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

Recirculating Deloitte's response to Working Group follow up questions
by Mary Wong June 14, 2017

June 14, 2017

Hello everyone, At our co-chairs’ request, staff is recirculating the responses we received recently from Deloitte on the follow up questions that our Working Group had sent to them prior to the Copenhagen meeting. You can also find the response, along with the data Deloitte presented to us in Copenhagen, the Analysis Group’s revised report, and other Working Group documents discussing the TMCH at this wiki page: https://community.icann.org/x/_pHRAw. Thanks and cheers Mary

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Agenda and documents for Working Group call this week
by Mary Wong May 5, 2017

May 5, 2017

Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary

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Agenda for Working Group call on Wednesday 3 May
by Mary Wong April 28, 2017

April 28, 2017

Dear all, The proposed agenda for our next Working Group call, scheduled for Wednesday 3 May at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect & phone bridge only); updates to Statements of Interest 2. Sub Teams update (5 minutes each) – Lori Schulman (Sunrise), Michael Graham/Kristine Dorrain (Trademark Claims), Working Group co-chairs’ update on Private Protections Sub Team 3. Presentation of proposal for TMCH Open Question #10 – Michael Graham (not more than 5 minutes) 4. Continue Working Group discussion of TMCH Questions #7 & #8 – start with summation of proposals (2 minutes each for each proposer) 5. Next steps/next meeting For those who were not able to attend the last call, you’re encouraged to review the transcript or listen to the call recording. Both can be found on the Working Group wiki page for the meeting, here: https://community.icann.org/x/NtHRAw, where you’ll also find the table of open questions and proposals. I’m attaching the table to this email as well for your convenient reference. Thanks and cheers Mary

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Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
by icannlists April 28, 2017

April 28, 2017

He Rebecca, Look at the domain name registration date in UDRP or URD decisions and compare it to the Claims start date and end date and extrinsic evidence of TMCH lodgements as noted in other decisions (or look for a Spec. 13 filing since a validated TMCH filing is necessary for one of those). Today's daily example of the actual existence of cybersquatting in exact match second level domains: Virginamerica.space http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0426 Claims started (presumably) with Landrush: 1/19/2015 See https://www.webnames.ca/domain-registration/new-domain-name-launch-schedule… Domain name registration date: October 27, 2016 (outside of claims window) At least as of March 26, 2016, Complainant had lodged a VIRGIN AMERICA mark in the TMCH. The TMCH validated the trademark. See http://www.adrforum.com/domaindecisions/1667149D.htm Bottom line: there is some data out there to gather which is actually relevant to the question but it will take some effort to gather. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:rlt26@georgetown.edu] Sent: Thursday, April 27, 2017 1:42 PM To: McGrady, Paul D. <PMcGrady(a)winston.com> Cc: icannlists <icannlists(a)winston.com>; Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu>; Greg Shatan <gregshatanipc(a)gmail.com>; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I agree it exists. My questions: How can these examples be correlated with TMCH entries? With an exact match, was it subject to a claims notice or was the TM owner not a TMCH user? How many TMCH users would avoid subsequent proceedings by expanding claims notices versus the overdeterrence of over-matching or diluting the effects of a claims notice if people learn that false positives are ordinary? Sent from my phone. Apologies for terseness/typos. > On Apr 27, 2017, at 1:27 PM, McGrady, Paul D. <PMcGrady(a)winston.com> wrote: > > Further to my post below, today's example of exact mark cybersquatting > in the <.cloud> and <.store> new gTLDs. > http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0323 > > > Best, > Paul > > > > -----Original Message----- > From: icannlists > Sent: Thursday, April 27, 2017 6:43 AM > To: 'Rebecca Tushnet' <Rebecca.Tushnet(a)law.georgetown.edu>; Greg > Shatan <gregshatanipc(a)gmail.com> > Cc: gnso-rpm-wg(a)icann.org > Subject: RE: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and > #16 (Design Mark and Appropriate Balance) > > Rebecca, > > At this point in the DNS' history there are literally thousands of UDRP and URS decisions attesting to the reality of cybersquatting as a phenomenon. I'm pretty sure it is going to be difficult to sell a fiction that cybersquatting doesn't exist. While I understand it might be frustrating that there is not a single example on the record of a person who abandoned after Claims by being "chilled", implying that cybersquatting is not really happening in the real world just isn't plausible. I know you have been asking for citations lately, so I will just refer you to http://www.adrforum.com/SearchDecisions and http://www.wipo.int/amc/en/domains/search/ where you can see cybersquatting decisions. > > Best, > Paul > > > > > -----Original Message----- > From: gnso-rpm-wg-bounces(a)icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet > Sent: Thursday, April 27, 2017 12:09 AM > To: Greg Shatan <gregshatanipc(a)gmail.com> > Cc: gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and > #16 (Design Mark and Appropriate Balance) > > What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. > > Circumstantial evidence is evidence too. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > >> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >> We have no idea who abandoned these registration attempts, or even if >> it was done by humans, much less rightsholders. >> >> If we want to make assumptions that support arguments, rather than >> engaging in evidence-based inquiry, I'll offer the assumption that >> all the abandoned carts were started by cybersquatters that intended >> to use the domains to engage in spam, malware, phishing, >> spearphishing, fraud, theft and botnet farming. >> >> Greg >> >> >> On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet >> <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>> >>> Forwarding to match. >>> >>> If you think that lots of people have valid uses--including >>> rights--in those terms, then when they stop trying to register those >>> terms, that is overdeterrence. I think what I said was clear. >>> >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>> On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan >>> <gregshatanipc(a)gmail.com> >>> wrote: >>>> Your guess -- and overdeterrence is just a guess, with nothing to >>>> back it up >>>> -- is as good as mine. My guess is that it absolutely is not >>>> overdeterrence. >>>> >>>> And my point was that your statement was a mischaracterization of >>>> the way the TMCH, Sunrise and Claims work, as well as a >>>> mischaracterization of how trademarks work. So I don't think "My >>>> point exactly" is what you meant to say (though I wish it were). >>>> >>>> Greg >>>> >>>> Greg Shatan >>>> C: 917-816-6428 >>>> S: gsshatan >>>> Phone-to-Skype: 646-845-9428 >>>> gregshatanipc(a)gmail.com >>>> >>>> >>>> On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet >>>> <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>>>> >>>>> My point exactly. So what explains the over 90% abandonment rate, >>>>> other than overdeterrence, especially with those most returned terms? >>>>> Rebecca Tushnet >>>>> Georgetown Law >>>>> 703 593 6759 >>>>> >>>>> >>>>> On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan >>>>> <gregshatanipc(a)gmail.com> >>>>> wrote: >>>>>> "Maybe absolutely no one else besides the TMCH entrant/s had a >>>>>> legitimate business using those terms." >>>>>> >>>>>> That is clearly and absolutely not the basis of trademark rights, >>>>>> trademark registration or entry into the TMCH. Nor is it the way >>>>>> Sunrise or Claims work. Ridiculous. >>>>>> >>>>>> Greg >>>>>> >>>>>> Greg Shatan >>>>>> C: 917-816-6428 >>>>>> S: gsshatan >>>>>> Phone-to-Skype: 646-845-9428 >>>>>> gregshatanipc(a)gmail.com >>>>>> >>>>>> >>>>>> On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet >>>>>> <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>>>>>> >>>>>>> Yes, because we don't have good survey evidence, one of the >>>>>>> questions is what we can infer from the circumstantial evidence >>>>>>> available to us, particularly the over 90% abandonment rate >>>>>>> combined with the top queries being words like forex, cloud, and >>>>>>> love. Maybe absolutely no one else besides the TMCH entrant/s >>>>>>> had a legitimate business using those terms. But I doubt it. >>>>>>> Rebecca Tushnet >>>>>>> Georgetown Law >>>>>>> 703 593 6759 >>>>>>> >>>>>>> >>>>>>> On Wed, Apr 26, 2017 at 10:37 PM, icannlists >>>>>>> <icannlists(a)winston.com> >>>>>>> wrote: >>>>>>>> Thanks Rebecca. I've never heard of a trademark owner being >>>>>>>> deterred by a claims notice since one of the explicit defenses >>>>>>>> in the UDRP is when a registrant has rights or legitimate >>>>>>>> interests in a corresponding trademark. >>>>>>>> So, I think that one may be a bit of a red herring. >>>>>>>> >>>>>>>> However, your comment about avoiding overreach is well received >>>>>>>> and we should keep it in mind while at the same time not >>>>>>>> under-reaching either - when we do that, Grandma gets phished. >>>>>>>> >>>>>>>> Best, >>>>>>>> Paul >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> -----Original Message----- >>>>>>>> From: Rebecca Tushnet >>>>>>>> [mailto:Rebecca.Tushnet@law.georgetown.edu] >>>>>>>> Sent: Wednesday, April 26, 2017 9:17 PM >>>>>>>> To: icannlists <icannlists(a)winston.com> >>>>>>>> Cc: Silver, Bradley <Bradley.Silver(a)timewarner.com>; >>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>>>>>> #16 (Design Mark and Appropriate Balance) >>>>>>>> >>>>>>>> Avoiding overreaching is pro-trademark, as the public reaction >>>>>>>> to SOPA/PIPA and patent trolls has shown with respect to >>>>>>>> copyright and patent. >>>>>>>> There are also the interests of trademark owners who aren't >>>>>>>> participating in this process but may want to register domain >>>>>>>> names that are perfectly legitimate for their goods/services >>>>>>>> and jurisdictions. Some of them may inevitably receive notices >>>>>>>> and be deterred, but there are steps we can take to limit that >>>>>>>> problem. >>>>>>>> Rebecca Tushnet >>>>>>>> Georgetown Law >>>>>>>> 703 593 6759 >>>>>>>> >>>>>>>> >>>>>>>> On Wed, Apr 26, 2017 at 9:50 PM, icannlists >>>>>>>> <icannlists(a)winston.com> >>>>>>>> wrote: >>>>>>>>> Thanks Rebecca. I'm not characterizing you as anti-trademark; >>>>>>>>> just your arguments and positions to date on this list. We >>>>>>>>> would very much welcome anything favorable to trademarks that >>>>>>>>> you wish to add to the discourse. >>>>>>>>> >>>>>>>>> Best, >>>>>>>>> Paul >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> -----Original Message----- >>>>>>>>> From: Rebecca Tushnet >>>>>>>>> [mailto:Rebecca.Tushnet@law.georgetown.edu] >>>>>>>>> Sent: Wednesday, April 26, 2017 8:00 PM >>>>>>>>> To: icannlists <icannlists(a)winston.com> >>>>>>>>> Cc: Silver, Bradley <Bradley.Silver(a)timewarner.com>; >>>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>>>>>>> #16 >>>>>>>>> (Design Mark and Appropriate Balance) >>>>>>>>> >>>>>>>>> Please don't characterize me as anti-trademark; I strongly >>>>>>>>> believe in the consumer protection function of trademarks, and >>>>>>>>> also in trademark protection in some circumstances for >>>>>>>>> business purposes. See >>>>>>>>> >>>>>>>>> >>>>>>>>> https://harvardlawreview.org/2017/01/registering-disagreemen >>>>>>>>> t-registra tion-in-modern-american-trademark-law/ >>>>>>>>> >>>>>>>>> Asking again: for those of you who think it doesn't matter if >>>>>>>>> claimants who don't own relevant rights get to use the TMCH, >>>>>>>>> what then did ICANN mean by its stated intent not to expand >>>>>>>>> trademark rights? >>>>>>>>> Rebecca Tushnet >>>>>>>>> Georgetown Law >>>>>>>>> 703 593 6759 >>>>>>>>> >>>>>>>>> >>>>>>>>> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >>>>>>>>> <icannlists(a)winston.com> >>>>>>>>> wrote: >>>>>>>>>> Thanks Rebecca. There is not much new here. Whomever >>>>>>>>>> registers a second level domain name first (Sunrise - TM >>>>>>>>>> owner), Premium (Rich >>>>>>>>>> person) >>>>>>>>>> or Landrush (TM owner who didn't want to pay the Sunrise >>>>>>>>>> shakedown price or regular folks like all of us), someone >>>>>>>>>> gets the exclusive rights to that second level. So, it is >>>>>>>>>> not just a question of if, but of when and who. I think it >>>>>>>>>> is OK to just say "I don't want it to be a trademark owner." >>>>>>>>>> Others will disagree, but we don't have to keep this in a >>>>>>>>>> mysterious context or otherwise try to layer on some free >>>>>>>>>> speech issue that doesn't exist. >>>>>>>>>> Trademark owners want them first in order to protect their >>>>>>>>>> brands and consumers. Others who are anti-trademarks don't >>>>>>>>>> want them to have them first and would prefer someone else >>>>>>>>>> gets the exclusive right. >>>>>>>>>> Fair >>>>>>>>>> enough. >>>>>>>>>> Now we see if we can get to consensus on changing the AGB. >>>>>>>>>> I doubt we will, but at least the free speech veneer is >>>>>>>>>> pulled back. >>>>>>>>>> >>>>>>>>>> Best, >>>>>>>>>> Paul >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> -----Original Message----- >>>>>>>>>> From: gnso-rpm-wg-bounces(a)icann.org >>>>>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca >>>>>>>>>> Tushnet >>>>>>>>>> Sent: Wednesday, April 26, 2017 3:11 PM >>>>>>>>>> To: Silver, Bradley <Bradley.Silver(a)timewarner.com> >>>>>>>>>> Cc: gnso-rpm-wg(a)icann.org >>>>>>>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >>>>>>>>>> and >>>>>>>>>> #16 >>>>>>>>>> (Design Mark and Appropriate Balance) >>>>>>>>>> >>>>>>>>>> By that logic the mandate not to expand on trademark rights >>>>>>>>>> would have been pointless because no activity in domain name >>>>>>>>>> space could ever have expanded trademark rights. Call it a >>>>>>>>>> right, call it a privilege, call it an alien from Xenon if >>>>>>>>>> you like, but ICANN did not want trademark owners to be able >>>>>>>>>> to assert control over domain names in excess of what >>>>>>>>>> underlying trademark law would have allowed. >>>>>>>>>> Under >>>>>>>>>> the "nothing in domain names can expand trademark rights >>>>>>>>>> because they're never exclusive" logic, was the ICANN >>>>>>>>>> direction completely meaningless, or did it have some >>>>>>>>>> meaning? (Trademark rights, of course, are never "exclusive" >>>>>>>>>> either, which is why we can use any examples we want in this >>>>>>>>>> discussion.) Rebecca Tushnet Georgetown Law >>>>>>>>>> 703 593 6759 >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via >>>>>>>>>> gnso-rpm-wg <gnso-rpm-wg(a)icann.org> wrote: >>>>>>>>>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>>>>>>>>> Having >>>>>>>>>>> a mark in the TMCH affords nothing close an exclusive right. >>>>>>>>>>> That's a basic >>>>>>>>>>> truth which shouldn’t be ignored. >>>>>>>>>>> >>>>>>>>>>> -----Original Message----- >>>>>>>>>>> From: gnso-rpm-wg-bounces(a)icann.org >>>>>>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy >>>>>>>>>>> Malcolm >>>>>>>>>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>>>>>>>>> To: gnso-rpm-wg(a)icann.org >>>>>>>>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >>>>>>>>>>> and >>>>>>>>>>> #16 >>>>>>>>>>> (Design Mark and Appropriate Balance) >>>>>>>>>>> >>>>>>>>>>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>>>>>>>>> Nice try Rebecca but I'm not attempting to overturn the >>>>>>>>>>>> apple cart. >>>>>>>>>>>> If you have actual examples of problems then provide them >>>>>>>>>>>> otherwise this is an indulgent academic exercise. >>>>>>>>>>> >>>>>>>>>>> The fact that the TMCH is allowing exclusive rights in >>>>>>>>>>> domains that go beyond the equivalent rights in domestic >>>>>>>>>>> trademark law is itself a problem if we accept that the TMCH >>>>>>>>>>> was meant to track trademark law. >>>>>>>>>>> >>>>>>>>>>> -- >>>>>>>>>>> Jeremy Malcolm >>>>>>>>>>> Senior Global Policy Analyst Electronic Frontier Foundation >>>>>>>>>>> https://eff.org jmalcolm(a)eff.org >>>>>>>>>>> >>>>>>>>>>> Tel: 415.436.9333 ext 161 >>>>>>>>>>> >>>>>>>>>>> :: Defending Your Rights in the Digital World :: >>>>>>>>>>> >>>>>>>>>>> Public key: >>>>>>>>>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>>>>>>>>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A >>>>>>>>>>> EDDF >>>>>>>>>>> 1122 >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> ========================================================== >>>>>>>>>>> ========== >>>>>>>>>>> = >>>>>>>>>>> = >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> Reminder: Any email that requests your login credentials or >>>>>>>>>>> that asks you to click on a link could be a phishing attack. >>>>>>>>>>> If you have any questions regarding the authenticity of this >>>>>>>>>>> email or its sender, please contact the IT Service Desk at >>>>>>>>>>> 212.484.6000 or via email at ITServices(a)timewarner.com >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> >>>>>>>>>>> ========================================================== >>>>>>>>>>> ======= This message is the property of Time Warner Inc. >>>>>>>>>>> and is intended only for the use of the >>>>>>>>>>> addressee(s) and may be legally privileged and/or confidential. >>>>>>>>>>> If >>>>>>>>>>> the reader of this message is not the intended recipient, or >>>>>>>>>>> the employee or agent responsible to deliver it to the >>>>>>>>>>> intended recipient, he or she is hereby notified that any >>>>>>>>>>> dissemination, distribution, printing, forwarding, or any >>>>>>>>>>> method of copying of this information, and/or the taking of >>>>>>>>>>> any action in reliance on the information herein is strictly >>>>>>>>>>> prohibited except by the intended recipient or those to whom >>>>>>>>>>> he or she intentionally distributes this message. If you >>>>>>>>>>> have received this communication in error, please >>>>>>>>>>> immediately notify the sender, and delete the original >>>>>>>>>>> message and any copies from your computer or storage system. >>>>>>>>>>> Thank you. >>>>>>>>>>> >>>>>>>>>>> ========================================================== >>>>>>>>>>> ======= >>>>>>>>>>> >>>>>>>>>>> _______________________________________________ >>>>>>>>>>> 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 >>>>>>>>>> >>>>>>>>>> ________________________________ The contents of this message >>>>>>>>>> may be privileged and confidential. >>>>>>>>>> If >>>>>>>>>> this message has been received in error, please delete it >>>>>>>>>> without reading it. Your receipt of this message is not >>>>>>>>>> intended to waive any applicable privilege. Please do not >>>>>>>>>> disseminate this message without the permission of the >>>>>>>>>> author. Any tax advice contained in this email was not >>>>>>>>>> intended to be used, and cannot be used, by you (or any other >>>>>>>>>> taxpayer) to avoid penalties under applicable tax laws and >>>>>>>>>> regulations. >>>>>>> _______________________________________________ >>>>>>> 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 >> >> -- >> >> Greg Shatan >> C: 917-816-6428 >> S: gsshatan >> Phone-to-Skype: 646-845-9428 >> gregshatanipc(a)gmail.com > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ________________________________ > The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

