March 2017 - GNSO-RPM-WG - lists.icann.org

Poll to Determine Day for 4th UTC 03:00 Working Group Call
by Amr Elsadr April 3, 2017

April 3, 2017

Dear Working Group Members, Per our discussion on the last working group call on Wednesday, 29 March, please follow the link below to a poll concerning the rotating working group call (once every 4 calls) at UTC 03:00. Please indicate whether you would like to keep this call on Wednesdays at UTC 03:00, or move it to Thursdays at UTC 03:00. http://doodle.com/poll/uuvgwxfzt462r7as Thanks. Amr

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FOR FEEDBACK: Updated Work Plan and moving to longer weekly calls
by Mary Wong March 31, 2017

March 31, 2017

Dear all, In addition to the Action Items circulated by Amr, you may wish to review the draft updated Work Plan for the remainder of Phase One of our PDP work. This has been updated slightly following the meeting on Wednesday, when a suggestion was made that we try to alternate Sub Team meetings with full Working Group calls, to alleviate the burden on those Working Group members participating in the Sub Teams and in consideration of the fact that we are – for the present, up to ICANN59 – moving to mostly 90-minute (and occasional 120-minute) calls. A few Working Group members noted during the Wednesday call that, while we need to make progress on our work and this can be facilitated by having longer calls, the decision to move to 90 or 120 minute calls should be made in consultation with the full Working Group. As such, please reply to the mailing list if, after reviewing the draft updated Work Plan, you have any objections to moving to longer calls from now up to ICANN59. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Amr Elsadr <amr.elsadr(a)icann.org> Date: Friday, March 31, 2017 at 11:47 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] IMPORTANT - Action Items and Notes, Review of all RPMs for all gTLDs Working Group Call - 29 March 2017 Hi, Below, you will find the action items and notes for the Review of all RPMs for all gTLDs working group call held on 29 March 2017. Also, attached is a document with an updated TMCH Next Steps Table, incorporating the below action items and notes in it. Also, please note that as per action items 12.a and 13 below, a call for volunteers to join the 3 subgroups on sunrise registrations, trademark claims and additional voluntary protection mechanisms will be circulated shortly, as well as a doodle poll to determine whether the monthly UTC 03:00 call should remain on Wednesdays or be shifted to Thursdays. Please keep an eye out for both emails. Thanks. Amr Action Items: 1. Q7 (Design Marks) – WG to formulate question requesting Deloitte to provide aggregated, anonymized data about trademark owners submitting one mark, five marks, higher numbers, and frequency 2. WG will return to substantive discussion on Q7 (Design Marks) and Q8 (Geographic Indications) together when further information is shared by Deloitte on Q7 3. Q9 (TM+50) - Proceed as suggested by WG leadership team - Close this question unless something new is raised 4. Q10 (Matching Rules) - Defer discussion on this question until The Analysis Group has had an opportunity to present its findings on this question to the WG 5. Q11 (Categories of Goods and Services) - Consider this question along with each of the RPMs associated with the TMCH when the WG has them on its agenda 6. Q12 (Operational Considerations) - Defer decision on costs to the implementation phase following the policy development phase, but communicate to the implementation team that the working group did consider whether competition would lower costs, whether the single provider model is the most efficient and effective for stakeholders, and that apart from costs, feedback on the quality of Deloitte’s service from an operational perspective to-date has been positive 7. Q13 (Costs and Benefits) - Proceed with WG leadership team suggestion - table question until the end of the RPMs discussion 8. Q14 (Accessibility) - Close question, as per data currently on-hand 9. Q15 (Transparency/Confidentiality) – Request information from Deloitte on whether there are any legally or contractually binding provisions on Deloitte in relation to transparency/confidentiality of the TMCH? 10. Q16 (Balance of Scope) - Proceed as suggested by WG leadership - table question until the end of the RPMs discussion 11. Categories 1 and 2 – Refer to the TMCH Next Steps Table (in the document attached to this email), and provide thoughts/comments/questions on-list on how to proceed with these questions, taking into consideration the staff notes. 12. Create 3 Subgroups (sunrise, claims and private services): a. On-list call for volunteers/chairs for each of the 3 sub-teams b. Working Group leadership and staff will work on a template to assist in scoping the mandate of each of the subgroups – circulate drafts to the full WG for discussion c. Rotating purpose of calls, so that calls on one week provide opportunity for subgroups to report to the full working group, followed by a call the following week for the WG at-large to discuss progress 13. Set up poll to be circulated to WG email list before end of week on duration and changes in times/days of 4th rotational meeting time of 0300 UTC. Notes: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Follow up from ICANN58 discussions: 1) Discuss co-chairs’ proposals regarding completion of TMCH Charter questions: i. Q7 (Design Marks) – further discussion after Deloitte sends further response ii. Q8 (Geographic Indications) – GI entries in TMCH are included when/if they are marks protected by statutes/treaties, regardless of whether or not they are registered trademarks a) Consider whether or not trademarks protected by statute/treaty should remain in the TMCH, if they are not registered trademarks b) Design marks and trademarks protected by statute/treaty should be considered separately c) Clarity on why marks protected by statute/treaty (how are those defined) are being included in the TMCH, despite recommendations from the GNSO and ICANN Board regarding limiting inclusion to registered trademarks d) ACTION ITEM: WG will return to substantive discussion on Q7 and Q8 together when further information is shared by Deloitte on Q7 iii. Q9 (TM+50) – ACTION ITEM: Proceed as suggested by WG leadership team – Close this question unless something new is raised a) No substantive remarks on why TM+50 should be limited or expanded b) No indication that TM+50 is being abused iv. Q10 (Matching Rules) – Defer discussion on this question until The Analysis Group has had an opportunity to present its findings on this question to the WG v. Q11 (Categories of Goods and Services) – This question, despite having been subject to discussion, will require further consideration in light of letter from EFF and co-signatories a) ACTION ITEM: Consider this question along with each of the RPMs associated with the TMCH when the WG has them on its agenda vi. Q12 (Operational Considerations) – Suggestion to defer decision on costs to the implementation phase a) Of relevance may be that parties other than Deloitte have had interest in the past to conduct validation portion of the TMCH function b) ACTION ITEM: WG to note to implementation team that the question of cost was considered, and that competition might lower costs, and whether the single provider model is necessarily the most efficient and effective for stakeholders c) Delays due to multiple contractors may affect timeline (delays) for a second round of new gTLD applications – consideration of this is required d) Not necessarily true that second round be postponed while all policy/implementation efforts on RPMs are concluded vii. Q13 (Costs and Benefits) – Proceed with WG leadership team suggestion – table question until the end of RPMs discussion viii. Q14 (Accessibility) – Close question, as per data currently on-hand ix. Q15 (Transparency/Confidentiality) – Still an open question (currently no WG consensus) a) Information in the TMCH is a subset of publicly available information accessible elsewhere b) If costs of TMCH entries are lowered, possible to include all trademarks as opposed to subset – could solve problems regarding TMCH transparency c) Discussions held by the Implementation Assistance Group (IAG) did not adequately consider transparency of TMCH d) Registry representatives were advocates for TMCH transparency, but convinced otherwise (refer to STI and IAG for reasons cited at the time, as well as other resources) e) (Suggestion from the AC Chat) Jon Nevett: what about releasing a simple list of dictionary terms in the TMCH? Not opening up the entire database with all the records. f) Continue discussion on this question on-list and on future calls x. Q16 (Balance of Scope) – ACTION ITEM: Proceed as suggested by WG leadership - table question until the end of the RPMs discussion xi. ACTION ITEM: Categories 1 and 2 – Refer to the TMCH Next Steps table (in the document attached to this email), and provide thoughts/comments/questions on-list on how to proceed with these questions, taking into consideration the staff notes. a) ACTION ITEM: Call for requests for additional follow up on Deloitte’s data as presented at ICANN58 and on any other matters arising from ICANN58: a. Can we get from Deloitte aggregated, anonymized data about trademark owners submitting one mark, five marks, higher numbers, and frequency b. Regarding Q15 (Transparency/Confidentiality) is there anything legally or contractually binding on Deloitte in relation to transparency/confidentiality of the TMCH? 3. Agree on duration (call times) for meetings in April and May 2017: 1) No objection to continuing weekly calls on a 90-minute basis, noting that some may be 120 minutes as needed 4. Review proposed updated Work Plan and formation of Sub Teams for Sunrise and Claims Charter questions refinement: 1) Questions raised in charter and during meetings on private protections for trademarks (private voluntary protection mechanisms) 2) Create 3 subgroups: i. Sunrise ii. Claims iii. Private Services (Concern raised on whether or not private services are within scope of this PDP) iv. ACTION ITEMS: a) On-list call for volunteers/chairs for each of the 3 sub-teams b) Working Group leadership and staff will work on a template to assist in scoping the mandate of each of the subgroups – circulate drafts to the full WG for discussion 5. Confirm the appropriate day of the week for 4th rotational meeting time of 0300 UTC: 1) Suggestion to move this call to Thursday, so that these calls don't take place on Tuesday nights for those in North and South America 2) ACTION ITEM: Set up poll to be circulated to WG email list before end of week on duration and changes in times/days of calls.

