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

Some information on Sunrise dispute challenges, Deloitte and IBM scope of work, TMCH database confidentiality etc.
by Mary Wong April 13, 2017

April 13, 2017

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

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FOR CONSIDERATION/ACTION: 19 April Deadline for Proposals on Open TMCH Questions
by Mary Wong April 13, 2017

April 13, 2017

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> Date: Monday, April 10, 2017 at 17:56 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)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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Text marks and terminology
by Rebecca Tushnet April 13, 2017

April 13, 2017

On today's call there was mention of jurisdictions that don't allow registration of text-only marks when the mark is typically presented in stylized fashion (e.g., Coca-Cola). I was wondering if someone could give an example of such a jurisdiction--it may be that such jurisdictions have other terminology we should consider, along with the useful examples of EU and US terminology we've already heard. Rebecca Tushnet Georgetown Law 703 593 6759

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew April 12, 2017

April 12, 2017

Dear All, Please find the attendance of the call attached to this email. The MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 12 April 2017 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/E8zRAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-12apr17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p2rltvqowvg/?OWASP_CSRFTOKEN=436763efcaabf56f d0227f108d44d3c705d81ed2dd669eac5ee8f7b29a7d3189> https://participate.icann.org/p2rltvqowvg/ 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 12 April 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 12 April 2017 at 16:00 UTC for 90 minute duration Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_E 8zRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ E8zRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr 4&s=e7ZLBblIokCsStKkwQyyQsgaNi3WbizucE4GMfu4F3Q&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=e7 ZLBblIokCsStKkwQyyQsgaNi3WbizucE4GMfu4F3Q&e= George Kirikos:Hi folks. George Kirikos:bbiab Martin Silva:Hi all George Kirikos:Welcome, Martin. Paul Tattersfield:Hi everyone Paul Tattersfield:On a mailing list matter before we get started: Would it be possible for the mailing list software to strip of the ATTnnnn.txt files as they don't seem to contain anything useful? Paul Tattersfield:Seems to be just a bit of repeated text about the mailing list: gnso-rpm-wg mailing list - gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> - https://mm.icann.org/mailman/listinfo/gnso-rpm-wg etc Paul Tattersfield:If the mailing list software could not add this text to out going emails this would be really helpful as it would make it much easier to spot emails with 'real document attachments' Paul Tattersfield:Here is a link to the source of an example email https://urldefense.proofpoint.com/v2/url?u=http-3A__www.gpm.info_msg.txt <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.gpm.info_msg.txt&d= DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL 7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=eviX7 7twWWJ55bbLJ_8xXWCYtwNgFiAlNDX90sTrAFI&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=ev iX77twWWJ55bbLJ_8xXWCYtwNgFiAlNDX90sTrAFI&e= if you scroll to the bottom you can see where the problem text is added, which causes [some] email software packages treat as an attachment. George Kirikos:There had been an .eml attachment forwarded today, too. Paul Tattersfield:Yes I saw that George I think that is a certificate George Kirikos:I don't know if ICANN is virus-scanning all the attachments. George Kirikos:No, the .eml was someone forwarding an actual email. George Kirikos:I opened it with a text editor, and then copied/pasted the BASE64 text to a website, to read it safely. George Kirikos:But, the same email turned out to be within the body of the email that Brian sent. So, it was superfluous. Paul Tattersfield:ah sorry I was thinking of the .p7s that came today too Philip Corwin:Hello all. We will start in one minute. Marie Pattullo:Bless you, Phil :-). Steve Levy:G'day all Michael R Graham:Attending without audio for a few minutes. Maxim Alzoba (FAITID):Hello All Steve Levy:Thank you for reminding us of these critical core principles, Phil. If we cannot achieve consensus on any issues, all of the hours and energy we've spent on this WG will be for naught Mary Wong:@Phil, yes - please accept our apologies for mistakenly including Question 15 on this agenda and in this document. George Kirikos:Has Deloitte provided answers to any of the data requests yet? Mary Wong:@George, we have no further input from Deloitte at this time. Which specific data points were you interested in? George Kirikos:(e.g. top 500, also how they handle all those marks, e.g. CARS, etc.) George Kirikos:(the 5 or 6 examples of figurative/stylized marks that Rebecca prepared) Mary Wong:THanks, George. We have followed up with them and hope to receive some feedback ASAP. Mary Wong:@Kathy, yes Mary Wong:We've asked. George Kirikos:Only standard character claim word marks, yes. George Kirikos:Proposals only for Q7,8 and 10, though. Michael R Graham:Do we have a description from TMCH provider answering the charter question? Mary Wong:@Michael, do you mean these questions? If so, Deloitte has descibed how they deal witht these types of marks when submitted. J. Scott Evans:I believe that all proposals would be presented equally. Steve Levy:Perhaps we need a sub-team to try and harmonize the various proposals on a given topic (similar to how it's handled by legislators)? Michael R Graham:@Mary -- Yes. And thanks. I'll look back in the record for the answer. J. Scott Evans:The question, however, has been answered by Deloitte. Greg Shatan:it's a fact question. Greg Shatan:I"" George Kirikos:Yes, 7 and 8 are fact questions. George Kirikos:10 is more open ended. George Kirikos:"Should" bradley silver:+1 @J. Scott Lori Schulman:Agree with J Scott. A deadline is more fair I think. Paul McGrady:Hello all. Sorry to be late. Lori Schulman:We should field all proposals. Colin O'Brien:All proposals would be better Paul McGrady:+1 Lori George Kirikos:I'd like to see all the Deloitte results, to be able to identify problems, before presenting proposed solutions. Greg Shatan:George, I agree with your reading of the questions. Kathy Kleiman:+1 J. Scott - Council was quite upset Georges Nahitchevansky:I agree all proposals shoud be considered at the same time and that we should have teh Deloitte info before proceeding George Kirikos:@Greg: I agree with your agreement. :-) J. Scott Evans:agreed. J. Scott Evans:with Mary Michael R Graham:Agree with George/Greg/Mary. Very agreeable this morning. J. Scott Evans:It also needs to be clearly labelled as a proposal for consideration. Lori Schulman:Yes, all proposals should be marked as proposals and reviewed at once so as to not unduly favor one over the other Lori Schulman:Although we may all be coming from different viewpoints, we need to be objective and methodically in how we manage proposals and answers to questions that are provided to the group by 3rd parties Michael R Graham:@Mary: Without looking -- I understand Charter calls for review, identification of issues, and proposals for change consideration. Does Charter also give us the task of proposing specific changes? George Kirikos:For #10, I've been in favour of allowing "Fuzzy" matching for the ongoing notifications, instead of fees for every variation as per https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_content_ongoing-2Dnotifications <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_content_ongoing-2Dnotifications&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVz gfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lv O5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=HriQl0AtqhneOCX78ArvY9FhdMtG1Yj49Sqc FJNGU4Y&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Hr iQl0AtqhneOCX78ArvY9FhdMtG1Yj49SqcFJNGU4Y&e= . But, not for TM Claims Notices or for Sunrises. Paul Tattersfield:Agree we should Phil Mary Wong:@Michael, generally yes as long as the specific policy recommendations don't wander too much into implementation details. For example, a policy recommendation could say "a reasonable time frame" and then it will be for the Implementation Review Team (if the policy is adopted) to work out, operationally and technically, what that time period will be. Does that help? George Kirikos:Checkmark to agree, hand to queue. Paul McGrady:Why not do a green check mar kv red check mark instead of raising hands Michael R Graham:Set deadline for all proposals -- only then discuss towards decision. Michael R Graham:Paul +1 Lori Schulman:Yes, we should use red and green symbols as provided by Adobe chat Georges Nahitchevansky:Agree should vote agree or disagree with re d and green symbols George Kirikos:Here's Kathy's proposal, for easy reading outside Adobe: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001320.html Paul McGrady:@Phil - when will the other positions to Kathy's be available? Michael R Graham:@Mary -- Okay, so directing specific changes of policy practices are part of Charter. Implementation of policy practice change not part. Lori Schulman:Yes, clarification on scope is key Georges Nahitchevansky:Discussing one proposal before seeing the other proposals colors the entire process and starts an intial mental framework, so I urge that a date be set as has been suggested and then all proposals considered Greg Shatan:Agree with Georges. Paul McGrady:@Phil - hard to vote without information - when will the other positions to Kathy's be available Mary Wong:@Paul, the suggested deadline is 7 days from now (19 April) George Kirikos:We can jump to #3 on our agenda, perhaps? Paul Tattersfield:I think it would be a helpful guide for others looking to submit a proposal George Kirikos:CCT-RT Michael R Graham:Proposal: Hold off discussion of any proposal until after receipt of all proosals with deadline. Mary Wong:From a quick count, looks almost even on the vote Mary Wong:Sorry, NOT vote - straw poll! John McElwaine:@Greg +1 George Kirikos:Let's go for sound marks. :-) Mary Wong:Staff supports a consistent usage that the Working Group can define or clearly explain, without only relying on one jurisdictional definition. George Kirikos:*6 to mute Lori Schulman:There is no consensus to entertain proposal. George Kirikos:"private chat is disabled by host"?? George Kirikos:(couldn't reply to a private message) Kathy Kleiman: In that case, let's use this time on Statute and Treaty marks as wel. Kathy Kleiman:as well. Mary Wong:@George, that's happened before - normally logging off and on fixes that. Greg Shatan:I'm on tablet, so when I stop talking it echoes until i turn off the microphone. Paul Tattersfield:Kathy +1 Paul McGrady:@Kathy, Statute and Treaty marks bleeds into the next question and I don't think it is good to spring that one us. Paul Keating:Sorry for being late George Kirikos:Right, the IGO Article 6ter stuff, for example. David McAuley:also sorry for being late Kathy Kleiman:We've been in the murky waters! Colin O'Brien:+1 Paul Lori Schulman:I think that discussing GI's should have Massimo Vittori on the call. Kathy Kleiman:Qusetions 7 and 8 are before us! Lori Schulman:He is part of the working group I believe. Greg Shatan:Digital archery practice? Marie Pattullo:+1 to Lori Greg Shatan:(as a use of our time). Paul McGrady:@Phil - thanks. Mary Wong:All, please note that Deloitte has told us how they handle non-word marks (Q7) and "marks protected by statute or treaty" (which may cover Q8). The staff question for the WG after Copenhagen had been, what is the policy intent for the TMCH scope and does what is being accepted now into the TMCH go beyond that? We understood Phil's proposal was to discuss this. Martin Silva:This is very usfeull, since different jurisdiction have different ways of addrssing this Martin Silva:for what I know, desing marks in the civil law tradition countries are usually called mixed marks Martin Silva:which are text marks that are represented in an specific figurative way (form+color) Martin Silva:and are only protected in those desings Martin Silva:correct me if anyone knows better Michael R Graham:@Mary: With apologies for being late to the "party" -- can you point me to materials/transcript where Deloitte describes their handling? Paul McGrady:I would like to speak to the economic efficiency of design marks and the need not to presume that the text portion of a design mark is always indistinct (to the exclusion of smaller businesses). George Kirikos:I read an article yesterday about China becoming the dominant jurisdiction for IP soon. It'd be interesting to get their perspective, given they accounted for more than 50% of new gTLD registrations. Michael R Graham:@Martin -- Word and alphanumeric figures contained in mixed marks are also granted protection beyond the stylization unless "disclaimed" Lori Schulman:Martin: the answer to you questions is "it depends". The words and the stylization are protected. George Kirikos:https://techcrunch.com/2017/04/11/the-surprising-rise-of-china-as-ip -powerhouse/ Lori Schulman:Marks are always looked at on the whole. However some elements dominate others. Mary Wong:@Michael, I will need to look up the dates of the meetings but will do so. Mary Wong:Deloitte's TMCH Guidelines describe how they handle marks that are not exclusively comprised of letters, numerals or words. Paul McGrady:+1 Greg - would be good to develop a definitions list to harmonize all the ways that various trademark offices refer to design marks Martin Silva:so if I register "Martinish" in a certain font and in red I can exclude other to use "Martinish" regarldes of the desing they are using? Michael R Graham:@Paul Please do address this point. Most small businesses that develop a logo with words in the US are counseled that registraiton of a design mark/logo containing the words will protect both the Design Mark and the Words. If the words are not STRONG trademarks on their own, they receive proportional protection. Paul McGrady:@Phil - the mark may be older Lori Schulman:Martin, in the US you can. Martin Silva:@graham Lori Schulman:as long as Martinish doesn't have any other meaning Vinzenz Heussler:I may be able to protect a stylised mark but not the letters on its own Martin Silva:thkns Lori J. Scott Evans:adias is a bad example. this is usually a problem from small to medium enterprises. Lori Schulman:or I should says as long as Martinish is distinctive on its own Paul McGrady:@Phil - the mark may be older Lori Schulman:if Martinish is a common term that describes your goods or services that is a different story Rebecca L Tushnet:Are there a lot more small businesses in the TMCH than big ones? Marina Lewis:@Phil - a lot of brand owners, especially small businesses or individuals, can only budget for one application - and they choose the design form to try to protect both words and design. George Kirikos:But, the "standard character claim" would be marked "yes" for those, right? Michael R Graham:@Marina -- Exactly. Lori Schulman:Even big trademark owners may opt to register distinctive words with designs if they are registering in mutliple jurisdictions or multiple classes to reduce cost Marina Lewis:@Rebecca - the TMCH was designed to protect all businesses, not just large ones. Mary Wong:@Rebecca, there is no way to tell even if you saw all the TM records in the TMCH. Marina Lewis:@Rebecca - not sure why that question is relevant? Greg Shatan:I have certainly put smaller clients' marks in the TMCH. Greg Shatan:Not that the question is relevant.... Greg Shatan:But nothing wrong with being informative. Lori Schulman:I represented a small business that had several TMCH filings Lori Schulman:Charities also use the TMCH Lori Schulman:it depends on the reach of the market and the challenge a particular business or charity has with squatting Michael R Graham:@Rebecca: Would it matter whether there were more small businesses or large in the TMCH? Across the board, smaller businesses that wish to protect their trademarks have a higher proportional cost than large companies. But consumers need to be protected regardless. Mary Wong:Is there agreement that a mark comprised of text (words, letters, numerals, punctuation, keyboard signs) may be a mark, but is not a "design mark" even if it is a stylized version of the word? Paul McGrady:+1 J Scott. We need to have clear definitions. Michael R Graham:@Mary: I would agree with you. My practice is even to refer to them as "WORD and Design" marks. George Kirikos:We want to protect the Stronger marks. But, we don't have a clear definition of "strong" marks (and some want to squeak weak marks into the database). Marie Pattullo:Thanks for this Michael - "Across the board, smaller businesses that wish to protect their trademarks have a higher proportional cost than large companies. But consumers need to be protected regardless". + as many 1s as permitted. Martin Silva:I think we deffintly need deloiite deffinition on this, we can't really discuss if each one has a different understanding. I don0t care which is the meanaing as log as we all know what it is. Michael R Graham:@Martin -- +1 Martin Silva:is not bad faith Martin Silva:on the contrary, I am traying to build good faith! Paul McGrady:"Stylized" is being conflated with "Design" Its not the same Kathy Kleiman:Tx you, J. Scott. History and background are important. Lori Schulman:Correct Phil. Words