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

Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
by J. Scott Evans April 26, 2017

April 26, 2017

Sorry. I failed to respond to the full list. In the gym. 😋 Sent from my iPhone Begin forwarded message: From: "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> Date: April 26, 2017 at 6:53:48 AM PDT To: Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I don't need a citation for black letter trademark. I can point you to McCarthy. I am fully aware that cause celeb with some IP academics is word exhaustion. However, ignoring that PARENTS is a suggestive mark for publications or that certain, even if initially descriptive, can become (at least in the US) a strong mark. I get you are fundamentally opposed to any mark having protection beyond its goods and services (even though both the ACPA and Dilution both embrace those concepts). I also know that trademark law is very fact specific with multi-factored tests to prove infringement. For this reason, you and I could throw citations to support our positions all day long. Let's focus on solutions. I acknowledge you dislike the RPMs and think they are overreaching. Sent from my iPhone On Apr 26, 2017, at 6:44 AM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: Citation needed. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> wrote: Rebecca: You are simply wrong on the law. Sent from my iPhone On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: +1 Brian B. and J. Scott. The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in. Best, Paul From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham(a)wipo.int<mailto:brian.beckham@wipo.int>> Cc: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>>; icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive. J. Scott Sent from my iPhone On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham(a)wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form. In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”. It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”. Brian From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote: Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. ==> The category is meant to be comprehensive and international. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: “The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann… ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual." "Here is an example of a standard character mark: <image001.jpg>" "Here are some examples of special form marks: <image002.jpg> <image003.jpg> <image004.jpg>" Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.… The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann… Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. World IP Day 2017 – Join the conversation Web: https://na01.safelinks.protection.outlook.com/?url=www.wipo.int%2Fipday&dat… Facebook: https://na01.safelinks.protection.outlook.com/?url=www.facebook.com%2Fworld… World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@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<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…

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Recommendation for Question#10 (Appropriate Strings for Notification)
by Michael Graham (ELCA) April 25, 2017

April 25, 2017

Pardon the brevity and lateness of the following, but I wanted to submit the following Rationale and Proposals in regard to Question 10 with the understanding that they will undoubtedly be subject of discussion and exposition. The intent of this Proposal is to expand the scope of domain name strings subject to Trademark Claims Service notices in order to help good faith domain name applicants avoid possible conflict and expense when they inadvertently seek to register a domain name that includes and could create confusion with a Trademark registered in the TMCH. This will avoid unnecessary cost to the Applicant, and enable it to either prepare for or ensure that its planned use of a domain name will not lead to conflict. For the same reasons – and because of the success of the Trademark Claims procedure in deterring bad faith domain name registrations in the new gTLDs in the interests of both trademark owners and Internet users – I also propose expanding the scope of the Trademark Claims Service. Michael R. Graham Michael R. Graham Senior Corporate Counsel Global Director, Intellectual Property Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham(a)Expedia.com<mailto:MiGraham@Expedia.com> Rationale and Proposal: We (the RPM Working Group) have identified a minor change in current TMCH Trademark Claims Service practices that could benefit both Domain Name Applicants and Trademark Owners: 1. We have become aware that Domain Name Applicants (Applicants) and Trademark Owners who have registered their trademarks in the TMCH (TMCH Trademarks) have both sustained unnecessary expense in time, effort, and planning when Domain Names that have proceeded to registration contain strings that are confusingly similar to TMCH Trademarks are challenged after their registration. 2. Current Trademark Claims Notice rules limit the issuance of Notifications to applications that consist solely of the exact TMCH Trademark. 3. As a result, Applicants are unaware of potential conflicts and may proceed with expending time, money and planning on the use of Domain Names that may be challenged. 4. Applicants should have the ability to consider whether to proceed with their planning and use of Domain Names in light of TMCH Trademarks at the earliest opportunity in order to conserve fees and planning efforts. 5. Trademark Owners should have the ability to identify both Domain Names that could create confusion and those that will not at the earliest opportunity. Proposal: 1. The TMCH Rules should be revised to require Trademark Claims Notices be issued not only for Domain Names that consist of the Exact string of TMCH Trademarks, but also of any Domain Name that includes anywhere in the string the Exact string of TMCH Trademarks. In addition, we believe the success of the Trademark Claims Service in enabling both trademark owners and domain name applicants to learn of potential conflicts from an early stage in the application process -- when changes can be made or applications either abandoned or continued with the least expense of time, effort, or disruption – would support expansion of the service beyond the new gTLDs. For the same reasons, we propose the following: Proposal: The Trademark Claims Service and TMCH registration program should be expanded to apply to all Legacy TLDs as well as New gTLDs.