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Call for Volunteers: Sub Teams to refine questions for consideration relating to Sunrise, Trademark Claims and Private Protections
by Amr Elsadr March 31, 2017

March 31, 2017

Dear Working Group members, As noted on the Working Group call that took place on Wednesday 29 March, three Sub Teams are being formed to refine (i.e. modify, edit, delete, clarify, or if necessary add to) the existing questions that were listed in our PDP Charter for Working Group consideration, and to present the proposed questions to the Working Group for review. Please reply to either Amr Elsadr or Mary Wong off-list if you wish to volunteer for one or more of the following three Sub Teams: · Sub Team for Sunrise Registrations · Sub Team for Trademark Claims · Sub Team for Additional Voluntary Protection Mechanisms (e.g. Protected Marks Lists and other protection mechanisms offered by New gTLD Registry Operators) Staff notes that, with respect to the third Sub Team, several Working Group members had noted that the scope of our PDP does not extend to reviewing the effectiveness of these additional voluntary RPMs. Staff will be working with the Co-Chairs to develop mandates for each Sub Team that will hopefully ensure that their work is limited to that which is within the scope of what our Working Group was chartered by the GNSO Council to do. For your reference, a list of the relevant questions that were included in our Charter for Sunrise and Claims, as well as some more general questions that were also included in our Charter, is attached. As with the initial Sub Team that refined the TMCH questions, the output from each Sub Team will be submitted to the full Working Group for its confirmation and review. Thanks and cheers Mary & Amr

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IMPORTANT - Action Items and Notes, Review of all RPMs for all gTLDs Working Group Call - 29 March 2017
by Amr Elsadr March 31, 2017

March 31, 2017

Hi, Below, you will find the action items and notes for the Review of all RPMs for all gTLDs working group call held on 29 March 2017. Also, attached is a document with an updated TMCH Next Steps Table, incorporating the below action items and notes in it. Also, please note that as per action items 12.a and 13 below, a call for volunteers to join the 3 subgroups on sunrise registrations, trademark claims and additional voluntary protection mechanisms will be circulated shortly, as well as a doodle poll to determine whether the monthly UTC 03:00 call should remain on Wednesdays or be shifted to Thursdays. Please keep an eye out for both emails. Thanks. Amr Action Items: 1. Q7 (Design Marks) – WG to formulate question requesting Deloitte to provide aggregated, anonymized data about trademark owners submitting one mark, five marks, higher numbers, and frequency 2. WG will return to substantive discussion on Q7 (Design Marks) and Q8 (Geographic Indications) together when further information is shared by Deloitte on Q7 3. Q9 (TM+50) - Proceed as suggested by WG leadership team - Close this question unless something new is raised 4. Q10 (Matching Rules) - Defer discussion on this question until The Analysis Group has had an opportunity to present its findings on this question to the WG 5. Q11 (Categories of Goods and Services) - Consider this question along with each of the RPMs associated with the TMCH when the WG has them on its agenda 6. Q12 (Operational Considerations) - Defer decision on costs to the implementation phase following the policy development phase, but communicate to the implementation team that the working group did consider whether competition would lower costs, whether the single provider model is the most efficient and effective for stakeholders, and that apart from costs, feedback on the quality of Deloitte’s service from an operational perspective to-date has been positive 7. Q13 (Costs and Benefits) - Proceed with WG leadership team suggestion - table question until the end of the RPMs discussion 8. Q14 (Accessibility) - Close question, as per data currently on-hand 9. Q15 (Transparency/Confidentiality) – Request information from Deloitte on whether there are any legally or contractually binding provisions on Deloitte in relation to transparency/confidentiality of the TMCH? 10. Q16 (Balance of Scope) - Proceed as suggested by WG leadership - table question until the end of the RPMs discussion 11. Categories 1 and 2 – Refer to the TMCH Next Steps Table (in the document attached to this email), and provide thoughts/comments/questions on-list on how to proceed with these questions, taking into consideration the staff notes. 12. Create 3 Subgroups (sunrise, claims and private services): a. On-list call for volunteers/chairs for each of the 3 sub-teams b. Working Group leadership and staff will work on a template to assist in scoping the mandate of each of the subgroups – circulate drafts to the full WG for discussion c. Rotating purpose of calls, so that calls on one week provide opportunity for subgroups to report to the full working group, followed by a call the following week for the WG at-large to discuss progress 13. Set up poll to be circulated to WG email list before end of week on duration and changes in times/days of 4th rotational meeting time of 0300 UTC. Notes: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Follow up from ICANN58 discussions: 1) Discuss co-chairs’ proposals regarding completion of TMCH Charter questions: i. Q7 (Design Marks) – further discussion after Deloitte sends further response ii. Q8 (Geographic Indications) – GI entries in TMCH are included when/if they are marks protected by statutes/treaties, regardless of whether or not they are registered trademarks a) Consider whether or not trademarks protected by statute/treaty should remain in the TMCH, if they are not registered trademarks b) Design marks and trademarks protected by statute/treaty should be considered separately c) Clarity on why marks protected by statute/treaty (how are those defined) are being included in the TMCH, despite recommendations from the GNSO and ICANN Board regarding limiting inclusion to registered trademarks d) ACTION ITEM: WG will return to substantive discussion on Q7 and Q8 together when further information is shared by Deloitte on Q7 iii. Q9 (TM+50) – ACTION ITEM: Proceed as suggested by WG leadership team – Close this question unless something new is raised a) No substantive remarks on why TM+50 should be limited or expanded b) No indication that TM+50 is being abused iv. Q10 (Matching Rules) – Defer discussion on this question until The Analysis Group has had an opportunity to present its findings on this question to the WG v. Q11 (Categories of Goods and Services) – This question, despite having been subject to discussion, will require further consideration in light of letter from EFF and co-signatories a) ACTION ITEM: Consider this question along with each of the RPMs associated with the TMCH when the WG has them on its agenda vi. Q12 (Operational Considerations) – Suggestion to defer decision on costs to the implementation phase a) Of relevance may be that parties other than Deloitte have had interest in the past to conduct validation portion of the TMCH function b) ACTION ITEM: WG to note to implementation team that the question of cost was considered, and that competition might lower costs, and whether the single provider model is necessarily the most efficient and effective for stakeholders c) Delays due to multiple contractors may affect timeline (delays) for a second round of new gTLD applications – consideration of this is required d) Not necessarily true that second round be postponed while all policy/implementation efforts on RPMs are concluded vii. Q13 (Costs and Benefits) – Proceed with WG leadership team suggestion – table question until the end of RPMs discussion viii. Q14 (Accessibility) – Close question, as per data currently on-hand ix. Q15 (Transparency/Confidentiality) – Still an open question (currently no WG consensus) a) Information in the TMCH is a subset of publicly available information accessible elsewhere b) If costs of TMCH entries are lowered, possible to include all trademarks as opposed to subset – could solve problems regarding TMCH transparency c) Discussions held by the Implementation Assistance Group (IAG) did not adequately consider transparency of TMCH d) Registry representatives were advocates for TMCH transparency, but convinced otherwise (refer to STI and IAG for reasons cited at the time, as well as other resources) e) (Suggestion from the AC Chat) Jon Nevett: what about releasing a simple list of dictionary terms in the TMCH? Not opening up the entire database with all the records. f) Continue discussion on this question on-list and on future calls x. Q16 (Balance of Scope) – ACTION ITEM: Proceed as suggested by WG leadership - table question until the end of the RPMs discussion xi. ACTION ITEM: Categories 1 and 2 – Refer to the TMCH Next Steps table (in the document attached to this email), and provide thoughts/comments/questions on-list on how to proceed with these questions, taking into consideration the staff notes. a) ACTION ITEM: Call for requests for additional follow up on Deloitte’s data as presented at ICANN58 and on any other matters arising from ICANN58: a. Can we get from Deloitte aggregated, anonymized data about trademark owners submitting one mark, five marks, higher numbers, and frequency b. Regarding Q15 (Transparency/Confidentiality) is there anything legally or contractually binding on Deloitte in relation to transparency/confidentiality of the TMCH? 3. Agree on duration (call times) for meetings in April and May 2017: 1) No objection to continuing weekly calls on a 90-minute basis, noting that some may be 120 minutes as needed 4. Review proposed updated Work Plan and formation of Sub Teams for Sunrise and Claims Charter questions refinement: 1) Questions raised in charter and during meetings on private protections for trademarks (private voluntary protection mechanisms) 2) Create 3 subgroups: i. Sunrise ii. Claims iii. Private Services (Concern raised on whether or not private services are within scope of this PDP) iv. ACTION ITEMS: a) On-list call for volunteers/chairs for each of the 3 sub-teams b) Working Group leadership and staff will work on a template to assist in scoping the mandate of each of the subgroups – circulate drafts to the full WG for discussion 5. Confirm the appropriate day of the week for 4th rotational meeting time of 0300 UTC: 1) Suggestion to move this call to Thursday, so that these calls don't take place on Tuesday nights for those in North and South America 2) ACTION ITEM: Set up poll to be circulated to WG email list before end of week on duration and changes in times/days of calls.

