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

Re: [gnso-rpm-wg] [Ext] Proposal for Question 8: Geographic Indicators
by Mary Wong April 19, 2017

April 19, 2017

Thank you, Paul – yes, I confirm receipt and staff will compile the text as submitted into the document to be circulated to the Working Group containing all proposals received by the deadline. Cheers Mary From: icannlists <icannlists(a)winston.com> Date: Wednesday, April 19, 2017 at 14:11 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Cc: Mary Wong <mary.wong(a)icann.org> Subject: [Ext] Proposal for Question 8: Geographic Indicators PLEASE NOTE REVISED EMAIL ADDRESS Dear Fellow RPM Participants: Below is my proposal for Question 8: Geographic Indicators. Although I am a member of the IPC, this is not a formal IPC proposal. Although it did have some support on the IPC List, it also had some detractors who wished changes to be made. As such, this should not be viewed as coming from the IPC. Proposal: GIs are not always trademarks. The TMCH is a place to lodge trademarks. Unless a GI is the subject of a national trademark registration, it should not be in the future, and should not have been in the past, included in the TMCH. For any GIs that are not the subject of a national trademark registration which are currently lodged in the TMCH, such GIs should not be renewed in the TMCH upon expiration. For any GIs that are currently in the TMCH that are the subject of a national trademark registration, such GIs should be subject to the same use requirements as traditional trademarks as applied to Sunrise registrations. To the extent that there is interest in finding a mechanism to lodge GIs that are not the subject of national trademark registration for use in as yet unidentified RPMs, study of the concept should be split off from this work and given its own study and thought. Best, Paul Paul D. McGrady Jr. ICANNLISTS(a)winston.com PS: Mary, can you please confirm receipt? ________________________________ 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] A Brave New World Without Sunrises or the TMCH
by policy＠paulmcgrady.com April 19, 2017

April 19, 2017

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REMINDER: Deadline is TOMORROW (19 April) for Proposals on Open TMCH Questions
by Mary Wong April 18, 2017

April 18, 2017

Dear Working Group members, Just a gentle reminder to send any proposals or recommendations you may have, for proceeding with and possibly resolving the few open questions on the TMCH, to this mailing list by tomorrow, 19 April (close of business in your time zone). Staff will compile all proposals received for the Working Group to consider on the next Working Group call next Wednesday (26 April). To recap, the three open questions that are currently under discussion are: 1. TMCH Question 7 on “design marks” o On the last call, Working Group members had discussed whether the TMCH is intended to: (1) only accept “word marks” in the sense that the entire mark comprises text only; (2) also include marks comprising stylized text (but without a figurative/image element); and/or (3) accept device/image marks where the text element is predominant (i.e. Deloitte’s current practice), and the appropriate approach when the text element is (and is not) disclaimed). o The Working Group noted that different jurisdictions may have different approaches to these marks, and that the TMCH was intended to accept marks from all jurisdictions. For further background, the December 2009 STI Report stated that “The trademarks to be included in the [TMCh] 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”, while the previous (May 2009) IRT Report noted that the TMCH “should be able to accommodate all types of registered trademarks, including word marks and device (logo) marks that contain a word element”. Both the IRT and STI tried to design their recommendations in accordance with the principle that “recommendation should protect the existing rights of trademark owners, but neither expand those rights nor create additional legal rights”. o The TMCH Guidelines that explain Deloitte’s current practice have already been circulated previously – for your convenient reference, they can be found here: http://trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH… 2. TMCH Question 8 on Geographical Indications, Designations of Origin and similar identifiers o In Copenhagen, Deloitte had discussed both the number of, as well as how it verifies, “marks protected by statute or treaty” with the Working Group, noting that this category could well include geographical indications although the current Guidelines do not require these to be treated separately. o Paul McGrady had asked staff some follow up questions, the answers to which we replicate below for your review. 3. TMCH Question 10 on Identical Match o The Working Group had agreed to return to this question following its review of the Analysis Group’s Revised Report. Please see pages 27-35 of the report for the Analysis Group’s findings on this topic: https://community.icann.org/download/attachments/64066042/Analysis%20Group%… Please let Amr and I know if you have further questions or need more information. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, April 13, 2017 at 10:42 To: Paul McGrady <policy(a)paulmcgrady.com>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [Ext] RE: [gnso-rpm-wg] FOR CONSIDERATION/ACTION: 19 April Deadline for Proposals on Open TMCH Questions Hello Paul and everyone, I’m not sure it will be feasible to get additional specific input from Deloitte within this timeframe, but hopefully the following observations can be of assistance to you and other Working Group members as you consider the G.I. issue. I’ve inserted them inline in blue in the hope that this makes things easier to review and comment on. a. Are there current any GIs lodged in the TMCH? MW: Based on the discussion with Deloitte in Copenhagen and their updated report (reattached here for ease of reference), they do not specifically check whether a TMCH submission made under the category of “mark protected by statute or treaty” is or is not a G.I. (however defined). As such, we will not know the answer to this question unless all the successfully-validated marks from this category are disclosed and a substantive examination performed of whether any are considered G.I.s. b. If so, how many? MW: See above. Also, we know from their report that out of 98 submissions in this category, 75 were successfully validated. c. If so, how did this come about since GIs were not part of the TMCH framework initially? MW: While there is no specific category for GIs (or AoCs or DoOs etc.), the category of “mark protected by statute or treaty”, separate from the categories of “registered trademark” and “court-validated mark” was included in the Applicant Guidebook at some point (I will need to check but I believe it was sometime in 2011) as a result of community discussions and public comments received on earlier versions of the AGB. Staff will research this and come back with the date and context. As staff suggested previously, one question for the Working Group to consider – in relation both to device/image marks and GIs – is whether the scope of the marks currently being accepted for validation by the TMCH is within, or exceeds, the policy intent of the GNSO (especially the original policy principles adopted in 2007 following the PDP on Introduction of New gTLDs). d. If so, when did GIs first appear in any Trademark Requirement Documents or the like and were such documents published for public comment? MW: See above response. As mentioned, staff will go through the various AGB comment periods and documents to see what additional specific information can be provided on this topic. e. If not, why not? MW: See note on Question (e). f. What does Deloitte think “marks protected by statute” means? MW: Section 2.4 of the TMCH Guidelines (http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/…) may be helpful – it lists the materials and information to be submitted for this category of marks and notes expressly that “the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin.” g. Are there use requirements for GIs? If not, why not? MW: Going by the publicly available documentation, there does not appear to be a specific “proof of use” requirement associated with the category of “marks protected by statute or treaty” (though please note that staff cannot speak for, nor have we specific confirmation from, Deloitte in this regard). For context on the “proof of use” requirement for Sunrise registrations, this April 2011 Explanatory Memo from ICANN on the changes made to the then-current version of the AGB may be helpful: https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-u…. Since our deadline to make a proposal is Wednesday, we really need these answers no later than Monday morning, but practically speaking COB on Friday would be even better. Kind regards, Paul From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 12, 2017 1:47 PM To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] FOR CONSIDERATION/ACTION: 19 April Deadline for Proposals on Open TMCH Questions Dear all, Pending the circulation of the full set of Action Items and Notes from the Working Group call held earlier today, please note the following: o Working Group members are invited to submit proposals/recommendations concerning the three currently-open TMCH questions (see below for the questions) by close of business in your time zone on Wednesday 19 April. Please send your proposal to this mailing list. As noted previously, any such proposal/recommendation should be specific and include a description of the benefits/costs and advantages/disadvantages. Following receipt of all proposals, the co-chairs will work with staff to propose a constructive format for discussion of all proposals for the Working Group to consider. o There will not be a Working Group call next Wednesday 19 April, although the Sub Teams are expected to continue meeting. The Working Group will reconvene on Thursday 27 April 0300 UTC (i.e. Wednesday evening/night for our members in the Americas). The three currently-open TMCH questions are: TMCH Question 7: How are design marks currently handled by the TMCH provider? (one proposal received from Kathy Kleiman) TMCH Question 8: How are geographical indications, protected designations of origin, and protected appellations of origin currently handled by the TMCH provider? TMCH Question 10: Should the TMCH matching rules be retained, modified, or expanded, e.g. to include plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos of a mark? Thanks and cheers Mary & Amr From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Monday, April 10, 2017 at 17:56 To: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Agenda and documents for Wednesday Working Group meeting (12 April) Dear all, The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Discuss remaining open TMCH Charter questions (see attached table and notes, below) 3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document) 4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call 5. Next steps/next meeting For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). Thanks and cheers Mary