are protected. Marina Lewis:+1 Paul Monica Mitchell:sorry Terri Agnew:@Monica, I don't see your mic active or on the telephone Mary Wong:@Paul, yes, it is not the same thing as we (staff) understood this discussion. A stylized word is still a text mark - I think that's what Deloitte goes by as well. By "design mark" they/we mean devices and logos and the like (not stylized text). Terri Agnew:to activate your mic, top tool bar select the telephone icon and follow the prompts. To join on the telephone let me know if a dial out is needed Monica Mitchell:just found the answer ... sorry Amr Elsadr:@Martin: Deloitte's TMCH Guidelines can be found here: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_sites_default_files_files_downloads_TMCH-2520guidelines-2520v1.0-2 520-5F1.pdf <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_sites_default_files_files_downloads_TMCH-2520guidelines-2520v1.0- 2520-5F1.pdf&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dX AvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6 ywxjhr4&s=L03PIKl0v4RlDkfjHtVioSvnyGThtArdMePuLxSzamc&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=L0 3PIKl0v4RlDkfjHtVioSvnyGThtArdMePuLxSzamc&e= Susan Payne:aplogies for joining late - overrunning prior meeting Michael R Graham:One of the most important things the Policy & Implementation Working Group did to aid its deliberations -- and it carried through to our proposals -- was to identify TERMs we were using in our discussion and the develop and agree to specific DEFINITIONS that we stuck to in our discussions and proposals. George Kirikos:https://www.uspto.gov/trademarks-getting-started/trademark-basics/re presentation-mark Michael R Graham:Can I propose that we establish a continuing working team to do that for this PDP going forward? Marie Pattullo:Fully support Paul's comments re SMEs. Martin Silva:thnks Amr Martin Silva:! Kristine Dorrain - Amazon Registry Services:Lots of active participation this week. I have to drop for a conflict but will pick up on the rest of the call later. See you all next week. Mary Wong: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. Martin Silva:doesn0t that gives too much power to delloite? Greg Shatan:Thanks, Mary. That seems appropriate. Georges Nahitchevansky:Here is USPTO link on standard, stylized and design marks: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_trademark s-2Dgetting-2Dstarted_trademark-2Dbasics_representation-2Dmark <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_trademar ks-2Dgetting-2Dstarted_trademark-2Dbasics_representation-2Dmark&d=DwIFaQ&c=F mY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0A Ign-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=-Di6r8jig1apTU- VL70XJqzNWmaKog0cyWoLCgw37Lw&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=-D i6r8jig1apTU-VL70XJqzNWmaKog0cyWoLCgw37Lw&e= Martin Silva:it might create broader domain name protectio that ana trademark gives J. Scott Evans:Agree Paul. Paul Keating:That exact problem arises often in a UDRP context. Lori Schulman:Martin: It shouldn't. Susan Payne:There has also been at least one UK TM decision which said you must regiser in the form that you use - ie not as plan text. Further, the advice I routinely received from Chinese TM attorneys is that this is a requirement in China. So we must acknowlede the fact that not every country's law and practice is the same as that of the US. Something which is perpetually forgotten in ICANN land Greg Shatan:Martin, I think that treatment is consistent with the current state of TM protection. (Putting aside the disclaimer issue.) Lori Schulman:In a UDRP , the panelist will review the TM registration or the common law claim and make a determination based on the totality of the circumstances Kathy Kleiman:With great respect, I don't agree Paul. George Kirikos:TMCH costs $120/yr. Over 10 years, that's $1200. So, it's NOT small businesses signing up for the TMCH, given they paid less than that at the USPTO. Michael R Graham:@Mary -- Useful, but the wording "if the words/numerals/letters/signs are predominant in the mark AND are clearly separable and distinguishable from the design element." needs to be clarified I think. Marina Lewis:I think the key point is whether a trademark includes "literal elements", regardless of font, stylization, color, or additional design. ("Literal elements" is the term employed by the USPTO in this context.) Since the TMCH is designed to match to a literal element, this would seem to be where I focus should lie. Kathy Kleiman:Small businesses, and especially entrepreneurs, will be hurt. Lori Schulman:Excellent Points from Susan Payne. Greg Shatan:With great respect, I agree with Paul. George Kirikos:USPTO TM Fees: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_learning- 2Dand-2Dresources_fees-2Dand-2Dpayment_uspto-2Dfee-2Dschedule-23Trademark <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_learning -2Dand-2Dresources_fees-2Dand-2Dpayment_uspto-2Dfee-2Dschedule-23Trademark&d =DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFz L7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=SrXv KJ_c6ROp4rH4-yjojeN1hxZIQPHppIvkAUx6j4I&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Sr XvKJ_c6ROp4rH4-yjojeN1hxZIQPHppIvkAUx6j4I&e= Fees Mary Wong:Thanks for reading that into the record, Phil. Staff hopes that's a helpful guide to this discussion. Michael R Graham:@Phil/Mary -- Problem for me is what is "predominant"? Steve Levy:Sorry but I've got to jump onto the audio-only line for the remainder of this call Paul McGrady:@Michael G - agree - sounds like Deloitte is re-examining marks. Yikes Michael R Graham:@Marina -- Good point. Would be useful to check INTA or other Global Rules listings to see what variants there may be. Greg Shatan:There are a vast number of USPTO TM registrations owned by SMBs and individuals. Greg Shatan:Yes, "predominant" could be a fuzzy concept. Mary Wong:@Michael, if it helps, Deloitte has a Dispute Resolution Process where incorrect acceptances into the TMCH can be challenged: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_dispute <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_dispute&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r= DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXV mW_un6ywxjhr4&s=SHzgbgUvCEUwXsHtiBIv815XK16Xd9v2QSsxf6vuSDg&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=SH zgbgUvCEUwXsHtiBIv815XK16Xd9v2QSsxf6vuSDg&e= Michael R Graham:@Paul -- That's my concern as well -- my understanding is that Deloitte wanted rules that avoided it examining these. J. Scott Evans:Have we asked Deloitee if any chanllegnes habve been filed? And, if so, how many? Martin Silva:4.2 in the Deloitte Guidelines Mary Wong:@J Scott, if I recall correctly, Deloitte's written response to the WG's initial questions was no. As of Jan 2017, the only disputes they had received was about TM owners not agreeing with Deloitte's verification. Michael R Graham:@Mary -- I presume our goal in this regard would be to ensure that challenges are the exception since the rules are appropriate to "real world" practice. J. Scott Evans:Kathy. You need to review Susan Payne's email. J. Scott Evans:Kathy. That is a huge assumption. Paul McGrady:@Kathy - we do a lot of pro bono work for non-profits and small entrepreneurs who will not be able to get coverage for their designs if they have to choose to spend their money on text alone marks in order to be allowed to participate in ICANN J. Scott Evans:I practiced for 13 yaars and routinely advised clients that were cost-concious to file one application for a design or composite mark. Greg Shatan:I'm with J Scott. That is not the advice that I have learned to give in 30 years of trademark practice. Mary Wong: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)? George Kirikos:You can pick "Clear Status" to remove the hand/checkmark. Maxim Alzoba (FAITID):colours ... are used sometimes (in case of Russia, few Telcos from one holding registered same image with different colours as different trademarks, for example), but I wonder how it should be reflected in TMCH ? Paul McGrady:@Rebecca - the same thing was happening to me. I think we have to "clear status" first to get rid of the green checkmark and then the hand being raised will work John McElwaine:Many countries apparently require "a depiction" of the mark with no distinction between text, stylization or included designs. I repeat that we are being too U.S. centric in this analysis. George Kirikos:+1 Rebecca Martin Silva:exactly! J. Scott Evans:@rebecca. that is not true. You are misstating the law in the US at least. George Kirikos:This is basic stuff. Maxim Alzoba (FAITID):how to reflect RGB palette in TMCH? Martin Silva:+1 Maxim Alzoba (FAITID):to properly reflect the colour? Michael R Graham:@Rebecca -- Please provide cases supporting "weaker" protection statement for stylized word registered marks. I'll take a look for protection of both in the US. George Kirikos:@Maxim: combine it with the TLD, e.g. mark.red, mark.black, etc. :-) Mary Wong: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? Georges Nahitchevansky:Rebecca you are wrong on the scope of protection afforded in the US on stylized marks J. Scott Evans:@rebecca. Second, also. The same argument cand be made to small or medium enterprises or civil liberatarians. Go get a cheap trademark and register it in the clearinghous. George Kirikos:(Afilias has a bunch of colour TLDs) John McElwaine:@mary good point Greg Shatan:Rebecca, that's wrong about PARENTS unless the word has been disclaimed (which in that case, it was).' J. Scott Evans:Tradearmarks are communicted by word of mouth. So, sound alike is very important -- even in design marks and stylized marks. Maxim Alzoba (FAITID):@George ... the wors thing is green ... most browsers use green when proper TLS, SSL used .. so all owners of proper certificates will be violate it ... :) Maxim Alzoba (FAITID):*worst Michael R Graham:@Phil -- Good point as to different jurisdictional practices. Paul McGrady:@Rebecca - I didn't understand your comment about needing to file all over the world. Even filing in 1 jurisdiction for multiple marks can be daunting to a small business or non-profit Kathy Kleiman:@Phil, we have seen no examples of this issue. It would be good to do so. George Kirikos:Otherwise, there's massive jurisdiction shopping. Maxim Alzoba (FAITID):@George +1 ... George Kirikos:Google with their Tonga TM, to get priority date for "Alphabet", so even the big companies do it. Rebecca L Tushnet:PARENTS--the word was not in fact disclaimed. George Kirikos:(Instafile jurisdictions) Rebecca L Tushnet:Because disclaimer is optional. J. Scott Evans:@Rebecca. I agree with you earlier comment that disclaimer practice is inconsitent. Sometimes it is optional, but not always. Making an absoute statement is incorrect. Maxim Alzoba (FAITID):@Mary Is it possible not to use small size of the chat history? Paul Tattersfield:Given domains are worldwide should there be a requirement for TM registrations in a minimum number of different jurisdictions to gain entry into the TMCH? Rebecca L Tushnet:In re National Data Corp.United States Court of Appeals, Federal Circuit.January 30, 1985 753 F.2d 1056The absence of a disclaimer does not, however, mean that a word or phrase in a registration is, or has become, distinctive in the registered mark, so that that part of the mark must be treated the same as an arbitrary feature. The power of the PTO to accept or require disclaimers is discretionary under the statute, supra note 5, and its practice over the years has been far from consistent. Michael R Graham:Words subject to disclaimer in Stylized or Design marks should not be registrable in TMCH -- Agree. Marina Lewis:@Rebecca - I don't understand your comments on disclaimers being optional. Yes, an applicant has the option of proactively entering a disclaimer before being required to do so during examination - but once an Examining Attorney refuses registration unless a term is disclaimed, that would seem to eliminate the "optional" aspect of disclaimer practice. Can you please clarify? George Kirikos:Cross-talk. Terri Agnew:finding the line Rebecca L Tushnet:Optional for the PTO, you're right, not for the registrant when demanded by the PTO if not argued out of it. J. Scott Evans:I don't see why we talkiing about disclaimers since the EUTM doesn't use them and many other jurisdictions do not. Mary Wong:Again, if staff may summarize, perhaps where there IS a disclaimer for the text part of a device mark then that text/word shouldn't go into the TMCH (per Susan Payne), but we cannot draw the same conclusion the other way when there is no disclaimer? George Kirikos:Perhaps instead of a black/white binary 0-1, there needs to be a scoring system from 0-100, e.g. 100 equals Verizon, Exxon, 0 = figurative mark for "CARS", and develop a points system. George Kirikos:Kind of like the Canadian immigration points system. :-) Lori Schulman:How do you make the "score" objective? Michael R Graham:@Mary -- I would agree with your distinction. George Kirikos:(or the points system for Community Applications for new gTLDs, as a precedent) Maxim Alzoba (FAITID):fruit companies might object George Kirikos:@Lori: right, it'd be a tough job, but avoid the "binary" choices. George Kirikos:Just thinking out loud, outside the box. Lori Schulman:that seems like re-examination to me but I get your point George. Maxim Alzoba (FAITID):unfortunately community eveluation failed ... ony rich communities prevailed :) Paul Tattersfield:only a re-examinination in some jurisictions George Kirikos:It'd need to be mechanical, some robotic algorithm. (that would also lower the cost). Feed it into an AI system. :-) Greg Shatan:A valid mark is a valid mark, so strength is not particularly germane in our discussions. Lori Schulman:+1 Greg Marina Lewis:+1 Greg Mary Wong:Public comments to the CCT Review Team Draft Report closes on 27 April: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_public-2D comments_cct-2Drt-2Ddraft-2Dreport-2D2017-2D03-2D07-2Den <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_public-2 Dcomments_cct-2Drt-2Ddraft-2Dreport-2D2017-2D03-2D07-2Den&d=DwIFaQ&c=FmY1u3P Jp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4 xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Z3SGcjmQeXCcjlvUa5nIq x78HFdXWLxx9sqrbQYYsyQ&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Z3 SGcjmQeXCcjlvUa5nIqx78HFdXWLxx9sqrbQYYsyQ&e= Paul McGrady:Thanks Phil! Lori Schulman:Yes, INTA has completed the study and is compiling the data now. George Kirikos:For CCT-RT #10, a simple/obvious solution would be to charge less (say 50% off registry fees) if the domain name is registered, but has no nameservers. Defensive domains could then be removed from the zone file, not resolving. This should apply to all (including .com, legacy TLDs). Mary Wong:Column 1 is the recommendation, Column 2 the rationale provided by the CCT-RT George Kirikos:But, not just for "large brandowners" -- do it for everyone. George Kirikos:But, if the name resolves (e.g. wwwbrand.com redirects to www.brand.com <http://www.brand.com> ), that is in the zone file, and would be charged a normal price. George Kirikos:(its defensive, but delivering value to the owner) Mary Wong:So next WG meeting will be 26 April; no meeting on 19 April J. Scott Evans:I am going to need to jump soon. Thanks to everyone for their great participation today. George Kirikos:If we can get Deloitte's answers before the 19th, it'll inform our proposals. Marie Pattullo:Would still advocate any proposal being sent to the full list, please. George Kirikos:Not sure what to propose, until seeing that. J. Scott Evans:@Paul. We have co-chairs call on 4/21 and that should result in an agenda for the WG by the end of that day for our 4/26 call. Amr Elsadr:UTC 14:00 for sunrise and UTC 16:00 for claims. Greg Shatan:Do we have lists of who is in both sub teams (or all 3)? Paul McGrady:Could we all get calendar invites for all of these subgroups? It would be good to know who is meeting when. Amr Elsadr:@Greg: yes, they've been posted on the wiki pages for the Sub Teams. Please check the 3 pages. Links coming up. Mary Wong:Thursday 27 April 0300 UTC (Weds night for North America) Amr Elsadr:Members of Sunrise ST: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_n MrRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ nMrRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr 4&s=L9vPjMKkLkl0Uhu9qQiMYRgG0BFuenqmsn5J2sGolxs&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=L9 vPjMKkLkl0Uhu9qQiMYRgG0BFuenqmsn5J2sGolxs&e= George Kirikos:Bye folks. Amr Elsadr:Members of Claims ST: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_q MrRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ qMrRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr 4&s=Y5sH1sJZJBxLu30Wly4PJDTLKMJoR_KHfmG3RjIfcF8&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Y5 sH1sJZJBxLu30Wly4PJDTLKMJoR_KHfmG3RjIfcF8&e= Paul Tattersfield:howmany APAC people responded to the poll? Paul McGrady:Thanks all! Great call. Greg Shatan:Bye all! J. Scott Evans:ciao Mary Wong:@Paul T, I can't recall off hand but there were a few Maxim Alzoba (FAITID):bye all Elizabeth Featherman:Thank you! Amr Elsadr:Members of AVPMs: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_t crRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ tcrRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr 4&s=sb6befKntFNKHDoH3NozTJ_qXAmaLFhThD9KsBY5_m4&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=sb 6befKntFNKHDoH3NozTJ_qXAmaLFhThD9KsBY5_m4&e= Michael R Graham:Thanks@ Paul Tattersfield:thnaks Mary, bye all Amr Elsadr:Thanks all. Bye. Monica Mitchell:thank you