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew March 29, 2017

March 29, 2017

Dear All, Please find the attendance of the call attached to this email. The MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 29 March 2017 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/Jb-RAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-29mar17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p5s2obdl4pr/?OWASP_CSRFTOKEN=40844f1d049ed36d 8b5428de305871e4377fc5dc11a1c7741645e01567ccb573> https://participate.icann.org/p5s2obdl4pr/ 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/> 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 29 March 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 29 March 2017 at 16:00 UTC for 90 minutes Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_J b-2DRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ Jb-2DRAw&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSF pCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ 4Zc&s=-l9c8EI2nPORjs-iXPzH7hrwjBAauNtLgTxu70pBdqk&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=-l 9c8EI2nPORjs-iXPzH7hrwjBAauNtLgTxu70pBdqk&e= Poncelet Ileleji:Hello all George Kirikos:Hi folks. Monica Mitchell:hello everybody! Paul Tattersfield:Hello everyone Ankur Raheja:Hello Martin Silva Valent:Hi all, gonna be in another call for the firts minutes, I will join you as soon as I can. George Kirikos:Someone needs to mute (*6 to mute / unmute). Steve Levy:Hello all Yuri Chumak:greetings from Toronto Griffin Barnett:Need to attend another call at 12:30 but plan to remain in the AC room Philip Corwin:Good day. Nice to see that participation in this WG remains high. GraceM:Hi everyone Maxim Alzoba (FAITID):I have an update in my SOI (reflected in the portal), I have added RDS PDP WG, and RPM PDP WG to .12. of the SOI form Kathy Kleiman:Not raised now! Terri Agnew:everyone can scroll themselves Kristine Dorrain - Amazon Registry Services:Mary, you're fading in and out. Reg Levy - MMX:Mary, your voice is coming and going George Kirikos:Can we isolate who is causing the noise? Rebecca L Tushnet:Mary's still going in and out for me. Terri Agnew:finding the line George Kirikos:Thanks, Terri. Mary Wong:Sorry for bad audio Mary Wong:Think I fixed it now Paul Keating:hello all. Sorry I am late Terri Agnew:background noise is from J Scott's telephone line (on a train) George Kirikos:Phil has a hand up. Rebecca L Tushnet:I'm sorry, I'm missing what J Scott has proposed Paul Keating:someone needs to mute their phone or move to a quieter place please. Kiran Malancharuvil:@Paul, the chair is on a train. He can't mute. Terri Agnew:background noise is from J Scott's line (he is on a train) Paul Keating:ok thanks George Kirikos:@Rebecca: he said perhaps combining GIs/treaty marks with design/figurative marks. George Kirikos:i.e. combine 7/8 in some way, at least for discussion. Paul Keating:+1 George Kirikos:+1 Phil Greg Shatan:I've been cut off. And trying to get back in. Poncelet Ileleji:.+1 Phil Greg Shatan:Operator is not answering. Terri Agnew:alerting op Kiran Malancharuvil:+1 Kristine. Rebecca L Tushnet:+1 Kristine Terri Agnew:Greg is back on audio Colin O'Brien:+1 Kristine Kiran Malancharuvil:I appreciate the attempt at being more efficient, but they aren't easily combined Petter Rindforth:Let's not extending it too much. Then we will also have to consider other kinds of "name rights" - and there are some out there... ;-) Lori Schulman:Agree with Kristine. We are comparing apples to oranges I think. Paul Tattersfield:+1 Kristine George Kirikos:IGOs have certain blocking rights via Article 6ter, which are not trademarks, but have certain similarities, and they are expected to be added to the TMCH at some point. Kristine Dorrain - Amazon Registry Services:Greg, do we have an example of a mark that was entered under the "statute or treaty" section that is not actually a mark? George Kirikos:IGOs = Intergovernmental Organizations, e.g. UN, World Health Organization, World Bank, etc. Greg Shatan:@Kristine -- Geographic Indicators may be examples of items entered under the "statute or treaty" that are not marks. George Kirikos:Perhaps TMCH needs to be renamed to "Rights Clearinghouse" (RCH, if ICANN hasn't already reserved that acronym). :-) Kristine Dorrain - Amazon Registry Services:@ Greg, I can imagine a hypothetical, that's not the problem. I'm looking for an example. Maxim Alzoba (FAITID):UN is it an example of a such trademark? Greg Shatan:I would not necessarily expect 6ter entries to be added to the TMCH. Paul Keating:@Greg I agree with you. Scott Austin:Do we have any concrete examples of what "pseudomarks" have been permitted that are offensive or questionable Petter Rindforth:GAC has their own list of IGO's that does not follow Article 6ter Paul Keating:@Mary, I suggest we move forward as per Phil's sugestion. Deal with those we can deal with and all others are pushed. George Kirikos:@Maxim: UN is an example of a name protected by Article 6ter of the Paris Convention, see: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_article6ter _en_ <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_article6te r_en_&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCI gmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc &s=_pjRfljrooPIyfgGXT7pqV-OidVF8i0haW4j6Ma-GHU&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=_p jRfljrooPIyfgGXT7pqV-OidVF8i0haW4j6Ma-GHU&e= Maxim Alzoba (FAITID):@George thnx Kathy Kleiman:@Scott: no, we don't have specific examples. Only the number -75 accepted by Deloitte to date Philip Corwin:Was thinking the same as George -- given that TMCH already consists not just of TMs but of TM+50 terms, geo indicators, and statute and treaty marks, it's clear that there is a lot more than Trademarks in the TMCH Maxim Alzoba (FAITID):Intergovernmental Organizations have special separate protection under new gtlds RA .. with reference to https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org_en_resourc es_registries_reserved <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org_en_resour ces_registries_reserved&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5 cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmE fT25DrJDWYxkiMZ4Zc&s=951vgYaut_LzqbBYvwJW2S_lE5uvlmfEY17AwZIVmdQ&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=95 1vgYaut_LzqbBYvwJW2S_lE5uvlmfEY17AwZIVmdQ&e= ... do we need to discuss it here? Paul Keating:@phil, If we do not know what marks are in the database how can we determine there is no abuse? Greg Shatan:I don't agree that there' a lot more than trademarks in the TMCH. "Statute or treaty" marks were intended to be trademarks, and I don't think GIs (unless they are marks) were intended to be in the TMCH. George Kirikos:@Maxim: That's a separate working group, I believe, re: the IGOs reserved list. Paul Keating:@Mary please read my question Mary Wong:@Paul, sorry I didn't see it till now Paul Keating:+1 to delay until we know what the other group has concluded Maxim Alzoba (FAITID):I meant do we have other examples of items protected by statute or treaty .? Kathy Kleiman:Analysis Group should be joining us next week. Maxim Alzoba (FAITID):which have no protection Philip Corwin:@Paul--we can review the CPH transcript, but my recollection is that deloitte told us that only about 1% of all terms registered in the TMCH came in under the TM+50 exception.Assuming they are vetting them properly (determining they were won in litigation or a UDRP) there would be no abuse in the registration. Kathy Kleiman:@Mary, there is a request from Paul Keating to read his question... a page back. George Kirikos:e.g. .MAKEUP ($5,000/yr) would only allow beauty-related TMCH entries Paul Keating:added discussion. George Kirikos:Yes, more discussion needed. Paul Keating:ok Kurt Pritz:There was a fairly strong sentiment at the ICANN meeting that the single provider model was fairly strong Steve Levy:Are there other groups that have requested to be a clearinghouse? If there's no demand to provide this service is this question moot? George Kirikos:Single provider, vs. single validator? Paul Keating:Is tgere a WG dealing specifically with #12? Kurt Pritz:I think Phil summarized this at the meeting and could recall it here Maxim Alzoba (FAITID):+1 @George George Kirikos:ICANN has the right to audit Deloitte. They should exercise that right, to look at the financials. Kurt Pritz:I agree with George there George Kirikos:(as per Fadi Chehadi's blog post) Steve Levy:Thanks, Mary George Kirikos:*Chehade, even Paul Keating:Do we actaully know who is involved with Deloite? Who is CHIP? Jon Nevett:Definite sentiment of registries that the $5K per TLD pass through to Deloite was too high Kurt Pritz:CHIP was the developer of much of the software Paul Keating:I agree with J.Scott's suggestion George Kirikos:+1 Jon. Windfall, I think. An audit would reveal that sort of stuff. Maxim Alzoba (FAITID):+1 Jon Lillian Fosteris:+1 Jon Kurt Pritz:When we look at cost - we should look at all cost factors: Deloitte pricing, whether scope can be reduced, charges by others (e.g., agents) George Kirikos:Registries are complaining about losing money, yet want a 2nd round? Absurd. Mary Wong:@Kurt, I believe J Scott and others suggested that this WG doesn't look into the details of cost but make a general recommendation for addressing in implementation phase. Maxim Alzoba (FAITID):it looks like 2nd round is noting to be brands only George Kirikos:I think they want a 2nd round so that they can go back and rewrite the contract terms of the 1st round (i.e. a backdoor bailout). Paul Keating:@Mary I agree. We need to focus and this is something for which there appears to be a specific WG to deal with. Kurt Pritz:What did we decide on uestion 12 Mary Wong:@Kurt, I believe it was that operational and implementation concerns should be dealt with under implementation Paul Keating:is this ONLY about agents? Mary Wong:@Paul, I think J Scott was referring to Deloitte's note to us that they do not have information on where rights holders who use TM agents are located. George Kirikos:Definitely an open question. Paul Keating:Agreed continued discussions needed. NOW? or later? Kathy Kleiman:@Paul: interesting question. Would it be better to review #15 after the various rights protection mechanisms? Jeff Neuman:Everyone should also read the IAG report Mary sent around today. This was a group which had representation from the community that came to the conclusion that the data should be confidential. Paul Keating:Transperency is absolutely needed to continuously detemrine what is included and to audit how they are being used. Otherwise there is no ability to audit or have public debate. Michael R Graham:Sorry for the delay -- could not find call-in info. Thanks for the help! Paul Keating:The TMCH allows pre-emptive rights. Kiran Malancharuvil:+1 Susan Beth Allegretti:+1 Susan Kiran Malancharuvil:Correct Susan. Totally agree. Michael R Graham:+1 Susan bradley silver:+1 Susan Colin O'Brien:+1 Susan Griffin Barnett:+1 Paul Keating:I absolutely disagree with Susan (no offense) George Kirikos:It's Susan's choice to register a subset, as I noted. No one forced her to submit any, all, or a subset. J. Scott Evans:That is not my recollection at all. J. Scott Evans:on the IRT, kristina rosette argued that the data needed to be confidential George Kirikos:If the costs were a lot lower (as I've argued they would be), she could certainly choose to register all of Facebook's marks into the TMCh. Mary Wong:Staff note - neither the IRT nor the STI had a specific recommendation on confidentiality. Perhaps it was an assumption (one way or the other) and it was felt there was no need to specify? Susan Kawaguchi:@ George there is a much more work to entering trademarks into a database than the TMCH fee George Kirikos:@Susan: yes, but ultimately it's your choice. Kiran Malancharuvil:Perhaps, George, you can pose that as a question to the community. Instead of assuming, can you ASK whether cost would be a factor in registering entire portfolios? I can tell you that the answer will not support your hypothesis. George Kirikos:I had a second point I forgot to make orally. Most small businesses only have a SINGLE mark to protect. The folks who are complaining about the "subset inference" issue are global multinationals (i.e. the richest companies) --- less sympathy there, sorry. Griffin Barnett:Want to amplify Mary's point, above -- I am