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Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
by J. Scott Evans April 18, 2017

April 18, 2017

There are only possible gaming scenarios: 1.) A party wanting to speculate with a name and wanting to ensure it gets the name files for a trademark registration is a jurisdiction where proving use to obtain registration is not require (96% of the jurisdictions). This party gets such a registration, dummies up some use and registers the trademark in the Clearinghouse; or 2.) A trademark owner has taken the decision that it must own its trademark in all new TLDs. While perfectly within the rights of a registrant in the Clearinghouse, this may be seen as overreaching by many parties. The examples that you and Rebecca and George have mentions (e.g., CLOUD, HOTEL) are dictionary terms. These could be genuine trademarks, but could also be more in the Category 1 above. So it seems to me that we need to come up with reasonable, efficient solutions that will solve these two issues. I don’t think you need to know the top 500 trademarks registered in the TMCH. The confidentiality question has been asked and answered. There is NO CONSENSUS to open the database to the public. There is consensus that issues appear to exist. So, let’s work on the parts where we have clear consensus. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans(a)adobe.com www.adobe.com On 4/13/17, 3:30 PM, "gnso-rpm-wg-bounces(a)icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces(a)icann.org on behalf of paul(a)law.es> wrote: So wE are to presume there is gaming/abuse, guess at what types of gaming/abuse have occurred, Then propose a solution based upon the above? And all because of an argument that the TMCH database is confidential notwithstanding there being neither contractual nor a legal basis for such an argument? And when one side proposes limitations on the type of TMCH data being requested (to address the confidentiality argument) opposition says it ism"chasing a rathole"? Now it is suggested that we merely rely upon peoples memory and presumptions.... Doesn't sound like an effective (or correct) way to co duct our affairs. Sent from my iPad > On 13 Apr 2017, at 20:59, George Kirikos <icann(a)leap.com> wrote: > > Hi folks, > > (changing the subject accordingly) > > On Thu, Apr 13, 2017 at 2:15 PM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg(a)icann.org> wrote: >> I think all of this is a huge red herring. If my memory serves me, there >> have only been about 130 Sunrise Registrations. That is a very small number >> when compared to the number of second level domains registered in the new >> TLDs. I think it is safe to assume that there has been some gaming. We don’t >> need to do an exhaustive investigation. What we need to do is look at >> reasonable solutions to the gaming problem. I have not seen any proposals >> for you on how to handle the problem. We need to close down this >> unproductive discussion and move on to finding solutions to the problem of >> gaming. > > These numbers stand for the proposition that the sunrise period should > be entirely eliminated, given that folks concede it "is a very small > number", and thus is not conferring many benefits to those who > register them defensively, since they're not utilizing the procedure. > And the gaming that does exist is amplified, since it means that a > higher percentage of the sunrise registrations are gamed. It could be > that 30%, or even 50% of sunrise registrations are gamed, given the > various blog posts and examples provided to this mailing list already > (and how many others might exist "under the radar", that some folks > are trying to keep hidden due to the lack of transparency of the > TMCH). > > Consider a "thought experiment" as to what would happen if Sunrise > registrations and the TMCH were eliminated. Those 130 registrations > would shift to either landrush or to general availability. > > For those who are "gaming" the sunrise, they'd now be on an equal > footing as everyone else. > > For those legitimate TM holders, they can either register in landrush > (or general availability), *or* they have curative rights protection > mechanisms (courts, cease and desist letters, UDRP, URS, etc.) *if* > domains which conflict with their TM rights are registered by someone > else and misused. > > I could even support a "hybrid" (horse trading, as Phil called it > yesterday) model, where landrush imposed **additional burdens** on > registrants, e.g. paying costs if they lose a UDRP), but then that > extra burden is eliminated during general availability (as it is > today). This way, TM holders and legitimate end users who don't have > trademarks but have non-conflicting uses, etc. are on equal footing > during a landrush. > > I think many people are overly protective of the TMCH & sunrise period > not because it's "working", but because it's an opportunity for extra > consulting, revenue streams, etc. e.g. lawyers can tell their clients > "get registered", and they can make money from the filing fees, etc. > There's a huge amount of money being wasted, in my voice, that can be > redirected to other things (like curative rights, better education, > etc.). > > Suppose that of the 130 sunrise registrations, half of them got > registered by legitimate TM owners in landrush. Of the 65 that were > registered by someone else, how many of those would actually be cases > of cybersquatting? I would suggest it's a small number, given the > overall stats of UDRPs relative to registrations. Even if it was a > massive 2% (actual percentage is much, much lower), that might mean 1 > extra UDRP per TLD? With 1000+ TLDs launched over 4 years, that might > mean an extra 250 UDRPs per year. That's a relatively negligible > amount. > > If the "all-in" costs of those 250 UDRPs (lawyers fees + filing fees) > is $5,000 or so, that's $1.25 million/yr. > > TMCH revenues, by contrast, are on the order of $5 million/yr for > Deloitte. And perhaps another $5 million or more per year for all the > TM agents, etc. filing on behalf of clients. Let's call it $10 > million+ for TMCH-related fees on those using that system. > > Trading $10 million/yr in "preventive" costs for $1.25 million/yr in > "enforcement" costs -- that's a no-brainer for TM holders. > > And if, as I argued above, if some of those UDRP enforcement costs are > shifted to the losers (for landrush registrations), then the economics > are even that much stronger for the elimination of the sunrise period > (since that $1.25 million becomes even lower, due to cost recovery). > > And of course, a system that has no landrush definitely benefits > ordinary registrants and prospective registrants who simply want a > "good" name, or at least a fair chance at one, and don't want to see > "THE" or "FLOWERS" or "HOTEL" or all of the other common words being > grabbed in sunrise. > > Processes would be simplified for registry operators and registrars, > if sunrises and TMCH were eliminated, which saves them money (which > gets passed along as savings for consumers). TLDs would launch faster, > too. The best second-level strings would be "spread around" more, > which is probably a good thing (except to some who feel, wrongly, that > they have exclusive rights to common dictionary terms, etc., which is > not something the law supports). > > So, I hope folks will give serious consideration to what would happen > if sunrise was completely eliminated. With a few small tweaks (as > noted above), it could be much better than we have for most people > (except for those exploiting the current system). > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.co… > > P.S. I know I've not written much above about the TM Claims notice > aspect of the TMCH, but those are obviously have a chilling effect, > with a 96%+ abandonment rate of registrations. A 90 day claims notice, > which determined cybersquatters are going to ignore anyway, simply > confuses legitimate registrants. The "ongoing notifications service" > aspect of the TMCH is available through other companies, e.g. > DomainTools or other domain monitoring services. > > P.P.S. Some might argue that you can never collect $5K from > registrants if they lose a UDRP. Shift some of that to the registrar, > who can then police their own clients, a sort of "know your client" > rule for those participating in landrushes. One can even envision a > system of insurance, so that those who are involved in risky domain > name registrations pay higher "insurance" (to indemnify their > registrars) than less risky registrants who don't engage in > cybersquatting. Or require a deposit at the start of the UDRP process > (if one side doesn't post a deposit, they'd be in default). > _______________________________________________ > 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…