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by George Kirikos April 12, 2017

April 12, 2017

How was it created before EAP began, then? Yahoo.delivery and USPS.delivery weren't sunrise either?? (same creation dates/times, give or take a few seconds) Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 9:15 AM, Jon Nevett <jon(a)donuts.co> wrote: > George: > > All I'm saying is that flowers.delivery wasn't a sunrise registration. I'm not commenting on your other points. > > Jon > > > >> On Apr 11, 2017, at 9:06 AM, George Kirikos <icann(a)leap.com> wrote: >> >> Hello, >> >> On Tue, Apr 11, 2017 at 8:52 AM, Jon Nevett <jon(a)donuts.co> wrote: >>> That one is not a smoking gun. It is a legitimate registration by a legitimate entity. >> >> So, let me get this straight. Are you saying that if my company went >> out and registered a TM in some obscure jurisdiction like Tunisia, for >> the brand MATH, in the goods and services of "math education", used >> that mark in the TMCH to register MATH.TLD domains ahead of every >> other competitor in the math industry during sunrise, and then >> redirected the resulting domains to Math.com, that would be a >> "legitimate registration by a legitimate entity"? >> >> I think most people would say "George, you gamed the system." and rightly so. >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> http://www.leap.com/ >

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SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
by Phil Corwin April 11, 2017

April 11, 2017

WG members: We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching.. In that regard, please take special note of this portion of the email sent by Mary--- 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). In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions. That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response. In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory-- Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: · A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. · The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. · If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making. The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG. If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17

9 36

Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by J. Scott Evans April 11, 2017

April 11, 2017

The information in the Clearinghouse is a deep insight into what marks a company finds most important = confidential information. 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, 2:13 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: I find it simply amazing that the side arguing to keep the TMCH database secret has nothing but suspicions and supposition to support their positIon, what are you afraid of? If what you believe to be true is in fact true then exposing the TMCH database to the light shouldn't cause any issues. I am not fond of Trump but his bi-line "clean the swamp" comes to mind. Sent from my iPad > On 11 Apr 2017, at 20:10, George Kirikos <icann(a)leap.com> wrote: > > By that argument, all the HOTEL.TLD and HOTELS.TLD domain names > registered by Dirk, or all the other examples by "domain name > speculators" abusing the sunrise periods could have just as easily > have been bought by those registrants legitimately as "premium > domains" too! The registry operators were "too smart" to let > Flowers.TLD go through in sunrise to 1-800-Flowers.com, without a > premium sale, but were "too dumb" and let all those other desirable > names slip through the cracks to be registered by "speculators". > Implausible. > > So, by Georges' argument "we'll just never know" the truth, because it > can be explained away by some unlikely scenarios, and we shouldn't dig > any deeper, because this working group (or the positions of some > members) is better off in ignorance of the truth. Perhaps some people > can't handle the truth. > > "See no evil, hear no evil, speak no evil." > > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikiped… > > We shouldn't be turning a blind eye to what's wrong, but instead, as > Bret suggested, use all the brain power here to fix things. > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.co… > > On Tue, Apr 11, 2017 at 12:53 PM, Nahitchevansky, Georges > <ghn(a)kilpatricktownsend.com> wrote: >> I think you are right that these were likely premium names. Many registries, including Donuts and Minds & Machines offered names for sale in advance of a landrush at a premium (and some even after general availability periods started). If free speech is really the "concern" here then how does premium pricing not chill speech or skew the marketplace of ideas by favoring the rich over the poor. As an aside, on the flowers example, 1-800 Flowers obtained a number of their names well after the sunrise periods ended (e.g., flowers.london, flowers.today, flowers.country and flowers.website). Moreover, a bunch of flowers extensions have either been registered to other parties or are still available (e.g., flowers.xyz, flowers.guru, flowers.nyc, flowers.domains, flowers.pet, flowers.photography, flowers.photo, flowers.place, flowers.poker. flowers.property, flowers.republican, flowers.repair etc.) It hardly seems like there has been a conspiracy to take out common words. At b > est you have a trademark owner that registered and acquired some domain names (including flowers.com) that correlate to its legitimate business of ordering and delivering flowers, gift baskets etc. > _______________________________________________ > 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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Improving transparency of TMCH sunrise registrations via WHOIS
by George Kirikos April 11, 2017

April 11, 2017

Hi folks, I recall when .info/biz and other "old new gTLDs" (for lack of a better term!) launched, they had sunrises (that were gamed, of course). But, one thing that they did well was that they actually published in the WHOIS the trademark jurisdiction and trademark registration number that was relied upon to gain the domain name in the sunrise period. For example, the historical WHOIS (from DomainTools) for Verizon.info on 2004-03-13 was: https://research.domaintools.com/research/whois-history/search/?q=verizon.i… Domain ID:D57221-LRMS Domain Name:VERIZON.INFO Created On:09-Aug-2001 23:19:13 UTC Last Updated On:31-Mar-2003 22:09:28 UTC Expiration Date:09-Aug-2007 23:19:13 UTC Trademark Name:verizon Trademark Date:2000-10-01 Trademark Country:US Trademark Number:11,588 Sponsoring Registrar:R151-LRMS Status:ACTIVE Status:CLIENT LOCK Status:OK Registrant ID:C2923346-LRMS Registrant Name:Verizon Trademark Services LLC Registrant Organization:Verizon Trademark Services LLC Registrant Street1:1320 North Court House Road Registrant City:Arlington Registrant State/Province:VA Registrant Postal Code:22201 Registrant Country:US Registrant Phone:+1.9727184800 Registrant FAX:+1.9727183946 Registrant Email:christian.andersen@verizon.com That was on display for many years. I noticed that the WHOIS output has changed, to eliminate that information for .info: e.g. today's WHOIS: https://whois.domaintools.com/verizon.info Domain Name: VERIZON.INFO Registry Domain ID: D57221-LRMS Registrar WHOIS Server: Registrar URL: http://www.markmonitor.com Updated Date: 2015-07-08T09:17:33Z Creation Date: 2001-08-09T23:19:13Z Registry Expiry Date: 2017-08-09T23:19:13Z Registrar Registration Expiration Date: Registrar: MarkMonitor Inc. Registrar IANA ID: 292 Registrar Abuse Contact Email: Registrar Abuse Contact Phone: Reseller: Domain Status: clientDeleteProhibited https://icann.org/epp#clientDeleteProhibited Domain Status: clientTransferProhibited https://icann.org/epp#clientTransferProhibited Domain Status: clientUpdateProhibited https://icann.org/epp#clientUpdateProhibited Registry Registrant ID: C47695397-LRMS Registrant Name: Verizon Trademark Services LLC Registrant Organization: Verizon Trademark Services LLC Registrant Street: 1320 North Court House Road Registrant City: Arlington Registrant State/Province: VA Registrant Postal Code: 22201 Registrant Country: US Registrant Phone: +1.7033513164 Registrant Phone Ext: Registrant Fax: +1.7033513669 Registrant Fax Ext: Registrant Email: domainlegalcontact(a)verizon.com doesn't have the trademark details, etc. any longer. 1) Why isn't there a requirement to show the TM details for sunrise registrations in WHOIS for new gTLDs? That certainly helped expose all the gaming when .info/biz launched. 2) Why did registries (all thick WHOIS, of course) stop publishing that information for "old new gTLDs" like .info/biz? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by George Kirikos April 11, 2017

April 11, 2017

Hello, On Tue, Apr 11, 2017 at 8:52 AM, Jon Nevett <jon(a)donuts.co> wrote: > That one is not a smoking gun. It is a legitimate registration by a legitimate entity. So, let me get this straight. Are you saying that if my company went out and registered a TM in some obscure jurisdiction like Tunisia, for the brand MATH, in the goods and services of "math education", used that mark in the TMCH to register MATH.TLD domains ahead of every other competitor in the math industry during sunrise, and then redirected the resulting domains to Math.com, that would be a "legitimate registration by a legitimate entity"? I think most people would say "George, you gamed the system." and rightly so. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by J. Scott Evans April 10, 2017

