with a view toward agreement on follow up with Deloitte or for other data/input required 3. Commence review of staff table for Categories 3 – 6 4. Update on Working Group sessions at ICANN58 5. Next steps/next meeting The tables to be reviewed under Agenda Items #2 and #3 have been circulated previously via email. You can also find them on this page of our Working Group wiki space: https://community.icann.org/x/_pHRAw. 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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TMCH Blog
by Jon Nevett Feb. 6, 2017

Feb. 6, 2017

FYI -- for those who haven't seen this blog: https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so… The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens <https://www.thedomains.com/author/michael-berkens/> 5 Comments <https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so…> The Trademark ClearingHouse (TMCH) <http://www.trademark-clearinghouse.com/> which was set up/ contracted by ICANN to protect those famous worldwide brand names from abuse by those nasty domain name squatters resulted in a whole new industry. Those playing the TMCH for their own benefit to get first jump at new gTLD domain names to get registered in Sunrise ahead of all other under common words like “the” Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the word”the”, which is the most used word in the English language <https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com owns an amazing amount of domain names approaching nearly 100, but was able to get all of the following new gTLD’s using their globally well-known trademark on the word “the” under the ICANN trademark clearinghouse rules which allows them to obtain the domain names ahead of all other applicants. Of course the company could have had obtained even more “the” new gTLD domain names in Sunrise but apparently did not apply for more. Somehow the company doesn’t appear to own the domain name The.Com For all Trademark Holders its nice to know the world is a safer place: the.car the.career the.cars the.casino the.doctor the.earth the.foundation the.furniture the.game the.group the.ltd the.mba the.pub the.report the.run the.school the.services the.storage the.tools the.university the.watch the.wine

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ICANN58 sessions for our Working Group
by Mary Wong Feb. 3, 2017

Feb. 3, 2017

Dear all, Although the sessions and timings are not yet confirmed, staff thought it would be helpful for your schedule and travel planning to let you know that we have requested the following slots at the upcoming ICANN58 Public Meeting in Copenhagen: · Saturday 11 March 2017 (10.00 – 13.45 local time, with a brief break for lunch): 3-hour face-to-face Working Group meeting; and · Wednesday 15 March 2017 (09.00 – 10.30 local time): Open community session We will try to confirm the final slots as soon as we can. As many of you know, ICANN meeting schedules are very tightly packed, so these slots were requested following coordination with colleagues supporting other Policy Development Processes, Cross Community Working Groups and other projects of interest to the GNSO community. Please be assured that we have tried to avoid clear conflicts as best we can. As with all Working Group sessions at ICANN Public Meetings, all our sessions will be open to anyone to attend and observe, and will be recorded and transcribed. For those who will not be participating in person in Copenhagen, there will be remote participation via an Adobe Connect virtual meeting room, live audio stream and telephone bridge (though please note that these will be in the “ICANN meeting format” and so will have different set ups than our weekly calls – we will send out these details closer to the meeting date). Finally, to help me try to minimize the likelihood that we will encounter the same “seating shortage emergency” that we had in Hyderabad, it will be helpful if you can let me know if you plan to be at our sessions in Copenhagen in person – please reply off-list to me directly rather than to this list. Thank you! 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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Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators
by Mary Wong Feb. 3, 2017

Feb. 3, 2017

Dear all, As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies). Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions. We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following: · What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH? · What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58? Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions. The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Resp…. 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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Role of the TMCH and proof of use (Re: TMCH Blog)
by Mary Wong Feb. 3, 2017