looking through the STI report and have not been able to find a reference one way or the other regarding open vs. confidential TMDB J. Scott Evans:That is my recollection as well. This was debated exhaustively on the IRT and STI Kiran Malancharuvil:George, I work with many small businesses and not for profits. It's incorrect that they only have one mark to protect. George Kirikos:TM holders make a choice whether to submit the marks into the TMCH, though. So, they can't complain about inferences being made, when those inferences are a result of their own choices. Mary Wong:@Jeff, I think it was Dakar and/or Singapore Michael R Graham:Confidentiality was a major subject of discussion in TMCH discussions. George Kirikos:@Kiran: true, many have zero marks. :-) Susan Kawaguchi:It would be interesting to hear what harm has. occured due to a closed database other than generic trademarks allowed. That is an issue to take up with governments that issues the trademark registration George Kirikos:No, 39 minutes. Jeff Neuman:Sorry for killing time, but i had to correct the record on when things were done and why George Kirikos:Is this just a scheduling call, then? Kiran Malancharuvil:Correct Susan. I think most of the harms articulated have nothing to do with the TMCH and everything to do with some of the registrations. Kiran Malancharuvil:I appreciated Jeff's comments of clarification. Jon Nevett:what about releasing a simple list of dictionary terms in the TMCH? Not opening up the entire database with all the records. Rebecca L Tushnet:Susan, it's not an issue for the issuing gov't because the mark may not be generic for the goods and services in the home registration; it just becomes all-encompassing in the TMCH. Philip Corwin:Given the strongly held views on this transparency/confidentiality question, I do not forsee us reaching consensus on this matter unless someone has a middle ground proposal they think may garner consensus. I would personally favor transparency but I respect the views of those arguing to the contrary. George Kirikos:#16 and #13 are essentially the same. Philip Corwin:@Jon--that option might be worth further discussion, IMHO Rebecca L Tushnet:+1 Philip Greg Shatan:@Jon, what would be the point of releasing "dictionary terms"? As trademarks, these are just as valid as coined terms. Griffin Barnett:+1Greg Terri Agnew:muting the line Jon Nevett:deal with the gaming concerns per Kiran's point above George Kirikos:We know from the Analysis Group report the top 10 most requested TMCH claims terms are all common dictionary terms used by many potential users. Maxim Alzoba (FAITID):@Amr is it possible to make history size of the chat window bigger? George Kirikos:Correct, anonymized. Just the number of marks, bucketed. e.g. 1500 companies registered 1 mark, 3000 registered 2 marks, 3 registered between 500 and 1000 marks, etc. Philip Corwin:On questions 13 & 16, I'm generally in favor of deep-sixing all the nebulous philosophical questions on the RPMs. We should be dealing with specific proposals for change. If anyone thinks the operations of the RPMs disadvantages some group they should propose a specific means of addressing that, not pose open-ended questions with no specific concrete remedy. Greg Shatan:@Jon, That's way overbroad to deal with "gaming" concerns. Although I note that "Donuts" is a dictionary term.... :-) Jon Nevett:Donuts is in the TMCH -- happy to be transparent about that Greg Shatan:Also a Simpsons term.... George Kirikos:We can possibly get a (recacted) copy of the contract between ICANN & Deloitte? Rebecca L Tushnet:Of course, agreements can be changed if the policy changes. Amr Elsadr:@Maxim: Does that help? George Kirikos:*redacted Jon Nevett:@greg do you think that there is a less overbroad way to deal with the gaming? Maxim Alzoba (FAITID):@Amr, can not say now .. some of the chat messages gone already George Kirikos:But, Deloitte's publication might be broader than the rights granted to them by ICANN. Amr Elsadr:@Maxim: You can't scroll up in the chat window? George Kirikos:i.e. Deloitte might be asserting confidentiality, when it might not actually exist. Lori Schulman:We never scream. Maxim Alzoba (FAITID):I thought Deloitte has rights for the contents of the TMCH Rebecca L Tushnet:presumably it's not confidential when there's a match on an attempted registration Lori Schulman:just emphatically make our points. :) Maxim Alzoba (FAITID):@Amr , yes Terri Agnew:everyone can scroll themselves Jeff Neuman:I believe that the Ts and Cs do require that the TMCH may only use the data for the purposes set forth in the desciption of the services Jeff Neuman:It is why they can disclose the data pursuant to a claim but for no other purposes Greg Shatan:That needs to be considered in the context of the expectation of confidentiality by registrants, except to the extent a single registration is released in a claims notice. Jeff Neuman:I believe that was also a recommendation from the IAG and others Amr Elsadr:@Maxim: As usual, transcripts of the chat will also be circulated following the call. Mike Rodenbaugh:dislike Steve Levy:I feel we should be able to get things done in 60 minute calls George Kirikos:Perhaps it should be on the mailing list. Poncelet Ileleji:+1 Kathy Kleiman:90 minute calls through the end of June. Lori Schulman:2 hours calls are too much Jeff Neuman:The license given by trademark owners to deloitte is very narrow. The data may not be used for any other purposes George Kirikos:Given that everyone here could obviously make it for 90 minutes -- biased sample. Kathy Kleiman:I think we are reevaluating after that... Maxim Alzoba (FAITID):120 seems to be much Lori Schulman:I am in favor of short calls but our need to discuss things seems to chew up time Phil Marano (Mayer Brown):You and we acknowledge that the information provided in the Trademark Records are predominantlycomprised of information owned or provided by Trademark Holders and informationthat is in the public domain (e.g. trademark registration numbers) and that any rights in theunderlying trademarks remain solely held by the applicable Trademark Holder. We representand warrant that we will not disclose or use any Trademark Record information for any purposeother than providing the services contemplated by this Agreement or as required by law. Phil Marano (Mayer Brown):https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dc learinghouse.com_sites_default_files_files_downloads_TMCH-2520terms-2520and- 2520conditions-2520-2D-2520Trademark-2520Agent-2520-2D-25201.1.pdf&d=DwICaQ& c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfq a0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=_u6QlnV8KLUA 4vQKLO61ZNMnKKztb5epUIvmSkSqP4A&e= Lori Schulman:Private lists like Donuts? Jeff Neuman:Thanks Phil Mary Wong:@Lori, yes Lori Schulman:I am not sure that is in scope. Paul Keating:@Mary, regarding the question to Deloite, please note that a "legal restraint" on disclosure of all or part of the database includes any legal restraint. Thus, if there is a statutue then that is stated. If it contractual then that is stated. However, a TOS on te TMCH or Deloite website is the creation of TMCH and is not a legal restricdtion preventing TMCH from disclosing all or a part. George Kirikos:Rightside has something like that, too, see: https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2017_ 03_28_rightside-2Dchanges-2Dbrand-2Dblocking-2Dservice-2Dnew-2Dtlds_ <https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2017 _03_28_rightside-2Dchanges-2Dbrand-2Dblocking-2Dservice-2Dnew-2Dtlds_&d=DwIC aQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9 Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=FrgGh02Y2 1FcFFKsELsL_hAR3lvaahg6h-faZyBZMWM&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=Fr gGh02Y21FcFFKsELsL_hAR3lvaahg6h-faZyBZMWM&e= Kathy Kleiman:Would one subteam work? Paul Keating:@JS can you please describe what is the scope of each subteam? Maxim Alzoba (FAITID):good idea Jeff Neuman:@Paul - We are not talking about a click through TOS for a website....we are talking about an actual contract between trademark owners and Deloitte. Trademark owners are entering into a CONTRACT with the TMCH to perform specifically enumerated services in exchange for consideration. So, yes by contract the rights to disclosure can absolutely be prevented. Jon Nevett:FYI -- DPML does not require use of the TMCH Paul Keating:@JNewman: I did not presume otherwise However, contractual issues are a subset of a statutory prohibition. Mary Wong:@Jon, yes - that is not how the TMCH is set up, we believe. Jon Nevett:Registries could use the TMCH or not -- they could validate on their own or not even validate -- some use the TMCH as a matter of efficiency Paul Keating:ok Kristine Dorrain - Amazon Registry Services:I have to drop a little early for another obligation today. Please circulate any calls for subteam members to the list once the WG decides on what subteams should be constituted. Jon Nevett:Phil, my point is that we don't have to use the TMCH Paul Keating:I also unfortunatey need to leave for a family obligation. Thank you to all and thanks JScott for juggling so well. Lori Schulman:Burn-out is a real thing folks. Thanks for the clarification Mary. Lori Schulman:I like J Scott's compromise. Jeff Neuman:i need to drop as well. Thanks. Maxim Alzoba (FAITID):sunrise is more complex process that claims ... does it sound reasonable that the devoted time is going to be longer? Steve Levy:Agree. Makes more efficient use of time Greg Shatan:@Jon. Good ponts. I would not want to see "private services" treated the same as Sunrise and Claims which are clearly within our remit. To do so would be "bootstrapping." Philip Corwin:@Jon -- https://urldefense.proofpoint.com/v2/url?u=http-3A__www.donuts.domains_servi ces_dpml_dpml-2Doverview <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.donuts.domains_serv ices_dpml_dpml-2Doverview&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4 I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISq mEfT25DrJDWYxkiMZ4Zc&s=ycfasEEu2ROfJiQ_qpoX6lgD92qMxsOaPpcpdJTd9Cg&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=bxc8XkZTyThHS0yUYg5AISqmEfT25DrJDWYxkiMZ4Zc&s=yc fasEEu2ROfJiQ_qpoX6lgD92qMxsOaPpcpdJTd9Cg&e= -- "Prior to submitting a DPML Application, DPML Applicants first must provide information to the TMCH to obtain an SMD File (as detailed in the TMCH Guidelines). Once the TMCH has validated a mark, it will issue the mark holder an SMD File. Each DPML Application must (i) include one or more SMD Files corresponding to the applied-for label(s) and (ii) meet the qualifications specified by ICANN and detailed in the TMCH Guidelines, as they may change from time to time." Jon Nevett:Phil, again you are missing my point Jon Nevett:we didn't have to use the TMCH -- we chose to do so as a matter of efficiency -- there is no requirement that we made that decision Mike Rodenbaugh:I don't think the WG agreed on 90-minute calls. Such decisions ought not be taken without input from the mail list. George Kirikos:+1 Mike George Kirikos:There's a sample bias, since everyone here could make it for 90 mins. Those who couldn't aren't here. George Kirikos:(plus, several people dropped off before 90 mins, indicating potential issues) Maxim Alzoba (FAITID):is it possible to use polls about questions - like RDS PDP WG does? Philip Corwin:Jon, if you didn't use the TMCH or some other means of TM verification how would you know that the block related to a real TM and that the blocker was the rights holder? George Kirikos:+1 Maxim. 2 polls, 90 mins vs 60, and day-of-week question. Jon Nevett:Phil -- scroll up Maxim Alzoba (FAITID):+1 George Maxim Alzoba (FAITID):it will be like more homework vs. more seminar time Jon Nevett:we could do our own validation if we wanted to -- just like registries did before the TMCH Philip Corwin:Let's take this discussion offline, Jon. OK? Kathy Kleiman:Tx to all who joined us in Copehagen - and George for joining us remotely! George Kirikos:Bye folks. Maxim Alzoba (FAITID):bye all Paul Tattersfield:thanks all, bye Kathy Kleiman:Tx J. Scott! Steve Levy:Bye all Vinzenz Heussler:bye Jay Chapman:thanks, all Poncelet Ileleji:Thanks Bye Greg Shatan:Even if private registrations use the fact of a TMCH regn as a ready-made validation it does not give us jurisdiction over those services. Mary Wong:Thanks everyone Amr Elsadr:Thanks all. Bye. Greg Shatan:Bye all.