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Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
by Rebecca Tushnet April 28, 2017

April 28, 2017

According to the Second Circuit, the only court to my knowledge to address the issue, PARENTS is a descriptive term for a magazine about parenting; the stylized version is protectable, but not the word. For your convenience, it's Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) ("the trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word 'parent,' such term being more generic than descriptive."). If you have other citations, or even a specific section of McCarthy, I'd be happy to talk about it. Below, I reproduce McCarthy section 11:30 on stylized marks (images omitted). I don't dislike the RPMs; if I did, I'd just be advocating to get rid of them. I do think that Deloitte ignored the limits on what should go into the TMCH, and those limits exist for a good reason. I see the proposal on the table as a solution to that problem. What solutions do you see? 2 McCarthy on Trademarks and Unfair Competition § 11:30 (4th ed.) Even if a descriptive word or composite of words is not registrable as a trademark, a distinctive display of the words is registrable in the same way as any distinctive picture.1 For example, while the term CONSTRUCT-A-CLOSET is merely descriptive of components used to construct storage systems in a closet, the illustrated distinctive display of the words was held to present a distinctive design which is registrable with the words per se disclaimed.2 But such a picture registration is not infringed by use of the exact same words in a significantly different letter style or display.3 For example, where plaintiff owned a registration of the word TEEN in upper case block letters, preceded by an apostrophe, for magazines, the court refused to enjoin PEOPLE magazine's use of TEEN PEOPLE for a magazine aimed at teenagers. The court found that the word “Teen” in plaintiff's registration, apart from its particular stylized presentation, was “an extremely weak mark,” not strong enough that confusion was likely to result from defendant's TEEN PEOPLE magazine mark.4 The Federal Circuit held that the distinctive display of the descriptive words THE SOFA & CHAIR COMPANY (Fig. 11:30B) was registerable, but that a disclaimer of the words apart from the display was necessary because distinctiveness was proven only for the display of the words, not the words themselves.5 Secondary meaning in descriptive words shown in a stylized presentation or logo does not give distinctiveness to the words alone, apart from the distinctive graphic image.6 1 See discussion of the parallel issue of distinctive display of generic names at § 12:40. See T.R. Lee, E.D. DeRosia & G.L. Christensen, An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L. Jour. 1033, 1099 (2009) (“If a descriptive word mark is presented in a spatial placement, size and style that matches the consumer's schematic mental model of what a product package and brand look like, the word may be perceived as a source indicator even if its semantic meaning is ‘merely descriptive.’”). Author's Comment: The authors conclude that this observation “debunks” the premise of the traditional spectrum of distinctiveness. I think the authors erroneously conflate a word with the way in which the word is visually displayed. The two may consist of two different trademarks. 2 In re Clutter Control, Inc., 231 U.S.P.Q. 588 (T.T.A.B. 1986). 3 Chicago Reader, Inc. v. Metro College Publishing, Inc., 495 F. Supp. 441, 211 U.S.P.Q. 411 (N.D. Ill. 1980) (while registration of descriptive term in distinctive type style and lettering is a strong mark, it is not infringed by use in a different lettering style). 4 Time, Inc. v. Petersen Pub. Co., 976 F. Supp. 263, 44 U.S.P.Q.2d 1478 (S.D.N.Y. 1997) (“Its ‘TEEN trademark in its distinctive style does not entitle Petersen to prevent a competitor from using the generic word ‘teen’ as part of a different trademark, to denote a magazine that is targeted to teenagers.”). See later proceedings at Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 50 U.S.P.Q.2d 1474 (2d Cir. 1999) (affirming jury verdict of no infringement, court of appeals remarked that: “[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself.”). 5 In re K-T Zoe Furniture, 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir. 1994) (“[T]he words and the stylized script of ‘the sofa & chair company’ are separable elements and that only the script design of the words was shown to have acquired secondary meaning.”). 6 Leejay v. Bed, Bath & Beyond, Inc., 942 F. Supp. 699, 40 U.S.P.Q.2d 1209 (D. Mass. 1996) (while the plaintiff's stylized presentation of the descriptive words “bed & bath” for retail stores selling items for the bedroom and bathroom may have acquired secondary meaning, the words themselves have no secondary meaning). Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:53 AM, J. Scott Evans <jsevans(a)adobe.com> wrote: > I don't need a citation for black letter trademark. I can point you to McCarthy. I am fully aware that cause celeb with some IP academics is word exhaustion. However, ignoring that PARENTS is a suggestive mark for publications or that certain, even if initially descriptive, can become (at least in the US) a strong mark. I get you are fundamentally opposed to any mark having protection beyond its goods and services (even though both the ACPA and Dilution both embrace those concepts). I also know that trademark law is very fact specific with multi-factored tests to prove infringement. For this reason, you and I could throw citations to support our positions all day long. Let's focus on solutions. I acknowledge you dislike the RPMs and think they are overreaching. > > Sent from my iPhone > >> On Apr 26, 2017, at 6:44 AM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >> >> Citation needed. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >>> On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans(a)adobe.com> wrote: >>> Rebecca: >>> >>> You are simply wrong on the law. >>> >>> Sent from my iPhone >>> >>>> On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>>> >>>> How does stylization translate into the DNS? We know that stylized >>>> PARENTS and OWN YOUR POWER, to take two examples already discussed, >>>> provide no trademark rights in the words "parents" and "own your >>>> power." Accepting stylized versions, as Deloitte currently does, thus >>>> gives TMCH protection to words as to which there is no underlying >>>> trademark protection. "Text" is not an invention by ICANN. >>>> Rebecca Tushnet >>>> Georgetown Law >>>> 703 593 6759 >>>> >>>> >>>>> On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists(a)winston.com> wrote: >>>>> +1 Brian B. and J. Scott. >>>>> >>>>> >>>>> >>>>> The T Markey (stylized) example Kathy gave proves the point I am trying to >>>>> make. There is nothing about that mark which would not translate into the >>>>> DNS or would limit analysis of it by a trademark office on absolute grounds. >>>>> So long as we continue to mash up Stylized marks with other design and >>>>> composite marks, we simply don’t have a functional vocabulary to have this >>>>> conversation. In other words, we have to use well established trademark >>>>> vocabulary to talk about trademarks. We can’t invent our own language and >>>>> then evaluate the TMCH rules through the new language rather than the >>>>> language it was written in. >>>>> >>>>> >>>>> >>>>> Best, >>>>> >>>>> Paul >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> From: J. Scott Evans [mailto:jsevans@adobe.com] >>>>> Sent: Wednesday, April 26, 2017 6:41 AM >>>>> To: Beckham, Brian <brian.beckham(a)wipo.int> >>>>> Cc: Kathy Kleiman <kathy(a)kathykleiman.com>; icannlists >>>>> <icannlists(a)winston.com>; gnso-rpm-wg(a)icann.org >>>>> >>>>> >>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design >>>>> Mark and Appropriate Balance) >>>>> >>>>> >>>>> >>>>> I have several problems with this proposal too. Kathy's conclusory statement >>>>> about how he breadth of protection afforded by a composite or stylized mark >>>>> is incorrect. Second, and more importantly, I am bothered by all the >>>>> hyperbole and accusatory language like "breach", etc. this language is >>>>> emotional and charged with negativity. I think it is inappropriate and not >>>>> productive. >>>>> >>>>> >>>>> >>>>> J. Scott >>>>> >>>>> Sent from my iPhone >>>>> >>>>> >>>>> On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham(a)wipo.int> wrote: >>>>> >>>>> Kathy, >>>>> >>>>> >>>>> >>>>> It’s not clear that the reference to “only marks registered as text” is >>>>> necessarily incompatible with the “T. MARKEY” examples provided. The >>>>> second, stylized version shows a “mark registered as text”. It simply >>>>> happens to be text in a stylized (non-standard) form. >>>>> >>>>> >>>>> >>>>> In other words, a mark “registered as text” may not necessarily be >>>>> exclusively the same as (in USPTO parlance) “a standard character mark”. >>>>> >>>>> >>>>> >>>>> It may therefore not be entirely accurate to suggest that if the TMCH >>>>> allowed the second “T. MARKEY” example in stylized form (again, arguably a >>>>> mark “registered as text”) versus the standard character version, it would >>>>> somehow be “expand[ing] existing trademark rights”. >>>>> >>>>> >>>>> >>>>> Brian >>>>> >>>>> >>>>> >>>>> From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] >>>>> On Behalf Of Kathy Kleiman >>>>> Sent: Wednesday, April 26, 2017 5:12 AM >>>>> To: icannlists; gnso-rpm-wg(a)icann.org >>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design >>>>> Mark and Appropriate Balance) >>>>> >>>>> >>>>> >>>>> Hi Paul, >>>>> Apologies. I saw your thanks, but not your notes farther down. (For those of >>>>> us skimming hundreds of emails, feel free to use use >>>>> red/green/stars/asterisks to designate comments...) I caught it on a >>>>> re-read... >>>>> >>>>> Quick note that the purpose of this recommendation is to share what is >>>>> clearly before the Working Group: that rules created for the Trademark >>>>> Clearinghouse process are not being followed. The goal is not to delve into >>>>> motive or intent, but rather compliance and review. The actions of our TMCH >>>>> database provider, as an ICANN contractor, must follow and comply with the >>>>> rules as set out by the ICANN Community. >>>>> >>>>> If we want to change the rules, that's fine; we can do it by consensus. But >>>>> until that happens, the rules adopted unanimously by the GNSO Council and >>>>> ICANN Board are the policy. It's not for third parties to make their own or >>>>> follow a different set. >>>>> >>>>> Paul, I'll respond to what I think are your questions below. My answers are >>>>> preceded by => >>>>> Best, Kathy >>>>> >>>>> >>>>> On 4/19/2017 8:23 PM, icannlists wrote: >>>>> >>>>> Hi Kathy, >>>>> >>>>> >>>>> >>>>> Thank you so much for being willing to put forward a proposal. I know this >>>>> is hard work (having put forward one on the GIs myself this week!) so it is >>>>> appreciated. >>>>> >>>>> >>>>> >>>>> I am getting my initial thoughts on this out to the list on this as quickly >>>>> as possible in the hopes that your proposal can be reworked a bit prior to >>>>> our next WG call. A few thoughts: >>>>> >>>>> >>>>> >>>>> 1. We have learned that Deloitte is accepting the words of design >>>>> marks, composite marks, figurative marks, stylized marks, mixed marks, and >>>>> any similar combination of characters and design (collectively “design >>>>> marks”). >>>>> >>>>> >>>>> >>>>> We spent the better half of our last call untangling these definitions and >>>>> to see them lumped in together again when these are not the same things >>>>> makes the proposal impossible to read for we trademark folks. It would be >>>>> great if we could include the clarity we achieved last week. >>>>> >>>>> ==> The category is meant to be comprehensive and international. >>>>> >>>>> >>>>> >>>>> >>>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>>> expressly bar the acceptance of design marks into the TMCH Database. >>>>> >>>>> >>>>> >>>>> >>>>> This is just inaccurate as written, mostly, but not entirely, by the way you >>>>> have defined the terms. For example, I know of no GNSO Council prohibition >>>>> that would reject a mark just because it is in a cursive font instead of >>>>> plain block font. Can you either fix this or send us to a link supporting >>>>> the claim? Perhaps if you unpack your collective definition, resulting a >>>>> more precise claim and provide the link, that might give us something to >>>>> talk about. As written now, I’ve just come to a halt on it because it >>>>> doesn’t reflect the facts on the ground. >>>>> >>>>> ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded >>>>> Discussion" discussion which follows in my recommendation directly below the >>>>> opening section and explains exactly where this sentence comes from and what >>>>> it references. I'm happy to paste some of this discussion here too. The STI >>>>> Final Report (adopted by GNSO Council and ICANN Board) stated: >>>>> >>>>> “The TC Database should be required to include nationally or multinationally >>>>> registered “text mark” trademarks, from all jurisdictions, (including >>>>> countries where there is no substantive review). (The trademarks to be >>>>> included in the TC are text marks because “design marks” provide protection >>>>> for letters and words only within the context of their design or logo and >>>>> the STI was under a mandate not to expand existing trademark rights.) >>>>> Emphasis added. Section 4.1, National or Multinational Registered Marks, >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann… >>>>> >>>>> >>>>> >>>>> ==> The words mean exactly what they say - only marks registered as text can >>>>> be registered into the Trademark Clearinghouse; nothing that "provide[s] >>>>> protection for letters and words only within the content of their design or >>>>> logo." It states why: "the STI was under a mandate not to expand existing >>>>> trademark rights." The issue was the balancing of underlying concept adopted >>>>> here as part of the rights of trademark owners and the rights of current and >>>>> future registrants. Domain names are text based. >>>>> >>>>> >>>>> ==> We certainly meant to differentiate a trademark in a "cursive font >>>>> instead of a plain text font." That's the whole purpose for Section 4.1's >>>>> text, and the unusual extra step of including the explanation right next to >>>>> it. Those of us who worked on this section (including myself and Dr. >>>>> Konstantinos Komaitis, whose PhD became the book The Current State of Domain >>>>> Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated >>>>> World) spent a lot of time on this issue. In evaluating it, the STI Final >>>>> Report followed the guidance of experts such as those at the US Trademark >>>>> Office regarding the different representation of marks: >>>>> >>>>> [USPTO Representation of Mark] "During the application process for a >>>>> standard character mark, the USPTO will depict the mark in a simple >>>>> standardized typeface format. However, it is important to remember that >>>>> this depiction does not limit or control the format in which you actually >>>>> "use" the mark. In other words, the rights associated with a mark in >>>>> standard characters reside in the wording (or other literal element, e.g., >>>>> letters, numerals, punctuation) and not in any particular display. >>>>> Therefore, registration of a standard character mark would entitle you to >>>>> use and protect the mark in any font style, size, or color. It is for this >>>>> reason that a standard character mark can be an attractive option for many >>>>> companies." >>>>> >>>>> "The stylized/design format, on the other hand, is appropriate if you wish >>>>> to register word(s) by themselves or combined to form a phrase of any length >>>>> and/or letter(s) having a particular stylized appearance, a mark consisting >>>>> of a design element, or a combination of stylized wording and a design. Once >>>>> filed, any design element will be assigned a “design code,” as set forth in >>>>> the Design Search Code Manual." >>>>> >>>>> "Here is an example of a standard character mark: >>>>> >>>>> <image001.jpg>" >>>>> >>>>> "Here are some examples of special form marks: >>>>> >>>>> <image002.jpg> <image003.jpg> >>>>> >>>>> <image004.jpg>" >>>>> >>>>> Quotes above from >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.