Feb. 3, 2017

Hello everyone, As the group continues to discuss questions that have arisen in relation to possible “gaming” and proof of use, staff thought we should highlight the following extracts from the 2015 RPM Paper that was prepared by ICANN. The final version of the Paper was published in September 2015, and it summarized the feedback received from the community on the draft that had been issued for public comment in February 2015. The Paper acknowledged the possibility of gaming occurring via Sunrise due to the TMCH’s accepting marks from some jurisdictions that might grant trademark protection for so-called generic words or other highly-sought after terms. Nevertheless, the stated principle is that rights-holders globally will undergo the same validation process regardless of where the marks were registered: “[the] Clearinghouse processes are designed to verify trademark information as it has been issued by the authorities in the various jurisdictions; the Clearinghouse does not play the role of trademark examiners. The [TMCH] Guidelines are designed for review of trademark submissions according to a standard that does not favor one jurisdiction over another.” (see pp. 31-33 of the Paper, which you can find in full on our Working Group wiki page: https://community.icann.org/x/4SWAAw) Regarding proof of use, the Paper noted community feedback on challenges with satisfying the requirement. Some commenters to the draft version of the Paper thought the requirement was too strict, as the same evidence of use sufficient for renewal with the relevant jurisdiction was not always adequate for what the Clearinghouse verification process required. A specific example given was the rejection of samples containing extra text, since the sample must contain the exact name of the registered trademark as recorded in the trademark record. Others had difficulty with submitting samples that were not yet commercialized (although registered), and yet others found the process too time-consuming. In terms of suggestions for improving the process for submission of proof of use, the Paper listed specific suggestions that included adding an electronic signature option for declaration of use, and providing exemptions for specific countries from being required to submit proof of use when such evidence is already approved by the relevant jurisdiction. On a more general note, many of the topics, questions and suggestions described in the Paper are likely to be relevant to our work in this PDP. Staff will continue to highlight them as well as specific community feedback as appropriate, though you may like to read the full paper for yourself if you have not done so already. I hope the above notes are helpful, especially for the Working Group’s evaluation of the TMCH verification criteria, and, possibly, the proof of use requirement. Thanks and cheers Mary On 2/2/17, 14:55, "gnso-rpm-wg-bounces(a)icann.org on behalf of Brian F. Cimbolic" <gnso-rpm-wg-bounces(a)icann.org on behalf of BCimbolic(a)pir.org> wrote: Folks: I feel like we've gotten off on quite a tangent (or 10), at least in relation to the original post. Without arguing the fundamentals of what a trademark is or what rights it bestows, is there anyone out there who thinks that the example in the blog is how the TMCH is intended to work? Allowing this registrant/mark holder to obtain those "the.example" names seems absolutely exploitative. To say that "any system can be gamed, so why bother fixing it" - that analysis works for any number of examples this group will come across (premium pricing of sunrise domains comes to mind) and doesn't advance the conversation constructively. To me the question is, is this exploitation something that we should look at fixing or addressing within this group? Brian Brian Cimbolic Deputy General Counsel, Public Interest Registry Office: +1 703 889-5752| Mobile: + 1 571 385-7871| www.pir.org | Facebook | Twitter | Instagram | YouTube Confidentiality Note: Proprietary and confidential to Public Interest Registry. If received in error, please inform sender and then delete. -----Original Message----- From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 2:47 PM To: George Kirikos <icann(a)leap.com>; gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog One trademark registration in most countries costs significantly more than $10. -----Original Message----- From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:43 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans(a)adobe.com> wrote: > The evidentiary weight of a trademark registration differs from > jurisdiction to jurisdiction. In the US, a certificate of registration > from the USPTO does have some proof value, that is subject to certain > defenses for 5 years and a lesser set of defenses should the mark > reach incontestable status after 5 years. I think making sweeping > statements like those contained in your closing paragraph are not helpful. I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIFAw&… _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Feb. 1, 2017