1 0

FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Mary Wong March 29, 2017

March 29, 2017

Dear all, During the ICANN58 Working Group sessions in Copenhagen, the following two matters came up for which staff is now following up with the requested document (for #1) and information (for #2). Item #1: Letter of 10 March 2017 from some trademark scholars and practitioners to our Working Group co-chairs expressing concerns with certain aspects of the TMCH: https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf. Item #2: Question regarding the Ancillary Services that Deloitte is permitted to provide under its Validation Agreement with ICANN, subject to ICANN’s authorization. Currently, two Ancillary Services have been approved by ICANN: 1. Extended Claims Services The extended claims services provide the Trademark Holder or Trademark Agent, as applicable, with an electronic notification when a domain name registered in an Eligible TLD matches one or more of such party’s recorded labels with the TMCH. The extended claims services does not include a domain name pre-registration notification (i.e. a notification to the potential registrant of a domain name that the domain name such registrant intends to register matches a label recorded with the Trademark Clearinghouse). 2. Audit Report Deloitte may offer an audit report service for Trademark Holders and Trademark Agents with active Trademark Records recorded in the Trademark Clearinghouse. Such audit reports shall consist primarily of a listing of matches between their recorded labels within the Trademark Clearinghouse and domain names registered in an Eligible TLD. FYI, Deloitte’s contract with ICANN is for an initial period expiring on the fifth anniversary of ICANN’s entry into a Registry Agreement under the New gTLD Program, with consecutive one-year renewals thereafter. Although Deloitte currently serves as the sole TMCH validator, ICANN may appoint additional validators once ten Qualified Sunrise Periods have been completed under the New gTLD Program. Thanks and cheers Mary

15 34

Intellectual Property Constituency Statement on Letter Circulated by EFF
by Greg Shatan March 29, 2017

March 29, 2017

The IPC offered the following statement at ICANN58: The IPC has seen the letter sent to the Chairs of the Rights Protection Mechanisms Review Working Group and published by the EFF. We are concerned that this letter contains an unfortunate number of points which are misleading and inaccurate, particularly in its characterizations of the ICANN RPMs. Since this letter came during ICANN58, the IPC will not have the opportunity to respond fully to these points and to the concerns expressed in this letter until after the ICANN meeting. Our members are deeply engaged in this week’s policy discussions, including the RPM review, and we need to stay focused on the work here. We do need to note that (as the ICANN community knows) the RPMs are the result of ICANN consensus policy and multistakeholder processes, and represent a compromise between multiple stakeholder groups, including civil society and noncommercial users We also note that a number of the signatories to the letter do not currently participate in discussions of these topics at ICANN, and we would certainly welcome their involvement in the RPM Review Working Group as we engage in the critical discussion and assessment of the RPMs. B est Regards, Greg Shatan President, IPC

1 0

Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Marie Pattullo March 28, 2017