… >>>>> >>>>> The rest of the recommendation follows from these finding. Again, this not a >>>>> matter of a good job or a bad job -- no value judgement is intended. Rather >>>>> it is a compliance and review issue. Are the rules followed? The answer is >>>>> no. >>>>> >>>>> Best, Kathy >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>>> adopted and must revise its practice to follow the ruls adopted by the GNSO >>>>> Council and ICANN Board for TMCH operation. >>>>> >>>>> >>>>> >>>>> In order to buy this conclusion, the premises have to be correct, but the >>>>> premises (as mentioned in 1 and 2) are not close to ready. I have to >>>>> suspend consideration of the conclusion contained in this paragraph due to >>>>> the faulty syllogism we have in front of us. Maybe if you make the edits in >>>>> 1 and 2 suggested, we can then examine whether or not your paragraph 3 >>>>> conclusion is correct, partially correct, or incorrect. >>>>> >>>>> >>>>> >>>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>>> and present the GNSO Council and ICANN Board with an expanded set of rules >>>>> that Deloitte, or any future TMCH Provider, must follow. >>>>> >>>>> I guess I don’t understand this. Are you saying that if Deloitte is not in >>>>> breach by letting in marks written in cursive fonts, then the WG can by >>>>> Consensus propose changes? I’m not sure that the two things are connected. >>>>> >>>>> >>>>> >>>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>>> Further details, information and explanation below. >>>>> >>>>> >>>>> >>>>> Same response as #3 above. Also, this really confused paragraph 4 for me >>>>> further. It seemed like paragraph 4 indicated that if paragraph 3 were not >>>>> accurate, consensus driven solutions would be possible (again not sure those >>>>> two things are connected) but then you go on to say in 5 that conclusions in >>>>> 3 are a foregone conclusion (thus obviating any perceivable need for >>>>> paragraph 4). >>>>> >>>>> >>>>> >>>>> I’m sure other thoughts will come to me as we dig in to either this version >>>>> or an amended version, but these were the issues that jumped out at me right >>>>> away. If you could respond to the full list on this as soon as practical, I >>>>> would appreciate it. >>>>> >>>>> >>>>> >>>>> Best, >>>>> >>>>> Paul >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] >>>>> On Behalf Of Kathy Kleiman >>>>> Sent: Wednesday, April 19, 2017 6:18 PM >>>>> To: gnso-rpm-wg(a)icann.org >>>>> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark >>>>> and Appropriate Balance) >>>>> >>>>> >>>>> >>>>> Hi All, >>>>> >>>>> As promised, I am resubmitting a new version of my earlier recommendation. >>>>> It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate >>>>> Balance). I submit this recommendation to the Working Group in my capacity >>>>> as a member and not as a co-chair. >>>>> >>>>> Text below and also attached as a PDF. >>>>> >>>>> Best, Kathy >>>>> >>>>> ------------------------------------------------------ >>>>> >>>>> >>>>> >>>>> Design Mark Recommendation for Working Group - for Question #7 and Question >>>>> #16 of TMCH Charter Questions (#7, How are design marks currently handled by >>>>> the TMCH provider?; and #16, Does the scope of the TMCH and the protections >>>>> mechanisms which flow from it reflect the appropriate balance between the >>>>> rights of trademark holders and the rights of non-trademark registrants?) >>>>> >>>>> >>>>> >>>>> We (the RPM Working Group) have found a problem: >>>>> >>>>> 1. We have learned that Deloitte is accepting the words of design >>>>> marks, composite marks, figurative marks, stylized marks, mixed marks, and >>>>> any similar combination of characters and design (collectively “design >>>>> marks”). >>>>> >>>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>>> expressly bar the acceptance of design marks into the TMCH Database. >>>>> >>>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>>> adopted and must revise its practice to follow the rules adopted by the GNSO >>>>> Council and ICANN Board for TMCH operation. >>>>> >>>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>>> and present the GNSO Council and ICANN Board with an expanded set of rules >>>>> that Deloitte, or any future TMCH Provider, must follow. >>>>> >>>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>>> Further details, information and explanation below. >>>>> >>>>> >>>>> >>>>> Expanded Discussion >>>>> >>>>> >>>>> >>>>> A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN >>>>> Board >>>>> >>>>> The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report >>>>> and IRT Recommendations) that were very clear about the type of mark to be >>>>> accepted by the Trademark Clearinghouse: >>>>> >>>>> “4.1 National or Multinational Registered Marks The TC Database should be >>>>> required to include nationally or multinationally registered “text mark” >>>>> trademarks, from all jurisdictions, (including countries where there is no >>>>> substantive review).” >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann… >>>>> >>>>> >>>>> >>>>> Further, the adopted rules themselves are very clear about the Harm of >>>>> putting design marks into the TMCH Database: >>>>> >>>>> “[Also 4.1] (The trademarks to be included in the TC are text marks because >>>>> “design marks” provide protection for letters and words only within the >>>>> context of their design or logo and the STI was under a mandate not to >>>>> expand existing trademark rights.) >>>>> >>>>> >>>>> >>>>> The Applicant Guidebook adopted the same requirements, as it must and >>>>> should, namely: >>>>> >>>>> “3.2:Standards for inclusion in the Clearinghouse >>>>> >>>>> 3.2.1 Nationally or regionally registered word marks from all >>>>> jurisdictions” >>>>> >>>>> >>>>> >>>>> Nonetheless, and in violation of the express rules adopted by the GNSO >>>>> Council and ICANN Board and placed into the Applicant Guidebook, TMCH >>>>> Provider Deloitte is accepting into the TMCH database words and letters it >>>>> has extracted from composite marks, figurative marks, stylized marks, >>>>> composite marks and mixed marks. Deloitte is removing words and letters from >>>>> designs, patterns, special lettering and other patterns, styles, colors, and >>>>> logos which were integral to the trademark as accepted by the national or >>>>> regional trademark office. >>>>> >>>>> >>>>> >>>>> B. Harm from the Current Form >>>>> >>>>> The harm from this acceptance is that it violates the rules under which >>>>> Deloitte is allowed to operate. It creates a situation in which Deloitte is >>>>> operating under its own authority, not that of ICANN and the ICANN >>>>> Community. Such action, in violation of rules clearly adopted by the GNSO >>>>> Council and ICANN Board and written into the New gTLD Applicant Guidebook, >>>>> gives too much power to Deloitte -- a contractor of ICANN, to make its own >>>>> rules and adopt its own protocol without regard to the scope, breadth and >>>>> reach of the governing rules. >>>>> >>>>> >>>>> >>>>> It is the type of misconduct anticipated by the GNSO Council and ICANN >>>>> Board, and why the rules demand that ICANN hold a close relationship with >>>>> the TMCH Provider by contract to allow close oversight and correction of >>>>> misinterpretation or failure to follow the rules. (See, 3.1 in Relationship >>>>> with ICANN, Special Trademark Issues Review Team Recommendations). >>>>> >>>>> >>>>> >>>>> C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version >>>>> of the Registration Marks >>>>> >>>>> Further, words and letters within a composite marks, figurative marks, >>>>> stylized marks, and mixed marks are protected within the scope of the >>>>> designs, logos, lettering, patterns, colors, etc. That's not a Working Group >>>>> opinion, that's a legal opinion echoed through case law and UDRP decisions. >>>>> >>>>> >>>>> >>>>> In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. >>>>> D2012-1064, the Panel found: >>>>> >>>>> “Complainant has shown that it owns two trademark registrations in >>>>> Argentina. The Panel notes that both registrations are for “mixed” marks, >>>>> where each consists of a composition made of words and graphic elements, >>>>> such as stylized fonts, a roof of a house, etc. See details of the >>>>> registrations with drawings at section 4 above. >>>>> >>>>> >>>>> >>>>> “As explained on the INPI website, “[m] ixed (marks) are those constituted >>>>> by the combination of word elements and figurative elements together, or of >>>>> word elements in stylized manner.” Accordingly, the protection granted by >>>>> the registration of a mixed mark is for the composition as a whole, and not >>>>> for any of its constituting elements in particular. Thus, Complainant is not >>>>> correct when he asserts that it has trademark rights in the term “cabañas” >>>>> (standing alone), based on these mixed trademark registrations.” >>>>> >>>>> >>>>> >>>>> Similarly, in the US, federal courts have found that the presumption of >>>>> trademark validity provided by registration does not extend to the >>>>> non-stylized versions of the registration marks. See e.g., >>>>> >>>>> Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. >>>>> 2005) (registration of stylized mark didn’t extend protection to nonstylized >>>>> uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing >>>>> with special form mark whose words were unprotectable absent stylization), >>>>> aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. >>>>> >>>>> Cir. 2016). >>>>> >>>>> >>>>> >>>>> D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN >>>>> Board Agreed to Provide Trademark Owners. >>>>> >>>>> >>>>> >>>>> As has been pointed out in our Working Group calls, the STI evaluations and >>>>> IRT evaluations were long and hard and both groups decided in their >>>>> recommendations to protect only the word mark – the text itself when the >>>>> text was registered by itself. Neither allowed for the extraction of a word >>>>> or letters from amidst a pattern, style, composite or mixed marks; neither >>>>> created a process for doing so; neither accorded the discretion to the TMCH >>>>> Provider (now Deloitte) to adopt any processes to handle this process >>>>> independently. >>>>> >>>>> >>>>> >>>>> The STI clearly elaborated its reasoning: that extracting a word or letters >>>>> from a larger design, gives too many rights to one trademark owner over >>>>> others using the same words or letters. As clearly elaborated in the STI >>>>> Recommendations and adopted by the GNSO Council and ICANN Board >>>>> (unanimously), it would be an unfair advantage for one trademark owner over >>>>> others using the same words or letters. Specifically: >>>>> >>>>> “(The trademarks to be included in the TC are text marks because “design >>>>> marks” provide protection for letters and words only within the context of >>>>> their design or logo and the STI was under a mandate not to expand existing >>>>> trademark rights.)” >>>>> >>>>> >>>>> >>>>> To the extent that Deloitte as a TMCH Provider is operating within its >>>>> mandate, and the limits of the rules and contract imposed on it, it may not >>>>> take steps to expand existing trademark rights. The rights, as granted by >>>>> national and regional trademark offices are rights that expressly include >>>>> the patterns, special lettering and other styles, colors, and logos that are >>>>> a part of the trademark granted by the Trademark Office and certification >>>>> provided by each Trademark Office and presented to the Trademark >>>>> Clearinghouse. >>>>> >>>>> >>>>> >>>>> II. Breach and Correction >>>>> >>>>> >>>>> >>>>> Accordingly, Deloitte is in breach of the rules that ICANN adopted and must >>>>> revise its practice to go to follow the rules adopted by the GNSO Council >>>>> and ICANN Board. Deloitte’s extraction of words and letters from patterns, >>>>> special lettering, styles, colors and logos, as outlined above, violates the >>>>> rules adopted by the GNSO Council and ICANN Board for the Trademark >>>>> Clearinghouse operation. >>>>> >>>>> >>>>> >>>>> Bringing Deloitte’s operation of the TMCH – and its terms and requirements - >>>>> rules does not require a consensus of the Working Group. Rather, it is a >>>>> fundamental aspect of our job as a Working Group, as laid out by the GNSO >>>>> Council in our charter, to review the operation of the Trademark >>>>> Clearinghouse in compliance with its rules. As Deloitte is not operating in >>>>> compliance with its rules in this area, it is in breach and must come into >>>>> compliance. The excellent work of the Working Group in this area, and >>>>> finding this problem through hard work and research, should be sufficient >>>>> for ICANN Staff to act in enforcement of its contract and our rules. Point >>>>> it out clearly and directly to Deloitte, to ICANN Board and Staff, and to >>>>> the ICANN Community is one small additional step the Working Group might >>>>> take. >>>>> >>>>> >>>>> >>>>> Alternatively, the Working Group by consensus may CHANGE the rules and >>>>> present to the GNSO Council and ICANN Board a new set of standards by which >>>>> Deloitte (or any future TMCH provider) may use to accept the design and >>>>> stylized marks currently barred by the rules. But such a step would require >>>>> a change to the ICANN rules under which the Trademark Clearinghouse operate, >>>>> and then acceptance by the GNSO Council and ICANN Board. ICANN contractors >>>>> do not have the unilateral power to make their own rules or to change the >>>>> rule that are given them. >>>>> >>>>> >>>>> >>>>> ________________________________ >>>>> >>>>> The contents of this message may be privileged and confidential. If this >>>>> message has been received in error, please delete it without reading it. >>>>> Your receipt of this message is not intended to waive any applicable >>>>> privilege. Please do not disseminate this message without the permission of >>>>> the author. Any tax advice contained in this email was not intended to be >>>>> used, and cannot be used, by you (or any other taxpayer) to avoid penalties >>>>> under applicable tax laws and regulations. >>>>> >>>>> >>>>> >>>>> World IP Day 2017 – Join the conversation >>>>> >>>>> Web: https://na01.safelinks.protection.outlook.com/?url=www.wipo.int%2Fipday&dat… >>>>> >>>>> Facebook: https://na01.safelinks.protection.outlook.com/?url=www.facebook.com%2Fworld… >>>>> >>>>> >>>>> >>>>> World Intellectual Property Organization Disclaimer: This electronic message >>>>> may contain privileged, confidential and copyright protected information. If >>>>> you have received this e-mail by mistake, please immediately notify the >>>>> sender and delete this e-mail and all its attachments. Please ensure all >>>>> e-mail attachments are scanned for viruses prior to opening or using. >>>>> >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg(a)icann.org >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o… >>>>> >>>>> >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg(a)icann.org >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…