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Re: [gnso-rpm-wg] Agenda for this week's RPMs call
by Nathalie Peregrine April 25, 2017

April 25, 2017

Dear Susan, all, The agenda will be circulated shortly. Kind regards Nathalie From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of "susan.payne(a)valideus.com" <susan.payne(a)valideus.com> Date: Tuesday, April 25, 2017 at 12:02 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Agenda for this week's RPMs call Hi, is there an agenda for this week’s RPMs call? I’m not able to join since it’s at 4am but I’d like to know what I’m missing Susan Payne Head of Legal Policy | Valideus Ltd 28-30 Little Russell Street London, WC1A 2HN, United Kingdom E: susan.payne(a)valideus.com<mailto:susan.payne@valideus.com> D: +44 20 7421 8255 T: +44 20 7421 8299 M: +44 7971 661175 Liability cannot be accepted for statements made which are clearly the sender’s own and not made on behalf of Valideus Ltd. This message is intended solely for the addressee and may contain confidential information. If you have received this message in error, please send it back to us, and immediately and permanently delete it. Do not use, copy or disclose the information contained in this message or in any attachment. Valideus Ltd is registered in England and Wales with company number 06181291 and VAT number 987 7551 49. Our registered office is at 28-30 Little Russell Street, London, WC1A 2HN.

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Re: [gnso-rpm-wg] Recommendation II for Question #8
by Jonathan Agmon April 25, 2017