March 28, 2017

If the pricing weren't connected to knowing what was in the CH perhaps. So exactly the same as other nefarious uses, no? Knives are also potentially damaging to other vegetables. M Sent from my iPhone, sorry for typos > On 28 Mar 2017, at 23:10, Paul Keating <paul(a)law.es> wrote: > > 😃. But the pricing is a different issue from whether or not the database should be public or private. No? > > I agree those seeking a priority registration are being abuses price-wise. > > Sent from my iPad > >> On 28 Mar 2017, at 22:39, Marie Pattullo <marie.pattullo(a)aim.be> wrote: >> >> Aye but you don't get the DN automatically if you have a record in the CH, do you? You can choose pay for it - in Sunrise so at an elevated price. Which is for all manner of commercial - and costly - reasons. As DN maintenance doesn't come for free. Or as shown by the TMCH Report you can choose not to do that. Quite often. Being in the CH doesn't give you a DN. So your analogy holds my way - I choose to have knives in my kitchen but I've never abused them. Unless you're a tomato. >> M >> >> Sent from my iPhone, sorry for typos >> >>> On 28 Mar 2017, at 22:09, Paul Keating <paul(a)law.es> wrote: >>> >>> This is not just an issue between cybersquatter and trademark holders. >>> >>> There are many commonly used words in the TMCH that give the trademark holder the exclusive global right to a domain name. Because the word(s) at issue are not inherently distinctive and can be used for many many other purposes - including their definitional purpose, this exclusivity offends me. It precludes anyone from having the chance to use the same word or phrase in a perfectly legitimate manner. >>> >>> Why? >>> >>> Are there not enough other protective mechanisms in place to protect trademark holders? >>> >>> Yes, there will be cybersquatter who abuse domain registrations. This is true. There are also many criminals who will abuse knives, cars, etc. however the ability to misuse is not accepted as a reason to engage in pre-emptive restrictions. Those exceptions are limited to situations in which there is no legitimate use (e.g. Automatic weapons, etc). >>> >>> To investigate this issue we need access to the lists. I see no reason why the list cannot and should not be made public. If the registrations are legitimate and have been used in a fair and honest manner there should be no objection to transparency. >>> >>> Sent from my iPad >>> >>>> On 28 Mar 2017, at 21:52, Marie Pattullo <marie.pattullo(a)aim.be> wrote: >>>> >>>> Thanks Rebecca. >>>> If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. >>>> Marie >>>> >>>> Sent from my iPhone, sorry for typos >>>> >>>>> On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>>>> >>>>> I think the value of transparency has been articulated here several >>>>> times, whether or not you agree: legitimate market entrants--who, not >>>>> for nothing, are also likely to be trademark owners--may want to know >>>>> what they can do. People concerned with the integrity of the register >>>>> want to know whether (as current data seem to indicate) many of the >>>>> existing registrants and many existing claims notices are asserting >>>>> control over domain names whose value is distinct from trademark value >>>>> attributable to the registrant. Those are the usual values of >>>>> transparency: knowing what's going on so one can order one's own >>>>> behavior accordingly, and/or advocate for change where change is >>>>> desirable. >>>>> >>>>> On the other side, I find persuasive the argument that cybersquatters >>>>> generally don't need to consult any records to figure out what domains >>>>> they want and thus I find it hard to identify the harm to be avoided. >>>>> We are talking here about the marginal impact of transparency in the >>>>> TMCH added to the public nature of registration (searchable online in >>>>> many large nations) and the public nature of trademark fame (e.g., >>>>> Twentieth Century Fox, to take an example that's been discussed). For >>>>> me, transparency in the TMCH would provide a lot of TMCH-relevant >>>>> information but has only a marginal effect on information about >>>>> trademark values generally, arguing in favor of transparency. >>>>> Rebecca Tushnet >>>>> Georgetown Law >>>>> 703 593 6759 >>>>> >>>>> >>>>>> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo(a)aim.be> wrote: >>>>>> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer? >>>>>> >>>>>> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No? >>>>>> >>>>>> Marie >>>>>> >>>>>> Sent from my iPhone, sorry for typos >>>>>> >>>>>>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael(a)law-democracy.org> wrote: >>>>>>> >>>>>>> Hi Greg, >>>>>>> >>>>>>> If I had a perfect solution to prevent cybersquatting in my pocket I >>>>>>> probably would have led with it :) >>>>>>> >>>>>>> That said, my aim in drafting that was to try and help frame the >>>>>>> discussion, rather than to try and close it. Look, my expertise is >>>>>>> more on the transparency side than on the trademark side. But on the >>>>>>> transparency side, we deal with potential harms all the time - be they >>>>>>> for information involving national security, personal privacy - or >>>>>>> legitimate commercial interests like trademark protection. And >>>>>>> generally, we seek to find an avenue forward which provides adequate >>>>>>> protection for these interests, while respecting the overarching >>>>>>> interest in openness. This calculus shouldn't mean that openness is >>>>>>> abandoned whenever a potential for harm is encountered. Indeed, if >>>>>>> that were the case almost no information would end up being put out >>>>>>> there. Rather, it means assessing the specific harms that would flow >>>>>>> directly from the specific disclosures, weighing them against the >>>>>>> public interest in disclosure, and seeking ways to work around those >>>>>>> harms which also provide for maximum openness. >>>>>>> >>>>>>> So, while I don't have a readymade solution to present, I do think we >>>>>>> need to work together to find one. Reverting to secrecy is just not >>>>>>> consistent with ICANN's broader mission, given that the entire model >>>>>>> is based on public oversight and accountability. >>>>>>> >>>>>>> Looking forward to engaging on this further. >>>>>>> >>>>>>> Michael >>>>>>> >>>>>>> P.S. I'm not sure why it's at all relevant who actually drafted the >>>>>>> text of the EFF letter? As someone who's been involved in many similar >>>>>>> efforts, they can be done fully collaboratively, or with one or two of >>>>>>> the signatories taking the lead. Either way though, all of the names >>>>>>> attached to it have approved and endorsed it. These are very senior >>>>>>> and respected experts - they don't just throw their names on any >>>>>>> document that's sent their way. If they signed the letter it means >>>>>>> they support it - what does it matter who held the pen? >>>>>>> >>>>>>> >>>>>>> >>>>>>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >>>>>>>> Michael, >>>>>>>> >>>>>>>> Do you have any solutions for the issues and concerns that have been >>>>>>>> mitigated by having the database be closed? >>>>>>>> >>>>>>>> Thanks! >>>>>>>> >>>>>>>> Greg >>>>>>>> >>>>>>>> Greg Shatan >>>>>>>> C: 917-816-6428 >>>>>>>> S: gsshatan >>>>>>>> Phone-to-Skype: 646-845-9428 >>>>>>>> gregshatanipc(a)gmail.com >>>>>>>> >>>>>>>> >>>>>>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>>>>>> <michael(a)law-democracy.org> wrote: >>>>>>>>> >>>>>>>>> Hi all, >>>>>>>>> >>>>>>>>> Just building on the discussion around transparency, after hearing the >>>>>>>>> conversation at ICANN 58 I drafted my own short note setting out my >>>>>>>>> thoughts on the issue, which I'm attaching here. >>>>>>>>> >>>>>>>>> I want to be mindful of the conversation on inputs which is ongoing >>>>>>>>> now - so hopefully it isn't out of place or inappropriate to submit my >>>>>>>>> thoughts via this method. >>>>>>>>> >>>>>>>>> I very much look forward to further discussions on this issue. >>>>>>>>> >>>>>>>>> Best wishes, >>>>>>>>> >>>>>>>>> Michael Karanicolas >>>>>>>>> >>>>>>>>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman(a)comlaude.com> >>>>>>>>> wrote: >>>>>>>>>> Thanks Mary. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Co-Chairs, >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Can I assume that with respect to the EFF letter, the only items we >>>>>>>>>> would be >>>>>>>>>> discussing from that letter at this point are their comments with >>>>>>>>>> respect to >>>>>>>>>> design marks and the transparency of the TMCH database? >>>>>>>>>> >>>>>>>>>> I am not saying the other comments are not important, but with respect >>>>>>>>>> to >>>>>>>>>> this Working Group at this time, we are not yet addressing those other >>>>>>>>>> issues. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> I would strongly urge that we not engage yet in the other discussion >>>>>>>>>> around >>>>>>>>>> the other comments at this point (namely, trademark rights in general), >>>>>>>>>> as I >>>>>>>>>> think that could lead us down a large rabbit hole and considerably slow >>>>>>>>>> down >>>>>>>>>> out work. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Thanks. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Jeffrey J. Neuman >>>>>>>>>> >>>>>>>>>> Senior Vice President |Valideus USA | Com Laude USA >>>>>>>>>> >>>>>>>>>> 1751 Pinnacle Drive, Suite 600 >>>>>>>>>> >>>>>>>>>> Mclean, VA 22102, United States >>>>>>>>>> >>>>>>>>>> E: jeff.neuman(a)valideus.com or jeff.neuman(a)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 Mary Wong >>>>>>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>>>>>> To: gnso-rpm-wg(a)icann.org >>>>>>>>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>>>>>>>>> and >>>>>>>>>> information on Deloitte Ancillary Services >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Dear all, >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> During the ICANN58 Working Group sessions in Copenhagen, the following >>>>>>>>>> two >>>>>>>>>> matters came up for which staff is now following up with the requested >>>>>>>>>> document (for #1) and information (for #2). >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>>>>>>>>> practitioners to our Working Group co-chairs expressing concerns with >>>>>>>>>> certain aspects of the TMCH: >>>>>>>>>> >>>>>>>>>> https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Item #2: Question regarding the Ancillary Services that Deloitte is >>>>>>>>>> permitted to provide under its Validation Agreement with ICANN, subject >>>>>>>>>> to >>>>>>>>>> ICANN’s authorization. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Currently, two Ancillary Services have been approved by ICANN: >>>>>>>>>> >>>>>>>>>> 1. Extended Claims Services >>>>>>>>>> >>>>>>>>>> The extended claims services provide the Trademark Holder or Trademark >>>>>>>>>> Agent, as applicable, with an electronic notification when a domain name >>>>>>>>>> registered in an Eligible TLD matches one or more of such party’s >>>>>>>>>> recorded >>>>>>>>>> labels with the TMCH. The extended claims services does not include a >>>>>>>>>> domain name pre-registration notification (i.e. a notification to the >>>>>>>>>> potential registrant of a domain name that the domain name such >>>>>>>>>> registrant >>>>>>>>>> intends to register matches a label recorded with the Trademark >>>>>>>>>> Clearinghouse). >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> 2. Audit Report >>>>>>>>>> >>>>>>>>>> Deloitte may offer an audit report service for Trademark Holders and >>>>>>>>>> Trademark Agents with active Trademark Records recorded in the Trademark >>>>>>>>>> Clearinghouse. Such audit reports shall consist primarily of a listing >>>>>>>>>> of >>>>>>>>>> matches between their recorded labels within the Trademark Clearinghouse >>>>>>>>>> and >>>>>>>>>> domain names registered in an Eligible TLD. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on >>>>>>>>>> the >>>>>>>>>> fifth anniversary of ICANN’s entry into a Registry Agreement under the >>>>>>>>>> New >>>>>>>>>> gTLD Program, with consecutive one-year renewals thereafter. Although >>>>>>>>>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint >>>>>>>>>> additional validators once ten Qualified Sunrise Periods have been >>>>>>>>>> completed >>>>>>>>>> under the New gTLD Program. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Thanks and cheers >>>>>>>>>> >>>>>>>>>> Mary >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> _______________________________________________ >>>>>>>>>> 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 >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> _______________________________________________ >>>>>>>> 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 >>>>>>> >>>>>>> >>>>>>> >>>>>>> >>>>>> >>>>>> _______________________________________________ >>>>>> 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 >>> >>> >>> >>> >> > > !DSPAM:58dad16717161440525930! > >