12 37

Glossary of terms related to design marks and GIs
by Mary Wong April 28, 2017

April 28, 2017

Dear all, As requested by the Working Group members who were present on the call yesterday, staff has gone ahead and prepared a glossary comprising a list of definitions and additional information relating to the terms highlighted on the call and that have to do with design marks and GIs. We are very well aware that there are a number of highly experienced trademark practitioners from around the world, as well as many experts on the topic, in this Working Group. As we pulled together this list from existing sources we had bookmarked combined with some background (possibly outdated!) knowledge, it is likely that we may have omitted more authoritative sources or accurate information. As such, please let us know if you see any errors or omissions. We wanted to get you this list sooner rather than later, however, to facilitate your ongoing discussions over the various terms that have been used to describe types of “design marks” as well as over the scope of GIs and their interface with trademarks. We hope this is helpful. As also noted on the Working Group call, we will work with the co-chairs to try to develop a survey to find out if and how Working Group members may wish to distinguish between the various types of design marks in moving forward. Thanks and cheers Mary

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Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
by Rebecca Tushnet April 27, 2017

April 27, 2017

Forwarding to match. If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: > Your guess -- and overdeterrence is just a guess, with nothing to back it up > -- is as good as mine. My guess is that it absolutely is not > overdeterrence. > > And my point was that your statement was a mischaracterization of the way > the TMCH, Sunrise and Claims work, as well as a mischaracterization of how > trademarks work. So I don't think "My point exactly" is what you meant to > say (though I wish it were). > > Greg > > Greg Shatan > C: 917-816-6428 > S: gsshatan > Phone-to-Skype: 646-845-9428 > gregshatanipc(a)gmail.com > > > On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet > <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >> >> My point exactly. So what explains the over 90% abandonment rate, >> other than overdeterrence, especially with those most returned terms? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc(a)gmail.com> >> wrote: >> > "Maybe absolutely no one else besides the TMCH entrant/s had a >> > legitimate >> > business using those terms." >> > >> > That is clearly and absolutely not the basis of trademark rights, >> > trademark >> > registration or entry into the TMCH. Nor is it the way Sunrise or >> > Claims >> > work. Ridiculous. >> > >> > Greg >> > >> > Greg Shatan >> > C: 917-816-6428 >> > S: gsshatan >> > Phone-to-Skype: 646-845-9428 >> > gregshatanipc(a)gmail.com >> > >> > >> > On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet >> > <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >> >> >> >> Yes, because we don't have good survey evidence, one of the questions >> >> is what we can infer from the circumstantial evidence available to us, >> >> particularly the over 90% abandonment rate combined with the top >> >> queries being words like forex, cloud, and love. Maybe absolutely no >> >> one else besides the TMCH entrant/s had a legitimate business using >> >> those terms. But I doubt it. >> >> Rebecca Tushnet >> >> Georgetown Law >> >> 703 593 6759 >> >> >> >> >> >> On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists(a)winston.com> >> >> wrote: >> >> > Thanks Rebecca. I've never heard of a trademark owner being deterred >> >> > by >> >> > a claims notice since one of the explicit defenses in the UDRP is >> >> > when a >> >> > registrant has rights or legitimate interests in a corresponding >> >> > trademark. >> >> > So, I think that one may be a bit of a red herring. >> >> > >> >> > However, your comment about avoiding overreach is well received and >> >> > we >> >> > should keep it in mind while at the same time not under-reaching >> >> > either - >> >> > when we do that, Grandma gets phished. >> >> > >> >> > Best, >> >> > Paul >> >> > >> >> > >> >> > >> >> > -----Original Message----- >> >> > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >> >> > Sent: Wednesday, April 26, 2017 9:17 PM >> >> > To: icannlists <icannlists(a)winston.com> >> >> > Cc: Silver, Bradley <Bradley.Silver(a)timewarner.com>; >> >> > gnso-rpm-wg(a)icann.org >> >> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> >> > (Design Mark and Appropriate Balance) >> >> > >> >> > Avoiding overreaching is pro-trademark, as the public reaction to >> >> > SOPA/PIPA and patent trolls has shown with respect to copyright and >> >> > patent. >> >> > There are also the interests of trademark owners who aren't >> >> > participating in >> >> > this process but may want to register domain names that are perfectly >> >> > legitimate for their goods/services and jurisdictions. Some of them >> >> > may >> >> > inevitably receive notices and be deterred, but there are steps we >> >> > can take >> >> > to limit that problem. >> >> > Rebecca Tushnet >> >> > Georgetown Law >> >> > 703 593 6759 >> >> > >> >> > >> >> > On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists(a)winston.com> >> >> > wrote: >> >> >> Thanks Rebecca. I'm not characterizing you as anti-trademark; just >> >> >> your arguments and positions to date on this list. We would very >> >> >> much >> >> >> welcome anything favorable to trademarks that you wish to add to the >> >> >> discourse. >> >> >> >> >> >> Best, >> >> >> Paul >> >> >> >> >> >> >> >> >> >> >> >> -----Original Message----- >> >> >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >> >> >> Sent: Wednesday, April 26, 2017 8:00 PM >> >> >> To: icannlists <icannlists(a)winston.com> >> >> >> Cc: Silver, Bradley <Bradley.Silver(a)timewarner.com>; >> >> >> gnso-rpm-wg(a)icann.org >> >> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> >> >> (Design Mark and Appropriate Balance) >> >> >> >> >> >> Please don't characterize me as anti-trademark; I strongly believe >> >> >> in >> >> >> the consumer protection function of trademarks, and also in >> >> >> trademark >> >> >> protection in some circumstances for business purposes. See >> >> >> >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra >> >> >> tion-in-modern-american-trademark-law/ >> >> >> >> >> >> Asking again: for those of you who think it doesn't matter if >> >> >> claimants >> >> >> who don't own relevant rights get to use the TMCH, what then did >> >> >> ICANN mean >> >> >> by its stated intent not to expand trademark rights? >> >> >> Rebecca Tushnet >> >> >> Georgetown Law >> >> >> 703 593 6759 >> >> >> >> >> >> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists(a)winston.com> >> >> >> wrote: >> >> >>> Thanks Rebecca. There is not much new here. Whomever registers a >> >> >>> second level domain name first (Sunrise - TM owner), Premium (Rich >> >> >>> person) >> >> >>> or Landrush (TM owner who didn't want to pay the Sunrise shakedown >> >> >>> price or >> >> >>> regular folks like all of us), someone gets the exclusive rights to >> >> >>> that >> >> >>> second level. So, it is not just a question of if, but of when and >> >> >>> who. I >> >> >>> think it is OK to just say "I don't want it to be a trademark >> >> >>> owner." >> >> >>> Others will disagree, but we don't have to keep this in a >> >> >>> mysterious context >> >> >>> or otherwise try to layer on some free speech issue that doesn't >> >> >>> exist. >> >> >>> Trademark owners want them first in order to protect their brands >> >> >>> and >> >> >>> consumers. Others who are anti-trademarks don't want them to have >> >> >>> them >> >> >>> first and would prefer someone else gets the exclusive right. Fair >> >> >>> enough. >> >> >>> Now we see if we can get to consensus on changing the AGB. I doubt >> >> >>> we will, >> >> >>> but at least the free speech veneer is pulled back. >> >> >>> >> >> >>> Best, >> >> >>> Paul >> >> >>> >> >> >>> >> >> >>> >> >> >>> -----Original Message----- >> >> >>> From: gnso-rpm-wg-bounces(a)icann.org >> >> >>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet >> >> >>> Sent: Wednesday, April 26, 2017 3:11 PM >> >> >>> To: Silver, Bradley <Bradley.Silver(a)timewarner.com> >> >> >>> Cc: gnso-rpm-wg(a)icann.org >> >> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> >> >>> (Design Mark and Appropriate Balance) >> >> >>> >> >> >>> By that logic the mandate not to expand on trademark rights would >> >> >>> have been pointless because no activity in domain name space could >> >> >>> ever have expanded trademark rights. Call it a right, call it a >> >> >>> privilege, call it an alien from Xenon if you like, but ICANN did >> >> >>> not >> >> >>> want trademark owners to be able to assert control over domain >> >> >>> names >> >> >>> in excess of what underlying trademark law would have allowed. >> >> >>> Under >> >> >>> the "nothing in domain names can expand trademark rights because >> >> >>> they're never exclusive" logic, was the ICANN direction completely >> >> >>> meaningless, or did it have some meaning? (Trademark rights, of >> >> >>> course, are never "exclusive" either, which is why we can use any >> >> >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >> >> >>> Law >> >> >>> 703 593 6759 >> >> >>> >> >> >>> >> >> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >> >> >>> <gnso-rpm-wg(a)icann.org> wrote: >> >> >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >> >> >>>> Having >> >> >>>> a mark in the TMCH affords nothing close an exclusive right. >> >> >>>> That's a basic >> >> >>>> truth which shouldn’t be ignored. >> >> >>>> >> >> >>>> -----Original Message----- >> >> >>>> From: gnso-rpm-wg-bounces(a)icann.org >> >> >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm >> >> >>>> Sent: Wednesday, April 26, 2017 1:32 PM >> >> >>>> To: gnso-rpm-wg(a)icann.org >> >> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> >> >>>> (Design Mark and Appropriate Balance) >> >> >>>> >> >> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >> >> >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >> >> >>>>> cart. >> >> >>>>> If you have actual examples of problems then provide them >> >> >>>>> otherwise this is >> >> >>>>> an indulgent academic exercise. >> >> >>>> >> >> >>>> The fact that the TMCH is allowing exclusive rights in domains >> >> >>>> that >> >> >>>> go beyond the equivalent rights in domestic trademark law is >> >> >>>> itself a >> >> >>>> problem if we accept that the TMCH was meant to track trademark >> >> >>>> law. >> >> >>>> >> >> >>>> -- >> >> >>>> Jeremy Malcolm >> >> >>>> Senior Global Policy Analyst >> >> >>>> Electronic Frontier Foundation >> >> >>>> https://eff.org >> >> >>>> jmalcolm(a)eff.org >> >> >>>> >> >> >>>> Tel: 415.436.9333 ext 161 >> >> >>>> >> >> >>>> :: Defending Your Rights in the Digital World :: >> >> >>>> >> >> >>>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >> >> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 >> >> >>>> >> >> >>>> >> >> >>>> >> >> >>>> ==================================================================== >> >> >>>> = >> >> >>>> = >> >> >>>> >> >> >>>> >> >> >>>> >> >> >>>> Reminder: Any email that requests your login credentials or that >> >> >>>> asks you to click on a link could be a phishing attack. If you >> >> >>>> have >> >> >>>> any questions regarding the authenticity of this email or its >> >> >>>> sender, please contact the IT Service Desk at 212.484.6000 or via >> >> >>>> email at ITServices(a)timewarner.com >> >> >>>> >> >> >>>> >> >> >>>> >> >> >>>> >> >> >>>> ================================================================= >> >> >>>> This message is the property of Time Warner Inc. and is intended >> >> >>>> only for the use of the >> >> >>>> addressee(s) and may be legally privileged and/or confidential. If >> >> >>>> the reader of this message is not the intended recipient, or the >> >> >>>> employee or agent responsible to deliver it to the intended >> >> >>>> recipient, he or she is hereby notified that any dissemination, >> >> >>>> distribution, printing, forwarding, or any method of copying of >> >> >>>> this >> >> >>>> information, and/or the taking of any action in reliance on the >> >> >>>> information herein is strictly prohibited except by the intended >> >> >>>> recipient or those to whom he or she intentionally distributes >> >> >>>> this >> >> >>>> message. If you have received this communication in error, please >> >> >>>> immediately notify the sender, and delete the original message and >> >> >>>> any >> >> >>>> copies from your computer or storage system. Thank you. >> >> >>>> ================================================================= >> >> >>>> >> >> >>>> _______________________________________________ >> >> >>>> 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 >> >> >>> >> >> >>> ________________________________ >> >> >>> The contents of this message may be privileged and confidential. If >> >> >>> this message has been received in error, please delete it without >> >> >>> reading >> >> >>> it. Your receipt of this message is not intended to waive any >> >> >>> applicable >> >> >>> privilege. Please do not disseminate this message without the >> >> >>> permission of >> >> >>> the author. Any tax advice contained in this email was not intended >> >> >>> to be >> >> >>> used, and cannot be used, by you (or any other taxpayer) to avoid >> >> >>> penalties >> >> >>> under applicable tax laws and regulations. >> >> _______________________________________________ >> >> gnso-rpm-wg mailing list >> >> gnso-rpm-wg(a)icann.org >> >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> > >> > > >