April 25, 2017

I’ll try to be practical and to the point. As to the first question, let’s review the “legislative” history and proceed from there. As to the second question, I agree that this requires some thinking though my intent was to highlight the affinity of GIs to trademarks, certainly not to create a separate entity or type of protection for GIs that doesn’t exist today. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 25, 2017 5:41 AM To: Jonathan Agmon <jonathan.agmon(a)ip-law.legal> Cc: J. Scott Evans <jsevans(a)adobe.com>; Massimo <Massimo(a)origin-gi.com>; Kathy Kleiman <kathy(a)kathykleiman.com>; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Recommendation II for Question #8 I don't think people are saying that GI's should be excluded because they are a unique form of trademarks. I think they are saying that GI's should be excluded because they are not trademarks at all. (Putting aside those GI's that are also the subject of trademark registrations). That is not to say that GI's aren't intellectual property. But so are a host of other things -- trade names, fictitious names, copyrights, design rights, rights of publicity, etc. There are two questions getting entangled here: * First, what does "mark protected by statute or treaty" mean? * An evidence-based approach to this question should be pursued, looking at the "legislative history" and determining how this got into the TMCH. * Personally, it's been my understanding that "marks" refers to those things protected by trademark laws. * I think it's likely that the TMCH made an error in including GIs in this category, and doubled down on it when they gave GIs as the example for this category. * However, we should get to the facts of what happened then and what was intended the first time those words were put down, and what was the predicate for doing so? * The best way to convince anyone what this was meant to cover when it was put into practice is to discover it through research, not try to persuade by opinion. * If the facts show that this was meant to cover GIs, then we have a whole different ballgame. But my recollection of what was going on at the time was that this was meant to cover trademarks that were not registered in national or regional (e.g., EU) trademark databases, but rather were granted trademark protection by a specific statute or treaty (e.g., BIG BROTHERS was originally protected in the US by an Act of Congress, decades before the first trademark registration was acquired). * Second, should GI's be entitled to some form of protection, such as Sunrises, Claims and "curative rights" akin to the UDRP and/or URS? * This can be advocated for without trying to jam GIs into the "mark" category. * Any right that puts TMs and GIs on an equal footing is troublesome, wherever there is a head-to-head issue. Following the INTA "first in time, first in right" approach based on the date legal rights accrued would require a priority-based system, which would probably require some form of human intervention. This then leads to the question of "why not have priority between trademarks?" This would be a huge change from the current "first to register the domain" system (in everything but end-date sunrises, where all applicants have an equal opportunity, so it's still not priority based. This would have immense consequences and change every RPM and undo 17 years of practice and precedent. * Saying that TMs always trump GIs is tempting, but is there a basis in law? * Strategically, we would need a compelling way to avoid bootstrapping to give rights to "geographical terms" (i.e., every term in Google Earth or in Atlas (remember those?)). We are not going to get ready recognition by Argentina, Brazil and Peru that "Champagne" deserves rights protection but "Amazon" doesn't. * Deloitte is allowed to create their own databases of anything, just as long as they are kept separated. .wine/.vin could have had an "appellation controlee" database created by Deloitte and then run a vintage pre-launch program. But going from there to an ICANN-created policy is a big leap. * This can be extrapolated to any type of IP that could be made into a domain name, but that takes us back to the idea of an IPCH, which is a much bigger issue than whether GIs are marks. There's nothing wrong with a big proposal, but that proposal wasn't made. One could try to bring it to the table now, but not by saying that GIs are trademarks or that "marks protected by statute or treaty" was meant to include GIs. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com> On Mon, Apr 24, 2017 at 11:05 PM, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: I actually think that GIs have a rather consistent treatment and if not treatment then certainly international recognition and protection. In many countries registration is available either in the national trademark registry or a side registry which is most often a part of the trademark office. WIPO Lex specifies over 1000 piece of national legislation relating to GIs around 120 countries. http://www.wipo.int/wipolex/en/results_fulltext.jsp?cat2=200&q=geographical… My concern is that when we say GI’s should be excluded because they are a unique form of trademarks, this can lead to the exclusion of other types of trademarks, such as collective marks or certification marks. [cid:image005.png@01D2BDB8.04479D40] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Monday, April 24, 2017 6:38 PM To: Massimo <Massimo(a)origin-gi.com<mailto:Massimo@origin-gi.com>>; Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation II for Question #8 Team: My concern with GI’s is, unlike trademarks, there is no consistent treatment of them in the international arena. In contrast, trademarks are very clearly recognized and treated similarly. Hence, the reason the language is “a mark” protected by statute or treaty. J. Scott [cid:image006.gif@01D2BDB8.04479D40] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo(a)origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, April 24, 2017 at 8:59 AM To: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Recommendation II for Question #8 Dear Kathy, dear all, I would like all of you to look at question 8 from a different perspective. The acceptance of “marks protected by statute or treaty” might rather have been an attempt to increase the legal certainty of the gTLDs system. The Working Group would lose an opportunity if it refuses to analyze the issue altogether and simply state that the TMCH is intended only for trademarks and any expansion would deeply harm the Multistakeholder Process. I think the crucial issue is why the TMCH guidelines explicitly mention Geographical Indications (GIs). One of answer might be that GIs represent today a relevant legal and commercial reality worldwide: 1. GIs are recognized in the WTO TRIPs Agreement (art.22.1); 2. A large majority of countries provide today specific legislation on GIs separated from trademarks: EU, Switzerland: https://www.admin.ch/opc/fr/classified-compilation/19970229/index.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.admin.…> , Brazil: http://www.wipo.int/wipolex/en/text.jsp?file_id=125397<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…> (Title IV), Chile: http://www.wipo.int/wipolex/en/details.jsp?id=5325<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…>, China: http://www.wipo.int/wipolex/en/details.jsp?id=6348<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…>, OAPI (16 countries in Western and Central Africa): http://www.wipo.int/wipolex/en/other_treaties/text.jsp?file_id=181151<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…>, Colombia: http://www.wipo.int/wipolex/es/details.jsp?id=9451<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…> , Georgia: http://www.wipo.int/wipolex/en/text.jsp?file_id=127543<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…> , Indonesia : http://www.wipo.int/wipolex/en/text.jsp?file_id=182324<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…> , India (see attached), Japan: http://www.maff.go.jp/e/policies/intel/gi_act/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.maff.go…>, Morocco: http://www.ompic.org.ma/fr/content/indications-geographiques-et-appellation…<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ompic.o…> ; Mexico: http://www.wipo.int/wipolex/en/details.jsp?id=11711<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…> (Titulo V), Malaysia: http://www.wipo.int/wipolex/en/text.jsp?file_id=128846<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…>, New Zealand: http://www.legislation.govt.nz/bill/government/2015/0086/latest/DLM6641912.…<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.legisla…> , Russia: http://www.wipo.int/wipolex/en/details.jsp?id=12785<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…> , Vietnam: http://www.wipo.int/wipolex/en/text.jsp?file_id=131515<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.in…>, … just to name a few. 3. As a result, there are today some 8.000 GIs recognized in the world (oriGIn is preparing an online compilation on this that will be published later in September). Such GIs benefit from legal titles arising from transparent registration processes (often managed by national or regional trademark offices), that can be easily verified. Not taking into account such a legal and commercial reality in the domain names environment would be unreasonable. I think the Working Group should look at the question I raise as well as the other information provided on GIs, and rather work on making sure the TMCH guidelines concerning the marks protected under statues and treaties are formulated in a way that makes reference exclusively to IP titles that can easily verifiable (this is the case for GIs). In this way, we will contribute to increase the legal certainty and predictability of the domain names system. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32<tel:+41%2022%20755%2007%2032> E-mail: massimo(a)origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.origin-…> [cid:image007.gif@01D2BDB8.04479D40]<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Ftwitter.co…>[cid:image008.gif@01D2BDB8.04479D40]<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.linked…>[cid:image009.jpg@01D2BDB8.04479D40]<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.youtub…> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: 20 April 2017 02:35 To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation II for Question #8 All, Question #8 has been very much before us in discussions online, questions to Deloitte, and at meetings. I greatly respect Paul McGrady's early submission, and of course, support it. But I think that the requirements of this process require a little more foundation and discussion of harm, and I see a slightly different scope of concern. Accordingly, this longer discussion is set out below (and attached as a PDF). This is a separate recommendation from that of Paul's, hence its title "Recommendation II for Question #8." As before, I submit this recommendation in