1 0

Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Marie Pattullo March 28, 2017

March 28, 2017

And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them? M Sent from my iPhone, sorry for typos > On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: > > Unfortunately, "searching a TM registry" won't get the job done, > because--as we've discussed before in other contexts--TMCH > registrations are different. They provide claims no matter what the > goods or services are. No matter what I want to use "the" or "color" > etc. for, they're in the TMCH. That is different from any trademark > registry (even most of the previous attempts to create "fame" > registries required goods/services listings). > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > >> On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo(a)aim.be> wrote: >> Thanks Rebecca. >> If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. >> Marie >> >> Sent from my iPhone, sorry for typos >> >>> On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>> >>> I think the value of transparency has been articulated here several >>> times, whether or not you agree: legitimate market entrants--who, not >>> for nothing, are also likely to be trademark owners--may want to know >>> what they can do. People concerned with the integrity of the register >>> want to know whether (as current data seem to indicate) many of the >>> existing registrants and many existing claims notices are asserting >>> control over domain names whose value is distinct from trademark value >>> attributable to the registrant. Those are the usual values of >>> transparency: knowing what's going on so one can order one's own >>> behavior accordingly, and/or advocate for change where change is >>> desirable. >>> >>> On the other side, I find persuasive the argument that cybersquatters >>> generally don't need to consult any records to figure out what domains >>> they want and thus I find it hard to identify the harm to be avoided. >>> We are talking here about the marginal impact of transparency in the >>> TMCH added to the public nature of registration (searchable online in >>> many large nations) and the public nature of trademark fame (e.g., >>> Twentieth Century Fox, to take an example that's been discussed). For >>> me, transparency in the TMCH would provide a lot of TMCH-relevant >>> information but has only a marginal effect on information about >>> trademark values generally, arguing in favor of transparency. >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>>> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo(a)aim.be> wrote: >>>> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer? >>>> >>>> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No? >>>> >>>> Marie >>>> >>>> Sent from my iPhone, sorry for typos >>>> >>>>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael(a)law-democracy.org> wrote: >>>>> >>>>> Hi Greg, >>>>> >>>>> If I had a perfect solution to prevent cybersquatting in my pocket I >>>>> probably would have led with it :) >>>>> >>>>> That said, my aim in drafting that was to try and help frame the >>>>> discussion, rather than to try and close it. Look, my expertise is >>>>> more on the transparency side than on the trademark side. But on the >>>>> transparency side, we deal with potential harms all the time - be they >>>>> for information involving national security, personal privacy - or >>>>> legitimate commercial interests like trademark protection. And >>>>> generally, we seek to find an avenue forward which provides adequate >>>>> protection for these interests, while respecting the overarching >>>>> interest in openness. This calculus shouldn't mean that openness is >>>>> abandoned whenever a potential for harm is encountered. Indeed, if >>>>> that were the case almost no information would end up being put out >>>>> there. Rather, it means assessing the specific harms that would flow >>>>> directly from the specific disclosures, weighing them against the >>>>> public interest in disclosure, and seeking ways to work around those >>>>> harms which also provide for maximum openness. >>>>> >>>>> So, while I don't have a readymade solution to present, I do think we >>>>> need to work together to find one. Reverting to secrecy is just not >>>>> consistent with ICANN's broader mission, given that the entire model >>>>> is based on public oversight and accountability. >>>>> >>>>> Looking forward to engaging on this further. >>>>> >>>>> Michael >>>>> >>>>> P.S. I'm not sure why it's at all relevant who actually drafted the >>>>> text of the EFF letter? As someone who's been involved in many similar >>>>> efforts, they can be done fully collaboratively, or with one or two of >>>>> the signatories taking the lead. Either way though, all of the names >>>>> attached to it have approved and endorsed it. These are very senior >>>>> and respected experts - they don't just throw their names on any >>>>> document that's sent their way. If they signed the letter it means >>>>> they support it - what does it matter who held the pen? >>>>> >>>>> >>>>> >>>>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >>>>>> Michael, >>>>>> >>>>>> Do you have any solutions for the issues and concerns that have been >>>>>> mitigated by having the database be closed? >>>>>> >>>>>> Thanks! >>>>>> >>>>>> Greg >>>>>> >>>>>> Greg Shatan >>>>>> C: 917-816-6428 >>>>>> S: gsshatan >>>>>> Phone-to-Skype: 646-845-9428 >>>>>> gregshatanipc(a)gmail.com >>>>>> >>>>>> >>>>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>>>> <michael(a)law-democracy.org> wrote: >>>>>>> >>>>>>> Hi all, >>>>>>> >>>>>>> Just building on the discussion around transparency, after hearing the >>>>>>> conversation at ICANN 58 I drafted my own short note setting out my >>>>>>> thoughts on the issue, which I'm attaching here. >>>>>>> >>>>>>> I want to be mindful of the conversation on inputs which is ongoing >>>>>>> now - so hopefully it isn't out of place or inappropriate to submit my >>>>>>> thoughts via this method. >>>>>>> >>>>>>> I very much look forward to further discussions on this issue. >>>>>>> >>>>>>> Best wishes, >>>>>>> >>>>>>> Michael Karanicolas >>>>>>> >>>>>>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman(a)comlaude.com> >>>>>>> wrote: >>>>>>>> Thanks Mary. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Co-Chairs, >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Can I assume that with respect to the EFF letter, the only items we >>>>>>>> would be >>>>>>>> discussing from that letter at this point are their comments with >>>>>>>> respect to >>>>>>>> design marks and the transparency of the TMCH database? >>>>>>>> >>>>>>>> I am not saying the other comments are not important, but with respect >>>>>>>> to >>>>>>>> this Working Group at this time, we are not yet addressing those other >>>>>>>> issues. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> I would strongly urge that we not engage yet in the other discussion >>>>>>>> around >>>>>>>> the other comments at this point (namely, trademark rights in general), >>>>>>>> as I >>>>>>>> think that could lead us down a large rabbit hole and considerably slow >>>>>>>> down >>>>>>>> out work. >>>>>>>> >>>>>>>> >>>>>>>> Thanks. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Jeffrey J. Neuman >>>>>>>> >>>>>>>> Senior Vice President |Valideus USA | Com Laude USA >>>>>>>> >>>>>>>> 1751 Pinnacle Drive, Suite 600 >>>>>>>> >>>>>>>> Mclean, VA 22102, United States >>>>>>>> >>>>>>>> E: jeff.neuman(a)valideus.com or jeff.neuman(a)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 Mary Wong >>>>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>>>> To: gnso-rpm-wg(a)icann.org >>>>>>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>>>>>>> and >>>>>>>> information on Deloitte Ancillary Services >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Dear all, >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> During the ICANN58 Working Group sessions in Copenhagen, the following >>>>>>>> two >>>>>>>> matters came up for which staff is now following up with the requested >>>>>>>> document (for #1) and information (for #2). >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>>>>>>> practitioners to our Working Group co-chairs expressing concerns with >>>>>>>> certain aspects of the TMCH: >>>>>>>> >>>>>>>> https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Item #2: Question regarding the Ancillary Services that Deloitte is >>>>>>>> permitted to provide under its Validation Agreement with ICANN, subject >>>>>>>> to >>>>>>>> ICANN’s authorization. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Currently, two Ancillary Services have been approved by ICANN: >>>>>>>> >>>>>>>> 1. Extended Claims Services >>>>>>>> >>>>>>>> The extended claims services provide the Trademark Holder or Trademark >>>>>>>> Agent, as applicable, with an electronic notification when a domain name >>>>>>>> registered in an Eligible TLD matches one or more of such party’s >>>>>>>> recorded >>>>>>>> labels with the TMCH. The extended claims services does not include a >>>>>>>> domain name pre-registration notification (i.e. a notification to the >>>>>>>> potential registrant of a domain name that the domain name such >>>>>>>> registrant >>>>>>>> intends to register matches a label recorded with the Trademark >>>>>>>> Clearinghouse). >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> 2. Audit Report >>>>>>>> >>>>>>>> Deloitte may offer an audit report service for Trademark Holders and >>>>>>>> Trademark Agents with active Trademark Records recorded in the Trademark >>>>>>>> Clearinghouse. Such audit reports shall consist primarily of a listing >>>>>>>> of >>>>>>>> matches between their recorded labels within the Trademark Clearinghouse >>>>>>>> and >>>>>>>> domain names registered in an Eligible TLD. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on >>>>>>>> the >>>>>>>> fifth anniversary of ICANN’s entry into a Registry Agreement under the >>>>>>>> New >>>>>>>> gTLD Program, with consecutive one-year renewals thereafter. Although >>>>>>>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint >>>>>>>> additional validators once ten Qualified Sunrise Periods have been >>>>>>>> completed >>>>>>>> under the New gTLD Program. >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> Thanks and cheers >>>>>>>> >>>>>>>> Mary >>>>>>>> >>>>>>>> >>>>>>>> _______________________________________________ >>>>>>>> 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 >>>>>> >>>>>> >>>>>> >>>>>> _______________________________________________ >>>>>> 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 >>>>> >>>>> >>>>> >>>>> >>>> >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> >>> >>> >>> >> > > !DSPAM:58dabffd17168279290674! > >