Feb. 1, 2017

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, 18 January 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/JZ3DAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-18jan17-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/wCWAAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 18 January 2017: Terri Agnew 2:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 18 January 2017 at 17:00 UTC for 60 minutes. Terri Agnew 2:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi everyone. Paul Tattersfield:Hi George, Everyone Ivett Paulovics:Hello everyone, greetings from Italy. Maxim Alzoba (FAITID):Hello All Paul Tattersfield:For people not able to attend the meeting ICANN publishes the .mp3 - I was wondering if it would be possible for ICANN to publish a recording of the meeting? George Kirikos:Hi Paul. How's it going? Paul Tattersfield:So those not able to attend could 'watch' the meeting i.e. see the slides and audio in real time while listening to the audio Mary Wong:@Paul, do you mean a live stream? George Kirikos:@Paul: I think they tecnically can save the Adobe sessions. Not sure if they've been doing that, though. Paul Tattersfield:Yes Mary George Kirikos:*technically, even Paul Tattersfield:something like https://urldefense.proofpoint.com/v2/url?u=https-3A__helpx.adobe.com_adobe-… perhaps? Mary Wong:@Paul, during ICANN meetings there's usually a live audio stream (but not for regular WG meetings outside the ICANN meeting) Paul Tattersfield:that's a good way to describe what I was thinking George 'save the session' Maxim Alzoba (FAITID):do we need to log in again? Philip Corwin:I am attempting to call in Philip Corwin:When I call in the recording starts, cuts out, then drops me. Maxim Alzoba (FAITID):skype to 1800 usually works Paul Tattersfield:It would really improve the experience for those not able to attend the calls because of TimeZone considerations I was thinking Maxim Alzoba (FAITID):I meant to one of the toll free phones in US Philip Corwin:Just requested a dial out George Kirikos:@Paul / @Mary: See https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org_en_me… for how they've been archived in the past. Terri Agnew 2:We are having the dial out to Phil Philip Corwin:Thx Terry. Awaiting call Terri Agnew 2:Phil has joined on audio Philip Corwin:I am now connected by phone Lori Schulman:Hello. Sorry that I am late. WIPO:We have tried over a dozen times, and keep getting dropped from the line before an operator comes on. Kristine Dorrain - Amazon Registry Services:Me too Renee Fossen (Forum):same WIPO:We have (finally) made it on the call. Philip Corwin:Same here -- co-chairs get same treatment ;-) Kristine Dorrain - Amazon Registry Services:Switched to speakers for now...no mic. will keep trying to call. George Kirikos:Probably too many meetings scheduled at noon Eastern time. If we were to schedule the call at 11:45 am Eastern, probably easier for everyone to get on..... Alternatively, if there was an automated way to get on (i.e. with individual PIN codes), instead of requiring human intervention for each caller. Terri Agnew 2:I am having the operator report his issue on joining audio Terri Agnew 2:Please let me know if a dial out on the telephone is needed Beth Bacon:I also had an issue dialing in. The line kept disconnecting. Terri Agnew 2:@Beth, I am sending you a private AC chat George Kirikos:For 1.(iii) do these options even exist at present? George Kirikos:(i.e. the TMCH might clearly communicate that those options don't exist) :-) Mary Wong:@Phil, that was the point staff had wondered too - how would people know if they can't search the database? Mary Wong:There was a lot of community feedback - to the 2015 RPM Staff Paper - about inconsistencies and difficulties with submissions into the TMCH. Susan Payne:perhaps you could share paul's comments since he did not send to the list Mary Wong:@Susan we will follow up with Paul. George Kirikos:Since the underlying TMs are public, it's difficult to justify why the TMCH recordals are not public. Kathy Kleiman:Tx Beth, I think that's exactly what we are looking for (i) and (ii) Lori Schulman:Because what you chose to record can be part of an underlying proprietary stategy...which marks may have more value or be part of a greater enforcement plan George Kirikos:Remember, that people are registering common terms like "pizza" into the TMCH, see: https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014… Maxim Alzoba (FAITID):in russian case it was more generic IDN name for "we" Mary Wong:I believe TM holders and agents have to provide the relevant description of goods and services according to the Nice classification, as well as registration number and jurisdiction, when submitting a registered TM. Kathy Kleiman:Mary: can we add what Phil just said to our Notes -- are there any troubles for multiple registrations of the same TM string by multiple trademark owners? Mary Wong:@Kathy, I'll double check the transcript and add, yes, thank you. Maxim Alzoba (FAITID):for example one company has right for "special kind of boots" in France and the other in China? Mary Wong:The TMCH Guidelines provide a sample of a signed Declaration of Use, but specifically for a sample of proof of use, it's not an exhaustive list (meant to be flexible) Maxim Alzoba (FAITID):but if a person sends only one existing item in the world to the only customer (nis neighbour) is it a valid proof of