my capacity as a member of the Working Group, and not as a co-chair. Tx you for your review, Kathy -------------------------------------------------------------------------------------------------------------------------------------- Recommendation for Question #8: Marks Protected by Statue or Treaty It is with considerable interest that the RPM WG has evaluated the question of Deloitte accepting into the TMCH database marks protected by statute or treaty. In our investigation we have found: 1. The wording that creates this subcategory of protected marks does not come from the recommendations adopted by the GNSO Council or ICANN Board; 2. Everyone who sees these rules interprets them differently: o Some think it is solely to protect those marks expressly set out in treaty, e.g., “Olympics” o Others think it is to protect categories of organizations, such as International Governmental Organizations; and o Still others think it is to protect such as geographical indications. 3. Deloitte will not explain how they interpret this section or what they are accepted into the TMCH database. 4. Acceptance of “marks protected by statute or treaty” appears to be a direct violation of the original intent and instructions of the rules adopted by the GNSO Council and ICANN Board. Specifically, Item 1.1 of the TMCH rules adopted by the Council and Board provides for only acceptance of trademarks: “The name of the rights protection mechanism should be the ‘Trademark Clearinghouse’ to signify that only trademarks are to be included in the database.” Section 1. Name; 1.1 Trademark Clearinghouse; https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann…> Second, by these adopted rules, anything that is not a trademark cannot be entered into the main TMCH Database, but may be segregated into another “ancillary database”: “The TC Service Provider should be required to maintain a separate TC database, and may not store any data in the TC database related to its provision of ancillary services, if any.” Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation of the Trademark Clearinghouse Database. Finally, the limitations above were passed by “Unanimous consent” of all Stakeholder Groups in the STI, and then adopted unanimously by the GNSO Council and ICANN Board. Accordingly, the rules adopted by the GNSO Council and ICANN Board are very clear: the Trademark Clearinghouse is for Trademarks. Origin of Problem: The Applicant Guidebook appears to be the source of this odd expansion of subcategories for “marks” being accepted into the Trademark Clearinghouse database. In the Applicant Guidebook, Module 5, Trademark Clearinghouse Section, we find: Section 3, Criteria for Trademark Inclusion in Clearinghouse: “3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 [Skipped] 3.2.2 [Skipped] 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property.” https://newgtlds.icann.org/en/applicants/agb<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fnewgtlds.i…> It is not clear that 3.2.3 is only for trademarks (and clearly Deloitte does not interpret it so) or what 3.2.4 means or includes. In all events, neither of two subcategories were discussed or approved by the GNSO Council and ICANN Board. Further, under the express rules adopted, any results of 3.2.3 and 3.2.4 that are not trademarks would have to be entered into a different database, not the main Trademark Clearinghouse database used for Community-Approved RPMs (per STI Recommendations, Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation of the Trademark Clearinghouse Database above). Overall, we know that at least 75 terms have been approved by Deloitte under 3.2.3 without regard to their trademark status and are currently in the TMCH Database. Harm: The TMCH Database is growing beyond the rules established and set by the GNSO Council, ICANN Board or ICANN Community. This deeply harms the Multistakeholder Process. As discussed extensively on the RPM PDP WG list, the original GNSO committees worked long and hard and carefully balanced the rights of those seeking trademark protection and those seeking to register domain names in New gTLDs. Allowing into the Trademark Clearinghouse new types of entries is a decision for this Working Group, but not for Deloitte or ICANN Staff. Second, these subsections allow a level of interpretation and discretion never intended for the Trademark Clearinghouse Provider. Through Section 3.2.3 and 3.2.4, Deloitte is engaged in a new function of discretion, interpretation and choice – one without rules, guidance and oversight by ICANN and ICANN Community. Ultimately, we don’t even understand what is being accepted (and Deloitte would not tell us). Third, these subsections (3.2.2 and 3.2.4) harm all of those seeking to register domain names, in good faith for their new groups, companies, goods, services, hobbies, speech, research and education. Absent a trademark right of precedence, all other domain names should be open and available to the world to register. That was the promise of the New gTLD Program. Action: The WG has an oversight obligation to ensure the rules adopted by the Community are followed. We can ensure that subcategories 3.2.3 and 3.2.4 are allowed only to the extent they are registered trademarks. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and the ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may review and accept these subcategories of marks. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ 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