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Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
by policy＠paulmcgrady.com April 18, 2017

April 18, 2017

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by policy＠paulmcgrady.com April 18, 2017

April 18, 2017

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FW: QUESTION FOR YOUR RESPONSE: Additional Charter questions for Sunrise and/or Trademark Claims?
by Mary Wong April 17, 2017

April 17, 2017

Dear all, It does not appear that Paul’s response got through to the mailing list, so I’m forwarding it and the original staff email (addressed to the two current Sub Teams) below. Cheers Mary From: "McGrady, Paul D." <PMcGrady(a)winston.com> Date: Friday, April 14, 2017 at 23:15 To: Mary Wong <mary.wong(a)icann.org> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: [Gnso-rpm-sunrise] QUESTION FOR YOUR RESPONSE: Additional Charter questions for Sunrise and/or Trademark Claims? Thanks Mary. I’m copying in the entire PDP list as I think this is not a question just for these two subgroups. I have no issue moving bullet point three around since it is a Phase 1 question. I do, however, have issues with moving bullet points 1 and 2 out of Phase 2 and into Phase 1. When the questions were developed, they were read with Phase 2 (UDRP) in mind. The questions are heavily weighted towards certain outcomes as it is, but in my opinion, were more tolerable as read against the backdrop of thousands of decided UDRP cases. Moving them to the Phase 1 landscape, and thus out of their initial context, makes them too weighted to presumed outcomes. If the goal is to examine these concepts in Phase 1, we would need to rewrite these questions to be far more neutral than they appear in order for the Phase 1 review to be meaningful. I also think they even if we do rewrite and move them to Phase 1 ex post facto, they should remain in Phase 2 as well. Thanks! Best, Paul From: gnso-rpm-sunrise-bounces(a)icann.org [mailto:gnso-rpm-sunrise-bounces@icann.org] On Behalf Of Mary Wong Sent: Friday, April 14, 2017 12:50 PM To: gnso-rpm-sunrise(a)icann.org; gnso-rpm-trademark(a)icann.org Subject: [Gnso-rpm-sunrise] QUESTION FOR YOUR RESPONSE: Additional Charter questions for Sunrise and/or Trademark Claims? Dear all, Based on directions from the Sub Team on Trademark Claims, staff went back to review all our PDP Charter questions, to make sure that all questions relevant to that particular RPM are captured for the Sub Team (even if they were categorized previously under a different RPM). As a result, we wanted to ask you if you think the following two questions (listed under the UDRP section) should instead be moved to and addressed as part of the Sunrise and/or Claims review, or if you think they should be more appropriately addressed elsewhere: · Are generic dictionary words being adequately protected so that they are available for all to use as allowed under their national laws and international treaties? E.g. sun, windows. · Are last names and geographic places adequately protected so that they are available for all to use as allowed under their national laws, e.g, Smith, McDonald, Capitol Hill Cafe, Old Town Deli? In addition, for the Trademark Claims Sub Team, there was this other question in the TMCH section: · Should notices to the trademark owner be sent before the domain is registered? Finally, for the Sunrise Sub Team, the Trademark Claims Sub Team suggests that all Sub Teams take a look at the General Questions from the Charter, to see which (if any) may be applicable to that particular RPM. To that end, staff will be adding all the General Questions from the Charter to the Google Document that we are preparing for both Sub Teams, for your reference and consideration. Thanks and cheers Mary From: <gnso-rpm-sunrise-bounces(a)icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> on behalf of Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>> Date: Friday, April 14, 2017 at 13:15 To: "gnso-rpm-sunrise(a)icann.org<mailto:gnso-rpm-sunrise@icann.org>" <gnso-rpm-sunrise(a)icann.org<mailto:gnso-rpm-sunrise@icann.org>> Subject: [Gnso-rpm-sunrise] IMPORTANT: Action Items and Notes from the Sunrise Registrations Sub Team Call - 14 April 2017 Hi, Please find below the Action Items and Notes from today’s Sub Team call. Note that all Sub Team calls will be recorded and transcribed, so that Sub Team members who miss a call have an opportunity to listen to and/or read the details of the discussion. Thanks. Amr Action Items: 1. Staff to compile information on context/origin of each question by the next Sub Team call (e.g. how much support for a particular question in the past, or was it one suggestion) 2. Sub Team agreed to "bunch" similar questions together (but not necessarily redrafting - see notes on adding footnotes to facilitate clarity) 3. Staff/Sub Team Leadership to set up a Google Doc for first pass of consolidation of questions - second pass for refinement of questions 4. Sub Team members have 5 days (Wednesday, 19 April) to send suggestions to the mailing list, to be captured by staff in the Google Doc, and circulated to the Sub Team by Friday, 21 April. Notes: 1. Lori Schulman selected as Sub Team Chair 2. Discussion on Charter questions for Sunrise Registrations · What questions can be consolidated/refined? · Are premium names relevant to this Sub Team or even the Working Group? Premium names not considered RPMs o From AC Chat: I think the issue for premium names is around setting of pricing which effectively circumvents the sunrise and how do you address that as a brand owner if you have no route of objection o If pricing of premium names is interfering with the ability to use RPMs (such as trademark holders registrations during sunrise), might be within scope of the working group to discuss o Pricing during sunrise makes the benefits of sunrise economically difficult for trademark holders to take advantage of o Sub Team can go through questions - refine so that they make sense - use liaisons to new gTLD sub pro PDP to coordinate how they are addressed o Instead of redrafting questions, bucket questions together including those that may be similar or identical o Investigate instances when premium names interfere with sunrise registrations to determine the extent to which it may actually be problematic · From AC Chat: Brand owners are not the only party with "special rights" in accordance to Sunrise, GEO TLDs need to deliver domains for public services/streets/monuments e.t.c. to the Municipal Entity of the City... for example · Adding context to questions may be helpful in addressing them (suggestion by staff - staff can investigate origins of questions being considered) - contextual information could be to determine/clarify if questions address longstanding problems identified by the community vs a question that came up once, and was included o From AC Chat: I'm not sure it makes sense to research where a Charter question came from. What's more relevant is the level of interest it merits within the WG o Add notes/footnotes to questions that may be redundant or where meaning is not clear for clarification - as alternative to redrafting · ACTION ITEM: Sub Team members to review questions for redundancy, and make suggestions on-list (use Google Docs) 3. Preference expressed to hold next Sub Team call next Friday at UTC 14:00 (60 minutes with ability to extend to 90 minutes) to give Sub Team enough time to consolidate/refine questions - ACTION ITEM: Confirm next call day/time on-list ACTION ITEM: Aim for Wednesday for initial comments on question, so that staff can prepare and circulate document before Friday ________________________________ 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] A Brave New World Without Sunrises or the TMCH
by Cyntia King April 15, 2017