3 4

Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Marie Pattullo March 28, 2017

March 28, 2017

Thanks Rebecca. If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. Marie Sent from my iPhone, sorry for typos > On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: > > I think the value of transparency has been articulated here several > times, whether or not you agree: legitimate market entrants--who, not > for nothing, are also likely to be trademark owners--may want to know > what they can do. People concerned with the integrity of the register > want to know whether (as current data seem to indicate) many of the > existing registrants and many existing claims notices are asserting > control over domain names whose value is distinct from trademark value > attributable to the registrant. Those are the usual values of > transparency: knowing what's going on so one can order one's own > behavior accordingly, and/or advocate for change where change is > desirable. > > On the other side, I find persuasive the argument that cybersquatters > generally don't need to consult any records to figure out what domains > they want and thus I find it hard to identify the harm to be avoided. > We are talking here about the marginal impact of transparency in the > TMCH added to the public nature of registration (searchable online in > many large nations) and the public nature of trademark fame (e.g., > Twentieth Century Fox, to take an example that's been discussed). For > me, transparency in the TMCH would provide a lot of TMCH-relevant > information but has only a marginal effect on information about > trademark values generally, arguing in favor of transparency. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > >> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo(a)aim.be> wrote: >> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer? >> >> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No? >> >> Marie >> >> Sent from my iPhone, sorry for typos >> >>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael(a)law-democracy.org> wrote: >>> >>> Hi Greg, >>> >>> If I had a perfect solution to prevent cybersquatting in my pocket I >>> probably would have led with it :) >>> >>> That said, my aim in drafting that was to try and help frame the >>> discussion, rather than to try and close it. Look, my expertise is >>> more on the transparency side than on the trademark side. But on the >>> transparency side, we deal with potential harms all the time - be they >>> for information involving national security, personal privacy - or >>> legitimate commercial interests like trademark protection. And >>> generally, we seek to find an avenue forward which provides adequate >>> protection for these interests, while respecting the overarching >>> interest in openness. This calculus shouldn't mean that openness is >>> abandoned whenever a potential for harm is encountered. Indeed, if >>> that were the case almost no information would end up being put out >>> there. Rather, it means assessing the specific harms that would flow >>> directly from the specific disclosures, weighing them against the >>> public interest in disclosure, and seeking ways to work around those >>> harms which also provide for maximum openness. >>> >>> So, while I don't have a readymade solution to present, I do think we >>> need to work together to find one. Reverting to secrecy is just not >>> consistent with ICANN's broader mission, given that the entire model >>> is based on public oversight and accountability. >>> >>> Looking forward to engaging on this further. >>> >>> Michael >>> >>> P.S. I'm not sure why it's at all relevant who actually drafted the >>> text of the EFF letter? As someone who's been involved in many similar >>> efforts, they can be done fully collaboratively, or with one or two of >>> the signatories taking the lead. Either way though, all of the names >>> attached to it have approved and endorsed it. These are very senior >>> and respected experts - they don't just throw their names on any >>> document that's sent their way. If they signed the letter it means >>> they support it - what does it matter who held the pen? >>> >>> >>> >>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >>>> Michael, >>>> >>>> Do you have any solutions for the issues and concerns that have been >>>> mitigated by having the database be closed? >>>> >>>> Thanks! >>>> >>>> Greg >>>> >>>> Greg Shatan >>>> C: 917-816-6428 >>>> S: gsshatan >>>> Phone-to-Skype: 646-845-9428 >>>> gregshatanipc(a)gmail.com >>>> >>>> >>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>> <michael(a)law-democracy.org> wrote: >>>>> >>>>> Hi all, >>>>> >>>>> Just building on the discussion around transparency, after hearing the >>>>> conversation at ICANN 58 I drafted my own short note setting out my >>>>> thoughts on the issue, which I'm attaching here. >>>>> >>>>> I want to be mindful of the conversation on inputs which is ongoing >>>>> now - so hopefully it isn't out of place or inappropriate to submit my >>>>> thoughts via this method. >>>>> >>>>> I very much look forward to further discussions on this issue. >>>>> >>>>> Best wishes, >>>>> >>>>> Michael Karanicolas >>>>> >>>>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman(a)comlaude.com> >>>>> wrote: >>>>>> Thanks Mary. >>>>>> >>>>>> >>>>>> >>>>>> Co-Chairs, >>>>>> >>>>>> >>>>>> >>>>>> Can I assume that with respect to the EFF letter, the only items we >>>>>> would be >>>>>> discussing from that letter at this point are their comments with >>>>>> respect to >>>>>> design marks and the transparency of the TMCH database? >>>>>> >>>>>> I am not saying the other comments are not important, but with respect >>>>>> to >>>>>> this Working Group at this time, we are not yet addressing those other >>>>>> issues. >>>>>> >>>>>> >>>>>> >>>>>> I would strongly urge that we not engage yet in the other discussion >>>>>> around >>>>>> the other comments at this point (namely, trademark rights in general), >>>>>> as I >>>>>> think that could lead us down a large rabbit hole and considerably slow >>>>>> down >>>>>> out work. >>>>>> >>>>>> >>>>>> Thanks. >>>>>> >>>>>> >>>>>> >>>>>> Jeffrey J. Neuman >>>>>> >>>>>> Senior Vice President |Valideus USA | Com Laude USA >>>>>> >>>>>> 1751 Pinnacle Drive, Suite 600 >>>>>> >>>>>> Mclean, VA 22102, United States >>>>>> >>>>>> E: jeff.neuman(a)valideus.com or jeff.neuman(a)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 Mary Wong >>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>> To: gnso-rpm-wg(a)icann.org >>>>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>>>>> and >>>>>> information on Deloitte Ancillary Services >>>>>> >>>>>> >>>>>> >>>>>> Dear all, >>>>>> >>>>>> >>>>>> >>>>>> During the ICANN58 Working Group sessions in Copenhagen, the following >>>>>> two >>>>>> matters came up for which staff is now following up with the requested >>>>>> document (for #1) and information (for #2). >>>>>> >>>>>> >>>>>> >>>>>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>>>>> practitioners to our Working Group co-chairs expressing concerns with >>>>>> certain aspects of the TMCH: >>>>>> >>>>>> https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf. >>>>>> >>>>>> >>>>>> >>>>>> Item #2: Question regarding the Ancillary Services that Deloitte is >>>>>> permitted to provide under its Validation Agreement with ICANN, subject >>>>>> to >>>>>> ICANN’s authorization. >>>>>> >>>>>> >>>>>> >>>>>> Currently, two Ancillary Services have been approved by ICANN: >>>>>> >>>>>> 1. Extended Claims Services >>>>>> >>>>>> The extended claims services provide the Trademark Holder or Trademark >>>>>> Agent, as applicable, with an electronic notification when a domain name >>>>>> registered in an Eligible TLD matches one or more of such party’s >>>>>> recorded >>>>>> labels with the TMCH. The extended claims services does not include a >>>>>> domain name pre-registration notification (i.e. a notification to the >>>>>> potential registrant of a domain name that the domain name such >>>>>> registrant >>>>>> intends to register matches a label recorded with the Trademark >>>>>> Clearinghouse). >>>>>> >>>>>> >>>>>> >>>>>> 2. Audit Report >>>>>> >>>>>> Deloitte may offer an audit report service for Trademark Holders and >>>>>> Trademark Agents with active Trademark Records recorded in the Trademark >>>>>> Clearinghouse. Such audit reports shall consist primarily of a listing >>>>>> of >>>>>> matches between their recorded labels within the Trademark Clearinghouse >>>>>> and >>>>>> domain names registered in an Eligible TLD. >>>>>> >>>>>> >>>>>> >>>>>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on >>>>>> the >>>>>> fifth anniversary of ICANN’s entry into a Registry Agreement under the >>>>>> New >>>>>> gTLD Program, with consecutive one-year renewals thereafter. Although >>>>>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint >>>>>> additional validators once ten Qualified Sunrise Periods have been >>>>>> completed >>>>>> under the New gTLD Program. >>>>>> >>>>>> >>>>>> >>>>>> Thanks and cheers >>>>>> >>>>>> Mary >>>>>> >>>>>> >>>>>> _______________________________________________ >>>>>> 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 >>>> >>>> >>>> >>>> _______________________________________________ >>>> 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 >>> >>> >>> >>> >> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > !DSPAM:58dab77f17161052319515! > >

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