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Agenda for this week's RPMs call
by Susan Payne April 25, 2017

April 25, 2017

Hi, is there an agenda for this week's RPMs call? I'm not able to join since it's at 4am but I'd like to know what I'm missing Susan Payne Head of Legal Policy | Valideus Ltd 28-30 Little Russell Street London, WC1A 2HN, United Kingdom E: susan.payne(a)valideus.com<mailto:susan.payne@valideus.com> D: +44 20 7421 8255 T: +44 20 7421 8299 M: +44 7971 661175 Liability cannot be accepted for statements made which are clearly the sender's own and not made on behalf of Valideus Ltd. This message is intended solely for the addressee and may contain confidential information. If you have received this message in error, please send it back to us, and immediately and permanently delete it. Do not use, copy or disclose the information contained in this message or in any attachment. Valideus Ltd is registered in England and Wales with company number 06181291 and VAT number 987 7551 49. Our registered office is at 28-30 Little Russell Street, London, WC1A 2HN.

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Recommendation II for Question #8
by Kathy Kleiman April 25, 2017

April 25, 2017

All, Question #8 has been very much before us in discussions online, questions to Deloitte, and at meetings. I greatly respect Paul McGrady's early submission, and of course, support it. But I think that the requirements of this process require a little more foundation and discussion of harm, and I see a slightly different scope of concern. Accordingly, this longer discussion is set out below (and attached as a PDF). This is a separate recommendation from that of Paul's, hence its title "Recommendation II for Question #8." As before, I submit this recommendation in my capacity as a member of the Working Group, and not as a co-chair. Tx you for your review, Kathy -------------------------------------------------------------------------------------------------------------------------------------- *Recommendation for Question #8: Marks Protected by Statue or Treaty* It is with considerable interest that the RPM WG has evaluated the question of Deloitte accepting into the TMCH database marks protected by statute or treaty. In our investigation we have found: 1.The wording that creates this subcategory of protected marks does not come from the recommendations adopted by the GNSO Council or ICANN Board; 2.Everyone who sees these rules interprets them differently: oSome think it is solely to protect those marks expressly set out in treaty, e.g., “Olympics” oOthers think it is to protect categories of organizations, such as International Governmental Organizations; and oStill others think it is to protect such as geographical indications. 3.Deloitte will not explain how they interpret this section or what they are accepted into the TMCH database. 4.Acceptance of “marks protected by statute or treaty” appears to be a direct violation of the original intent and instructions of the rules adopted by the GNSO Council and ICANN Board. Specifically, Item 1.1 of the TMCH rules adopted by the Council and Board provides for only acceptance of trademarks: *“The name of the rights protection mechanism should be the ‘Trademark Clearinghouse’ to signify that only trademarks are to be included in the database.” * Section 1. Name; 1.1 Trademark Clearinghouse; https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf Second, by these adopted rules, _anything that is not a trademark cannot be entered into the main TMCH Database, but may be segregated into another “ancillary database”: _ *“The TC Service Provider should be required to maintain a separate TC database, and may not store any data in the TC database related to its provision of ancillary services, if any.” * Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation of the Trademark Clearinghouse Database. __ Finally, the limitations above were passed by “Unanimous consent” of all Stakeholder Groups in the STI, and then adopted unanimously by the GNSO Council and ICANN Board. */Accordingly, the rules adopted by the GNSO Council and ICANN Board are very clear: the Trademark Clearinghouse is for Trademarks./* ** /Origin of Problem: / The Applicant Guidebook appears to be the source of this odd expansion of subcategories for “marks” being accepted into the Trademark Clearinghouse database.In the Applicant Guidebook, Module 5, /Trademark Clearinghouse Section,/ we find: *Section 3, /Criteria for Trademark Inclusion in Clearinghouse/:* *“3.2 The standards for inclusion in the Clearinghouse are: * *3.2.1 [Skipped]* *3.2.2 [Skipped]* *3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.* *3.2.4 Other marks that constitute intellectual property.”* https://newgtlds.icann.org/en/applicants/agb ** It is not clear that 3.2.3 is only for trademarks (and clearly Deloitte does not interpret it so) or what 3.2.4 means or includes. In all events, neither of two subcategories were discussed or approved by the GNSO Council and ICANN Board. Further, under the express rules adopted, any results of 3.2.3 and 3.2.4 that are not trademarks would have to be entered into a *different database, not the main Trademark Clearinghouse database used for Community-Approved RPMs* (per STI Recommendations, Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation of the Trademark Clearinghouse Database above). Overall, we know that at least 75 terms have been approved by Deloitte under 3.2.3 without regard to their trademark status and are currently in the TMCH Database. /Harm:/ The TMCH Database is growing beyond the rules established and set by the GNSO Council, ICANN Board or ICANN Community. This deeply harms the Multistakeholder Process. As discussed extensively on the RPM PDP WG list, the original GNSO committees worked long and hard and carefully balanced the rights of those seeking trademark protection and those seeking to register domain names in New gTLDs. Allowing into the Trademark Clearinghouse new types of entries is a decision for this Working Group, but not for Deloitte or ICANN Staff. Second, these subsections allow a level of interpretation and discretion never intended for the Trademark Clearinghouse Provider. Through Section 3.2.3 and 3.2.4, Deloitte is engaged in a new function of discretion, interpretation and choice – one without rules, guidance and oversight by ICANN and ICANN Community. Ultimately, we don’t even understand what is being accepted (and Deloitte would not tell us). Third, these subsections (3.2.2 and 3.2.4) harm all of those seeking to register domain names, in good faith for their new groups, companies, goods, services, hobbies, speech, research and education. Absent a trademark right of precedence, all other domain names should be open and available to the world to register. That was the promise of the New gTLD Program. /Action: / The WG has an oversight obligation to ensure the rules adopted by the Community are followed. We can ensure that subcategories 3.2.3 and 3.2.4 are allowed *only to the extent they are registered trademarks*. Alternatively, the Working Group *by consensus* may CHANGE the rules and present to the GNSO Council and the ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may review and accept these subcategories of marks.

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Re: [gnso-rpm-wg] Requesting data to assist with Working Group deliberations
by Paul Keating April 24, 2017