9 19

Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew April 27, 2017

April 27, 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 Thursday, 27 April 2017 at 03:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/NtHRAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-27apr17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p8ykginjlpq/?OWASP_CSRFTOKEN=270a392f7eacd741 b08abf3f2654f84519ad6e8cf34f5cf5e6c5e8497ddb0bc4> https://participate.icann.org/p8ykginjlpq/ 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 27 April 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Thursday, 27 April 2017 at 03:00 UTC for 90 minute duration Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_N tHRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ NtHRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJl E&s=aWeu0PZUkvlPCDTVl5G7FQ2ZNYdDW-OSQYKiuuMFGBs&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=aW eu0PZUkvlPCDTVl5G7FQ2ZNYdDW-OSQYKiuuMFGBs&e= Jeff Neuman:Small crowd :) I am not yet on audio Amr Elsadr:Hi Terri. Not on audio yet. Amr Elsadr:Hi Jeff. Jeff Neuman:Hi Amr....hoping you like your new gig :) Amr Elsadr:No complaints so far. :-) Amr Elsadr:Thanks. Jeff Neuman:you joined a great team Philip Corwin:Hello all Maxim Alzoba (FAITID):Hello All Maxim Alzoba (FAITID):Hello All George Kirikos:Hi folks. Maxim Alzoba (FAITID):6am here George Kirikos:They're unapologetic. :-) George Kirikos:Anyone here from Asia/Pacific? Mary Wong:Do I count, George, since I'm there much of the time, though not tonight? :) George Kirikos:If Asia/Pacific doesn't show up, we should drop this time slot. Mary Wong:Justine is here Steve Levy:Hello all. Hope this is a good call time for at least some of you! Jeff Neuman:@Mary - True, but since we have a number of proposals to discuss, we should at least have the proponents of the proposals on here Paul McGrady:Calls are nice. It gives us a break from our 24/7 Listserv! George Kirikos:Plus the subteam people should be here, for #2. George Kirikos:It looks like 1 out of those 3 are here, so far. Mary Wong:@Jeff, Paul and Greg had said they will be on, and they are. Michael G had said he might not, but the co-chairs had noted that it might be possible to hold his proposal over till next week. Michael had also noted for the co-chairs and staff that his proposal seems pretty self explanatory. Martin Silva:Hi all Mary Wong:Kristine from Claims Sub Team as co-chair is here Paul McGrady:@Phil - thanks! Kristine Dorrain - Amazon Registry Services:I was on the Sunrise call with Lori. We had a good discussion there as well. Those questions have been substantially "bundled" and we're also suggesting language changes as I recall. (If I may be so bold as to speak up for that group). Maxim Alzoba (FAITID):from #Sunrise , questions are being put in batches (having the same idea in ech one) , collected input from sub-group members, next call tomorrow Brian Cimbolic:thanks, Paul - was wondering the same thing Maxim Alzoba (FAITID):can not use mic - too early George Kirikos:Isn't the 2nd question from Greg Shatan? George Kirikos:(I mean 2nf proposal) George Kirikos:*2nd Mary Wong:Yes, two proposals on Q7 - from Kathy and Greg. And two on Q8 - from Kathy and Paul. George Kirikos:Page 2 has Greg's. Jeff Neuman:page 2 :) David McAuley:isn't #2 from Greg George Kirikos:Page 2. Amr Elsadr:Greg's proposal is on page 2. Rationale for all proposals are in a seperate table starting on page 3. Paul McGrady:My only objection to this late night call, is that due to unforseen circumstances I don't also have an unreasonably early morning time ICANN call tomorrow. Poor planning on my part. Amr Elsadr:Apologies, rationale for proposals start on page 7. Mary Wong:@Paul, we can fix that :) Paul McGrady:@Mary: ha! Jeff Neuman:@Paul - I wish i could say the same :) Paul McGrady:@Jeff - you are just better at this than me. Jeff Neuman:better? No, more of a glutton for punishment than you Kathy Kleiman:I'm happy to let Greg do first David McAuley:flip a virtual coin? David McAuley:a bit coin? Jeff Neuman:Alphabetical by last name (which is the same) Mary Wong:The proposal Kathy withdrew is NOT on the table David McAuley:Thanks Mary Jeff Neuman:Or you can just describe the proposal without reading the words? George Kirikos:Expanded discussion on page 7? George Kirikos:I was shocked that they accepted each and every one of those examples. Paul McGrady:Hard to understand the proposal since it lumps design marks in with other kinds of marks. Are these proposals supposed to be limited to design marks? Looks like it is. Jeff Neuman:They should be posted on the wiki as opposed to redistributed on email Colin O'Brien:We need clarification terms. George Kirikos:Here's Deloitte's response (starting on page 4 for the examples): http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170414/4591dc7c/Delo itteResponsestoFollowUpQuestions-0001.pdf Mary Wong:@Jeff, we posted them with notes from a WG meeting, but thank you - we will post them to the TMCH documents sub page as well. Paul McGrady:@Kathy - so that quotes you gave address text marks and design marks, but not stylized marks. Would be nice if your proposal unpacked those. It is over inclusive as written. Paul McGrady:@Kathy - your lumping in stylized marks within the quote you gave is trying to change the rules. Colin O'Brien:+1 Paul Jeff Neuman:@kathy - I believe we should stay away from terms like "breach" or "violation", etc. I think that implies a certain intent that is most likely not there Paul McGrady:+1 Jeff. We are not the Compliance Department. The rhetoric in the proposal isn't helpful. Brian Cimbolic:@Jeff +1 Maxim Alzoba (FAITID):impressive George Kirikos:Well done, Kathy. Brian Cimbolic:"does not adhere to" something like that Jeff Neuman:Have we asked Deloitte for an explanation as to why they are accepting those marks and their interpretation of the rule? George Kirikos:"is inconsistent with" Jeff Neuman:They may believe they are operating within the rules and it is possible there is a gray area. Jeff Neuman:I am not saying what they are doing is necessarily consistent or inconsistent with the rules....just trying to see if there is a gray area or other interpretations of the rules that are possible George Kirikos:There's a financial incentive for them to accept more than they should -- they get more $$$ over time, if a mark is accepted. Paul McGrady:Ther word "stylized" is not in the Applicant Guidebook. Paul McGrady:@Mary - agree. We need to keep using the trademark definitiions common to trademark practice. By lumping all of these together, we are confusing the process, not helping it by creating new language and then attempting to evaluate Deloitte's performance based on definitions that do not exist outside of this working group. Jeff Neuman:I agree with Mary.....we can always clarify things going forward, but to state that what they have done in the past is inconsistent, or a violation, or breach is not fair at this point George Kirikos:There seems to be some noise on Greg's line? Mary Wong:@Jeff, we have not asked specifically, but I suppose our assumption thus far is that Deloitte was merely trying to implement what is in the AGB. Jeff Neuman:@mary - we probably sshould just ask them outright. There may be something that they see that some of us do not in the wording of the AGB (and their contract with ICANN, which they also need to follow) Mary Wong:Maybe the basic question is, when the AGB says "word mark", does that include stylized text marks and marks comprising a graphical element alongside a text element? Jeff Neuman:We could spend a long time trying to figure out intentions and why things are being done.....but our job is to decide what we want the rules to be on a go forward basis on this issue and clarify accordingly Kathy Kleiman:@Mary, the AGB can't ccontradict the rules adopted by the ICANN Community... Mary Wong:@Jeff, that's true Mary Wong:@Kathy, the various iterations of the AGB were developed through community consultations and public comment, similar to the IRT and STI recommendations. Jeff Neuman:@Kathy - I think you are making some assumptions as to what the ICANN Community believes were the rules. But regardless, we have an opportunity now to clarify on a going forward basis Kathy Kleiman:I disagree Mary - implemenation can intepret but not contradict the accepted Community policy Kathy Kleiman:Only one set of rules went through the GNSO Council... Jeff Neuman:@Kathy - but you are automatically jumping to the conclusion that there is a contradiction. Giving Deloitte the benefit of the doubt, they may not believe it contradicts and we should hear them out as to why. Mary Wong:@Kathy, one challenge here is that neither the IRT nor STI recommendations were made through a PDP, so they are technically not consensus policy, but rather part of implementation of the 2007 policy reommendations for the new gTLD program. As was the AGB. Kathy Kleiman:@Jeff, I'm agree. Kathy Kleiman:with you... Kathy Kleiman:But we have tried many times to get Deloitte to explain. Jeff Neuman:@Kathy - I know. Most of them are not trademark lawyers, but are accountants and the ones that come to ICANN meetings are not necessarily the best ones to explain Colin O'Brien:+1 Greg a disclaimed term should not be allowed in the TMCH but source identifiers should be allowed. Paul McGrady:@Kathy - the GNSO Policy didn't mention the TMCH. https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issue s_new-2Dgtlds_pdp-2Ddec05-2Dfr-2Dparta-2D08aug07.htm <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issu es_new-2Dgtlds_pdp-2Ddec05-2Dfr-2Dparta-2D08aug07.htm&d=DwIFaQ&c=FmY1u3PJp6w rcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2E Bk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=BJLQ5ZyAZHSTtueG-fzMGwJm2 X_McyY7gsnr_ZdIbE0&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=BJ LQ5ZyAZHSTtueG-fzMGwJm2X_McyY7gsnr_ZdIbE0&e= John McElwaine 2:the under representation is related to the rule on predominant terms. Kathy Kleiman:@Paul: STI final report Kathy Kleiman:https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf Mary Wong:@Paul, the 2007 GNSO policy recommendations basically just say strings should not infringe existing legal rights. That's in part why the Board requested the formation of the IRT, following which the Board requested the GNSO to evaluate the IRT recommendations, which led to the formation of the STI. As you noted, the PDP recommendations date from 2007. Paul McGrady:@Phil - I don't think we can advise Deloitte to do anything. I think we can make a policy recommendation to the GNSO Council who can then pass it to the Board for approval; but we have no remit to engage in quasi-compliance work vis a vis Deloitte Kathy Kleiman:@Mary: Implementation teams don't have power to change adopted policy rules - the Community would go ballistic if that were happening. Mary Wong:@Kathy, yes - that's why it's important to note that the only GNSO policy recommendations on this date from 2007. Mark Massey:A contract was issued that included certain terms that either were or were not followed. Give GNSO approved 1 set of gudelines that one shoould expect is the base purpose of the contract. unless that contract was properly modified,not by someones comment or as an attempt to increase the breadth of the project. A formal contract mod changes a contract. Everything else is just talk. Jeff Neuman:If we had more time (at that time), it would have been nice to have done explanations in the Final STI report. It was good in recommending certain things, but documenting the rationale for those rules from the STI was a little lackin....and that can be a source of gray areas Maxim Alzoba (FAITID):formally the parties gaining sunrise rights are in business of selling such domains Paul McGrady:@Mary - yep. I remember it well. Kathy's point seemed to be that the GNSO Council spoke directly on the topic of what marks go in the TMCH, but they didn't. Mary Wong:@Paul, @Kathy, basically there is NO GNSO consensus policy on the TMCH. Kathy Kleiman:@Mary: I think staff is taking sides George Kirikos:That would be easily gamed, actually. If the "challenger" is a partner with the bogus TM holder, the "challenger" would issue a challenge, and the "team" still owns the domain, after going through the challenge. Mary Wong:@Kathy, sorry that you think so. From my perspective staff is merely pointing out what went through a PDP consensus process and what did not. George Kirikos:In some jurisdictions, though, it's clear that they take a less rigorous approach to granting those marks (even without a disclaimer), outside "tougher" places like the USA. John McElwaine 2:@Phil I don't believe that the disclaimer issue means that Deloitte is violating any rules. it simply was not considered. Greg Shatan:Are the chairs taking I don't think exploring facts is taking sides. Greg Shatan:I don't think a discussion of who is taking sides is going to be productive or positive. Greg Shatan:Drafters don't own their words.... John McElwaine 2:they would still need to be disclaimed. Mark Massey:What was approved by GNSO COuncil and the board is the basis for a contract. Not some ephemeral idea developedd by thpughts along the way. That would require a contract mod Paul McGrady:Sorry about the background noise! Greg Shatan:Any text would need to be disclaimed. Greg Shatan:No matter how embedded in the overall mark it is. Greg Shatan:The Board did not approve the exact text, and we have no idea what the Board