April 10, 2017

I have stated once and I believe others have agreed. The data in the database is confidential. That was a very important point when the TMCH was created. I think your attempt to bully people by saying we have to draw a certain conclusion (one the most surprisingly supports your viewpoint) is the outcome of keeping this information confidential. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] 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 From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Paul Keating <paul(a)law.es> Date: Monday, April 10, 2017 at 3:05 PM To: "Michael Graham (ELCA)" <migraham(a)expedia.com> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham(a)expedia.com<mailto:migraham@expedia.com>> wrote: George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham 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 George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainIncit…>: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainincit…> DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FOnlineDomai…>: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-d…<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fonlinedomai…> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.co…> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…>

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Agenda and documents for Wednesday Working Group meeting (12 April)
by Mary Wong April 10, 2017

April 10, 2017

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] Action Items, Slides and Notes from the Working Group call held earlier today
by Nahitchevansky, Georges April 10, 2017

April 10, 2017

Make a list of 50 common words that have real value, then do the research as I suggest. If you need help on value, you might start with common words that generated large amounts of money (business, sex, travel, music etc.) in the. Com world. If you want to add these other words, be my guest (make it 60 then or even a 100). The point is simply that we shouldn't be spending time arguing over something that is nothing more than speculation. ‎ Original Message From: Rebecca Tushnet Sent: Sunday, April 9, 2017 9:33 PM To: Nahitchevansky, Georges Cc: Paul Keating; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today So your argument is that the top ten matches in the audit report such as hotel, cloud, and smart are not common words? If that is not evidence worth investigating, you need to explain why. And even if other common words like zebra, dog, and fight remain unregistered, that doesn't really help someone who wants to talk about hotels, clouds, or something smart. Rebecca Tushnet Georgetown Law 703 593 6759 On Sun, Apr 9, 2017 at 6:57 PM, Nahitchevansky, Georges <ghn(a)kilpatricktownsend.com> wrote: > It would help fairly easily. First, registration in the TMCH does not mean in and of itself there is an abuse. Second, the whole straw man argument with no evidence is that brand owners are somehow overreaching and grabbing all common word domain names in the new extensions. Clearly, if brand owners are not the majority owners of common word domain names in the new extensions, then the whole house of cards argument that brand owners are taking advantage of the system falls apart. Third, you could easily tell in many instances whether a sunrise registration occurred. We know all of the sunrise dates, and whois for the most part show a date of creation. So if you wanted to cross reference you could easily see if a name was registered during a sunrise period. Fourth, what you will likely find from all this is that most common word domain in the new extensions are not registered to brand owners. If it turns out a majority are registered by domainers or speculators would we then go down the path of figuring out how that happened. > > Original Message > ‎ > From: Rebecca Tushnet > Sent: Sunday, April 9, 2017 4:38 PM > To: Nahitchevansky, Georges > Cc: Paul Keating; Rebecca Tushnet; gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today > > > How would this exercise indicate whether such registrations occurred with a TMCH claim or in spite of one, or neither? And aren't the top ten in the audit report also valuable? > > Sent from my phone. Apologies for terseness/typos. > >> On Apr 9, 2017, at 4:03 PM, Nahitchevansky, Georges <ghn(a)kilpatricktownsend.com> wrote: >> >> Again, I have to ask where is the evidence of widespread abuse. It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation. I have yet to see anything that even remotely proves or suggests this in fact has occurred. Moreover, the idea that you have to see the TMCH data is a bit of a fishing expedition and will not establish that widespread abuse occurred (e.g., if Delta was registered by Delta Airlines in the TMCH it does in and of itself suggest an abuse of the system). What seems to be happening is that folks are positing a position with little to no evidence, then saying they need the data and making everybody spends gobs of time on issues that have previously been debated, esoteric concepts of human rights, natural justice, free speech and god knows what else. ‎Perhaps, instead of throwing out arguments there should be an effort to gather some real evidence for discussion. If we all decide to continue down this path then perhaps one simple idea would be to take a list of common words that could be perceived as being valuable such as business, music, car, travel, sex, money, ski, football, food, boat, truck, website, online etc and cross reference these words with the new gTld registrations to get some sense of who owns these domain names. Once there is some real data, then we can evaluate who owns most of these ( domainers, brand owners, speculators, industry groups etc.). This would not be a difficult exercise to do. Instead of multiple email chains, folks could take on one or two words from a compiled list and conduct this investigation using whois. >> >> >> >> Original Message >> From: Paul Keating >> Sent: Sunday, April 9, 2017 3:31 PM >> To: Rebecca Tushnet >> 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 >> >> >> I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech. >> >> Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression. >> >> The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious. >> >> So this is not a rabbit hole. >> The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. >> We must determine if abuse has occurred. >> The contents of the TMCH database is very much relevant. >> If we are to be denied information relevant to the database we must assume the worst. >> For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, >> Freedoms of speech is simply too important to ignore. >> >> For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson. >> >> Sent from my iPad >> >>> On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >>> >>> Following up on my post from yesterday, let's make this more specific: >>> I see clear free speech issues that can arise from an attempt to >>> register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, >>> nyc.x and the like. Those along with forex, hotel, one, london, and >>> abc, are the top ten downloads from the TMCH. Of course, as Michael >>> K. indicates, we'd know more about how many dictionary terms are beingdom >>> blocked if there were more transparency, but what we do know right now >>> should be concerning. >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>>> On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >>>> My responses are in-line. >>>> >>>> G >>>> reg >>>> >>>> >>>> On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas(a)gmail.com> >>>> wrote: >>>>> >>>>> Hi, >>>>> >>>>> I think that Michael Graham brings up a salient point in terms of falling >>>>> too far down the rabbit hole on background matters, but I should address a >>>>> few issues in response to questions that were directly asked of me. >>>>> >>>>> First off, while Greg is correct to point out that the UDHR is not >>>>> formally legally binding as a UNGA resolution, it is (quite literally) the >>>>> textbook example of customary international law. I realize that can be a >>>>> fuzzy concept to rely on, but luckily I don't have to rely on it because the >>>>> freedom of expression protections in the UDHR are substantially identical to >>>>> those found in the ICCPR, which IS a formally binding treaty. >>>> >>>> >>>> Binding on states. Of course, ICANN is not a state. Luckily, we have the >>>> new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which >>>> states that one of ICANN's eight Core Values (which must be subject to a >>>> balancing analysis involving all Core Values). is "within the scope of its >>>> Mission and other Core Values, respecting internationally recognized human >>>> rights as required by applicable law." The Bylaw specifically notes that >>>> "This Core Value does not create, and shall not be interpreted to create, >>>> any obligation on ICANN outside its Mission, or beyond obligations found in >>>> applicable law." As such, ICANN's obligations do not go beyond what would >>>> otherwise be required by applicable law. There's been a great deal of >>>> discussion of this in CCWG-Accountability WS1 and in the Human Rights >>>> Subgroup of WS2, so I won't go further into the concepts here, which would >>>> be a rabbit hole down a rabbit hole from the viewpoint of this group. >>>>> >>>>> >>>>> Also, while I appreciate Greg's caution against "cherrypicking" by viewing >>>>> Article 19 in isolation, in this context that argument is just a >>>>> smokescreen. >>>> >>>> >>>> Concerns about cherrypicking are in no way a "smokescreen" -- unless the >>>> reference is to the saying "where there's smoke, there's fire." John >>>> Levine's blog nicely expressed a number of concerns about such >>>> cherrypicking, especially for what he calls the "fashionable human rights," >>>> so I won't repeat them here. It is important to keep in mind, as Michael >>>> notes, that "human rights are fundamentally about balance," so perhaps we >>>> are not so far apart, as "balance" and "cherrypicking" are mutually >>>> exclusive concepts. >>>> >>>> Of course the UDHR and ICCPR need to be viewed holistically - that >>>> understanding in no way supports an argument that domains are not speech. >>>> >>>> I'm puzzled by the second part of this sentence. I think this point is >>>> unrelated to the issue of whether or not domain names are speech, so it >>>> neither supports nor negates any argument on that topic. >>>> >>>> There's no conflict between believing in personal privacy as protected by >>>> the ICCPR (as I do), and believing in the need to combat hate speech as >>>> spelled out in the ICCPR (as I do), and believing in freedom of expression. >>>> Human rights are fundamentally about balance (more on that in a second). >>>> >>>> There are certainly conflicts (e.g., between combating hate speech and >>>> supporting free speech); the issue is how to balance these countervailing >>>> issues to resolve these conflicts. >>>>> >>>>> >>>>> With regard to Ballantyne, Davidson & McIntyre, I probably should have >>>>> been more specific in my original post. Of course, as Greg notes, the case >>>>> is not specifically about domain names - which would be a pretty niche area >>>>> for the Human Rights Committee to dig into. But the decision contains the >>>>> clearest statement of the extent of what constitutes "speech" under the >>>>> ICCPR, namely that Article 19: "must be interpreted as encompassing every >>>>> form of subjective ideas and opinions capable of transmission to others". >>>>> It's an incredibly broad formulation - to cover virtually anything that >>>>> conveys meaning. I, personally, can't see an interpretation of that that >>>>> doesn't include domain names. >>>> >>>> >>>> This is not really that broad a formulation -- it dovetails nicely with the >>>> concept of "expressive speech" under US law (as in the excerpt from Gibson). >>>> Furthermore, there is a considerable difference between the speech >>>> constituting "subjective ideas and opinions" protected in Ballantyne and the >>>> "incredibly broad formulation" that would elevate "virtually anything that >>>> conveys meaning." "Subjective ideas and opinions" in no way embraces domain >>>> names per se; whether and to what extent it embraces domain names is >>>> certainly not a question answered in Ballantyne. >>>>> >>>>> >>>>> With regard to Gibson v. Texas - I don't want to dig too deeply into this >>>>> because, honestly, US law is not my specialisation. But I think that part of >>>>> the disconnect between our positions is due to a particular aspect of the >>>>> American understanding of free speech, that's sort of different to how it's >>>>> understood virtually everywhere else. Under most systems, including the >>>>> international example I just cited, virtually everything is classed as >>>>> "speech", and then there's a balancing as to whether particular restrictions >>>>> are justified. But because of the absolutist way the US Constitution is >>>>> phrased ("Congress shall make no law"), the Courts have had to go through >>>>> some unusual legal gymnastics to find that speech that they feel justified >>>>> restricting isn't actually speech. >>>> >>>> >>>> Simply reading the excerpt from Gibson v. Texas in my prior email shows that >>>> this "speech/not speech" analysis is incorrect. Gibson, and the cases cited >>>> in it, distinguish between protected speech and speech that that is "not to >>>> be protected." Specifically, Gibson mentions that "courts have held that >>>> domain names that use trademarks to misidentify the source of a product are >>>> outside the reach of the First Amendment" and also cites a line of cases >>>> where "the domain name was actually held not to be protected speech because >>>> it was not expressive, not because it was misleading." More broadly, the >>>> idea that the US approach to free speech is anomalous is incorrect. Of >>>> course, free speech regimes vary broadly throughout the world -- so there's >>>> no such thing as a single "understanding of free speech... virtually >>>> everywhere else" aside from the US. Unfortunately, there are many places in >>>> the world where there is no understanding of free speech at all.) If the US >>>> approach to free speech tends to be different, it is in a greater tolerance >>>> for controversial and offensive speech (what John Levine calls "the >>>> absolutist U.S. first amendment approach"). This is why US law doesn't find >>>> it so easy to restrict alleged "hate speech" as "virtually everywhere else", >>>> and also why I can't be so comfortable in finding "no conflict" between free >>>> speech and restricting hate speech. (And I say this as a member of a group >>>> that is finding itself increasingly on the wrong end of both offensive >>>> speech and hate speech.) >>>>> >>>>> >>>>> So, without trying to belabour these issues, my point in the above is not >>>>> to try and invalidate the trademark protection system - indeed, Greg's quite >>>>> right to point out that trademarks are also speech. My point here is simply >>>>> to try and demonstrate that there are free speech issues at play. >>>> >>>> >>>> It's clear that this is false as a general statement, unless this is meant >>>> as a statement that could possibly true in a large enough sample, like >>>> "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one >>>> sees clear distinctions being drawn being "subjective ideas and opinions" >>>> and speech that is "not expressive" or "inherently misleading." This is >>>> probably a good time to note that the UDHR and the ICCPR both refer to >>>> "freedom of expression" and not to "free speech." So, it would be more >>>> proper to discuss whether "expressive speech" is at issue, not whether the >>>> over-broad "virtually anything that conveys meaning" is at issue, before we >>>> even get to the question of whether free speech issues are at play, to what >>>> extent, and how that might affect any discussion that is relevant to this >>>> Working Group. >>>> >>>>> >>>>> To me, that's not a controversial point - and if we can agree on that, >>>> >>>> >>>> I don't think we can agree on that, and certainly not as an assumed >>>> agreement from which one can proceed blithely on. Rather, I think that is >>>> an elemental aspect of the discussion, and as noted above, at best >>>> "controversial" and possibly sometimes true, and at worst false (at least as >>>> a general statement). >>>> >>>> As an aside, it's worth noting what Article 19 of the ICCPR actually >>>> protects: "the right to hold opinions without interference" and "the right >>>> to freedom of expression; this right shall include freedom to seek, receive >>>> and impart information and ideas of all kinds, regardless of frontiers, >>>> either orally, in writing or in print, in the form of art, or through any >>>> other media of his choice." I admit to struggling to find instances where >>>> the right to hold opinions or to express oneself freely is truly being >>>> violated in this context -- especially in a world where holding or >>>> expressing an opinion can come under threat of oppression, suppression, >>>> violence, imprisonment or worse. As someone who strongly supports First >>>> Amendment rights and who has worked on litigation defending First Amendment >>>> freedoms, I wonder whether this discussion trivializes free speech concerns >>>> rather than promoting them. That is not to dismiss the possibility of free >>>> speech concerns here, but just to say that, to the extent there is a viable >>>> point here, it pales in comparison to the significant freedom of expression >>>> concerns elsewhere (including elsewhere on the Internet, where access to >>>> websites with undesirable opinions or expression, or even to the Internet as >>>> a whole, is under escalating attack). >>>> >>>> >>>>> >>>>> then that is relevant to the transparency question, since in my mind it >>>>> bolsters arguments for why openness in the system is important. >>>> >>>> >>>> I don't get the logical leaps here, from the possibility of a free speech >>>> issue, to the claimed relevance to the transparency question, to the even >>>> more attenuated idea that this bolsters arguments regarding changing access >>>> rules for the TMCH. In other words, I don't really think that any of this >>>> changes the discussion on TMCH database access, nor do I really think it is >>>> relevant to any of the work we are undertaking right now. That is not to >>>> say that this is an uninteresting discussion (or else I would not have >>>> engaged in it), just that it is a rabbit hole in relation to our work. >>>>> >>>>> >>>>> Best, >>>>> >>>>> Michael >>>>> >>>>> On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc(a)gmail.com> >>>>> wrote: >>>>>> >>>>>> It's important to keep in mind that the rights set forth in the UDHR are >>>>>> interrelated and interdependent, so understanding the applicability of any >>>>>> one Article also requires understanding the applicability of the other >>>>>> rights in the UDHR, including some which may be countervailing to others. >>>>>> Looking at Article 19 in isolation is "cherrypicking." A recent CircleID >>>>>> article by John Levine is quite enlightening on this very point: >>>>>> >>>>>> http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_us… >>>>>> >>>>>> The article is short, but for those who don't get there, this quote goes >>>>>> to the heart of the matter: "it devalues the whole topic of human rights to >>>>>> pay attention only to a few fashionable rights, while ignoring ones that are >>>>>> at least as important in people's daily lives." >>>>>> >>>>>> (It should also be noted that the UDHR, while adopted by the United >>>>>> Nations and widely used, does not constitute some form of "universal law" >>>>>> nor is it universally accepted.) >>>>>> >>>>>> The case mentioned, Gibson v. Texas, has portions that are directly >>>>>> applicable to the discussion at hand. However, the Gibson decision actually >>>>>> distinguishes cases involving trademarks from the situation in that case. >>>>>> As a matter of fact, the Gibson case tells us that there are at least two >>>>>> types of domain names that do not constitute speech protected by the First >>>>>> Amendment: domain names that infringe trademarks, and domain names that do >>>>>> not constitute "expressive speech." >>>>>> >>>>>> (In other words, there can be no "freedom of expression" issue when the >>>>>> speech is not expressive.) >>>>>> >>>>>> Before getting to an excerpt from the case, it's important to note that >>>>>> the court did not find that domain names are speech, much less find that >>>>>> domain names are speech protected by the First Amendment. The court made no >>>>>> findings about all domain names. Rather, the court assumed, for the purpose >>>>>> of considering a motion to dismiss, that the domain name in question >>>>>> (texasworkerscomplaw.com) constituted commercial speech. It's also >>>>>> important to note that the case involved the Constitutionality of a law that >>>>>> broadly prohibited the use of the terms "Texas" and "workers comp," and not >>>>>> a trademark infringement matter. >>>>>> >>>>>> The excerpt is quite instructive: >>>>>> >>>>>> >>>>>> In order for speech to fall outside of the First Amendment’s protection, >>>>>> the speech must either be “inherently likely to deceive,” or “the record >>>>>> [must] indicate[] that a particular form or method of advertising has in >>>>>> fact been deceptive.” R.M.J., 455 U.S. at 202. >>>>>> >>>>>> >>>>>> Appellees primarily argue that the Texas statute is constitutional >>>>>> because Gibson’s domain name amounts to inherently misleading speech. In >>>>>> support of this proposition, they cite to a series of cases in which courts >>>>>> have held that domain names that use trademarks to misidentify the source of >>>>>> a product are outside the reach of the First Amendment. The case law cited >>>>>> by Appellees, however, is unique to the field of trademark infringement, >>>>>> see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does >>>>>> not necessarily extend to a case such as this one, where Texas is >>>>>> prohibiting Gibson from using words that are otherwise in the public >>>>>> domain.[1] Cases involving trademark infringement involve inherently >>>>>> deceptive speech because they contain a significant risk that an infringing >>>>>> party will freeload on the goodwill that has been created by the original >>>>>> trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. >>>>>> Texas has made no showing that its own talents and energy contributed to the >>>>>> creation of any goodwill in the name “texasworkerscomplaw.com.” See San >>>>>> Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 >>>>>> (1987). Instead the regulation at issue is forward-thinking; intended to >>>>>> prohibit confusion for individuals seeking information from the government >>>>>> agency. It is not retrospective in the same way as most trademark >>>>>> litigation, which is generally intended to preserve the reputation that has >>>>>> been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, >>>>>> the case law cited by Appellees is inapposite. >>>>>> >>>>>> >>>>>> ________________________________ >>>>>> >>>>>> [1] In most of the cases cited by Appellees the domain name was actually >>>>>> held not to be protected speech because it was not expressive, not because >>>>>> it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. >>>>>> 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & >>>>>> Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for >>>>>> Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, >>>>>> Gibson’s domain name is expressive because it does more than simply mimic >>>>>> the state agency’s website or identify a source of Texas Workers’ >>>>>> Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain >>>>>> name is intended to direct visitors to a forum for discussing workers’ >>>>>> compensation laws and their potential reform, as well as to convey to >>>>>> visitors the message of Gibson’s website as a whole. Accordingly, in the >>>>>> context of this case, the domain name is “‘sufficiently imbued with the >>>>>> elements of communication’” to place it in the realm of expressive speech. >>>>>> Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. >>>>>> 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)). >>>>>> >>>>>> Greg Shatan >>>>>> >>>>>> >>>>>> Greg Shatan >>>>>> C: 917-816-6428 >>>>>> S: gsshatan >>>>>> Phone-to-Skype: 646-845-9428 >>>>>> gregshatanipc(a)gmail.com >>>>>> >>>>>> >>>>>> On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas >>>>>> <mkaranicolas(a)gmail.com> wrote: >>>>>>> >>>>>>> It's an interesting question. Different national courts have handled >>>>>>> the issue in different ways. In the US, for example, the Fifth Circuit >>>>>>> Court of Appeals found in Gibson v. Texas that domain names are >>>>>>> protected as speech under the 1st amendment. But freedom of expression >>>>>>> in the US context tends to be understood differently than elsewhere, >>>>>>> since the way it's protected under the US constitution is a bit >>>>>>> different from how most constitutions frame their equivalent >>>>>>> protections. >>>>>>> >>>>>>> That said - when you're asking about Article 19, the discussion comes >>>>>>> at the international level where, as far as I know, there's no single >>>>>>> authoritative treatment to point to. Generally, discussions of Article >>>>>>> 19 by standard setting bodies tend to focus on the sharper and more >>>>>>> controversial issues: hate speech, defamation, national security >>>>>>> restrictions, etc. >>>>>>> >>>>>>> However - there's a clear and well developed test for restrictions on >>>>>>> freedom of expression that's built right into the ICCPR, and which >>>>>>> applies equally to all restrictions, namely that they should be: (1) >>>>>>> provided by Law (which includes a requirement for clarity and >>>>>>> transparency), (2) fulfill a legitimate purpose, and (3) be necessary >>>>>>> and proportionate to the achievement of that goal. If we establish >>>>>>> that domain names qualify as speech under Article 19 (which, according >>>>>>> to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. >>>>>>> Canada, is a fairly sure interpretation), then understanding the >>>>>>> applicability of Article 19 just means understanding that three part >>>>>>> test. >>>>>>> >>>>>>> If you want more info, I'd recommend this briefing note as a useful >>>>>>> (and concise!) introduction to restrictions on freedom of expression >>>>>>> under Article 19: >>>>>>> >>>>>>> http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingno… >>>>>>> >>>>>>> Or if you want to go into a little more depth, you can check out this >>>>>>> one: >>>>>>> http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restr… >>>>>>> >>>>>>> Unfortunately - neither is specifically about domain names, but the >>>>>>> discussion is basically analogous to how we understand other kinds of >>>>>>> restrictions and protections. >>>>>>> >>>>>>> On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) >>>>>>> <migraham(a)expedia.com> wrote: >>>>>>>> Michael: >>>>>>>> >>>>>>>> Where can I find a discussion how Article 19 and similar "Freedom of >>>>>>>> Expression" requirements relate to or impact the registration of domain >>>>>>>> names? >>>>>>>> >>>>>>>> >>>>>>>> Michael R. >>>>>>>> >>>>>>>> Article 19. >>>>>>>> Everyone has the right to freedom of opinion and expression; this >>>>>>>> right includes freedom to hold opinions without interference and to seek, >>>>>>>> receive and impart information and ideas through any media and regardless of >>>>>>>> frontiers. >>>>>>>> >>>>>>>> -----Original Message----- >>>>>>>> From: gnso-rpm-wg-bounces(a)icann.org >>>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas >>>>>>>> Sent: Thursday, April 06, 2017 5:53 AM >>>>>>>> To: J. Scott Evans <jsevans(a)adobe.com> >>>>>>>> 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 >>>>>>>> >>>>>>>> Once again - I have to jump in. Freedom of expression is very much a >>>>>>>> universal concept: >>>>>>>> >>>>>>>> http://www.un.org/en/universal-declaration-human-rights/ >>>>>>>> http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx >>>>>>>> >>>>>>>> That's why we call them "human" rights. Not "American" rights. >>>>>>>> >>>>>>>> >>>>>>>> On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg >>>>>>>> <gnso-rpm-wg(a)icann.org> wrote: >>>>>>>>> The law is clear: an exact match isn't free speech. It is trademark >>>>>>>>> infringement. A domain that coveys a message (e.g., hotels suck.com) is free >>>>>>>>> speech and protected accordingly. Also, "free speech" is a US constitutional >>>>>>>>> concept adopted by some countries, but it is not a universal legal concept. >>>>>>>>> Perhaps universal free speech is aspirational, but it is not reality. >>>>>>>>> >>>>>>>>> Sent from my iPhone >>>>>>>>> >>>>>>>>>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann(a)leap.com> wrote: >>>>>>>>>> >>>>>>>>>> I'm not sure where J. Scott is getting his "facts", but my company >>>>>>>>>> doesn't "arbitrage" nor has it registered *any* new gTLD domain >>>>>>>>>> names >>>>>>>>>> (and I have no desire for any), nor is it a "bad actor." If you have >>>>>>>>>> proof that my company is a "bad actor", put it forward, rather than >>>>>>>>>> sling unsupported innuendo. >>>>>>>>>> >>>>>>>>>> The whole point is that the "barriers" are put forth as *required* >>>>>>>>>> to >>>>>>>>>> deal with so-called "bad actors", but are instead used to advantage >>>>>>>>>> certain groups, far beyond the "damage" that is claimed to be caused >>>>>>>>>> by the "bad actors." >>>>>>>>>> >>>>>>>>>> I don't want to delve into politics, but some might see parallels to >>>>>>>>>> certain government measures in some countries, where a "problem" is >>>>>>>>>> claimed, but a Draconian solution is applied to deal with it. >>>>>>>>>> >>>>>>>>>> When it comes to the sunrise periods for new gTLDs, the "problem" is >>>>>>>>>> claimed to be cybersquatting, but instead of relying on curative >>>>>>>>>> rights, the Sunrise policy went too far and gave too many advantages >>>>>>>>>> to TM holders, essentially creating an unlevel playing field between >>>>>>>>>> *good actors* and TM holders. >>>>>>>>>> >>>>>>>>>> Free speech means *no prior restraints* (with very rare exceptions), >>>>>>>>>> but harsh penalties for unlawful speech (curative rights). >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >>>>>>>>>> >>>>>>>>>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >>>>>>>>>> >>>>>>>>>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >>>>>>>>>> >>>>>>>>>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >>>>>>>>>> H7s%3D&reserved=0 >>>>>>>>>> >>>>>>>>>> Sincerely, >>>>>>>>>> >>>>>>>>>> George Kirikos >>>>>>>>>> 416-588-0269 >>>>>>>>>> >>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >>>>>>>>>> >>>>>>>>>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >>>>>>>>>> >>>>>>>>>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >>>>>>>>>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>>>>>>>>> >>>>>>>>>> >>>>>>>>>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans(a)adobe.com> >>>>>>>>>>> wrote: >>>>>>>>>>> The same logic applies to you and other domaines, cybersquatters, >>>>>>>>>>> speculators and small businesses. The fact that you want to arbitrage in >>>>>>>>>>> terms that are also trademarks is your choice and you have to deal with the >>>>>>>>>>> barriers put in place to deal with the bad actors. >>>>>>>>>>> >>>>>>>>>>> Sent from my iPhone >>>>>>>>>>> >>>>>>>>>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann(a)leap.com> wrote: >>>>>>>>>>>> >>>>>>>>>>>> Hi folks, >>>>>>>>>>>> >>>>>>>>>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>>>>>>>>> <brian.beckham(a)wipo.int> wrote: >>>>>>>>>>>>> Finally, since the chart references the EFF letter, it is worth >>>>>>>>>>>>> mentioning here that the fact that a trademark owner may pay >>>>>>>>>>>>> (sometimes extremely high >>>>>>>>>>>>> amounts) to defensively register a domain name exactly matching >>>>>>>>>>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>>>>>>>>>> the >>>>>>>>>>>>> market”) does not prevent free expression, which may be >>>>>>>>>>>>> undertaken >>>>>>>>>>>>> in countless other ways. The number of terms that may be >>>>>>>>>>>>> appended >>>>>>>>>>>>> to a trademark (not to mention typos) to engage in all manner of >>>>>>>>>>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>>>>>>>>>> limitless. >>>>>>>>>>>> >>>>>>>>>>>> By that "logic", the number of terms that may be appended to a >>>>>>>>>>>> common dictionary word (not to mention typos) to create a >>>>>>>>>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>>>>>>>>> :-) >>>>>>>>>>>> >>>>>>>>>>>> In other words, those creating a new brand/trademark certainly had >>>>>>>>>>>> the opportunity to create a longer (and thus inferior) alternative >>>>>>>>>>>> to a commonly used dictionary word or other common term. The fact >>>>>>>>>>>> that they decided instead to choose a common term that is widely >>>>>>>>>>>> used by the public shouldn't give them any priority access in a >>>>>>>>>>>> launch of a new gTLD. >>>>>>>>>>>> >>>>>>>>>>>> "I created a problem for myself, and I want ICANN to fix it" is >>>>>>>>>>>> the >>>>>>>>>>>> essence of the sunrise argument for commonly used terms, like >>>>>>>>>>>> dictionary words and short acronyms. >>>>>>>>>>>> >>>>>>>>>>>> Sincerely, >>>>>>>>>>>> >>>>>>>>>>>> George Kirikos >>>>>>>>>>>> 416-588-0269 >>>>>>>>>>>> >>>>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>>>>>>>>>> >>>>>>>>>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>>>>>>>>>> >>>>>>>>>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>>>>>>>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>>>>>>>>>> _______________________________________________ >>>>>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>>>>>> >>>>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>>>>>>>>>> >>>>>>>>>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>>>>>>>>>> >>>>>>>>>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>>>>>>>>>> >>>>>>>>>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>>>>>>>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>>>>>>>>> _______________________________________________ >>>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>>>> >>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >>>>>>>>>> >>>>>>>>>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >>>>>>>>>> >>>>>>>>>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >>>>>>>>>> >>>>>>>>>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >>>>>>>>>> s%3D&reserved=0 >>>>>>>>> _______________________________________________ >>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>>>> _______________________________________________ >>>>>>>> gnso-rpm-wg mailing list >>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>>> _______________________________________________ >>>>>>> gnso-rpm-wg mailing list >>>>>>> gnso-rpm-wg(a)icann.org >>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>> >>>>>> >>>>> >>>> >>>> >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> >> ________________________________ >> >> 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. 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6 7