use? Susan Payne:Would it be helpful for us to pull out the comments submitted to the staff RPMs review of examples of problems. Would the Implementation Review also have anything relevant on this - apologies I do not recall? George Kirikos:*6 to mute/unmute Jonathan Matkowsky - RiskIQ:I'm not muted Terri Agnew 2:@Jonathan, your mic isn't active Kathy Kleiman:@Mary: could you kindly add the words "piecemeal approachand clarity of proof of use Maxim Alzoba (FAITID):I think we disconnected from bridge (adobe users) Terri Agnew 2:to activate your mic, top tool bar, telephone icon and follow prompts Jonathan Matkowsky - RiskIQ:I can type my comment Jonathan Matkowsky - RiskIQ:Not sure what the problem is with the mic, sorry about that Kathy Kleiman: @Mary... to the NOtes. I think it will help peopel remember this discussion. Mary Wong:@Susan, we have a link to the public comments and staff summary for the 2015 paper. I will check if I've uploaded it to the wiki. Jonathan Matkowsky - RiskIQ:I am on Adobe connect Jonathan Matkowsky - RiskIQ:In any case, I just wanted to promote transparency in the process Jonathan Matkowsky - RiskIQ:Perhaps an analogy can be made to prosecution of a specimen in the USPTO David McAuley (RySG):yes Maxim Alzoba (FAITID):a screenshot of the website (anyone can create one with offers of somethings non-existent) is a valid proof of use? https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Kristine Dorrain - Amazon Registry Services:Can anyone weigh in on the process over time? did people experience troubles early on? did people have the same troubles recently? Did the issues change, get better, get worse? Was there a learning curve that the TMCH needed? Mary Wong:The contract is not published, but there is a summary framework that was published - I will try to find it. George Kirikos:If one eliminated proof of use, one would need to balance that with reduced benefits for TMCH recordals. Personally, the TMCH could be entirely eliminated if each national TM office had an automated API (some appear to have one, e.g. see aggregated search sites like TMview, https://urldefense.proofpoint.com/v2/url?u=https-3A__www.tmdn.org_tmview_we… George Kirikos:(registrars could then query national TM offices via APIs, and create the "notice" that way to domain name registrants) Marie Pattullo:@George: TMView is great, as a work in progress. It's still being developed (moved over to the ECP in the EUIPO) but it's really not reliable at the moment. Also TMView would never have the technical capability to interact with the registries. Mary Wong:Summary of Validation Framework agreement (Deloitte): https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_… Lillian Fosteris:Kristine - I'd say the TMCH has been inconsistent in how stringent it is in its review of each TMCH registration (both errors in the TMCH submission and then whether the POU was accepted or not). For example, a lot of marks were marked as "Incorrect" a year after the marks were submitted and accepted to the TMCH. In some cases, there were errors in the TMCH information submitted originally and in other cases, the POU was marked as insufficient (even though it had been approved originally). So, I'd say a little bit of learning at the beginning, but generally an issue with consistency across marks and time. George Kirikos:@Marie: right. Perhaps the money would be better spent making that system more reliable (a "carrot" by ICANN to national TM offices), rather than trying to duplicate and reinvent things via the TMCH. Mary Wong:Summary of Database Framework agreement (IBM): https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_… Lori Schulman:Not all TM offices requre proof of use upon initial registration Jeff Neuman (Valideus):@Kathy - You state "a llot of frustration in the community". Can you point to a source where the community has stated that they are frustrated? Lori Schulman:US is an outlier I think. It's been a while since I have done global registrations but I recall that standards vary from jurisdiction to jurisdiction Maxim Alzoba (FAITID):I wonder how transparent is a secret contract with ICANN (conflict of interests potentially exists) ? George Kirikos:Right, Lori. The "benefits" for TM holders would need to be scaled back accordingly (i.e. no more "first dibs" in sunrise). Jonathan Matkowsky - RiskIQ:Broad stakeholder discussions took place to develop the proof of userequirement, intended to ensure that all registered trademarks are treated equally inorder to be eligible to participate in Sunrise periods. Requirements related to proof usemay be taken into account as a larger topic for consideration in policy development andother community discussions. Lori Schulman:George, that is not the point. The point is that unique proof of use for sunrise makes sense since global practice varies. Jonathan Matkowsky - RiskIQ:This is from the 2015 Rights Protection Mechanisms Review Revised REport Marie Pattullo:@George - it's already funded but by the EUIPO - many, many carrots have been held out to the NPTOs under the new EUTMR and this is one of them... ;-). George Kirikos:i.e. if the goal of the TMCH is simply to reduce cybersquatting, increased notice to prospective registrants is a sufficient safeguard. Jumping to the front of the line (which is a "benefit" diminished in many ways due to "premium" pricing by registry operators in any event) should be an entirely separate discussion (one that I don't see as justified). Jonathan Matkowsky - RiskIQ:There's no mention of the concern of transparency or inconsistency George Kirikos:@Lori: I agree with you. George Kirikos:Since the average number of sunrise registrations is around 300 or so, the "actual" benefits to those companies routinely registering in all gTLDs (e.g. Apple, Microsoft, Google) are really small, when you think about it. Marie Pattullo:5 years to prove use in the EU. George Kirikos:*actual benefits overall, I mean (I'm sure those 300 companies like jumping to the front of the line) George Kirikos:Presumably the TMCH goes to shows run by folks like INTA, etc. to drum up business (i.e. "educate"). Kurt Pritz:Proactive: The TMCH conducts webinars for agents and also for individual TLDs to announce their sunrise periods David McAuley (RySG):very feint George Kirikos:Volume low for Kristine. David McAuley (RySG):that is better sound George Kirikos:Here's what a TMCH notice looks like: https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014… It doesn't seem to link to the TMCH itself for further details, etc. George Kirikos:(I don't register new gTLDs, so I've never seen one personally) Kristine Dorrain - Amazon Registry Services:For sake for arguement: Education about notices still seem odd. The TMCH didn't write it. They are providing a token to the registrar who then displays a form notice. Mary Wong:Note that we have a specific Charter question (in a subsequent category) about outreach, at least w.r.t. developing countries: "How accessible is the TMCH Database and RPM Rights Protection Actions and Defenses to individuals, organizations and rights-holders; as well as trademark agents in developing countries?" Kristine Dorrain - Amazon Registry Services:Yes, Susan, +1, thats that I was saying. Maxim Alzoba (FAITID):ICANN's part of TMCH? Lori Schulman:My response dove tails Susan's. I think that end users who receive notices probably do need education. Lori Schulman:But not necessarily TMCH Kristine Dorrain - Amazon Registry Services:but the TMCH is a rather neutral provider of data. I think training for registrants would fall on ICANN, as directed by the community. Maxim Alzoba (FAITID):the language of the claim notice is horrible Lori Schulman:doing the training Lori Schulman:TM owners would agree that the language is horrible. Not clear. Lori Schulman:Confusing and inconsistent. Kristine Dorrain - Amazon Registry Services:and how do you provide notice without giving legal advice Susan Payne:Kathy - that sounds like relevant feedback - perhaps you could ask them to subbmit it to the WG if we are to take it into account Jonathan Matkowsky - RiskIQ:https://urldefense.proofpoint.com/v2/url?u=https-3A__www.google.com_… Mary Wong:That is the final input from the Implementation Asssistance Group for the TMCH, I think Mary Wong:(Jonathan's link, I mean) George Kirikos:With ICANN staff away for their retreat, etc. next week, are we having a call next Wednesday? Mary Wong:2012 Mary Wong:This is the IAG Kathy Kleiman:Tx for the link! Mary Wong:That document has been uploaded to the TMCH information page on the WG wiki :) Paul Tattersfield:@George isn't it at the new time of 4.00am GMT? Terri Agnew 2:Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 25 January 2017 at 04:00 UTC for 60 minutes. Maxim Alzoba (FAITID):most people can not read in English , and it is a must to use it in the claim notice George Kirikos:So, that'll be Tuesday night Eastern time. Mary Wong:Staff will be available to staff the call but NamesCon may be a bigger problem Mary Wong:TMCH informational page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… (IAG report is the final entry under Operational Requirements) Kristine Dorrain - Amazon Registry Services:What was the result of the straw poll staff sent around? George Kirikos:I'd vote to skip it....maybe have a vote? Susan Payne:unless we have no chairs I think we should proceed Griffin Barnett:@Maxim, I thought that Claims notices must be presented in English as well as the language of the domain name registration agreement but staff or others may be able to confirm this George Kirikos:Skip = Agree, Don't skip = disagree. Kristine Dorrain - Amazon Registry Services:Nevermind. the straw poll was for a differnt group Mary Wong:@Griffin, correct Beth Allegretti:I'd also vote to skip it because of NamesCon Lori Schulman:George is multitasking... Maxim Alzoba (FAITID):if the first part in English - most do not scroll Susan Payne:why would we skip? routinely some people cannot make calls but we don't cancel Kristine Dorrain - Amazon Registry Services:Agree to proceed George Kirikos:I can make it....won't affect me. Maxim Alzoba (FAITID):and the wording in rpm requirement - in English and in other language Paul Tattersfield:Agreee proceed Mary Wong:0400 UTC George Kirikos:Tuesday night eastern time (0400 UTC Wednesday) Maxim Alzoba (FAITID):bit early for EU Mary Wong:Evening/night for North America, daytime for APAC Terri Agnew 2:20:00 PST (Tuesday), 23:00 EST (Tuesday), 04:00 London,05:00 CET Kathy Kleiman:Our first meeting at the AP-friendly time. David McAuley (RySG):Thanks Phil, staff, all Jonathan Matkowsky - RiskIQ:Have a great day everyone! Kristine Dorrain - Amazon Registry Services:thanks all1 George Kirikos:We should monitor the AP attendance next week, to see if folks from that region show up en masse. George Kirikos:(if not, perhaps rethink the time)