April 24, 2017

I think that #2 should be seriously considered. From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Mary Wong <mary.wong(a)icann.org> Date: Monday, April 24, 2017 at 4:32 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Requesting data to assist with Working Group deliberations > Dear all, > > In view of various posts that have noted the possible need for additional data > in some important discussion areas, staff hopes the following notes on > existing data on extending either the Claims Service or ³exact match² test, > and on the GNSO process for requesting data and metrics are helpful. > > 1. Extending Claims or Exact Match > > > The Analysis Group¹s revised report on the TMCH notes the need to consider the > tradeoffs that may need to be made among various stakeholder groups in making > policy decisions on these topics. The report emphasizes that limitations of > the data used for the report meant the Analysis Group could not reach > definitive conclusions on a possible deterrent effect, or perform a > cost-benefit analysis. Will it be helpful for the Working Group (or a relevant > Sub Team) to try to identify whether, and how, the data gap can be filled for > these topics of ongoing discussion? > > 2. Process for Submitting Data Request to the GNSO Council or ICANN > > > In 2016, the GNSO Council approved the recommendations of its Working Group on > Data & Metrics for Policy Making, with the result that there is now a process > in place by which active Working Groups can formally request that the GNSO > Council or ICANN approve data acquisition (other than via the informal > processes used to date). This may be especially useful in instances where it > is necessary to obtain data through professional assistance and third party > sources (but which carry a potential budgetary and resource impact). > > The process requires that the group: > · Provide a detailed problem statement > > · Identify a set of requirements to determine the scope of the exercise > > · Identify potential sources (internal and external) > > · Make an estimate regarding the resources required such as scope, > people, access to data, complexity of requirements, sources, and possible > budget implications (see Section 4.5, pages 14-15 of the GNSO Working Group > Guidelines: > https://gnso.icann.org/en/council/annex-1-gnso-wg-guidelines-01sep16-en.pdf; > the process is also visually depicted here: > https://gnso.icann.org/en/council/dmpm-metrics-request-framework-20jan16-en… > f. > > > Is this something the group thinks is or may be necessary in view of ongoing > discussions? > > Thanks and cheers > Mary > > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Requesting data to assist with Working Group deliberations
by Mary Wong April 24, 2017

April 24, 2017

Dear all, In view of various posts that have noted the possible need for additional data in some important discussion areas, staff hopes the following notes – on existing data on extending either the Claims Service or “exact match” test, and on the GNSO process for requesting data and metrics – are helpful. 1. Extending Claims or Exact Match The Analysis Group’s revised report on the TMCH notes the need to consider the tradeoffs that may need to be made among various stakeholder groups in making policy decisions on these topics. The report emphasizes that limitations of the data used for the report meant the Analysis Group could not reach definitive conclusions on a possible deterrent effect, or perform a cost-benefit analysis. Will it be helpful for the Working Group (or a relevant Sub Team) to try to identify whether, and how, the data gap can be filled for these topics of ongoing discussion? 2. Process for Submitting Data Request to the GNSO Council or ICANN In 2016, the GNSO Council approved the recommendations of its Working Group on Data & Metrics for Policy Making, with the result that there is now a process in place by which active Working Groups can formally request that the GNSO Council or ICANN approve data acquisition (other than via the informal processes used to date). This may be especially useful in instances where it is necessary to obtain data through professional assistance and third party sources (but which carry a potential budgetary and resource impact). The process requires that the group: · Provide a detailed problem statement · Identify a set of requirements to determine the scope of the exercise · Identify potential sources (internal and external) · Make an estimate regarding the resources required such as scope, people, access to data, complexity of requirements, sources, and possible budget implications (see Section 4.5, pages 14-15 of the GNSO Working Group Guidelines: https://gnso.icann.org/en/council/annex-1-gnso-wg-guidelines-01sep16-en.pdf; the process is also visually depicted here: https://gnso.icann.org/en/council/dmpm-metrics-request-framework-20jan16-en…. Is this something the group thinks is or may be necessary in view of ongoing discussions? Thanks and cheers Mary

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Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)
by Michael Graham (ELCA) April 23, 2017