Fwd: Action Items, Slides and Notes from the Working Group call held earlier today
by Greg Shatan April 10, 2017

April 10, 2017

Forwarding my email to the group, since I hit "reply" rather than "reply to all" (the one time when hitting "reply to all" is preferable!). Greg ---------- Forwarded message ---------- From: Greg Shatan <gregshatanipc(a)gmail.com> Date: Mon, Apr 10, 2017 at 1:39 AM Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today To: Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> Rebecca, Thanks for your email below. After reading it, I have a few questions. What is your logic in stating that you "see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like."? First, what is the "clear free speech" issue you see? This strikes me as a conclusory allegation. Do you see the same "free speech issue" for each string? If so, why Second, what is the protectable speech that you see being restricted? Do you think that the analysis is the same for each of these strings? If so, why? Third, do you really mean that any attempt to register one of these strings as a domain name raises a free speech issue? Or did you mean something else? If it's the former, should these be blocked from registration as domain names by any party, since "free speech issues can arise from an attempt to" register one of these names? Fourth, Kiran asked you "What do you mean by "blocked"?" You didn't answer, so I'll reiterate the question here. What do you mean by blocked? Fifth, do you consider "nyc" and "abc" to be "dictionary terms"? If so, why? Thanks for your responses. 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 Sun, Apr 9, 2017 at 1:07 PM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote: > Following up on my post from yesterday, let's make this more specific: > I see clear free speech issues that can arise from an attempt to > register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, > nyc.x and the like. Those along with forex, hotel, one, london, and > abc, are the top ten downloads from the TMCH. Of course, as Michael > K. indicates, we'd know more about how many dictionary terms are being > blocked if there were more transparency, but what we do know right now > should be concerning. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc(a)gmail.com> > wrote: > > My responses are in-line. > > > > G > > reg > > > > > > On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas < > mkaranicolas(a)gmail.com> > > wrote: > >> > >> Hi, > >> > >> I think that Michael Graham brings up a salient point in terms of > falling > >> too far down the rabbit hole on background matters, but I should > address a > >> few issues in response to questions that were directly asked of me. > >> > >> First off, while Greg is correct to point out that the UDHR is not > >> formally legally binding as a UNGA resolution, it is (quite literally) > the > >> textbook example of customary international law. I realize that can be a > >> fuzzy concept to rely on, but luckily I don't have to rely on it > because the > >> freedom of expression protections in the UDHR are substantially > identical to > >> those found in the ICCPR, which IS a formally binding treaty. > > > > > > Binding on states. Of course, ICANN is not a state. Luckily, we have > the > > new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), > which > > states that one of ICANN's eight Core Values (which must be subject to a > > balancing analysis involving all Core Values). is "within the scope of > its > > Mission and other Core Values, respecting internationally recognized > human > > rights as required by applicable law." The Bylaw specifically notes that > > "This Core Value does not create, and shall not be interpreted to create, > > any obligation on ICANN outside its Mission, or beyond obligations found > in > > applicable law." As such, ICANN's obligations do not go beyond what > would > > otherwise be required by applicable law. There's been a great deal of > > discussion of this in CCWG-Accountability WS1 and in the Human Rights > > Subgroup of WS2, so I won't go further into the concepts here, which > would > > be a rabbit hole down a rabbit hole from the viewpoint of this group. > >> > >> > >> Also, while I appreciate Greg's caution against "cherrypicking" by > viewing > >> Article 19 in isolation, in this context that argument is just a > >> smokescreen. > > > > > > Concerns about cherrypicking are in no way a "smokescreen" -- unless the > > reference is to the saying "where there's smoke, there's fire." John > > Levine's blog nicely expressed a number of concerns about such > > cherrypicking, especially for what he calls the "fashionable human > rights," > > so I won't repeat them here. It is important to keep in mind, as Michael > > notes, that "human rights are fundamentally about balance," so perhaps we > > are not so far apart, as "balance" and "cherrypicking" are mutually > > exclusive concepts. > > > > Of course the UDHR and ICCPR need to be viewed holistically - that > > understanding in no way supports an argument that domains are not speech. > > > > I'm puzzled by the second part of this sentence. I think this point is > > unrelated to the issue of whether or not domain names are speech, so it > > neither supports nor negates any argument on that topic. > > > > There's no conflict between believing in personal privacy as protected by > > the ICCPR (as I do), and believing in the need to combat hate speech as > > spelled out in the ICCPR (as I do), and believing in freedom of > expression. > > Human rights are fundamentally about balance (more on that in a second). > > > > There are certainly conflicts (e.g., between combating hate speech and > > supporting free speech); the issue is how to balance these countervailing > > issues to resolve these conflicts. > >> > >> > >> With regard to Ballantyne, Davidson & McIntyre, I probably should have > >> been more specific in my original post. Of course, as Greg notes, the > case > >> is not specifically about domain names - which would be a pretty niche > area > >> for the Human Rights Committee to dig into. But the decision contains > the > >> clearest statement of the extent of what constitutes "speech" under the > >> ICCPR, namely that Article 19: "must be interpreted as encompassing > every > >> form of subjective ideas and opinions capable of transmission to > others". > >> It's an incredibly broad formulation - to cover virtually anything that > >> conveys meaning. I, personally, can't see an interpretation of that that > >> doesn't include domain names. > > > > > > This is not really that broad a formulation -- it dovetails nicely with > the > > concept of "expressive speech" under US law (as in the excerpt from > Gibson). > > Furthermore, there is a considerable difference between the speech > > constituting "subjective ideas and opinions" protected in Ballantyne and > the > > "incredibly broad formulation" that would elevate "virtually anything > that > > conveys meaning." "Subjective ideas and opinions" in no way embraces > domain > > names per se; whether and to what extent it embraces domain names is > > certainly not a question answered in Ballantyne. > >> > >> > >> With regard to Gibson v. Texas - I don't want to dig too deeply into > this > >> because, honestly, US law is not my specialisation. But I think that > part of > >> the disconnect between our positions is due to a particular aspect of > the > >> American understanding of free speech, that's sort of different to how > it's > >> understood virtually everywhere else. Under most systems, including the > >> international example I just cited, virtually everything is classed as > >> "speech", and then there's a balancing as to whether particular > restrictions > >> are justified. But because of the absolutist way the US Constitution is > >> phrased ("Congress shall make no law"), the Courts have had to go > through > >> some unusual legal gymnastics to find that speech that they feel > justified > >> restricting isn't actually speech. > > > > > > Simply reading the excerpt from Gibson v. Texas in my prior email shows > that > > this "speech/not speech" analysis is incorrect. Gibson, and the cases > cited > > in it, distinguish between protected speech and speech that that is "not > to > > be protected." Specifically, Gibson mentions that "courts have held that > > domain names that use trademarks to misidentify the source of a product > are > > outside the reach of the First Amendment" and also cites a line of cases > > where "the domain name was actually held not to be protected speech > because > > it was not expressive, not because it was misleading." More broadly, the > > idea that the US approach to free speech is anomalous is incorrect. Of > > course, free speech regimes vary broadly throughout the world -- so > there's > > no such thing as a single "understanding of free speech... virtually > > everywhere else" aside from the US. Unfortunately, there are many > places in > > the world where there is no understanding of free speech at all.) If > the US > > approach to free speech tends to be different, it is in a greater > tolerance > > for controversial and offensive speech (what John Levine calls "the > > absolutist U.S. first amendment approach"). This is why US law doesn't > find > > it so easy to restrict alleged "hate speech" as "virtually everywhere > else", > > and also why I can't be so comfortable in finding "no conflict" between > free > > speech and restricting hate speech. (And I say this as a member of a > group > > that is finding itself increasingly on the wrong end of both offensive > > speech and hate speech.) > >> > >> > >> So, without trying to belabour these issues, my point in the above is > not > >> to try and invalidate the trademark protection system - indeed, Greg's > quite > >> right to point out that trademarks are also speech. My point here is > simply > >> to try and demonstrate that there are free speech issues at play. > > > > > > It's clear that this is false as a general statement, unless this is > meant > > as a statement that could possibly true in a large enough sample, like > > "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one > > sees clear distinctions being drawn being "subjective ideas and opinions" > > and speech that is "not expressive" or "inherently misleading." This is > > probably a good time to note that the UDHR and the ICCPR both refer to > > "freedom of expression" and not to "free speech." So, it would be more > > proper to discuss whether "expressive speech" is at issue, not whether > the > > over-broad "virtually anything that conveys meaning" is at issue, before > we > > even get to the question of whether free speech issues are at play, to > what > > extent, and how that might affect any discussion that is relevant to this > > Working Group. > > > >> > >> To me, that's not a controversial point - and if we can agree on that, > > > > > > I don't think we can agree on that, and certainly not as an assumed > > agreement from which one can proceed blithely on. Rather, I think that > is > > an elemental aspect of the discussion, and as noted above, at best > > "controversial" and possibly sometimes true, and at worst false (at > least as > > a general statement). > > > > As an aside, it's worth noting what Article 19 of the ICCPR actually > > protects: "the right to hold opinions without interference" and "the > right > > to freedom of expression; this right shall include freedom to seek, > receive > > and impart information and ideas of all kinds, regardless of frontiers, > > either orally, in writing or in print, in the form of art, or through any > > other media of his choice." I admit to struggling to find instances > where > > the right to hold opinions or to express oneself freely is truly being > > violated in this context -- especially in a world where holding or > > expressing an opinion can come under threat of oppression, suppression, > > violence, imprisonment or worse. As someone who strongly supports First > > Amendment rights and who has worked on litigation defending First > Amendment > > freedoms, I wonder whether this discussion trivializes free speech > concerns > > rather than promoting them. That is not to dismiss the possibility of > free > > speech concerns here, but just to say that, to the extent there is a > viable > > point here, it pales in comparison to the significant freedom of > expression > > concerns elsewhere (including elsewhere on the Internet, where access to > > websites with undesirable opinions or expression, or even to the > Internet as > > a whole, is under escalating attack). > > > > > >> > >> then that is relevant to the transparency question, since in my mind it > >> bolsters arguments for why openness in the system is important. > > > > > > I don't get the logical leaps here, from the possibility of a free speech > > issue, to the claimed relevance to the transparency question, to the even > > more attenuated idea that this bolsters arguments regarding changing > access > > rules for the TMCH. In other words, I don't really think that any of > this > > changes the discussion on TMCH database access, nor do I really think it > is > > relevant to any of the work we are undertaking right now. That is not to > > say that this is an uninteresting discussion (or else I would not have > > engaged in it), just that it is a rabbit hole in relation to our work. > >> > >> > >> Best, > >> > >> Michael > >> > >> On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc(a)gmail.com> > >> wrote: > >>> > >>> It's important to keep in mind that the rights set forth in the UDHR > are > >>> interrelated and interdependent, so understanding the applicability of > any > >>> one Article also requires understanding the applicability of the other > >>> rights in the UDHR, including some which may be countervailing to > others. > >>> Looking at Article 19 in isolation is "cherrypicking." A recent > CircleID > >>> article by John Levine is quite enlightening on this very point: > >>> > >>> http://www.circleid.com/posts/20170401_human_rights_and_regu > lar_internet_users/ > >>> > >>> The article is short, but for those who don't get there, this quote > goes > >>> to the heart of the matter: "it devalues the whole topic of human > rights to > >>> pay attention only to a few fashionable rights, while ignoring ones > that are > >>> at least as important in people's daily lives." > >>> > >>> (It should also be noted that the UDHR, while adopted by the United > >>> Nations and widely used, does not constitute some form of "universal > law" > >>> nor is it universally accepted.) > >>> > >>> The case mentioned, Gibson v. Texas, has portions that are directly > >>> applicable to the discussion at hand. However, the Gibson decision > actually > >>> distinguishes cases involving trademarks from the situation in that > case. > >>> As a matter of fact, the Gibson case tells us that there are at least > two > >>> types of domain names that do not constitute speech protected by the > First > >>> Amendment: domain names that infringe trademarks, and domain names > that do > >>> not constitute "expressive speech." > >>> > >>> (In other words, there can be no "freedom of expression" issue when the > >>> speech is not expressive.) > >>> > >>> Before getting to an excerpt from the case, it's important to note that > >>> the court did not find that domain names are speech, much less find > that > >>> domain names are speech protected by the First Amendment. The court > made no > >>> findings about all domain names. Rather, the court assumed, for the > purpose > >>> of considering a motion to dismiss, that the domain name in question > >>> (texasworkerscomplaw.com) constituted commercial speech. It's also > >>> important to note that the case involved the Constitutionality of a > law that > >>> broadly prohibited the use of the terms "Texas" and "workers comp," > and not > >>> a trademark infringement matter. > >>> > >>> The excerpt is quite instructive: > >>> > >>> > >>> In order for speech to fall outside of the First Amendment’s > protection, > >>> the speech must either be “inherently likely to deceive,” or “the > record > >>> [must] indicate[] that a particular form or method of advertising has > in > >>> fact been deceptive.” R.M.J., 455 U.S. at 202. > >>> > >>> > >>> Appellees primarily argue that the Texas statute is constitutional > >>> because Gibson’s domain name amounts to inherently misleading speech. > In > >>> support of this proposition, they cite to a series of cases in which > courts > >>> have held that domain names that use trademarks to misidentify the > source of > >>> a product are outside the reach of the First Amendment. The case law > cited > >>> by Appellees, however, is unique to the field of trademark > infringement, > >>> see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and > does > >>> not necessarily extend to a case such as this one, where Texas is > >>> prohibiting Gibson from using words that are otherwise in the public > >>> domain.[1] Cases involving trademark infringement involve inherently > >>> deceptive speech because they contain a significant risk that an > infringing > >>> party will freeload on the goodwill that has been created by the > original > >>> trademark. See Friedman, 440 U.S. at 11-16. No such risk is present > here. > >>> Texas has made no showing that its own talents and energy contributed > to the > >>> creation of any goodwill in the name “texasworkerscomplaw.com.” See San > >>> Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, > 533-34 > >>> (1987). Instead the regulation at issue is forward-thinking; intended > to > >>> prohibit confusion for individuals seeking information from the > government > >>> agency. It is not retrospective in the same way as most trademark > >>> litigation, which is generally intended to preserve the reputation > that has > >>> been built upon a trade name. See Friedman, 440 U.S. at 11-16. > Accordingly, > >>> the case law cited by Appellees is inapposite. > >>> > >>> > >>> ________________________________ > >>> > >>> [1] In most of the cases cited by Appellees the domain name was > actually > >>> held not to be protected speech because it was not expressive, not > because > >>> it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. > Bucci, No. > >>> 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); > Morrison & > >>> Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews > for > >>> Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in > contrast, > >>> Gibson’s domain name is expressive because it does more than simply > mimic > >>> the state agency’s website or identify a source of Texas Workers’ > >>> Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The > domain > >>> name is intended to direct visitors to a forum for discussing workers’ > >>> compensation laws and their potential reform, as well as to convey to > >>> visitors the message of Gibson’s website as a whole. Accordingly, in > the > >>> context of this case, the domain name is “‘sufficiently imbued with the > >>> elements of communication’” to place it in the realm of expressive > speech. > >>> Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. > >>> 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)). > >>> > >>> Greg Shatan > >>> > >>> > >>> 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 Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas > >>> <mkaranicolas(a)gmail.com> wrote: > >>>> > >>>> It's an interesting question. Different national courts have handled > >>>> the issue in different ways. In the US, for example, the Fifth Circuit > >>>> Court of Appeals found in Gibson v. Texas that domain names are > >>>> protected as speech under the 1st amendment. But freedom of expression > >>>> in the US context tends to be understood differently than elsewhere, > >>>> since the way it's protected under the US constitution is a bit > >>>> different from how most constitutions frame their equivalent > >>>> protections. > >>>> > >>>> That said - when you're asking about Article 19, the discussion comes > >>>> at the international level where, as far as I know, there's no single > >>>> authoritative treatment to point to. Generally, discussions of Article > >>>> 19 by standard setting bodies tend to focus on the sharper and more > >>>> controversial issues: hate speech, defamation, national security > >>>> restrictions, etc. > >>>> > >>>> However - there's a clear and well developed test for restrictions on > >>>> freedom of expression that's built right into the ICCPR, and which > >>>> applies equally to all restrictions, namely that they should be: (1) > >>>> provided by Law (which includes a requirement for clarity and > >>>> transparency), (2) fulfill a legitimate purpose, and (3) be necessary > >>>> and proportionate to the achievement of that goal. If we establish > >>>> that domain names qualify as speech under Article 19 (which, according > >>>> to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. > >>>> Canada, is a fairly sure interpretation), then understanding the > >>>> applicability of Article 19 just means understanding that three part > >>>> test. > >>>> > >>>> If you want more info, I'd recommend this briefing note as a useful > >>>> (and concise!) introduction to restrictions on freedom of expression > >>>> under Article 19: > >>>> > >>>> http://www.law-democracy.org/live/wp-content/uploads/2015/02 > /foe-briefingnotes-2.pdf > >>>> > >>>> Or if you want to go into a little more depth, you can check out this > >>>> one: > >>>> http://www.law-democracy.org/live/wp-content/uploads/2012/08 > /Paper-on-Restrictions.10.03.22.rev_.pdf > >>>> > >>>> Unfortunately - neither is specifically about domain names, but the > >>>> discussion is basically analogous to how we understand other kinds of > >>>> restrictions and protections. > >>>> > >>>> On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) > >>>> <migraham(a)expedia.com> wrote: > >>>> > Michael: > >>>> > > >>>> > Where can I find a discussion how Article 19 and similar "Freedom of > >>>> > Expression" requirements relate to or impact the registration of > domain > >>>> > names? > >>>> > > >>>> > > >>>> > Michael R. > >>>> > > >>>> > Article 19. > >>>> > Everyone has the right to freedom of opinion and expression; this > >>>> > right includes freedom to hold opinions without interference and to > seek, > >>>> > receive and impart information and ideas through any media and > regardless of > >>>> > frontiers. > >>>> > > >>>> > -----Original Message----- > >>>> > From: gnso-rpm-wg-bounces(a)icann.org > >>>> > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael > Karanicolas > >>>> > Sent: Thursday, April 06, 2017 5:53 AM > >>>> > To: J. Scott Evans <jsevans(a)adobe.com> > >>>> > 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 > >>>> > > >>>> > Once again - I have to jump in. Freedom of expression is very much a > >>>> > universal concept: > >>>> > > >>>> > http://www.un.org/en/universal-declaration-human-rights/ > >>>> > http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx > >>>> > > >>>> > That's why we call them "human" rights. Not "American" rights. > >>>> > > >>>> > > >>>> > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg > >>>> > <gnso-rpm-wg(a)icann.org> wrote: > >>>> >> The law is clear: an exact match isn't free speech. It is trademark > >>>> >> infringement. A domain that coveys a message (e.g., hotels > suck.com) is free > >>>> >> speech and protected accordingly. Also, "free speech" is a US > constitutional > >>>> >> concept adopted by some countries, but it is not a universal legal > concept. > >>>> >> Perhaps universal free speech is aspirational, but it is not > reality. > >>>> >> > >>>> >> Sent from my iPhone > >>>> >> > >>>> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann(a)leap.com> > wrote: > >>>> >>> > >>>> >>> I'm not sure where J. Scott is getting his "facts", but my company > >>>> >>> doesn't "arbitrage" nor has it registered *any* new gTLD domain > >>>> >>> names > >>>> >>> (and I have no desire for any), nor is it a "bad actor." If you > have > >>>> >>> proof that my company is a "bad actor", put it forward, rather > than > >>>> >>> sling unsupported innuendo. > >>>> >>> > >>>> >>> The whole point is that the "barriers" are put forth as *required* > >>>> >>> to > >>>> >>> deal with so-called "bad actors", but are instead used to > advantage > >>>> >>> certain groups, far beyond the "damage" that is claimed to be > caused > >>>> >>> by the "bad actors." > >>>> >>> > >>>> >>> I don't want to delve into politics, but some might see parallels > to > >>>> >>> certain government measures in some countries, where a "problem" > is > >>>> >>> claimed, but a Draconian solution is applied to deal with it. > >>>> >>> > >>>> >>> When it comes to the sunrise periods for new gTLDs, the "problem" > is > >>>> >>> claimed to be cybersquatting, but instead of relying on curative > >>>> >>> rights, the Sunrise policy went too far and gave too many > advantages > >>>> >>> to TM holders, essentially creating an unlevel playing field > between > >>>> >>> *good actors* and TM holders. > >>>> >>> > >>>> >>> Free speech means *no prior restraints* (with very rare > exceptions), > >>>> >>> but harsh penalties for unlawful speech (curative rights). > >>>> >>> > >>>> >>> > >>>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A% > 2F%2Fwww. > >>>> >>> > >>>> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C81 > 1dc6e8437 > >>>> >>> > >>>> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1% > 7C0%7C0%7C63 > >>>> >>> > >>>> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ > 4g%2FOWfC > >>>> >>> H7s%3D&reserved=0 > >>>> >>> > >>>> >>> Sincerely, > >>>> >>> > >>>> >>> George Kirikos > >>>> >>> 416-588-0269 <(416)%20588-0269> > >>>> >>> > >>>> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A% > 2F%2Fwww.l > >>>> >>> > >>>> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d3 > 0%7Cfa7b1 > >>>> >>> > >>>> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sda > ta=6BJPNx > >>>> >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 > >>>> >>> > >>>> >>> > >>>> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans < > jsevans(a)adobe.com> > >>>> >>>> wrote: > >>>> >>>> The same logic applies to you and other domaines, cybersquatters, > >>>> >>>> speculators and small businesses. The fact that you want to > arbitrage in > >>>> >>>> terms that are also trademarks is your choice and you have to > deal with the > >>>> >>>> barriers put in place to deal with the bad actors. > >>>> >>>> > >>>> >>>> Sent from my iPhone > >>>> >>>> > >>>> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann(a)leap.com> > wrote: > >>>> >>>>> > >>>> >>>>> Hi folks, > >>>> >>>>> > >>>> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian > >>>> >>>>>> <brian.beckham(a)wipo.int> wrote: > >>>> >>>>>> Finally, since the chart references the EFF letter, it is worth > >>>> >>>>>> mentioning here that the fact that a trademark owner may pay > >>>> >>>>>> (sometimes extremely high > >>>> >>>>>> amounts) to defensively register a domain name exactly matching > >>>> >>>>>> its trademark in a Sunrise process (and thereby taking it “off > >>>> >>>>>> the > >>>> >>>>>> market”) does not prevent free expression, which may be > >>>> >>>>>> undertaken > >>>> >>>>>> in countless other ways. The number of terms that may be > >>>> >>>>>> appended > >>>> >>>>>> to a trademark (not to mention typos) to engage in all manner > of > >>>> >>>>>> speech – fair or otherwise – is, practically-speaking, all but > >>>> >>>>>> limitless. > >>>> >>>>> > >>>> >>>>> By that "logic", the number of terms that may be appended to a > >>>> >>>>> common dictionary word (not to mention typos) to create a > >>>> >>>>> trademarkable brand is, practically-speaking, all but limitless. > >>>> >>>>> :-) > >>>> >>>>> > >>>> >>>>> In other words, those creating a new brand/trademark certainly > had > >>>> >>>>> the opportunity to create a longer (and thus inferior) > alternative > >>>> >>>>> to a commonly used dictionary word or other common term. The > fact > >>>> >>>>> that they decided instead to choose a common term that is widely > >>>> >>>>> used by the public shouldn't give them any priority access in a > >>>> >>>>> launch of a new gTLD. > >>>> >>>>> > >>>> >>>>> "I created a problem for myself, and I want ICANN to fix it" is > >>>> >>>>> the > >>>> >>>>> essence of the sunrise argument for commonly used terms, like > >>>> >>>>> dictionary words and short acronyms. > >>>> >>>>> > >>>> >>>>> Sincerely, > >>>> >>>>> > >>>> >>>>> George Kirikos > >>>> >>>>> 416-588-0269 > >>>> >>>>> > >>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A% > 2F%2Fwww > >>>> >>>>> > >>>> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46 > e63%7Cf > >>>> >>>>> > >>>> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418 > &sdata= > >>>> >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 > >>>> >>>>> _______________________________________________ > >>>> >>>>> gnso-rpm-wg mailing list > >>>> >>>>> gnso-rpm-wg(a)icann.org > >>>> >>>>> > >>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A% > 2F%2Fmm > >>>> >>>>> > >>>> >>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01% > 7C%7C2b7 > >>>> >>>>> > >>>> >>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178de > cee1%7C > >>>> >>>>> > >>>> >>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B > 2kWcBkF > >>>> >>>>> D%2Fj6BAXDjiI%3D&reserved=0 > >>>> >>> _______________________________________________ > >>>> >>> gnso-rpm-wg mailing list > >>>> >>> gnso-rpm-wg(a)icann.org > >>>> >>> > >>>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A% > 2F%2Fmm.i > >>>> >>> > >>>> >>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C% > 7C811dc6e > >>>> >>> > >>>> >>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1 > %7C0%7C0% > >>>> >>> > >>>> >>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhI > pZQh1s99f > >>>> >>> s%3D&reserved=0 > >>>> >> _______________________________________________ > >>>> >> gnso-rpm-wg mailing list > >>>> >> gnso-rpm-wg(a)icann.org > >>>> >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >>>> > _______________________________________________ > >>>> > gnso-rpm-wg mailing list > >>>> > gnso-rpm-wg(a)icann.org > >>>> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >>>> _______________________________________________ > >>>> gnso-rpm-wg mailing list > >>>> gnso-rpm-wg(a)icann.org > >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >>> > >>> > >> > > > > > > _______________________________________________ > > gnso-rpm-wg mailing list > > gnso-rpm-wg(a)icann.org > > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >

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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 10, 2017