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Proposed agenda and materials for Working Group call on Wednesday 1 February 2017
by Mary Wong Feb. 1, 2017

Feb. 1, 2017

Dear all, The proposed agenda for our next Working Group meeting, scheduled for 1 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Summary of TMCH Category 1 discussion, including from the Working Group meeting last week (see further below) 3. Introductory discussion of TMCH Category 2 (see https://community.icann.org/download/attachments/58729944/Clean%20-%20TMCH%…) 4. Commence review of Deloitte’s response to the TMCH Data Gathering Sub Team’s questions, with a view toward additional follow up if needed (document circulated via email on 30 January, also available on the Working Group wiki at https://community.icann.org/x/_pHRAw) 5. Next steps/next meeting For Agenda Item #2, the following points and questions were highlighted in the discussion last week, for further discussion by the Working Group in relation to TMCH Charter Question 2 from Category 1 (Education): “Should the TMCH be responsible for educating rights-holders, domain name registrants and potential registrants about the services it provides? If so, how? If the TMCH is not to be responsible, who should be?” · Is it ICANN's responsibility rather than the TMCH's? Who else should be educated besides rights-holders? · TMCH has incentive and opportunity and has already reached out to its direct customers; but would mandating education raise fees? Not necessarily since they already have the materials · Should it be a community effort? How is this to be mandated (if at all)? · There is a limit on the extent of education a TMCH can provide on Sunrise, given the different types of Sunrise and the choices that a registry have on how to operate them. · Registries also have the option to extend the Claims Period, so they can do the education; maybe with ICANN as a "backup" if the registries and registrars do not. Note, however, that it is registrars who have the customer relationships. · How would it work (if the TMCH is to be responsible for education) if there are multiple TMCH providers in the future? · Look at how TMCH has done education in the past; ask if these communications were effective SUMMARY OF OPTIONS DISCUSSED: (1) ICANN to be neutral educator (at the very least, prepare materials?) (2) TMCH (and to extend beyond rights-holders) (3) Community efforts (4) A “hybrid model” of TMCH + ICANN (e.g. TMCH can post official materials on their site, created by ICANN. Note, however, that TMCH has no way of telling customers of any registry or registrar what their experience will be) 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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