thought it was approving. Greg Shatan:It only "supported" the "substantive content". Paul McGrady:Did the GNSO Council vote on the STI one way or another? If so, can we post the motion somewhere? Greg Shatan:The STI report should not be treated as the One True Text. Kathy Kleiman:@Greg: Any text would need to be disclaimed - could you clarify. Kathy Kleiman:@All: Will you feel the same way when we get to the UDRP? Greg Shatan:You stated that there were marks where the text was so embedded in the design that it would not need to be disclaimed. I don Colin O'Brien:@Kathy no. Greg Shatan:I don't believe that's the case. Kathy Kleiman:@Greg - still confused Kathy Kleiman:1213.02 Composite MarksA composite mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is unitary, an individual component of the mark (or of the unitary portion) that would otherwise be unregistrable need not be disclaimed. See TMEP §§1213.051213.05(g)(iv). John McElwaine:@kathy if a mark is generic and it is in a design mark it still must be disclaimed under USPTO rules Paul McGrady:+1 Greg - the "Board document" is the AGB. Kathy Kleiman:Huh? Jeff Neuman:@john - is there a way to take that principle from the US and come up with a global principle David McAuley:Sort of underscores the importance of periodic reviews Mark Massey:+1 on Periodic reviews Paul McGrady:@Kathy - what was the purpose of that last comment? Was that some warning about how Phase 2 affects Phase 1? If so, we need to reconsider the arbitrary division between the two Phases... Mary Wong:@Paul, one difference may be that the UDRP is Consensus Policy. Jeff Neuman:@Kathy - but what we never solved in the STI was the notion of something being descriptive in one industry, but arbitrary in other industries and therefore registerable in TM offices and acceptable for the TMCH. George Kirikos:Bottom of page 3. Mark Massey:Cotractors ALWAYS try to expand their statements of work . It's hw they grow their business, Contractors must bewell managed. Paul McGrady:@Mary - correct, but I don't think that was Kathy's point. I think Kathy was saying that since folks are consenting to the IRT Report being the final word (as opposed to the AGB) that some how the UDRP - as consensus policy - should be treated as if it isn't the current last word on its topic. Obviously, a troubling notion and one that tends to support the idea that the Council should not have split this into Phases. George Kirikos:+1 Mark Jeff Neuman:@Mark - I think that is a gross overgeneralization. George Kirikos:@Jeff: Verisign and Sitefinder? :-) Mary Wong:OK Phil, staff will take that as an Action Item. Jeff Neuman:@Paul - Can we create a glossary of these terms for this group? Mary Wong:@Paul, staff agrees. If it wasn't clear, our suggestion was merely to have a consensus on the terminology. Mark Massey:@Jeff I will be very happy to discuss this at length but this is not the venue; after managing a number of these things, you are safe to assume in IT rlated contracting it is axiomatic. Greg Shatan:I think it's fair to say that a stylized mark is a word mark. John McElwaine:@greg. completely agree Paul McGrady:@Mary - I agree a glossary based on current definitions in trademark law would be helpful. I don't agree that creating new definitiions would be helpful. Paul McGrady:+1 Greg. Mary Wong:Staff will try to compile a glossary and see if there is consensus on the terms included in it. Jeff Neuman:@Mark - You are not the only one to have managed these types of things :) But overgeneralizations and reading malintent in any actor in this ecosystem is not (in my view) appropriate. Mark Massey:@Jeff I never said anything about malintent!! It's just common business practice. Jeff Neuman:Another good term to define - "GI" or "Geographic Indicator"..... George Kirikos:TMCH has more than just TMs, though (e.g. Article 6ter stuff is supposed to be put into the TMCH now (or at some point)). George Kirikos:(Article 6ter = IGO treaty 'marks') Mary Wong:@Jeff, staff will include GI in the glossary. Thankfully, there is a definition for it :) Jeff Neuman:@Mary - thanks. If we can distinguish GIs from "Geographic terms" that would be helpful as well...but for other working groups :) Mary Wong:@Jeff, yes, and from what staff has researched there does seem to be a distinction. Mary Wong:Definition of GI from WIPO: "A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production." Greg Shatan:Article 6ter names absolutely do not equal marks protected by statute or treaty. Greg Shatan:Whether a GI is important or not, it is not a "mark." Greg Shatan:The bathroom is also within the Trademark Office. :-) George Kirikos:@Greg: I agree about Article 6ter. It's more of a blocking right, but it's "close enough", in the eyes of many. Greg Shatan:Common mistakes are still mistakes. Jeff Neuman:+1 Paul Greg Shatan:A separate GICH is a plausible concept, but in service of what RPM? The TMCH is just a tool. John McElwaine:GIs always have the option of "becoming" registered trademarks, no? Jeff Neuman:Since the TMCH is not a rights protection mechanism in and of itself, the real question becomes if it is allowed in to the TMCH, what are the rights given to the GIs once in (eg., the right to participate in claims and/or the right to participate in Sunrise, etc) Paul McGrady:@Mary - lots of things are protected by statute or treaty (water, borders, etc.) but that doesn't make them trademarks. The AGB doesn't even mention GIs. Greg Shatan:I think we need to discuss what RPMs if any should be created for GIs, and then come back to the Clearinghouse discussion. This puts the cart before the horse. Paul McGrady:@Mary - there is no international law norms on GIs. It is a highly debated topic. Justine Chew:+1 Greg Jeff Neuman:@Paul - agree....It is why we call the service (the Trademark Claims service and the Trademark Clearinghouse). It was originally called IP Claims and the IP Clearinghouse but was changed because we really only wanted to deal with Trademarks and not any other forms of IP Paul McGrady:GIs aren't design marks... Greg Shatan:@Phil :-) Mary Wong:@Paul, thanks and yes - I was using shorthand to try to summarize the varieties of protective regimes for GIs that currently exist. Jeff Neuman:So, GIs may be a form of IP, but they are expressly not "trademarks" Greg Shatan:+1 Jeff. Mary Wong:@Jeff, yes, unless they are protected as certification marks under national TM laws. Greg Shatan:Kumbaya Moment!!! Paul McGrady:@Kathy - just like old times! Greg Shatan:(Cue them from "The Odd Couple") Greg Shatan:*theme* George Kirikos:Interesting domain dispute for Champagne.co, which the French organization lost: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma ins_search_text.jsp-3Fcase-3DDCO2011-2D0026 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_dom ains_search_text.jsp-3Fcase-3DDCO2011-2D0026&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mS VzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgkt UprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=uEw-tsM2ok3htPMR4_KQ6O42BTGMHFrysc sbS5zXC7Y&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=uE w-tsM2ok3htPMR4_KQ6O42BTGMHFryscsbS5zXC7Y&e= Greg Shatan:I think we need to shine a light into the black hole and see how these words came to be. George Kirikos:"More fundamentally still, this Panel finds it apparent from the WIPO Reports referred to above that the framers of the Policy did not intend that geographical indications or protected designations of origin should provide a basis as such for a right under paragraph 4(a)(i) of the Policy." George Kirikos:So, if the GI wasn't intended to be covered by the UDRP, it shouldn't be in the TMCH, by that logic. Rebecca L Tushnet:Jonathan, is it fair to say that one consequence of the "not a TM" position, from your point of view, is that GIs registered as collective/certification marks in jurisdictions like the US get (perhaps oddly) better treatment than the same GIs protected under GI-specific regimes? Also, you mentioned that the TM offices in some jurisdictions are also in charge of GIs--did I get that right? Mary Wong:If it helps, WIPO has a publication that explains the basisc of GIs, and on Page 13 it tries to explain the similarities and differences between TMs and GIs: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_edocs_pubdo cs_en_geographical_952_wipo-5Fpub-5F952.pdf <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_edocs_pubd ocs_en_geographical_952_wipo-5Fpub-5F952.pdf&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mS VzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgkt UprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=mKOIrgfoST_A2Mt55XG3Zs-TVuxCWJLZeM Cgtq7zQ74&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=mK OIrgfoST_A2Mt55XG3Zs-TVuxCWJLZeMCgtq7zQ74&e= Jonathan Agmon:@Greg, I dont think you need a different RPM for GIs. And if they are not marks how come they can be registered (even with the USPTO) as trademarks? Paul McGrady:@Kathy - I agreed with most everything you said until you said the TMCH creates rights. Greg Shatan:And we were doing so well.... Greg Shatan:I always thoughts "marks = trademarks". Mary Wong:@Greg, trademarks are probably a specific type of mark, but not all marks are TMs (to the extent that marks designate source, for instance) Jeff Neuman:Its a complicated issue as you said Greg Shatan:Since GIs are not trademarks they should not be in the same RPMs as trademarks. The fact that there's a Venn diagram where certification marks overlap with GIs does not make all GIs trademarks. If a particular GI functions as a certification mark, then it is also a trademark. Jonathan Agmon:@Greg - I thinks "marks" are wider - they dont have the word "trade" next to the word "mark" :) Greg Shatan:Okay, it includes service marks as well. Jeff Neuman:Other terms for the Glossary: i) mark, ii) trademark or service mark Mary Wong:@Jonathan, yes, that's what I was speaking to. John McElwaine:and for the glossary... certification marks and collective marks Mary Wong:Additionally (building on the WIPO note I mentioned above) there is an obligation under WTO/TRIPS for member states to protect GIs: "In respect of geographical indications, Members shall provide the legal means for interested parties to prevent:(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967)." Paul McGrady:Champaign is a town in Illinois Jeff Neuman:@George - way too complicated...... Jeff Neuman:Geo-targeting is a hugely imperfect science Paul McGrady:Champaign in the home of the University of Illinois. John McElwaine:@paul. how is there sparkling wine? Jeff Neuman:The less complicated thing would be for the TMCH to serve up a different notice for GIs vs. Trademarks Jeff Neuman:since registrars pull the notice from the TMCH Jonathan Agmon:@Paul, but you have to associate the indication of origin with certain goods or services for the "trademark" funtion to kick in - I would think (but not sure) that Champaign is not associated with educational services? Jeff Neuman:(I am not advocating that by the way) David McAuley: Paul's proposal addresses sui generis protection for GIs by suggesting another forum, no? George Kirikos:@Jeff: even easier is to eliminate the TMCH, but have the registrar post a link to the national TM databases, to let the registrant do their own searches. Mary Wong:@David, I believe so - in the sense that Paul's proposal doesn't say don't protect GIs at all, just investigate if there is a parallel avenue to do so, if warranted. George Kirikos:WIPO keeps a list of TM offices. https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_directory_e n_urls.jsp <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_directory_ en_urls.jsp&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXA vSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y 3NMJlE&s=dcpHr82qEbWkQeFrNkXGyPdAuuSGrzYd08xqCm8B4Ac&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=fgktUprWQ1R8zNpEFV0h06NgM9kkDrNmO0g4y3NMJlE&s=dc pHr82qEbWkQeFrNkXGyPdAuuSGrzYd08xqCm8B4Ac&e= (just have registrars link to this, and be done) David McAuley:Thast is how I read it also Mary, thanks Greg Shatan:Putting GIs in the TMCH would be taking a position. Mary Wong:@Jonathan, yes, that is so (re practices outside the US). Greg Shatan:If a GI meets the criteria for being a Certification Mark, then it can be registered in the USPTO. David McAuley:Interesting points, thanks Jonathan Jeff Neuman:Another term for the glossary: "Certification Mark" George Kirikos:Do we need to resubmit the questions we already submitted? (e.g. 500 top terms, buckets for the number of marks per organization, etc?) Paul McGrady:@John M - how dare you accuse me of folding laundry while on this call! Kristine Dorrain - Amazon Registry Services:Was there a no laundry rule? How about dishes? Paul McGrady:@Kristine - Ha! Kathy Kleiman::-) George Kirikos:Thanks Mary. Jeff Neuman:Are we meeting the week of the GDD Summit? Terri Agnew:the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 03 May 2017 at 16:00 UTC for 90 minute duration George Kirikos:And we'll be getting the agendas on Fridays now. Wow. George Kirikos:Goodnight, folks! Steve Levy:Ciao all David McAuley:interesting discussion tonight, thanks all Paul McGrady:Great call Phil! Maxim Alzoba (FAITID):bye all Colin O'Brien:good night sleep tight! Kathy Kleiman:Good night, All Kristine Dorrain - Amazon Registry Services:Thanks, g'night. Greg Shatan:Good night all. Good call. Jonathan Agmon:Thanks Kathy Kleiman:and good morning Amr Elsadr:Thanks all. Bye.