April 10, 2017

It would help fairly easily. First, registration in the TMCH does not mean in and of itself there is an abuse. Second, the whole straw man argument with no evidence is that brand owners are somehow overreaching and grabbing all common word domain names in the new extensions. Clearly, if brand owners are not the majority owners of common word domain names in the new extensions, then the whole house of cards argument that brand owners are taking advantage of the system falls apart. Third, you could easily tell in many instances whether a sunrise registration occurred. We know all of the sunrise dates, and whois for the most part show a date of creation. So if you wanted to cross reference you could easily see if a name was registered during a sunrise period. Fourth, what you will likely find from all this is that most common word domain in the new extensions are not registered to brand owners. If it turns out a majority are registered by domainers or speculators would we then go down the path of figuring out how that happened. Original Message ‎ From: Rebecca Tushnet Sent: Sunday, April 9, 2017 4:38 PM To: Nahitchevansky, Georges Cc: Paul Keating; Rebecca Tushnet; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today How would this exercise indicate whether such registrations occurred with a TMCH claim or in spite of one, or neither? And aren't the top ten in the audit report also valuable? Sent from my phone. Apologies for terseness/typos. > On Apr 9, 2017, at 4:03 PM, Nahitchevansky, Georges <ghn(a)kilpatricktownsend.com> wrote: > > Again, I have to ask where is the evidence of widespread abuse. It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation. I have yet to see anything that even remotely proves or suggests this in fact has occurred. Moreover, the idea that you have to see the TMCH data is a bit of a fishing expedition and will not establish that widespread abuse occurred (e.g., if Delta was registered by Delta Airlines in the TMCH it does in and of itself suggest an abuse of the system). What seems to be happening is that folks are positing a position with little to no evidence, then saying they need the data and making everybody spends gobs of time on issues that have previously been debated, esoteric concepts of human rights, natural justice, free speech and god knows what else. ‎Perhaps, instead of throwing out arguments there should be an effort to gather some real evidence for discussion. If we all decide to continue down this path then perhaps one simple idea would be to take a list of common words that could be perceived as being valuable such as business, music, car, travel, sex, money, ski, football, food, boat, truck, website, online etc and cross reference these words with the new gTld registrations to get some sense of who owns these domain names. Once there is some real data, then we can evaluate who owns most of these ( domainers, brand owners, speculators, industry groups etc.). This would not be a difficult exercise to do. Instead of multiple email chains, folks could take on one or two words from a compiled list and conduct this investigation using whois. > > > > Original Message > From: Paul Keating > Sent: Sunday, April 9, 2017 3:31 PM > To: Rebecca Tushnet > 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 > > > I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech. > > Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression. > > The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious. > > So this is not a rabbit hole. > The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. > We must determine if abuse has occurred. > The contents of the TMCH database is very much relevant. > If we are to be denied information relevant to the database we must assume the worst. > For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, > Freedoms of speech is simply too important to ignore. > > For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson. > > Sent from my iPad > >> On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: >> >> Following up on my post from yesterday, let's make this more specific: >> I see clear free speech issues that can arise from an attempt to >> register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, >> nyc.x and the like. Those along with forex, hotel, one, london, and >> abc, are the top ten downloads from the TMCH. Of course, as Michael >> K. indicates, we'd know more about how many dictionary terms are beingdom >> blocked if there were more transparency, but what we do know right now >> should be concerning. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >>> On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >>> My responses are in-line. >>> >>> G >>> reg >>> >>> >>> On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas(a)gmail.com> >>> wrote: >>>> >>>> Hi, >>>> >>>> I think that Michael Graham brings up a salient point in terms of falling >>>> too far down the rabbit hole on background matters, but I should address a >>>> few issues in response to questions that were directly asked of me. >>>> >>>> First off, while Greg is correct to point out that the UDHR is not >>>> formally legally binding as a UNGA resolution, it is (quite literally) the >>>> textbook example of customary international law. I realize that can be a >>>> fuzzy concept to rely on, but luckily I don't have to rely on it because the >>>> freedom of expression protections in the UDHR are substantially identical to >>>> those found in the ICCPR, which IS a formally binding treaty. >>> >>> >>> Binding on states. Of course, ICANN is not a state. Luckily, we have the >>> new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which >>> states that one of ICANN's eight Core Values (which must be subject to a >>> balancing analysis involving all Core Values). is "within the scope of its >>> Mission and other Core Values, respecting internationally recognized human >>> rights as required by applicable law." The Bylaw specifically notes that >>> "This Core Value does not create, and shall not be interpreted to create, >>> any obligation on ICANN outside its Mission, or beyond obligations found in >>> applicable law." As such, ICANN's obligations do not go beyond what would >>> otherwise be required by applicable law. There's been a great deal of >>> discussion of this in CCWG-Accountability WS1 and in the Human Rights >>> Subgroup of WS2, so I won't go further into the concepts here, which would >>> be a rabbit hole down a rabbit hole from the viewpoint of this group. >>>> >>>> >>>> Also, while I appreciate Greg's caution against "cherrypicking" by viewing >>>> Article 19 in isolation, in this context that argument is just a >>>> smokescreen. >>> >>> >>> Concerns about cherrypicking are in no way a "smokescreen" -- unless the >>> reference is to the saying "where there's smoke, there's fire." John >>> Levine's blog nicely expressed a number of concerns about such >>> cherrypicking, especially for what he calls the "fashionable human rights," >>> so I won't repeat them here. It is important to keep in mind, as Michael >>> notes, that "human rights are fundamentally about balance," so perhaps we >>> are not so far apart, as "balance" and "cherrypicking" are mutually >>> exclusive concepts. >>> >>> Of course the UDHR and ICCPR need to be viewed holistically - that >>> understanding in no way supports an argument that domains are not speech. >>> >>> I'm puzzled by the second part of this sentence. I think this point is >>> unrelated to the issue of whether or not domain names are speech, so it >>> neither supports nor negates any argument on that topic. >>> >>> There's no conflict between believing in personal privacy as protected by >>> the ICCPR (as I do), and believing in the need to combat hate speech as >>> spelled out in the ICCPR (as I do), and believing in freedom of expression. >>> Human rights are fundamentally about balance (more on that in a second). >>> >>> There are certainly conflicts (e.g., between combating hate speech and >>> supporting free speech); the issue is how to balance these countervailing >>> issues to resolve these conflicts. >>>> >>>> >>>> With regard to Ballantyne, Davidson & McIntyre, I probably should have >>>> been more specific in my original post. Of course, as Greg notes, the case >>>> is not specifically about domain names - which would be a pretty niche area >>>> for the Human Rights Committee to dig into. But the decision contains the >>>> clearest statement of the extent of what constitutes "speech" under the >>>> ICCPR, namely that Article 19: "must be interpreted as encompassing every >>>> form of subjective ideas and opinions capable of transmission to others". >>>> It's an incredibly broad formulation - to cover virtually anything that >>>> conveys meaning. I, personally, can't see an interpretation of that that >>>> doesn't include domain names. >>> >>> >>> This is not really that broad a formulation -- it dovetails nicely with the >>> concept of "expressive speech" under US law (as in the excerpt from Gibson). >>> Furthermore, there is a considerable difference between the speech >>> constituting "subjective ideas and opinions" protected in Ballantyne and the >>> "incredibly broad formulation" that would elevate "virtually anything that >>> conveys meaning." "Subjective ideas and opinions" in no way embraces domain >>> names per se; whether and to what extent it embraces domain names is >>> certainly not a question answered in Ballantyne. >>>> >>>> >>>> With regard to Gibson v. Texas - I don't want to dig too deeply into this >>>> because, honestly, US law is not my specialisation. But I think that part of >>>> the disconnect between our positions is due to a particular aspect of the >>>> American understanding of free speech, that's sort of different to how it's >>>> understood virtually everywhere else. Under most systems, including the >>>> international example I just cited, virtually everything is classed as >>>> "speech", and then there's a balancing as to whether particular restrictions >>>> are justified. But because of the absolutist way the US Constitution is >>>> phrased ("Congress shall make no law"), the Courts have had to go through >>>> some unusual legal gymnastics to find that speech that they feel justified >>>> restricting isn't actually speech. >>> >>> >>> Simply reading the excerpt from Gibson v. Texas in my prior email shows that >>> this "speech/not speech" analysis is incorrect. Gibson, and the cases cited >>> in it, distinguish between protected speech and speech that that is "not to >>> be protected." Specifically, Gibson mentions that "courts have held that >>> domain names that use trademarks to misidentify the source of a product are >>> outside the reach of the First Amendment" and also cites a line of cases >>> where "the domain name was actually held not to be protected speech because >>> it was not expressive, not because it was misleading." More broadly, the >>> idea that the US approach to free speech is anomalous is incorrect. Of >>> course, free speech regimes vary broadly throughout the world -- so there's >>> no such thing as a single "understanding of free speech... virtually >>> everywhere else" aside from the US. Unfortunately, there are many places in >>> the world where there is no understanding of free speech at all.) If the US >>> approach to free speech tends to be different, it is in a greater tolerance >>> for controversial and offensive speech (what John Levine calls "the >>> absolutist U.S. first amendment approach"). This is why US law doesn't find >>> it so easy to restrict alleged "hate speech" as "virtually everywhere else", >>> and also why I can't be so comfortable in finding "no conflict" between free >>> speech and restricting hate speech. (And I say this as a member of a group >>> that is finding itself increasingly on the wrong end of both offensive >>> speech and hate speech.) >>>> >>>> >>>> So, without trying to belabour these issues, my point in the above is not >>>> to try and invalidate the trademark protection system - indeed, Greg's quite >>>> right to point out that trademarks are also speech. My point here is simply >>>> to try and demonstrate that there are free speech issues at play. >>> >>> >>> It's clear that this is false as a general statement, unless this is meant >>> as a statement that could possibly true in a large enough sample, like >>> "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one >>> sees clear distinctions being drawn being "subjective ideas and opinions" >>> and speech that is "not expressive" or "inherently misleading." This is >>> probably a good time to note that the UDHR and the ICCPR both refer to >>> "freedom of expression" and not to "free speech." So, it would be more >>> proper to discuss whether "expressive speech" is at issue, not whether the >>> over-broad "virtually anything that conveys meaning" is at issue, before we >>> even get to the question of whether free speech issues are at play, to what >>> extent, and how that might affect any discussion that is relevant to this >>> Working Group. >>> >>>> >>>> To me, that's not a controversial point - and if we can agree on that, >>> >>> >>> I don't think we can agree on that, and certainly not as an assumed >>> agreement from which one can proceed blithely on. Rather, I think that is >>> an elemental aspect of the discussion, and as noted above, at best >>> "controversial" and possibly sometimes true, and at worst false (at least as >>> a general statement). >>> >>> As an aside, it's worth noting what Article 19 of the ICCPR actually >>> protects: "the right to hold opinions without interference" and "the right >>> to freedom of expression; this right shall include freedom to seek, receive >>> and impart information and ideas of all kinds, regardless of frontiers, >>> either orally, in writing or in print, in the form of art, or through any >>> other media of his choice." I admit to struggling to find instances where >>> the right to hold opinions or to express oneself freely is truly being >>> violated in this context -- especially in a world where holding or >>> expressing an opinion can come under threat of oppression, suppression, >>> violence, imprisonment or worse. As someone who strongly supports First >>> Amendment rights and who has worked on litigation defending First Amendment >>> freedoms, I wonder whether this discussion trivializes free speech concerns >>> rather than promoting them. That is not to dismiss the possibility of free >>> speech concerns here, but just to say that, to the extent there is a viable >>> point here, it pales in comparison to the significant freedom of expression >>> concerns elsewhere (including elsewhere on the Internet, where access to >>> websites with undesirable opinions or expression, or even to the Internet as >>> a whole, is under escalating attack). >>> >>> >>>> >>>> then that is relevant to the transparency question, since in my mind it >>>> bolsters arguments for why openness in the system is important. >>> >>> >>> I don't get the logical leaps here, from the possibility of a free speech >>> issue, to the claimed relevance to the transparency question, to the even >>> more attenuated idea that this bolsters arguments regarding changing access >>> rules for the TMCH. In other words, I don't really think that any of this >>> changes the discussion on TMCH database access, nor do I really think it is >>> relevant to any of the work we are undertaking right now. That is not to >>> say that this is an uninteresting discussion (or else I would not have >>> engaged in it), just that it is a rabbit hole in relation to our work. >>>> >>>> >>>> Best, >>>> >>>> Michael >>>> >>>> On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc(a)gmail.com> >>>> wrote: >>>>> >>>>> It's important to keep in mind that the rights set forth in the UDHR are >>>>> interrelated and interdependent, so understanding the applicability of any >>>>> one Article also requires understanding the applicability of the other >>>>> rights in the UDHR, including some which may be countervailing to others. >>>>> Looking at Article 19 in isolation is "cherrypicking." A recent CircleID >>>>> article by John Levine is quite enlightening on this very point: >>>>> >>>>> http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_us… >>>>> >>>>> The article is short, but for those who don't get there, this quote goes >>>>> to the heart of the matter: "it devalues the whole topic of human rights to >>>>> pay attention only to a few fashionable rights, while ignoring ones that are >>>>> at least as important in people's daily lives." >>>>> >>>>> (It should also be noted that the UDHR, while adopted by the United >>>>> Nations and widely used, does not constitute some form of "universal law" >>>>> nor is it universally accepted.) >>>>> >>>>> The case mentioned, Gibson v. Texas, has portions that are directly >>>>> applicable to the discussion at hand. However, the Gibson decision actually >>>>> distinguishes cases involving trademarks from the situation in that case. >>>>> As a matter of fact, the Gibson case tells us that there are at least two >>>>> types of domain names that do not constitute speech protected by the First >>>>> Amendment: domain names that infringe trademarks, and domain names that do >>>>> not constitute "expressive speech." >>>>> >>>>> (In other words, there can be no "freedom of expression" issue when the >>>>> speech is not expressive.) >>>>> >>>>> Before getting to an excerpt from the case, it's important to note that >>>>> the court did not find that domain names are speech, much less find that >>>>> domain names are speech protected by the First Amendment. The court made no >>>>> findings about all domain names. Rather, the court assumed, for the purpose >>>>> of considering a motion to dismiss, that the domain name in question >>>>> (texasworkerscomplaw.com) constituted commercial speech. It's also >>>>> important to note that the case involved the Constitutionality of a law that >>>>> broadly prohibited the use of the terms "Texas" and "workers comp," and not >>>>> a trademark infringement matter. >>>>> >>>>> The excerpt is quite instructive: >>>>> >>>>> >>>>> In order for speech to fall outside of the First Amendment’s protection, >>>>> the speech must either be “inherently likely to deceive,” or “the record >>>>> [must] indicate[] that a particular form or method of advertising has in >>>>> fact been deceptive.” R.M.J., 455 U.S. at 202. >>>>> >>>>> >>>>> Appellees primarily argue that the Texas statute is constitutional >>>>> because Gibson’s domain name amounts to inherently misleading speech. In >>>>> support of this proposition, they cite to a series of cases in which courts >>>>> have held that domain names that use trademarks to misidentify the source of >>>>> a product are outside the reach of the First Amendment. The case law cited >>>>> by Appellees, however, is unique to the field of trademark infringement, >>>>> see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does >>>>> not necessarily extend to a case such as this one, where Texas is >>>>> prohibiting Gibson from using words that are otherwise in the public >>>>> domain.[1] Cases involving trademark infringement involve inherently >>>>> deceptive speech because they contain a significant risk that an infringing >>>>> party will freeload on the goodwill that has been created by the original >>>>> trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. >>>>> Texas has made no showing that its own talents and energy contributed to the >>>>> creation of any goodwill in the name “texasworkerscomplaw.com.” See San >>>>> Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 >>>>> (1987). Instead the regulation at issue is forward-thinking; intended to >>>>> prohibit confusion for individuals seeking information from the government >>>>> agency. It is not retrospective in the same way as most trademark >>>>> litigation, which is generally intended to preserve the reputation that has >>>>> been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, >>>>> the case law cited by Appellees is inapposite. >>>>> >>>>> >>>>> ________________________________ >>>>> >>>>> [1] In most of the cases cited by Appellees the domain name was actually >>>>> held not to be protected speech because it was not expressive, not because >>>>> it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. >>>>> 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & >>>>> Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for >>>>> Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, >>>>> Gibson’s domain name is expressive because it does more than simply mimic >>>>> the state agency’s website or identify a source of Texas Workers’ >>>>> Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain >>>>> name is intended to direct visitors to a forum for discussing workers’ >>>>> compensation laws and their potential reform, as well as to convey to >>>>> visitors the message of Gibson’s website as a whole. Accordingly, in the >>>>> context of this case, the domain name is “‘sufficiently imbued with the >>>>> elements of communication’” to place it in the realm of expressive speech. >>>>> Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. >>>>> 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)). >>>>> >>>>> Greg Shatan >>>>> >>>>> >>>>> Greg Shatan >>>>> C: 917-816-6428 >>>>> S: gsshatan >>>>> Phone-to-Skype: 646-845-9428 >>>>> gregshatanipc(a)gmail.com >>>>> >>>>> >>>>> On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas >>>>> <mkaranicolas(a)gmail.com> wrote: >>>>>> >>>>>> It's an interesting question. Different national courts have handled >>>>>> the issue in different ways. In the US, for example, the Fifth Circuit >>>>>> Court of Appeals found in Gibson v. Texas that domain names are >>>>>> protected as speech under the 1st amendment. But freedom of expression >>>>>> in the US context tends to be understood differently than elsewhere, >>>>>> since the way it's protected under the US constitution is a bit >>>>>> different from how most constitutions frame their equivalent >>>>>> protections. >>>>>> >>>>>> That said - when you're asking about Article 19, the discussion comes >>>>>> at the international level where, as far as I know, there's no single >>>>>> authoritative treatment to point to. Generally, discussions of Article >>>>>> 19 by standard setting bodies tend to focus on the sharper and more >>>>>> controversial issues: hate speech, defamation, national security >>>>>> restrictions, etc. >>>>>> >>>>>> However - there's a clear and well developed test for restrictions on >>>>>> freedom of expression that's built right into the ICCPR, and which >>>>>> applies equally to all restrictions, namely that they should be: (1) >>>>>> provided by Law (which includes a requirement for clarity and >>>>>> transparency), (2) fulfill a legitimate purpose, and (3) be necessary >>>>>> and proportionate to the achievement of that goal. If we establish >>>>>> that domain names qualify as speech under Article 19 (which, according >>>>>> to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. >>>>>> Canada, is a fairly sure interpretation), then understanding the >>>>>> applicability of Article 19 just means understanding that three part >>>>>> test. >>>>>> >>>>>> If you want more info, I'd recommend this briefing note as a useful >>>>>> (and concise!) introduction to restrictions on freedom of expression >>>>>> under Article 19: >>>>>> >>>>>> http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingno… >>>>>> >>>>>> Or if you want to go into a little more depth, you can check out this >>>>>> one: >>>>>> http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restr… >>>>>> >>>>>> Unfortunately - neither is specifically about domain names, but the >>>>>> discussion is basically analogous to how we understand other kinds of >>>>>> restrictions and protections. >>>>>> >>>>>> On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) >>>>>> <migraham(a)expedia.com> wrote: >>>>>>> Michael: >>>>>>> >>>>>>> Where can I find a discussion how Article 19 and similar "Freedom of >>>>>>> Expression" requirements relate to or impact the registration of domain >>>>>>> names? >>>>>>> >>>>>>> >>>>>>> Michael R. >>>>>>> >>>>>>> Article 19. >>>>>>> Everyone has the right to freedom of opinion and expression; this >>>>>>> right includes freedom to hold opinions without interference and to seek, >>>>>>> receive and impart information and ideas through any media and regardless of >>>>>>> frontiers. >>>>>>> >>>>>>> -----Original Message----- >>>>>>> From: gnso-rpm-wg-bounces(a)icann.org >>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas >>>>>>> Sent: Thursday, April 06, 2017 5:53 AM >>>>>>> To: J. Scott Evans <jsevans(a)adobe.com> >>>>>>> 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 >>>>>>> >>>>>>> Once again - I have to jump in. Freedom of expression is very much a >>>>>>> universal concept: >>>>>>> >>>>>>> http://www.un.org/en/universal-declaration-human-rights/ >>>>>>> http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx >>>>>>> >>>>>>> That's why we call them "human" rights. Not "American" rights. >>>>>>> >>>>>>> >>>>>>> On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg >>>>>>> <gnso-rpm-wg(a)icann.org> wrote: >>>>>>>> The law is clear: an exact match isn't free speech. It is trademark >>>>>>>> infringement. A domain that coveys a message (e.g., hotels suck.com) is free >>>>>>>> speech and protected accordingly. Also, "free speech" is a US constitutional >>>>>>>> concept adopted by some countries, but it is not a universal legal concept. >>>>>>>> Perhaps universal free speech is aspirational, but it is not reality. >>>>>>>> >>>>>>>> Sent from my iPhone >>>>>>>> >>>>>>>>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann(a)leap.com> wrote: >>>>>>>>> >>>>>>>>> I'm not sure where J. Scott is getting his "facts", but my company >>>>>>>>> doesn't "arbitrage" nor has it registered *any* new gTLD domain >>>>>>>>> names >>>>>>>>> (and I have no desire for any), nor is it a "bad actor." If you have >>>>>>>>> proof that my company is a "bad actor", put it forward, rather than >>>>>>>>> sling unsupported innuendo. >>>>>>>>> >>>>>>>>> The whole point is that the "barriers" are put forth as *required* >>>>>>>>> to >>>>>>>>> deal with so-called "bad actors", but are instead used to advantage >>>>>>>>> certain groups, far beyond the "damage" that is claimed to be caused >>>>>>>>> by the "bad actors." >>>>>>>>> >>>>>>>>> I don't want to delve into politics, but some might see parallels to >>>>>>>>> certain government measures in some countries, where a "problem" is >>>>>>>>> claimed, but a Draconian solution is applied to deal with it. >>>>>>>>> >>>>>>>>> When it comes to the sunrise periods for new gTLDs, the "problem" is >>>>>>>>> claimed to be cybersquatting, but instead of relying on curative >>>>>>>>> rights, the Sunrise policy went too far and gave too many advantages >>>>>>>>> to TM holders, essentially creating an unlevel playing field between >>>>>>>>> *good actors* and TM holders. >>>>>>>>> >>>>>>>>> Free speech means *no prior restraints* (with very rare exceptions), >>>>>>>>> but harsh penalties for unlawful speech (curative rights). >>>>>>>>> >>>>>>>>> >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >>>>>>>>> >>>>>>>>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >>>>>>>>> >>>>>>>>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >>>>>>>>> >>>>>>>>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >>>>>>>>> H7s%3D&reserved=0 >>>>>>>>> >>>>>>>>> Sincerely, >>>>>>>>> >>>>>>>>> George Kirikos >>>>>>>>> 416-588-0269 >>>>>>>>> >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >>>>>>>>> >>>>>>>>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >>>>>>>>> >>>>>>>>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >>>>>>>>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>>>>>>>> >>>>>>>>> >>>>>>>>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans(a)adobe.com> >>>>>>>>>> wrote: >>>>>>>>>> The same logic applies to you and other domaines, cybersquatters, >>>>>>>>>> speculators and small businesses. The fact that you want to arbitrage in >>>>>>>>>> terms that are also trademarks is your choice and you have to deal with the >>>>>>>>>> barriers put in place to deal with the bad actors. >>>>>>>>>> >>>>>>>>>> Sent from my iPhone >>>>>>>>>> >>>>>>>>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann(a)leap.com> wrote: >>>>>>>>>>> >>>>>>>>>>> Hi folks, >>>>>>>>>>> >>>>>>>>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>>>>>>>> <brian.beckham(a)wipo.int> wrote: >>>>>>>>>>>> Finally, since the chart references the EFF letter, it is worth >>>>>>>>>>>> mentioning here that the fact that a trademark owner may pay >>>>>>>>>>>> (sometimes extremely high >>>>>>>>>>>> amounts) to defensively register a domain name exactly matching >>>>>>>>>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>>>>>>>>> the >>>>>>>>>>>> market”) does not prevent free expression, which may be >>>>>>>>>>>> undertaken >>>>>>>>>>>> in countless other ways. The number of terms that may be >>>>>>>>>>>> appended >>>>>>>>>>>> to a trademark (not to mention typos) to engage in all manner of >>>>>>>>>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>>>>>>>>> limitless. >>>>>>>>>>> >>>>>>>>>>> By that "logic", the number of terms that may be appended to a >>>>>>>>>>> common dictionary word (not to mention typos) to create a >>>>>>>>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>>>>>>>> :-) >>>>>>>>>>> >>>>>>>>>>> In other words, those creating a new brand/trademark certainly had >>>>>>>>>>> the opportunity to create a longer (and thus inferior) alternative >>>>>>>>>>> to a commonly used dictionary word or other common term. The fact >>>>>>>>>>> that they decided instead to choose a common term that is widely >>>>>>>>>>> used by the public shouldn't give them any priority access in a >>>>>>>>>>> launch of a new gTLD. >>>>>>>>>>> >>>>>>>>>>> "I created a problem for myself, and I want ICANN to fix it" is >>>>>>>>>>> the >>>>>>>>>>> essence of the sunrise argument for commonly used terms, like >>>>>>>>>>> dictionary words and short acronyms. >>>>>>>>>>> >>>>>>>>>>> Sincerely, >>>>>>>>>>> >>>>>>>>>>> George Kirikos >>>>>>>>>>> 416-588-0269 >>>>>>>>>>> >>>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>>>>>>>>> >>>>>>>>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>>>>>>>>> >>>>>>>>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>>>>>>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>>>>>>>>> _______________________________________________ >>>>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>>>>> >>>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>>>>>>>>> >>>>>>>>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>>>>>>>>> >>>>>>>>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>>>>>>>>> >>>>>>>>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>>>>>>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>>>>>>>> _______________________________________________ >>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>>> >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >>>>>>>>> >>>>>>>>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >>>>>>>>> >>>>>>>>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >>>>>>>>> >>>>>>>>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >>>>>>>>> s%3D&reserved=0 >>>>>>>> _______________________________________________ >>>>>>>> gnso-rpm-wg mailing list >>>>>>>> gnso-rpm-wg(a)icann.org >>>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>>> _______________________________________________ >>>>>>> gnso-rpm-wg mailing list >>>>>>> gnso-rpm-wg(a)icann.org >>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>> _______________________________________________ >>>>>> gnso-rpm-wg mailing list >>>>>> gnso-rpm-wg(a)icann.org >>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>> >>>>> >>>> >>> >>> >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ________________________________ > > 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. 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Do we have an agenda for next week's call?
by Paul McGrady April 8, 2017