April 15, 2017

I must admit I'm troubled at the suggestion that registries attempt to enforce TM infringement standards. E.g. Hanson.entertainment How would the registry effectively parse the rights to registration of: * Hanson the band could use it for a music channel * Hanson Concrete could use it for how-to videos * Hanson Professional Services may register the domain for future use to stream marketing videos There are plenty of courtrooms where reasonable parties using the same mark disagree on who's rights have primacy, I don't believe registries should be asked to spit that baby. Cyntia King CEO & Founder <mailto:cking@modernip.com> cking(a)modernip.com Modern IP, LLC PO Box 609 Forsyth, MO 65653 +1 81-ModernIP / +1 816.633.7647 <http://www.modernip.com/> www.modernip.com <http://www.twitter.com/modernip> <http://www.facebook.com/modernipllc> -----Original Message----- From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Friday, April 14, 2017 1:11 PM To: Jeremy Malcolm <jmalcolm(a)eff.org>; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH Jeremy: First, even in a .fruit there is no guarantee that apple.fruit would be used for supporting the benefits of the fruit. However, if someone would take responsibility for the use of the second level TLD, that would be different. I am sure a multi-national computer company would have no problem with folks registering and using domains for generic or descriptive purposes or for unrelated purposes. The problem that there is no easy way to thwart having to file an expensive UDRP or more expensive lawsuit to police the misuse of one's mark. If registries and registrars would enforce the provision of their contracts where the registrant represents that its domain does not infringe on the rights of others that would be one thing, but they don't. If all new TLDs were sponsored or chartered wherein registration in the TLD required upfront verification that the registrant was in the class of persons for whom the TLD operates (e.g., like a .bank) or if domains were not sold on a first come, first served basis (like Yellow Pages ads in the old phone books), then we wouldn't have the issues we do. There are many cost-effective and efficient solutions beyond the Sunrise, but it also would greatly effect the artificial scarcity created by first come, first served sales and the bottom-line of registries that would actually need to take some responsibility to police their TLDs or at least assist TM owners by taking down infringements. J. Scott J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. <mailto:jsevans@adobe.com> jsevans(a)adobe.com <http://www.adobe.com> www.adobe.com On 4/14/17, 10:11 AM, " <mailto:gnso-rpm-wg-bounces@icann.org%20on%20behalf%20of%20Jeremy%20Malcolm> gnso-rpm-wg-bounces(a)icann.org on behalf of Jeremy Malcolm" < <mailto:gnso-rpm-wg-bounces@icann.org%20on%20behalf%20of%20jmalcolm@eff.org> gnso-rpm-wg-bounces(a)icann.org on behalf of jmalcolm(a)eff.org> wrote: On 13/4/17 8:47 pm, Greg Shatan wrote: > However, I don't think number 2 qualifies as gaming or abuse -- except > to the extent the trademark owner is being gamed or abused. Indeed, > one of the failed assumptions of the New gTLD Program seems to have > been that trademark owners would buy even more defensive registrations > than they did. So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

6 8

Text/design marks
by Rebecca Tushnet April 14, 2017

April 14, 2017

Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. For US jurisprudence on the limited scope of stylized marks v. standard character marks: 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). Rebecca Tushnet Georgetown Law 703 593 6759