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Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
by Greg Shatan April 27, 2017

April 27, 2017

Sorry, meant to send this to the entire list. Greg ---------- Forwarded message ---------- From: Greg Shatan <gregshatanipc(a)gmail.com> Date: Wed, Apr 26, 2017 at 11:03 PM Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) To: Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence. And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were). Greg *Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc(a)gmail.com On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote: > My point exactly. So what explains the over 90% abandonment rate, > other than overdeterrence, especially with those most returned terms? > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc(a)gmail.com> > wrote: > > "Maybe absolutely no one else besides the TMCH entrant/s had a legitimate > > business using those terms." > > > > That is clearly and absolutely not the basis of trademark rights, > trademark > > registration or entry into the TMCH. Nor is it the way Sunrise or Claims > > work. Ridiculous. > > > > Greg > > > > Greg Shatan > > C: 917-816-6428 > > S: gsshatan > > Phone-to-Skype: 646-845-9428 > > gregshatanipc(a)gmail.com > > > > > > On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet > > <Rebecca.Tushnet(a)law.georgetown.edu> wrote: > >> > >> Yes, because we don't have good survey evidence, one of the questions > >> is what we can infer from the circumstantial evidence available to us, > >> particularly the over 90% abandonment rate combined with the top > >> queries being words like forex, cloud, and love. Maybe absolutely no > >> one else besides the TMCH entrant/s had a legitimate business using > >> those terms. But I doubt it. > >> Rebecca Tushnet > >> Georgetown Law > >> 703 593 6759 > >> > >> > >> On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists(a)winston.com> > >> wrote: > >> > Thanks Rebecca. I've never heard of a trademark owner being deterred > by > >> > a claims notice since one of the explicit defenses in the UDRP is > when a > >> > registrant has rights or legitimate interests in a corresponding > trademark. > >> > So, I think that one may be a bit of a red herring. > >> > > >> > However, your comment about avoiding overreach is well received and we > >> > should keep it in mind while at the same time not under-reaching > either - > >> > when we do that, Grandma gets phished. > >> > > >> > Best, > >> > Paul > >> > > >> > > >> > > >> > -----Original Message----- > >> > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] > >> > Sent: Wednesday, April 26, 2017 9:17 PM > >> > To: icannlists <icannlists(a)winston.com> > >> > Cc: Silver, Bradley <Bradley.Silver(a)timewarner.com>; > >> > gnso-rpm-wg(a)icann.org > >> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > >> > (Design Mark and Appropriate Balance) > >> > > >> > Avoiding overreaching is pro-trademark, as the public reaction to > >> > SOPA/PIPA and patent trolls has shown with respect to copyright and > patent. > >> > There are also the interests of trademark owners who aren't > participating in > >> > this process but may want to register domain names that are perfectly > >> > legitimate for their goods/services and jurisdictions. Some of them > may > >> > inevitably receive notices and be deterred, but there are steps we > can take > >> > to limit that problem. > >> > Rebecca Tushnet > >> > Georgetown Law > >> > 703 593 6759 > >> > > >> > > >> > On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists(a)winston.com> > >> > wrote: > >> >> Thanks Rebecca. I'm not characterizing you as anti-trademark; just > >> >> your arguments and positions to date on this list. We would very > much > >> >> welcome anything favorable to trademarks that you wish to add to the > >> >> discourse. > >> >> > >> >> Best, > >> >> Paul > >> >> > >> >> > >> >> > >> >> -----Original Message----- > >> >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] > >> >> Sent: Wednesday, April 26, 2017 8:00 PM > >> >> To: icannlists <icannlists(a)winston.com> > >> >> Cc: Silver, Bradley <Bradley.Silver(a)timewarner.com>; > >> >> gnso-rpm-wg(a)icann.org > >> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > >> >> (Design Mark and Appropriate Balance) > >> >> > >> >> Please don't characterize me as anti-trademark; I strongly believe in > >> >> the consumer protection function of trademarks, and also in trademark > >> >> protection in some circumstances for business purposes. See > >> >> https://harvardlawreview.org/2017/01/registering-disagreemen > t-registra > >> >> tion-in-modern-american-trademark-law/ > >> >> > >> >> Asking again: for those of you who think it doesn't matter if > claimants > >> >> who don't own relevant rights get to use the TMCH, what then did > ICANN mean > >> >> by its stated intent not to expand trademark rights? > >> >> Rebecca Tushnet > >> >> Georgetown Law > >> >> 703 593 6759 > >> >> > >> >> > >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists(a)winston.com> > >> >> wrote: > >> >>> Thanks Rebecca. There is not much new here. Whomever registers a > >> >>> second level domain name first (Sunrise - TM owner), Premium (Rich > person) > >> >>> or Landrush (TM owner who didn't want to pay the Sunrise shakedown > price or > >> >>> regular folks like all of us), someone gets the exclusive rights to > that > >> >>> second level. So, it is not just a question of if, but of when and > who. I > >> >>> think it is OK to just say "I don't want it to be a trademark > owner." > >> >>> Others will disagree, but we don't have to keep this in a > mysterious context > >> >>> or otherwise try to layer on some free speech issue that doesn't > exist. > >> >>> Trademark owners want them first in order to protect their brands > and > >> >>> consumers. Others who are anti-trademarks don't want them to have > them > >> >>> first and would prefer someone else gets the exclusive right. Fair > enough. > >> >>> Now we see if we can get to consensus on changing the AGB. I doubt > we will, > >> >>> but at least the free speech veneer is pulled back. > >> >>> > >> >>> Best, > >> >>> Paul > >> >>> > >> >>> > >> >>> > >> >>> -----Original Message----- > >> >>> From: gnso-rpm-wg-bounces(a)icann.org > >> >>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet > >> >>> Sent: Wednesday, April 26, 2017 3:11 PM > >> >>> To: Silver, Bradley <Bradley.Silver(a)timewarner.com> > >> >>> Cc: gnso-rpm-wg(a)icann.org > >> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > >> >>> (Design Mark and Appropriate Balance) > >> >>> > >> >>> By that logic the mandate not to expand on trademark rights would > >> >>> have been pointless because no activity in domain name space could > >> >>> ever have expanded trademark rights. Call it a right, call it a > >> >>> privilege, call it an alien from Xenon if you like, but ICANN did > not > >> >>> want trademark owners to be able to assert control over domain names > >> >>> in excess of what underlying trademark law would have allowed. > Under > >> >>> the "nothing in domain names can expand trademark rights because > >> >>> they're never exclusive" logic, was the ICANN direction completely > >> >>> meaningless, or did it have some meaning? (Trademark rights, of > >> >>> course, are never "exclusive" either, which is why we can use any > >> >>> examples we want in this discussion.) Rebecca Tushnet Georgetown Law > >> >>> 703 593 6759 > >> >>> > >> >>> > >> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg > >> >>> <gnso-rpm-wg(a)icann.org> wrote: > >> >>>> Jeremy - the TMCH does not allow exclusive rights in domains. > Having > >> >>>> a mark in the TMCH affords nothing close an exclusive right. > That's a basic > >> >>>> truth which shouldn’t be ignored. > >> >>>> > >> >>>> -----Original Message----- > >> >>>> From: gnso-rpm-wg-bounces(a)icann.org > >> >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm > >> >>>> Sent: Wednesday, April 26, 2017 1:32 PM > >> >>>> To: gnso-rpm-wg(a)icann.org > >> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > >> >>>> (Design Mark and Appropriate Balance) > >> >>>> > >> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: > >> >>>>> Nice try Rebecca but I'm not attempting to overturn the apple > cart. > >> >>>>> If you have actual examples of problems then provide them > otherwise this is > >> >>>>> an indulgent academic exercise. > >> >>>> > >> >>>> The fact that the TMCH is allowing exclusive rights in domains that > >> >>>> go beyond the equivalent rights in domestic trademark law is > itself a > >> >>>> problem if we accept that the TMCH was meant to track trademark > law. > >> >>>> > >> >>>> -- > >> >>>> Jeremy Malcolm > >> >>>> Senior Global Policy Analyst > >> >>>> Electronic Frontier Foundation > >> >>>> https://eff.org > >> >>>> jmalcolm(a)eff.org > >> >>>> > >> >>>> Tel: 415.436.9333 ext 161 > >> >>>> > >> >>>> :: Defending Your Rights in the Digital World :: > >> >>>> > >> >>>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt > >> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 > >> >>>> > >> >>>> > >> >>>> ============================================================ > ======== > >> >>>> = > >> >>>> = > >> >>>> > >> >>>> > >> >>>> > >> >>>> Reminder: Any email that requests your login credentials or that > >> >>>> asks you to click on a link could be a phishing attack. If you > have > >> >>>> any questions regarding the authenticity of this email or its > >> >>>> sender, please contact the IT Service Desk at 212.484.6000 > <(212)%20484-6000> or via > >> >>>> email at ITServices(a)timewarner.com > >> >>>> > >> >>>> > >> >>>> > >> >>>> > >> >>>> ================================================================= > >> >>>> This message is the property of Time Warner Inc. and is intended > >> >>>> only for the use of the > >> >>>> addressee(s) and may be legally privileged and/or confidential. If > >> >>>> the reader of this message is not the intended recipient, or the > >> >>>> employee or agent responsible to deliver it to the intended > >> >>>> recipient, he or she is hereby notified that any dissemination, > >> >>>> distribution, printing, forwarding, or any method of copying of > this > >> >>>> information, and/or the taking of any action in reliance on the > >> >>>> information herein is strictly prohibited except by the intended > >> >>>> recipient or those to whom he or she intentionally distributes this > >> >>>> message. If you have received this communication in error, please > >> >>>> immediately notify the sender, and delete the original message and > any > >> >>>> copies from your computer or storage system. Thank you. > >> >>>> ================================================================= > >> >>>> > >> >>>> _______________________________________________ > >> >>>> 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 > >> >>> > >> >>> ________________________________ > >> >>> The contents of this message may be privileged and confidential. If > >> >>> this message has been received in error, please delete it without > reading > >> >>> it. Your receipt of this message is not intended to waive any > applicable > >> >>> privilege. Please do not disseminate this message without the > permission of > >> >>> the author. 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Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
by Kathy Kleiman April 26, 2017

April 26, 2017

Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy *------------------------------------------------------ * * * *Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, /How are design marks currently handled by the TMCH provider?; /and #16, /Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)/* We (the RPM Working Group) have found a problem: 1.We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2.However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3.Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4.Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5.In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion /A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board/ The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: *“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).”*https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec… Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: *“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)* The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1Nationally or regionally registered word marks from all jurisdictions” /Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office./ /B. Harm from the Current Form/ The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider /by contract/ to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in /Relationship with ICANN/, Special Trademark Issues Review Team Recommendations). /C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks/ Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision /Marco Rafael Sanfilippo v. Estudio Indigo/, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that *the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks*. See e.g., /Neopost Industrie B.V. v. PFE Intern/., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). /D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. / As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: *“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” * ** To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, /it may not take steps to expand existing trademark rights/. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II.*Breach and Correction* Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group *by consensus* may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a *change* to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.

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