April 8, 2017

Co-Chairs: Our call is on Wednesday and it would be really great to have an agenda for next week's call today so that we can spend our weekend time preparing for the call. Can we get an agenda on Friday, early, as a matter of course? Best, Paul

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by J. Scott Evans April 7, 2017

April 7, 2017

I agree there are alternatives. I would recommend that we consider that all future TLDs need to be sponsored and that the registries need to verify and take responsibility for the use of the domains within there registries. They could have a notice and takedown system. 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 4/7/17, 12:31 AM, "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: Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued. Seems to me that the issues all seem to center around the following: 1. Sunrise as inconsistent with freedom of expression 2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants. Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself. There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes the societal interests in restricting speech vs not. The speaker's interests Whether alternatives to the restrictions exist. Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted. I ask that we consider all of the above. 2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights. To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L > On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon(a)donuts.email> wrote: > > Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to: - the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice. If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal. Paul Keating. _______________________________________________ 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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FW: [Ext] Fwd: Action Items, Slides and Notes from the Working Group call held earlier today
by Mary Wong April 7, 2017

April 7, 2017

Forwarding on behalf of Rebecca Tushnet, as it appears her original message did not go through to the whole mailing list. Cheers Mary ---------- Forwarded message ---------- From: Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> Date: Fri, Apr 7, 2017 at 10:19 AM Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today To: Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> It's not clear to me why "only some uses of domain names are protected free speech" is an answer to the problem "the current system allows widespread preclusion of protected free speech." Both of these things can easily be true. I would be particularly interested in reading some discussion of the independent review's Table 1, which appears to indicate that over 10% of downloaded strings are common words, and not "apple" or "fox" (common words that are also associated with famous brands): String Download Count Trademark Holder(s) smart 15,198 Smart Communications, Daimler AG forex 14,823 Forex Bank AB hotel 14,690 Hotel Top Level Domain GMBH one 14,205 American Academy of Ophthamology love 13,912 Cartier International AG, The Conde Nast Publications cloud 13,821 Individual nyc 13,622 City of New York, NYC & Company london 13,343 London & Partners abc 13,331 LV Insurance Management Limited luxury 13,125 ILUX Holdings Rebecca Tushnet Georgetown Law 703 593 6759 On Fri, Apr 7, 2017 at 7:55 AM, Nahitchevansky, Georges <ghn(a)kilpatricktownsend.com> wrote: > Michael: > > U.S. Law does not protect domain names in and of themselves as free speech. Rather, the notion of free speech as applied to domain names concerns ‎ the communicative aspect of the domain name at issue and the use of the domain name. A domain name such as BRANDsucks.com has a communicative aspect that could enjoy protection under the first amendment, but if the domain name is being used by a competitor to promote and sell its own products, then that would probably take it out of the scope of free speech under the first amendment Similarly, if one registers BRANDLovesJesus.com and uses it for a website concerning abortion rights (the 8th Circuit Purdy case) , that would not be protected free speech if the brand had never commented on abortion rights (e.g., you cannot use a domain name to ascribe speech to someone who never made speech in that regard). The bottom line, is that first amendment protection under US law‎ for domain name registrations is contextual and not just based on the name itself. > > Original Message > ‎ > From: Michael Karanicolas‎ > Sent: Thursday, April 6, 2017 11:00 PM > To: Michael Graham (ELCA) > 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's an interesting question. Different national courts have handled > the issue in different ways. In the US, for example, the Fifth Circuit > Court of Appeals found in Gibson v. Texas that domain names are > protected as speech under the 1st amendment. But freedom of expression > in the US context tends to be understood differently than elsewhere, > since the way it's protected under the US constitution is a bit > different from how most constitutions frame their equivalent > protections. > > That said - when you're asking about Article 19, the discussion comes > at the international level where, as far as I know, there's no single > authoritative treatment to point to. Generally, discussions of Article > 19 by standard setting bodies tend to focus on the sharper and more > controversial issues: hate speech, defamation, national security > restrictions, etc. > > However - there's a clear and well developed test for restrictions on > freedom of expression that's built right into the ICCPR, and which > applies equally to all restrictions, namely that they should be: (1) > provided by Law (which includes a requirement for clarity and > transparency), (2) fulfill a legitimate purpose, and (3) be necessary > and proportionate to the achievement of that goal. If we establish > that domain names qualify as speech under Article 19 (which, according > to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. > Canada, is a fairly sure interpretation), then understanding the > applicability of Article 19 just means understanding that three part > test. > > If you want more info, I'd recommend this briefing note as a useful > (and concise!) introduction to restrictions on freedom of expression > under Article 19: > https://urldefense.proofpoint.com/v2/url?u=http-3A__www.law-2Ddemocracy.org… > > Or if you want to go into a little more depth, you can check out this > one: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.law-2Ddemocracy.org… > > Unfortunately - neither is specifically about domain names, but the > discussion is basically analogous to how we understand other kinds of > restrictions and protections. > > On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) > <migraham(a)expedia.com> wrote: >> Michael: >> >> Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names? >> >> >> Michael R. >> >> Article 19. >> Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers. >> >> -----Original Message----- >> From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas >> Sent: Thursday, April 06, 2017 5:53 AM >> To: J. Scott Evans <jsevans(a)adobe.com> >> 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 >> >> Once again - I have to jump in. Freedom of expression is very much a universal concept: >> >> https://urldefense.proofpoint.com/v2/url?u=http-3A__www.un.org_en_universal… >> https://urldefense.proofpoint.com/v2/url?u=http-3A__www.ohchr.org_EN_Profes… >> >> That's why we call them "human" rights. Not "American" rights. >> >> >> On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org> wrote: >>> The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality. >>> >>> Sent from my iPhone >>> >>>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann(a)leap.com> wrote: >>>> >>>> I'm not sure where J. Scott is getting his "facts", but my company >>>> doesn't "arbitrage" nor has it registered *any* new gTLD domain names >>>> (and I have no desire for any), nor is it a "bad actor." If you have >>>> proof that my company is a "bad actor", put it forward, rather than >>>> sling unsupported innuendo. >>>> >>>> The whole point is that the "barriers" are put forth as *required* to >>>> deal with so-called "bad actors", but are instead used to advantage >>>> certain groups, far beyond the "damage" that is claimed to be caused >>>> by the "bad actors." >>>> >>>> I don't want to delve into politics, but some might see parallels to >>>> certain government measures in some countries, where a "problem" is >>>> claimed, but a Draconian solution is applied to deal with it. >>>> >>>> When it comes to the sunrise periods for new gTLDs, the "problem" is >>>> claimed to be cybersquatting, but instead of relying on curative >>>> rights, the Sunrise policy went too far and gave too many advantages >>>> to TM holders, essentially creating an unlevel playing field between >>>> *good actors* and TM holders. >>>> >>>> Free speech means *no prior restraints* (with very rare exceptions), >>>> but harsh penalties for unlawful speech (curative rights). >>>> >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect… . >>>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >>>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >>>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >>>> H7s%3D&reserved=0 >>>> >>>> Sincerely, >>>> >>>> George Kirikos >>>> 416-588-0269 >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect… >>>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >>>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >>>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>>> >>>> >>>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans(a)adobe.com> wrote: >>>>> The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors. >>>>> >>>>> Sent from my iPhone >>>>> >>>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann(a)leap.com> wrote: >>>>>> >>>>>> Hi folks, >>>>>> >>>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham(a)wipo.int> wrote: >>>>>>> Finally, since the chart references the EFF letter, it is worth >>>>>>> mentioning here that the fact that a trademark owner may pay >>>>>>> (sometimes extremely high >>>>>>> amounts) to defensively register a domain name exactly matching >>>>>>> its trademark in a Sunrise process (and thereby taking it “off the >>>>>>> market”) does not prevent free expression, which may be undertaken >>>>>>> in countless other ways. The number of terms that may be appended >>>>>>> to a trademark (not to mention typos) to engage in all manner of >>>>>>> speech – fair or otherwise – is, practically-speaking, all but limitless. >>>>>> >>>>>> By that "logic", the number of terms that may be appended to a >>>>>> common dictionary word (not to mention typos) to create a >>>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>>> :-) >>>>>> >>>>>> In other words, those creating a new brand/trademark certainly had >>>>>> the opportunity to create a longer (and thus inferior) alternative >>>>>> to a commonly used dictionary word or other common term. The fact >>>>>> that they decided instead to choose a common term that is widely >>>>>> used by the public shouldn't give them any priority access in a >>>>>> launch of a new gTLD. >>>>>> >>>>>> "I created a problem for myself, and I want ICANN to fix it" is the >>>>>> essence of the sunrise argument for commonly used terms, like >>>>>> dictionary words and short acronyms. >>>>>> >>>>>> Sincerely, >>>>>> >>>>>> George Kirikos >>>>>> 416-588-0269 >>>>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect… >>>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>>>> _______________________________________________ >>>>>> gnso-rpm-wg mailing list >>>>>> gnso-rpm-wg(a)icann.org >>>>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect… >>>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect… >>>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >>>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >>>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >>>> s%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ________________________________ > > 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. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
by J. Scott Evans April 6, 2017

April 6, 2017

My earlier email listing the various types of third parties that may be involved was in no way meant to conflate a domainer/speculator with a cybersquatter. 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 4/6/17, 7:18 AM, "Phil Corwin" <psc(a)vlaw-dc.com> wrote: I must once again point put that domainers are not equivalent to cybersquatters and should not be lumped together. Domainers are domain investors and developers. One can call them speculators, although as far as I know speculation in assets of any type -- and the market has clearly demonstrated that domains can be very valuable assets -- is an accepted and legal aspect of the same capitalist system that grants limited monopoly rights in various categories of intellectual property to further valid public purposes. UDRP decisions have repeatedly found that holding a domain portfolio for investment purposes is not a per se infringing activity. Cybersquatters, on the other hand, are parties who register domains with the bad faith intent to subsequently use them to target a trademark owner's goods and services and thereby infringe the mark. I do not represent such parties and favor effective enforcement of TM rights against them. I hope we can keep that distinction clear. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----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: Thursday, April 06, 2017 8:08 AM To: George Kirikos 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 The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors. Sent from my iPhone > On Apr 6, 2017, at 4:59 AM, George Kirikos <icann(a)leap.com> wrote: > > Hi folks, > >> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham(a)wipo.int> wrote: >> Finally, since the chart references the EFF letter, it is worth >> mentioning here that the fact that a trademark owner may pay >> (sometimes extremely high >> amounts) to defensively register a domain name exactly matching its >> trademark in a Sunrise process (and thereby taking it “off the >> market”) does not prevent free expression, which may be undertaken in >> countless other ways. The number of terms that may be appended to a >> trademark (not to mention typos) to engage in all manner of speech – >> fair or otherwise – is, practically-speaking, all but limitless. > > By that "logic", the number of terms that may be appended to a common > dictionary word (not to mention typos) to create a trademarkable brand > is, practically-speaking, all but limitless. :-) > > In other words, those creating a new brand/trademark certainly had the > opportunity to create a longer (and thus inferior) alternative to a > commonly used dictionary word or other common term. The fact that they > decided instead to choose a common term that is widely used by the > public shouldn't give them any priority access in a launch of a new > gTLD. > > "I created a problem for myself, and I want ICANN to fix it" is the > essence of the sunrise argument for commonly used terms, like > dictionary words and short acronyms. > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le > ap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7b1b5 > a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px9twhTF > pg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.ic > ann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7c1e083 > 34543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C6 > 36270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkFD%2Fj6BAXDji > I%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o… ----- No virus found in this message. Checked by AVG - https://na01.safelinks.protection.outlook.com/?url=www.avg.com&data=02%7C01… Version: 2016.0.8012 / Virus Database: 4769/14210 - Release Date: 03/30/17 Internal Virus Database is out of date.