4 9

Deloitte responses to our follow up questions
by Mary Wong April 14, 2017

April 14, 2017

Dear all, Please find attached the responses from Deloitte on the additional questions we had sent to them previously. Their response follows on our discussion with them at ICANN58 in Copenhagen and includes their feedback on the various “design mark” examples we had provided. Thanks and cheers Mary

3 4

Re: [gnso-rpm-wg] [Ext] RE: Deloitte responses to our follow up questions
by Mary Wong April 14, 2017

April 14, 2017

Hello John and everyone, Not at all – here they are, and with apologies that I didn’t think to include them with Deloitte’s responses! Cheers Mary From: John McElwaine <john.mcelwaine(a)nelsonmullins.com> Date: Friday, April 14, 2017 at 15:38 To: Mary Wong <mary.wong(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: Deloitte responses to our follow up questions Mary, Would you mind sending (or resending) the design mark examples. Thanks, John From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Friday, April 14, 2017 2:58 PM To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] Deloitte responses to our follow up questions Dear all, Please find attached the responses from Deloitte on the additional questions we had sent to them previously. Their response follows on our discussion with them at ICANN58 in Copenhagen and includes their feedback on the various “design mark” examples we had provided. Thanks and cheers Mary Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.

2 1

A Brave New World Without Sunrises or the TMCH
by George Kirikos April 14, 2017

April 14, 2017

Hi folks, (changing the subject accordingly) On Thu, Apr 13, 2017 at 2:15 PM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org> wrote: > I think all of this is a huge red herring. If my memory serves me, there > have only been about 130 Sunrise Registrations. That is a very small number > when compared to the number of second level domains registered in the new > TLDs. I think it is safe to assume that there has been some gaming. We don’t > need to do an exhaustive investigation. What we need to do is look at > reasonable solutions to the gaming problem. I have not seen any proposals > for you on how to handle the problem. We need to close down this > unproductive discussion and move on to finding solutions to the problem of > gaming. These numbers stand for the proposition that the sunrise period should be entirely eliminated, given that folks concede it "is a very small number", and thus is not conferring many benefits to those who register them defensively, since they're not utilizing the procedure. And the gaming that does exist is amplified, since it means that a higher percentage of the sunrise registrations are gamed. It could be that 30%, or even 50% of sunrise registrations are gamed, given the various blog posts and examples provided to this mailing list already (and how many others might exist "under the radar", that some folks are trying to keep hidden due to the lack of transparency of the TMCH). Consider a "thought experiment" as to what would happen if Sunrise registrations and the TMCH were eliminated. Those 130 registrations would shift to either landrush or to general availability. For those who are "gaming" the sunrise, they'd now be on an equal footing as everyone else. For those legitimate TM holders, they can either register in landrush (or general availability), *or* they have curative rights protection mechanisms (courts, cease and desist letters, UDRP, URS, etc.) *if* domains which conflict with their TM rights are registered by someone else and misused. I could even support a "hybrid" (horse trading, as Phil called it yesterday) model, where landrush imposed **additional burdens** on registrants, e.g. paying costs if they lose a UDRP), but then that extra burden is eliminated during general availability (as it is today). This way, TM holders and legitimate end users who don't have trademarks but have non-conflicting uses, etc. are on equal footing during a landrush. I think many people are overly protective of the TMCH & sunrise period not because it's "working", but because it's an opportunity for extra consulting, revenue streams, etc. e.g. lawyers can tell their clients "get registered", and they can make money from the filing fees, etc. There's a huge amount of money being wasted, in my voice, that can be redirected to other things (like curative rights, better education, etc.). Suppose that of the 130 sunrise registrations, half of them got registered by legitimate TM owners in landrush. Of the 65 that were registered by someone else, how many of those would actually be cases of cybersquatting? I would suggest it's a small number, given the overall stats of UDRPs relative to registrations. Even if it was a massive 2% (actual percentage is much, much lower), that might mean 1 extra UDRP per TLD? With 1000+ TLDs launched over 4 years, that might mean an extra 250 UDRPs per year. That's a relatively negligible amount. If the "all-in" costs of those 250 UDRPs (lawyers fees + filing fees) is $5,000 or so, that's $1.25 million/yr. TMCH revenues, by contrast, are on the order of $5 million/yr for Deloitte. And perhaps another $5 million or more per year for all the TM agents, etc. filing on behalf of clients. Let's call it $10 million+ for TMCH-related fees on those using that system. Trading $10 million/yr in "preventive" costs for $1.25 million/yr in "enforcement" costs -- that's a no-brainer for TM holders. And if, as I argued above, if some of those UDRP enforcement costs are shifted to the losers (for landrush registrations), then the economics are even that much stronger for the elimination of the sunrise period (since that $1.25 million becomes even lower, due to cost recovery). And of course, a system that has no landrush definitely benefits ordinary registrants and prospective registrants who simply want a "good" name, or at least a fair chance at one, and don't want to see "THE" or "FLOWERS" or "HOTEL" or all of the other common words being grabbed in sunrise. Processes would be simplified for registry operators and registrars, if sunrises and TMCH were eliminated, which saves them money (which gets passed along as savings for consumers). TLDs would launch faster, too. The best second-level strings would be "spread around" more, which is probably a good thing (except to some who feel, wrongly, that they have exclusive rights to common dictionary terms, etc., which is not something the law supports). So, I hope folks will give serious consideration to what would happen if sunrise was completely eliminated. With a few small tweaks (as noted above), it could be much better than we have for most people (except for those exploiting the current system). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ P.S. I know I've not written much above about the TM Claims notice aspect of the TMCH, but those are obviously have a chilling effect, with a 96%+ abandonment rate of registrations. A 90 day claims notice, which determined cybersquatters are going to ignore anyway, simply confuses legitimate registrants. The "ongoing notifications service" aspect of the TMCH is available through other companies, e.g. DomainTools or other domain monitoring services. P.P.S. Some might argue that you can never collect $5K from registrants if they lose a UDRP. Shift some of that to the registrar, who can then police their own clients, a sort of "know your client" rule for those participating in landrushes. One can even envision a system of insurance, so that those who are involved in risky domain name registrations pay higher "insurance" (to indemnify their registrars) than less risky registrants who don't engage in cybersquatting. Or require a deposit at the start of the UDRP process (if one side doesn't post a deposit, they'd be in default).