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew April 5, 2017

April 5, 2017

Dear All, Please find the attendance of the call attached to this email. The MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 05 April 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/b8bRAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-05apr17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p4qurzs9548/?OWASP_CSRFTOKEN=e3a2073779853843 886d55424ea456ee1ea5baaa166576b62ea40857bdfd81ad> https://participate.icann.org/p4qurzs9548/ 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 05 April 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 05 April 2017 at 17:00 UTC for 90 minutes Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_b 8bRAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ b8bRAw&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=9Askb1nx2rVZt_Cm6n323MbSsZ7X2nprqbMlaBbf0s E&s=kG_4fQvu8jnqS0zd5VG-nUPHq6Gzs3W4dxTbvd22oaE&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=9Askb1nx2rVZt_Cm6n323MbSsZ7X2nprqbMlaBbf0sE&s=kG _4fQvu8jnqS0zd5VG-nUPHq6Gzs3W4dxTbvd22oaE&e= George Kirikos:Hi folks! George Kirikos:Perhaps blasting out an email reminder will help attendance? Yuri Chumak:greetings ! George Kirikos:Welcome, Yuri. Terri Agnew:@George, will send reminder email out Martin Silva Valent:Hi all Paul Tattersfield:I don't think swithcing between this time and an hour earlier is a good move for attendance numbers it may be better to choose one and stick to it George Kirikos:Hi Martin and Paul. Paul Tattersfield:Hi George Mary Wong:@Paul T, the one hour time change for this 2nd rotational week is to accommodate the RySG standing call, I believe. Philip Corwin:Hello all George Kirikos:Welcome, Phil. J. Scott Evans:I am here. I am here. Paul Tattersfield:are ok thanks Mary, it just makes ti more diffcult to schedule especially now the calls are longer Mary Wong:Document is unsync'ed Terri Agnew:finding the line causing noise Michael R Graham:Morning all. George Kirikos:Welcome Michael. Kristine Dorrain - Amazon Registry Services:I was off the list this week due to obligations, but I will be volunteerings. Kristine Dorrain - Amazon Registry Services:All/any. :) Kristine Dorrain - Amazon Registry Services:OK, good, I'll reply by email, thanks. Kristine Dorrain - Amazon Registry Services:I have no voice today. Amr Elsadr:Thanks Kristine. George Kirikos:Donuts, Rightside, etc. George Kirikos:(blocking lists) Mary Wong:@Brian, basically the additional voluntary protections that are being offered by some new gTLD registry operators. Mary Wong:(ooops just realized Brian B isn't on AC!) George Kirikos:He can read the transcript later. :-) Mary Wong:The consolidated Sunrise and Claims Charter questions (unedited, from the Charter) have been distributed twice to the list :) George Kirikos:https://community.icann.org/display/RARPMRIAGPWG/2017-04-05+Review+o f+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG if anyone needs the link. Martin Silva Valent:thkns George Kirikos:On to #6 next steps? George Kirikos:(or #3) Maxim Alzoba (FAITID):Hello All George Kirikos:Hi Maxim. George Kirikos:Subgroups are more organizational, I think. George Kirikos:Subgroups shouldn't be doing the actual policy work, in my view. Jeff Neuman:i defer to Phil Maxim Alzoba (FAITID):@Mary, sorry for being a bit late, I have an update to my SOI (added SSC to .12.) Amr Elsadr:Thanks Maxim. Will note that. Maxim Alzoba (FAITID):thanks George Kirikos:Data gathering and organization only. J. Scott Evans:The two meeting limintations was only on the refining issue. I felt the sub-groups would continue to work throughout our work on Sunrise and TM Claims. J. Scott Evans:See my response above regarding the two meetings. I meant the First Two Meetings for questions refinement and then further meetings crafting recommend answers to these questions. J. Scott Evans:Michael. EXACTLY!!!! J. Scott Evans:Mary: EXACTLY. Michael R Graham:I also think that if we do agree and change the working groups to begin analyzing/answering questions and identifying data that will be necessary, more members will volunteer to participate. Mary Wong:@George, yes they do (all meetings recorded and drafts published) Michael R Graham:@George: Agree, subgroups not to do policy-making, but also not to merely rehash Charter Questions. Good comment on use of list. Kristine Dorrain - Amazon Registry Services:I think if they are substantive, the groups will fill. George Kirikos:We already increased our time from 1 hour to 90 mins/week. If there are 3 subteams, that means 5 or 6 hours per week, for those who want to participate in all three? Maxim Alzoba (FAITID):do we know numbers reached so far for sub-groups ? Maxim Alzoba (FAITID):the other week meeting idea is great George Kirikos:If the subteams are going to be deciding policy recommendations, membership will certainly rise. Mary Wong:@Maxim, about 3-4 for Sunrise and Private Protections, about 7 for Claims (not counting the co-chairs). However, as Kristine and others noted, if Sub Teams are charged to do initial analysis to bring back to the full WG, it's likely we will get more volunteers Philip Corwin:@Kristine--that's my concern-- that if subgroups go beyond organizing the Qs and identifying data needs and go on to making substantice policy recommendations that their ranks will swell to the point where we lose the efficiency we are seeking Michael R Graham:@Maxim +1 Kristine Dorrain - Amazon Registry Services:Phil, didn't Sub Pro PDP handle this appropriately? Kristine Dorrain - Amazon Registry Services:They have work tracks that report in. Mary Wong:Our WG currently has 158 members ... Mary Wong:@Kristine, yes - and I think that's what Jeff has his hand up for. Martin Silva Valent:I just submiited to be volunteer for the Sunrise Sub-group yesterday. I think that the idea is not to overload us with was is supposed to be the work of dozen of people. I agree that our goal should be, for this first stage, just to investigate and clarify the questions. Kristine Dorrain - Amazon Registry Services:Apologies to all - I will be on and off the call because i'm getting in a cab. Will be off Adobe and review the parts I missed. Maxim Alzoba (FAITID):those items are important (sunrise , claims, private protection) ... it is reflection of Rights Protection from operational perspective in ICANN ecosystem Michael R Graham:@J.Scott -- Thanks for "2 meeting" clarification. Makes sense. Mary Wong:Welcome Greg Rafert and Stacey Chan from the Analysis Group. George Kirikos:Perhaps have a more organized set of discussion on the mailing lists? Mary Wong:Greg, Stacey - we are just running through some admin/planning discussions. George Kirikos:e.g. have multiple organized threads/topics, and kept on topic. George Kirikos:Otherwise, it'll be volunteer burnout for the subteams. J. Scott Evans:We are not PASSING anything off. All decisions and consensus is being made at the full WG George Kirikos:But, there will be de facto deference, since they'll say "we spent 30 hours on this, so we're expert on the topic". George Kirikos:Better to have that all out before the entire group, in my opinion. J. Scott Evans:George. I disagree. If you are concerned, sign up and participate. Greg Rafert and Stacey Chan, Analysis Group:Analysis Group (Greg Rafert and Stacey Chan) has joined the call. Greg Rafert and Stacey Chan, Analysis Group:Apologies for the delay in joining. Kathy Kleiman:Welcome Analysis Group! Michael R Graham:@George: I would hope groups wouldn't take that "I'm expert" position -- but they would hopefully refine issues to enable entire group to discuss meaningfully. Maxim Alzoba (FAITID):I am not sure that is will be possible to be on two of those subgroups the same time (overlaps and time) Michael R Graham:@Jeff -- Agree. Jeff Neuman:If people in this WG have any views, please express them Jeff Neuman:If people in this WG have any views, please express them J. Scott Evans:@Maxim. We can change that and make them not overlap. Paul Tattersfield:I'm not so sure, in the last subgroup there was at least one member looking to remove questions that were eventually included, had the sub group been snaller those discussions may have been missed Jeff Neuman:But hopefully we can get added participation with other leaders of the subgroups George Kirikos:+1 Paul Jeff Neuman:I am not sure what that means Paul? George Kirikos:Draft Report is at https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_r eviews_tmch_revised-2Dservices-2Dreview-2D22feb17-2Den.pdf <https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_ reviews_tmch_revised-2Dservices-2Dreview-2D22feb17-2Den.pdf&d=DwICaQ&c=FmY1u 3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn- H4xR2EBk&m=9Askb1nx2rVZt_Cm6n323MbSsZ7X2nprqbMlaBbf0sE&s=ypmWkQysmmw3ckXufTQ ZUvjzUaE3vtEUZJC0uTDWo1w&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=9Askb1nx2rVZt_Cm6n323MbSsZ7X2nprqbMlaBbf0sE&s=yp mWkQysmmw3ckXufTQZUvjzUaE3vtEUZJC0uTDWo1w&e= in case anyone wants to see it outside Adobe. Paul Tattersfield:Some members have a business interest Jeff, if they can get subjects removed the status quo persists and that may benefit their employer J. Scott Evans:@Paul. Given that the sub-teams have to get full WG approval. I don't see your concern here. George Kirikos:@JScott: it assumes that others are closely following the work of the subteams. George Kirikos:Unless one actually follows their work, one isn't going to catch all those things. Maxim Alzoba (FAITID):as I understand SubGroups will report to WG each meeting Jeff Neuman:@Paul and @George - based on the actual evidence of having implemented subteams who are comprised of many with business interests, that has not been the case Amr Elsadr:@Maxim: I believe the suggestion was that the sub groups would report to the full WG every other meeting. Mary Wong:Our understanding is that Sub Teams will have their calls recorded and documents distributed for the rest of the WG to review, in addition to regular reporting to and discussion with the full WG. Jeff Neuman:@mary - correct J. Scott Evans:@Mary. Correct. George Kirikos:Can we assume everyone has read this report? George Kirikos:(we only have 43 mins left) Maxim Alzoba (FAITID):transcripts? Jeff Neuman:@George we should assume everyone has, yes and only discuss the changes Mary Wong:@Maxim, yes - exactly like a WG meeting Maxim Alzoba (FAITID):good George Kirikos:Good, Jeff. That way we can jump to changes, and Q&A. Mary Wong:While waiting for the slides to upload, we've put back up the actual report George Kirikos:It looks like the redline version of the report, rather than the clean one (clean one is on the wiki). Paul Tattersfield:@J. Scott in the last subgroup there were questions from the community that would have been removed or substantially amended had there not been objections from other group members and the full working group may never have been aware of those community unless the had reviewed all of the original documents concerned. Maxim Alzoba (FAITID):is it possible to provide us with the URL to this particular slide deck? George Kirikos:Page 18: 93.7%. Mary Wong:@Maxim, we just received the slides. We will circulate and upload to the wiki after this call. Maxim Alzoba (FAITID):thanks Griffin Barnett:Ultimately, though, there are those caveats: the data was inconclusive as to any abandonment causation vis-a-vis claims notice Kathy Kleiman:@All - we have individual control now. Poncelet Ileleji:Thanks for the update Martin Silva Valent:thkns! Maxim Alzoba (FAITID):was technical testing included into possible reasons? Jeff Neuman:I am not confident at all that each ping is an "attempted registration" Martin Silva Valent:Is that a Chilling effect in moiton? Colin O'Brien:Jeff I agree Griffin Barnett:+1 Jeff Maxim Alzoba (FAITID):+1 Jeff Mary Wong:@Jeff, I suppose the clearest indication of what is an "attempted registration" is only when something actually triggers a Claims Notice. George Kirikos:We'd need to get an (anonymized) analysis of the abandonment rate for non-claims notice domains, e.g. .com/net/org, or new gTLDs after the 90 days (where there's no claims notice). Phil Marano (Mayer Brown):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 recieve 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. Maxim Alzoba (FAITID):@George, some Registries have no-ending claims ... I think it might be a good idea to check those too George Kirikos:Perhaps one can get different percentages for different registrars, instead of aggregating, to see if there are outliers. Maxim Alzoba (FAITID):to see patterns /if any George Kirikos:(e.g. if 20 registrars are at 95%, and 200 registrars are at 70%, that would show more colour) Philip Corwin:Observation--the abandonment rate is so high that even if a high % of initial registration attempts are for technical or "gaming" reasons, a very high % of authentic attempted registrations are being abandonned -- and we don't know what the disvision between infringing and non-infringing registaraions would have been if the registrations had been completed. George Kirikos:@Phil: slicing the data by date would help reveal that. George Kirikos:e.g. abandonment rate in first 10 days, next 10 days, .... 81st - 90th day. George Kirikos:(i.e. measured from GA) Beth Allegretti:I have to go to a meeting so am leaving the call. Maxim Alzoba (FAITID):also 90+ data might be required for forever-claims registries George Kirikos:Cleaning up "noisy" data is a major part of statistical analysis. Michael R Graham:Question: So 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? Maxim Alzoba (FAITID):what I heard a lot - some potential registrants were freaked out by the claims notice, due to contents of the message Michael R Graham:Question: In analysis, doesn't high abandonment rate also evidence the effectiveness of the Claims Service? Kristine Dorrain:Maxim, is there any data about if registrants went away to research then came back and weren't scared away? Maxim Alzoba (FAITID):I do not think so, it is offline process mostly (when the potential registrant makes a decision ) Maxim Alzoba (FAITID):or at least not known to registries Maxim Alzoba (FAITID):in terms of logs Terri Agnew:@Martin, we are unable to hear you. Your mic is ative but we are not hearing you, please let me know if assistance is needed Greg Shatan:Why do we say that this is "high"? What are we comparing it to? Jeff Neuman:Phil - I am not sure we can make that assumption J. Scott Evans:Deterent is not a bad thing. J. Scott Evans:Correct Phil. A great deal of "assumptions: Griffin Barnett:We don't know if the Notice was actually the cause of abandonment - it could be any number of other factors, such as registration price, etc. Greg Shatan:We have no data on intent. Kathy Kleiman:@Martin: are you reading to speak? George Kirikos:In case we run out of time, here are the questions I had. (A) On page 9, it says the median TMs registered in the TMCH was 1. Can we get more detail in buckets? (e.g. # that reg'd 2-5, 6-10, 11-50, 51-100, etc). (B) On page 9, the top 10 most popular strings (e.g. SMART, FOREX, HOTEL, etc) were listed. Can we get the top 500? (C) Report said costs were too high. ICANN has the right to audit Deloiite, to determine if costs are reasonable. Is The Analysis Group qualified to do such an audit? (my back of the envelope calculations suggest $10 - $15/yr is possible). George Kirikos:(C) Costs too high via Survey Data, to clarify. Griffin Barnett:I think someone may have suggested this earlier, but is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Mary Wong:@Griffin, I don't know but I would think that kind of data would reside with registrars individually. George Kirikos:(page 64 discusses costs, via the survey) Martin Silva Valent:Ok, her eI fix my mic George Kirikos:@Griffin: probably registrars have it, but it's a matter of convincing them to provide it, and anonymize it. Philip Corwin:@Griffin--maybe they have data on abandonment vrate between registries with high registration prices ($50+) and very low (>$1) Greg Shatan:I don't think the logic on the second bullet point works. Griffin Barnett:@Phil, that could be of interest. Anything to help establish a baseline of registration abandonment might be useful Griffin Barnett:Without that, it seems a lot of asusmptions are being drawn around correlation/causation of the notice and its impact on abandonment Paul Tattersfield:The abandonment is probably a good thing for would be registrants, trying to promote a product or service which has the same name as a huge brand even in a totally unrelated category of good and services is a never ending headache even if you have absolutely no intention or way to infringe the larger brand. Philip Corwin:But I agree that we have conclusive data that there is a high correlation between receipt of a Claims Notice and registration abandonment, but not necessarily causation (observing further that if there is no causation then it would not be achieving its goal of deterring cybersquatters) George Kirikos:@Paul: but we know from page 9 that the most commonly searched terms were common words like SMART, HOTEL, etc. George Kirikos:Page 9 didn't have terms like "Verizon", "Google", "Yahoo", etc. Greg Shatan:Do we have any data on abandonment during the same periods. for those starting the registration process but not receiving a claims notice? Jeff Neuman:Plus, there were A LOT of registrars that did not participate in selling a TLD until after the Claims period was over Michael R Graham:The "cost" analysis is something else I think we should drill into -- what ARE the costs? Merely narrative? Jeff Neuman:I am not sure how you measure those costs George Kirikos:Sound went off there. George Kirikos:Breaking up. Salvador Camacho:Martin, your audio is not working Kristine Dorrain:cutting out George Kirikos:I don't think they had data on the prospective registrant. Michael R Graham:@Jeff: I think your point is right on: We can conclude from the data that the TM Claims Notice results in a high number of abandonments. however, we cannot conclude whether the abandonments are of bad faith, good faith or no faith applications. Martin Silva Valent:I will type it here Jeff Neuman:@Michael - exactly J. Scott Evans:@Michael. Exactly. Martin Silva Valent:My concer is that if these abandonments shows an asymetry in the stakeholders, usually non.commercial are the first ones being marginsed with chilling effect when this happend Martin Silva Valent:I feel the reeview falls short in identifying this issue Martin Silva Valent:I don't know if my concner makes total sense, but is going around my head Mary Wong:@Martin, the data does not show who is not proceeding to register. Just as it doesn't show why they do. Michael R Graham:Perhaps address Public Comments on Claims Service and Matching for next time? Jeff Neuman:@Martin - that type of data is not able to be obtained Jeff Neuman:No information is or can be known about the perspective registrant, registrar, botnet, human or other animal on the other side of the request Michael R Graham:@Martin -- I'd be very concerned if good faith noncommercial applicants are being marginilized by the Claims Service. Where can I find evidence of this marginalization? Martin Silva Valent:an exact match to be a TM can be a common name or word. How do we know that tons of good fatih applicants are not being turned back? George Kirikos:Typosquatting in new gTLDs, which already get little type-in traffic, would be a very poor cybersquatting strategy, since it'd be tough to monetize, except for perhaps the largest brands (Google, Facebook, and a handful of others). Martin Silva Valent:Of course, I am also looking to see if there is strong data on this Greg Shatan:Typosquatting is also used in phishing and malware attacks. Salvador Camacho:Totally agree with Greg Shatan Greg Shatan:vv makes a very nice w.... Michael R Graham:@Martin -- My concern exactly. Without support, isn't the concern theoretical? This is the sort of data it would be essential to gather. Greg Shatan:@Martin, how do we know any good faith applicants are being turned back? Philip Corwin:Anti-Phishing WG data shows that most phishing is accomplished via hacked servers, not registered domains, and that where domains are used they generally have a nonsense name with no relation to a TM George Kirikos:THanks. J. Scott Evans:@Mary. Are you all going to circulate the slides? Mary Wong:@J. Scott, yes we will, together with the notes from the call. Maxim Alzoba (FAITID):it might be "natural fenomena ... like ICANN" George Kirikos:ICANN can audit Deloitte to see if the profit is reasonable. George Kirikos:If it shows Deloitte has an 80%+ margin, conclusions would be clear. Michael R Graham:@Phil -- Actually, phishing of online businesses is utilizing a combination of typosquatts, cybersquats, and counterfeit pages. I'd be interested in where your data can be found. Paul Tattersfield:Very good questions George Michael R Graham:@George: Good question. George Kirikos:Costs === FEES OF THE TMCH service, and the $5,000 per registrar. Philip Corwin:We don't "know "anything from this data, other than a 94% abandonment rate. Any opinions on what that number means are just educated guesses based upon certain assumptions. George Kirikos:FEES OF THE TMCH to TM HOLDERS. Maxim Alzoba (FAITID):+1 Jeff George Kirikos:(sorry for the all caps) Michael R Graham:@Phil as to abandonment data -- Agree. Jeff Neuman:@George - why are you focusing on that Jeff Neuman:I am not sure where you are going? J. Scott Evans:I J. Scott Evans:for one want to have them back in a couple of weeks. Terri Agnew:Next Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 12 April 2017 at 16:00 UTC for 90 minutes George Kirikos:@Jeff: ICANN shouldn't be creating monopolies that price gouge. Jeff Neuman:@George - you are still referring to the TMCH or registries.....just want to make sure we are clear Poncelet Ileleji:Noted Terri George Kirikos:@Jeff: TMCH, for now. :-) Michael R Graham:+1 having them back. Jeff Neuman:@George - Thanks David McAuley (RySG):not here for all of it but what I did hear was good, thanks George Kirikos:Bye folks. Paul Tattersfield:Very informative call today - thank you for the presentation Poncelet Ileleji:Bye All Maxim Alzoba (FAITID):bye all Paul Tattersfield:bye all Philip Corwin:Noting that ICANN has monoply control on entry into the domain name business ;-) George Kirikos:(obviously I was in favour of regular tender processes for registries, too) George Kirikos:Bye.

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FOR REVIEW/DISCUSSION: Draft scoping document for Sunrise and Trademark Claims Sub Teams
by Mary Wong April 5, 2017

April 5, 2017

Dear all, Please find attached a draft scoping document for two of the three Sub Teams that are being formed to help refine the questions that will largely define the scope of our forthcoming review of the Sunrise Registration and Trademark Claims processes. This document was prepared by staff following consultation with the Working Group co-chairs, who are currently considering the preparation of a similar document for the third Sub Team (on Private Protections). Also attached is an updated Work Plan for your review, again prepared by staff based on discussions with the co-chairs, and the set of Sunrise and Claims-related Charter questions that was circulated previously. The co-chairs will explain these documents more fully during the Working Group call tomorrow, following which we will welcome Greg Rafert of the Analysis Group for a discussion of the Revised Report on the TMCH. As requested previously, please feel free to send any comments or questions on the report to this mailing list. Thanks and cheers Mary Mary Wong Senior Policy Director & Special Adviser for Strategic Policy Planning Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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FOR REVIEW THIS WEEK: Analysis Group Revised Report on the TMCH
by Mary Wong April 3, 2017

April 3, 2017

Dear all, We are pleased to let you know that Greg Rafert of the Analysis Group will be joining our Working Group for part of our call this coming Wednesday (5 April, 1700 UTC). This note is therefore being sent to request that members review the Analysis Group’s Revised Report on the TMCH in time for our Wednesday session. We’d previously circulated the revised report; however, for your convenient reference here is the link to the clean version: https://newgtlds.icann.org/en/reviews/tmch/revised-services-review-22feb17-…, as well as the redlined version (showing changes from the Draft Report that had been published for public comment, and that had been reviewed by our Working Group’s Data Gathering Sub Team): https://newgtlds.icann.org/en/reviews/tmch/revised-services-review-redline-…. In the meantime, if you have questions or comments based on your review of the report, please feel free to post them to this list and staff can forward them to Greg. Thanks and cheers Mary

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Agenda and documents for RPM Working Group call on Wednesday 5 April 2017
by Mary Wong April 3, 2017

April 3, 2017

Dear all, Here is the proposed agenda for our next Working Group meeting, scheduled for this Wednesday 5 April at 1700 UTC for 90 minutes: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Confirm membership, mandates and deadlines for each of the three Sub Teams formed for Sunrise, Claims and Private Protection 3. Confirm duration and dates of Working Group calls up to ICANN59 4. Co-Chairs’ overview of the Analysis Group’s revised report on the TMCH 5. Working Group discussion with Greg Rafert of the Analysis Group, with a view toward review of any data and information relevant to resolution of our remaining TMCH Charter question 6. Next steps/next meeting You can find a copy of the agenda as well as links to and uploads of the relevant documents on our Working Group wiki page for this meeting (which will, as usual, also include the call recording, transcript and follow up actions/notes when available): https://community.icann.org/x/b8bRAw. NOTE: We appreciate the need to publish meeting agendas as much in advance as possible. The GNSO Working Group Guidelines prescribe that these be distributed at least 24 hours in advance; however, staff will do our best to support the co-chairs in completing Action Items and compiling meeting agendas as quickly and efficiently as possible in the future. Thanks and cheers Mary

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

April 3, 2017

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

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