8 13

3rd update Subgroup Member Lists
by Terri Agnew April 14, 2017

April 14, 2017

Additional members added to sub groups below Hello, Please find below a quick view of each sub team members/observer at this time. We have had a few more requests today and all are currently added. Here is the wiki pages for all three sub groups - Main sub team wiki space: https://community.icann.org/x/KhGsAw RPM WG Sub Team for Sunrise Registrations: https://community.icann.org/x/msrRAw Member wiki page: https://community.icann.org/x/nMrRAw Members: Roger Carney Kiran Malancharuvil Martin Pablo Silva Valent Maxim Alzoba Kristine Dorrain Brian Winterfeldt Phil Marano Griffin Barnett Lori Schulman Jeremy Malcolm Susan Payne Matthew Mlsna Observers: Paul McGrady WG Co-chairs: J Scott Evans Kathy Kleiman Phil Corwin RPM WG Sub Team for Trademark Claims: https://community.icann.org/x/psrRAw Member wiki page: https://community.icann.org/x/qMrRAw Members Michael Graham Rebecca Tushnet Roger Carney Kiran Malancharuvil Beth Allegretti Justine Chew Scott Austin Kristine Dorrain Phil Marano Griffin Barnett Brian Winterfeldt Susan Payne Alison Simpson Observer: Paul McGrady WG Co-chairs: J Scott Evans Kathy Kleiman Phil Corwin RPM WG Sub Team for Additional Voluntary Protection Mechanisms: https://community.icann.org/x/s8rRAw Member wiki page: https://community.icann.org/x/tcrRAw Members Brian F. Cimbolic Brian Winterfeld GriffinBarnett Jon Nevett Kiran Malancharuvil Kristine Dorrain Paul Keating Phil Marano Renee Fossen Steven Levy Paul McGrady Susan Payne Lillian Fosteris Janelle McAlister WG Co-chairs: J Scott Evans Kathy Kleiman Phil Corwin Thank you. Kind regards, Terri From: gnso-rpm-wg-bounces(a)icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 13, 2017 1:56 PM To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: [gnso-rpm-wg] Subgroup Member Lists Mary/Staff, So that a lot of people don't have to look at three different wiki pages, would it be possible to send an email that shows the members of the 3 subgroups? Thanks! Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 <mailto:gregshatanipc@gmail.com> gregshatanipc(a)gmail.com

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Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
by policy＠paulmcgrady.com April 14, 2017

April 14, 2017

1 0

Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
by policy＠paulmcgrady.com April 14, 2017

April 14, 2017

1 0

Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
by policy＠paulmcgrady.com April 14, 2017

April 14, 2017

7 10

Re: [gnso-rpm-wg] Text/design marks
by policy＠paulmcgrady.com April 14, 2017

April 14, 2017

1 0

Reminder: please do not invite non-members to Sub Team or Working Group calls
by Mary Wong April 14, 2017

April 14, 2017

Dear all, Just a gentle reminder that only Working Group members can join Sub Teams and participate on all calls. We’ve had a couple of experiences with non-members trying to join Sub Team calls because they were informed of the call by a Working Group member – please remember that Working Group and Sub Team calls are not open to non-members. All Sub Team calls – like Working Group calls – are recorded and transcribed, and published to the wiki space, so that Observers and non-participants can follow the work that way. If you know of someone who is interested in participating in the work of a Sub Team or our overall Working Group, staff is happy to assist them with signing up to the Working Group and filling out the requisite Statement of Interest. Thank you! Cheers Mary

2 1

2nd update Subgroup Member Lists
by Terri Agnew April 14, 2017

April 14, 2017

Co-Chairs from the RPM WG added below to all three groups. Hello, Please find below a quick view of each sub team members/observer at this time. We have had a few more requests today and all are currently added. Here is the wiki pages for all three sub groups - Main sub team wiki space: https://community.icann.org/x/KhGsAw RPM WG Sub Team for Sunrise Registrations: https://community.icann.org/x/msrRAw Member wiki page: https://community.icann.org/x/nMrRAw Members: Roger Carney Kiran Malancharuvil Martin Pablo Silva Valent Maxim Alzoba Kristine Dorrain Brian Winterfeldt Phil Marano Griffin Barnett Lori Schulman Jeremy Malcolm Susan Payne Matthew Mlsna Observers: Paul McGrady WG Co-chairs: J Scott Evans Kathy Kleiman Phil Corwin RPM WG Sub Team for Trademark Claims: https://community.icann.org/x/psrRAw Member wiki page: https://community.icann.org/x/qMrRAw Members Michael Graham Rebecca Tushnet Roger Carney Kiran Malancharuvil Beth Allegretti Justine Chew Scott Austin Kristine Dorrain Phil Marano Griffin Barnett Brian Winterfeldt Susan Payne Observer: Paul McGrady WG Co-chairs: J Scott Evans Kathy Kleiman Phil Corwin RPM WG Sub Team for Additional Voluntary Protection Mechanisms: https://community.icann.org/x/s8rRAw Member wiki page: https://community.icann.org/x/tcrRAw Members Brian F. Cimbolic Brian Winterfeld GriffinBarnett Jon Nevett Kiran Malancharuvil Kristine Dorrain Paul Keating Phil Marano Renee Fossen Steven Levy Paul McGrady Susan Payne Lillian Fosteris WG Co-chairs: J Scott Evans Kathy Kleiman Phil Corwin Thank you. Kind regards, Terri From: gnso-rpm-wg-bounces(a)icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 13, 2017 1:56 PM To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: [gnso-rpm-wg] Subgroup Member Lists Mary/Staff, So that a lot of people don't have to look at three different wiki pages, would it be possible to send an email that shows the members of the 3 subgroups? Thanks! Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 <mailto:gregshatanipc@gmail.com> gregshatanipc(a)gmail.com

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by Nahitchevansky, Georges April 13, 2017

April 13, 2017

Actually it touches on the point here. If you are going to make various arguments of alleged abuse in support of claimed transparency, then it would it is relevant to know whether you are supporting a lack of transparency in the whois side of things where abuse has been rampant. While the TMCH and Whois are different animals a number of the arguments being made here to support transparency have actually been mirrored in the other context and rejected by those seeking opacity. And one major difference between ‎the two situations is that there is widespread evidence of abuse of the whois system whereas here in the TMCH context you do not have evidence of a widespread abuse of the TMCH by brand owners. Nevertheless, you and others persist on wanting to conduct a fishing expedition under the guise of so called "transparency" to try and find some alleged widespread harm that simply does not exist. To many folks on the other side of the aisle, it appears that this is not about transparency but more about some effort to gut existing protections and to obtain the release of confidential information of brand owners as to what they did or did not register. Perhaps this may not be the intent, but we all know that once that information is out the gaming will really begin. ‎Again, perhaps there are tweeks that could be made to improve the current system, but there is no real basis for undertaking the broad review that is being sought and certainly not for undoing the entire existing system. ‎ Original Message From: Paul Keating Sent: Tuesday, April 11, 2017 6:33 PM To: Nahitchevansky, Georges Cc: J. Scott Evans; gnso-rpm-wg(a)icann.org Subject: Re: Action Items, Slides and Notes from the Working Group call held earlier today George, You can always quote me. I say what I have said. I only ask that you quote me accurately. The discussion here is the TMCH database. Please let's stay on topic. Happy to discuss Whois separately. Sent from my iPad > On 12 Apr 2017, at 00:18, Nahitchevansky, Georges <ghn(a)kilpatricktownsend.com> wrote: > > Can I quote you in this on having an open and robust whois so we can have across the board actual and real information on the parties registering domain names and know who the bad actors are > > Georges Nahitchevansky > Kilpatrick Townsend & Stockton LLP > The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 > office 212 775 8720 | fax 212 775 8820 > ghn(a)kilpatricktownsend.com | www.kilpatricktownsend.com > > > > -----Original Message----- > From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating > Sent: Tuesday, April 11, 2017 5:58 PM > To: J. Scott Evans > Cc: gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today > > It says at most which domains it wants pre-emptiness and notice rights over. > > Hardly a confidential business secret. The information is a public record. And, After all the Information is instantly public the minute one pre-emptive sunrise registration is undertaken. The notice right is completely a non secret. > > And hardly sufficient to use to hide bad actors. > > > > Sent from my iPad > >> On 11 Apr 2017, at 23:18, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org> wrote: >> >> There is a big difference from a database that contains all a company’s registered marks and one that contains a culling for only those it deems most valuable for protection in the DNS. The former is clearly open for the public, the later is not. >> >> J. Scott >> >> >> J. Scott Evans >> 408.536.5336 (tel) >> 345 Park Avenue, Mail Stop W11-544 >> Director, Associate General Counsel >> 408.709.6162 (cell) >> San Jose, CA, 95110, USA >> Adobe. Make It an Experience. >> jsevans(a)adobe.com >> www.adobe.com >> >> >> >> >> On 4/11/17, 2:03 PM, "gnso-rpm-wg-bounces(a)icann.org on behalf of Jeremy Malcolm" <gnso-rpm-wg-bounces(a)icann.org on behalf of jmalcolm(a)eff.org> wrote: >> >> On 11/4/17 9:43 am, J. Scott Evans via gnso-rpm-wg wrote: >>> George: >>> >>> We have all followed this string. We understand that you and a few others believe there need to be wholesale changes to the Sunrise mechanism and the TMCH database (or at least the confidentiality of that data). >>> >>> 1. Do you have a suggestion for how to improve the Sunrise mechanism? >>> 2. I see very little support for violating the confidentiality provisions of the TMCH contract. >> >> FWIW I am also all for bringing the transparency of the TMCH database >> into line with those of national trademark registries so that its >> secrecy does not facilitate the kinds of abuses that George has >> uncovered. I have been an observer until now but I've just upgraded to >> member and plan to join the call tomorrow. >> >> -- >> Jeremy Malcolm >> Senior Global Policy Analyst >> Electronic Frontier Foundation >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&da… >> jmalcolm(a)eff.org >> >> Tel: 415.436.9333 ext 161 >> >> :: Defending Your Rights in the Digital World :: >> >> Public key: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.or… >> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 >> >> >> >> >> _______________________________________________ >> 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 > > ________________________________ > > Confidentiality Notice: > This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. > > ________________________________ > > ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

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**Updated Subgroup Member Lists
by Terri Agnew April 13, 2017

April 13, 2017

**new member added below to the Additional Voluntary Protection Mechanisms. Hello, Please find below a quick view of each sub team members/observer at this time. We have had a few more requests today and all are currently added. Here is the wiki pages for all three sub groups - Main sub team wiki space: https://community.icann.org/x/KhGsAw RPM WG Sub Team for Sunrise Registrations: https://community.icann.org/x/msrRAw Member wiki page: https://community.icann.org/x/nMrRAw Members: Roger Carney Kiran Malancharuvil Martin Pablo Silva Valent Maxim Alzoba Kristine Dorrain Brian Winterfeldt Phil Marano Griffin Barnett Lori Schulman Jeremy Malcolm Susan Payne Matthew Mlsna Observers: Paul McGrady RPM WG Sub Team for Trademark Claims: https://community.icann.org/x/psrRAw Member wiki page: https://community.icann.org/x/qMrRAw Members Michael Graham Rebecca Tushnet Roger Carney Kiran Malancharuvil Beth Allegretti Justine Chew Scott Austin Kristine Dorrain Phil Marano Griffin Barnett Brian Winterfeldt Susan Payne Observer: Paul McGrady RPM WG Sub Team for Additional Voluntary Protection Mechanisms: https://community.icann.org/x/s8rRAw Member wiki page: https://community.icann.org/x/tcrRAw Members Brian F. Cimbolic Brian Winterfeld GriffinBarnett Jon Nevett Kiran Malancharuvil Kristine Dorrain Paul Keating Phil Marano Renee Fossen Steven Levy Paul McGrady Susan Payne Lillian Fosteris Thank you. Kind regards, Terri From: gnso-rpm-wg-bounces(a)icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 13, 2017 1:56 PM To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: [gnso-rpm-wg] Subgroup Member Lists Mary/Staff, So that a lot of people don't have to look at three different wiki pages, would it be possible to send an email that shows the members of the 3 subgroups? Thanks! Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 <mailto:gregshatanipc@gmail.com> gregshatanipc(a)gmail.com

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Subgroup Member Lists
by Greg Shatan April 13, 2017

April 13, 2017

Mary/Staff, So that a lot of people don't have to look at three different wiki pages, would it be possible to send an email that shows the members of the 3 subgroups? Thanks! Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc(a)gmail.com

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Action Items, Slides and Notes from the Working Group call held earlier today
by Mary Wong April 13, 2017

April 13, 2017

Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: · Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. · Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? · Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? · Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary

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IMPORTANT: Action Items and Notes from Review of all RPMs for all gTLDs PDP Working Group Call - 12 April 2017
by Amr Elsadr April 13, 2017

April 13, 2017

Hi, Please find below the Action Items and Notes from yesterday’s Review of all RPMs for all gTLDs PDP WG call. Also, another quick reminder that there will be no full Working Group call next week, although Sub Teams are expected to continue their own calls. The next full Working Group call is scheduled to take place on Thursday, 27 April at UTC 03:00. Thanks and cheers. Mary and Amr Action Items: 1. Working Group members should send specific proposals for recommendations for Charter questions 7, 8 and 10 to working group mailing list by COB Wednesday, 19 April, including a description of the benefits/costs and advantages/disadvantages 2. Staff to seek response from Deloitte on outstanding questions from the Working Group in relation to question 7 Notes: 1. Comments from co-chair regarding on-list discussions: · Good to see active participation by WG members · Several WG members have dropped off due to large volume of repetitive emails, tone of emails, general tone of conversations taking place also causes reluctance to provide input by some members · Overview of the GNSO's policy development process, from working group --> ICANN Board adoption o Emphasis on the need to reach consensus on charter questions to develop recommendations, pass them on to the GNSO Council and ICANN Board o Important for Working Group members to treat each other with respect, and observe the ICANN Expected Standards of Behavior (https://www.icann.org/resources/pages/expected-standards-2016-06-28-en) 2. Discuss remaining open TMCH Charter questions (Q7, 8, 10): · Question 15 should not be on the call agenda - previous agreement to table this question for future discussion · Working Group needs to make progress on proposals/recommendations · Send proposals to working group mailing list by COB Wednesday, 19 April -- all proposals will be tabulated for review by the full Working Group (ACTION ITEM) · Multiple proposals may be submitted, discussed, refined/amended · Proponents of different proposals should have equal opportunity to present and discuss their proposals · Proposed recommendations can be amended and/or improved in the course of discussing them · Development of recommendations is an iterative process - as work is completed on different RPMs in phase 1 of the PDP, might be necessary to review previously developed recommendations for refinement - currently, no formal or final consensus calls are being called for · Question 7 (How are design marks currently handled by the TMCH provider?): o ACTION ITEM: Staff to communicate with Deloitte to seek the requested information in relation to this question o Should the treatment of design marks be changed? Are they collectively being handled properly? --> These questions are a good basis for discussion on this charter question o Suggestion to discuss underlying concepts and nomenclature (including terms such as transformative, figurative marks) in preparation for the more substantive discussion on particular proposals for recommendations o Straw poll to either review current proposal vs deferment until all proposals are submitted (after 19 April deadline) --> Equally split -- decision to proceed with suggestion to discuss underlying concepts, and deferral of currently submitted proposal o In answering this charter question, distinction should be made between text marks alone, stylized text marks, design/device/image marks that contain a mix of a logo/graphic/visual and text – what may be considered a Design Mark in the US may be called something different elsewhere (e.g.: Figurative Mark in EU) or not recognized as such at all – distinction should not be limited to text only marks versus all other types of marks o Small businesses that cannot afford to register more than one trademark may be counselled to register a stylized form of their trademark, with the understanding that both the design and text components are protected o Need to develop recommendations that can provide protection to trademarks across different jurisdictions that may vary in how they classify trademarks and their nomenclature o In certain jurisdictions text marks need to be associated with design for protection - does not mean that text portion is not indistinctive o From AC room chat: The TMCH Guidelines specifically address the topic of a mark that is not entirely text. Deloitte's rule is that it is considered identical to the TM record if the words/numerals/letters/signs are predominant in the mark AND are clearly separable and distinguishable from the design element. o Working Group members should review Deloitte's test on how text marks are determined (refer to Deloitte's guidelines on TMCH: http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/… o Design marks are sometimes used due to inability to register text marks alone --> Deloitte was not intended to have the discretion to extract text from Design Marks to include in the TMCH o Should stylized Marks be distinguishable from standard Text Marks and Design Marks, do they grant the trademark holder different rights? o Text + design protects the text + design trademark – does not provide the same protection afforded to text alone and design alone – standard for entry into the TMCH is a court judgment or registration that protects the mark – Working Group should be limited to the specifics of the protected mark, and not extrapolate on what else might be protected o If textual elements of Design Marks are making it in to the TMCH despite disclaimers on the text clarifying that the text is not protected, then perhaps a recommendation to prevent Deloitte from accepting these trademarks is necessary o From AC room chat: What if the registered trademark is "logo plus word" and the word is not disclaimed, i.e. it is protected as part of the whole mark? Should that be accepted or rejected by the TMCH? So it seems that 2 basic questions for the Working Group are: (1) is a mark comprised entirely of stylized text considered a word mark? (2) does the concept of "word mark only" exclude all marks that are device/logo plus text (even where the text part is disclaimed)? 3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT): · Purpose of presenting these questions: o Inform the Working Group that preliminary recommendations of the CCT-RT have been published, and that some are directed towards the RPMs Review PDP WG o Initiate discussion between the leadership teams of the RPMs Review PDP Working Group and the new gTLDs Subsequent Procedures PDP Working Group o CCT-RT initial report is published and open for public comments - working group members should consider submitting comments 4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call: · No full working group call next week - use standard working group call time for one of the two currently formed Sub Teams 5. Next steps/next meeting: · Full working group call will take place in two weeks - will discuss proposals for recommendations at that time

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Re: [gnso-rpm-wg] Some information on Sunrise dispute challenges, Deloitte and IBM scope of work, TMCH database confidentiality etc.
by Paul Keating April 13, 2017

April 13, 2017

Thank you Mary, Very very useful. Do you have similar information regarding the confidentiality of the registration materials or is that limited to the contents of your wonderful summary? Paul From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Mary Wong <mary.wong(a)icann.org> Date: Thursday, April 13, 2017 at 6:11 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Some information on Sunrise dispute challenges, Deloitte and IBM scope of work, TMCH database confidentiality etc. > Dear all, > > In following the recent mailing list discussion, staff thought it might be > useful (especially for newer Working Group members) to provide some references > to existing documents and materials that touch on some of the questions raised > regarding disputes over Sunrise registrations, the Deloitte and IBM contracts, > and the TMCH Database. Please therefore find attached a short document where > we have attempted to provide the background information (note that for the > TMCH Database the excerpt from the 2012 Implementation Advisory Group report > had been circulated previously but we include it in the document for > comprehensiveness). All of the links referenced are also available on the > Working Group wiki space. > > We hope this is helpful. > > Thanks and cheers > Mary > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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