April 23, 2017

To be clear: I submitted the following proposals in my personal capacity – and not as a representative of or on behalf of either Expedia, Inc., the Intellectual Property Constituency or any other entity. Michael R. Graham Michael R. Graham Senior Corporate Counsel Global Director, Intellectual Property Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham(a)Expedia.com<mailto:MiGraham@Expedia.com> From: Michael Graham (ELCA) Sent: Thursday, April 20, 2017 8:49 AM To: gnso-rpm-wg(a)icann.org Subject: Recommendation for Question#10 (Appropriate Strings for Notification) Pardon the brevity and lateness of the following, but I wanted to submit the following Rationale and Proposals in regard to Question 10 with the understanding that they will undoubtedly be subject of discussion and exposition. The intent of this Proposal is to expand the scope of domain name strings subject to Trademark Claims Service notices in order to help good faith domain name applicants avoid possible conflict and expense when they inadvertently seek to register a domain name that includes and could create confusion with a Trademark registered in the TMCH. This will avoid unnecessary cost to the Applicant, and enable it to either prepare for or ensure that its planned use of a domain name will not lead to conflict. For the same reasons – and because of the success of the Trademark Claims procedure in deterring bad faith domain name registrations in the new gTLDs in the interests of both trademark owners and Internet users – I also propose expanding the scope of the Trademark Claims Service. Michael R. Graham Michael R. Graham Senior Corporate Counsel Global Director, Intellectual Property Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham(a)Expedia.com<mailto:MiGraham@Expedia.com> Rationale and Proposal: We (the RPM Working Group) have identified a minor change in current TMCH Trademark Claims Service practices that could benefit both Domain Name Applicants and Trademark Owners: 1. We have become aware that Domain Name Applicants (Applicants) and Trademark Owners who have registered their trademarks in the TMCH (TMCH Trademarks) have both sustained unnecessary expense in time, effort, and planning when Domain Names that have proceeded to registration contain strings that are confusingly similar to TMCH Trademarks are challenged after their registration. 2. Current Trademark Claims Notice rules limit the issuance of Notifications to applications that consist solely of the exact TMCH Trademark. 3. As a result, Applicants are unaware of potential conflicts and may proceed with expending time, money and planning on the use of Domain Names that may be challenged. 4. Applicants should have the ability to consider whether to proceed with their planning and use of Domain Names in light of TMCH Trademarks at the earliest opportunity in order to conserve fees and planning efforts. 5. Trademark Owners should have the ability to identify both Domain Names that could create confusion and those that will not at the earliest opportunity. Proposal: 1. The TMCH Rules should be revised to require Trademark Claims Notices be issued not only for Domain Names that consist of the Exact string of TMCH Trademarks, but also of any Domain Name that includes anywhere in the string the Exact string of TMCH Trademarks. In addition, we believe the success of the Trademark Claims Service in enabling both trademark owners and domain name applicants to learn of potential conflicts from an early stage in the application process -- when changes can be made or applications either abandoned or continued with the least expense of time, effort, or disruption – would support expansion of the service beyond the new gTLDs. For the same reasons, we propose the following: Proposal: The Trademark Claims Service and TMCH registration program should be expanded to apply to all Legacy TLDs as well as New gTLDs.

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Proposal for the elimination of Sunrise Period
by Jeremy Malcolm April 22, 2017

April 22, 2017

* Open questions 7 and 8 illustrate how the protections provided to trademark holders through the TMCH have been applied too broadly by the provider, opening the door for gaming and abuse by trademark holders, and chilling of speech by affected third parties. This proposal also bears on question 16 (Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?). It has been seen that the TMCH has facilitated trademark owners claiming exclusive rights in domain names that they don’t exist in domestic trademark law, such as words incorporated into design marks. Open question 10, rather than addressing the potential for abuse, actually suggests a measure that would allow even more non-trademarked terms to be locked up by priority claimants. As a measure to address these problems, we propose eliminating the TMCH’s Sunrise Registration service altogether. Although we also have concerns about its Trademark Claims service and will likely propose its elimination separately at a later date, the Sunrise Registration service is the most urgent to eliminate, because it creates an absolute bar to third parties registering domains that a Sunrise registrant has already claimed, whereas the Trademark Claims service results in a warning to third parties but does not absolutely preclude them from registering. We believe that the elimination of Sunrise Registrations would be the simplest way to address the problems of gaming and abuse that have been observed by working group members, not only in respect of design marks and geographical words, but also the misuse of dubious trademarks over common dictionary words such as “the”, “hotel”, “luxury”, “smart”, “one”, “love”, and “flower” to lock up domains unrelated to the original trademark. If the Sunrise Registration system were widely used by trademark holders, then it might be claimed that its elimination was disproportionate—but as we have seen, this is not the case. There have been only about 130 Sunrise Registrations per new domain. Such a small number of claims could be more simply and efficiently handled simply by allowing those claimants to resort to curative mechanisms such as the UDRP in the event that a third-party registrant beats them to registering a domain over which they might have made a claim. The benefits of the elimination of Sunrise Registrations would be: * An overall cost saving. * Streamlining of the public availability of domains in new registries. * Elimination of the potential for gaming and abuse by putative trademark holders who claim rights over domain names that do not correspond to their domestic trademark rights. The costs would be: * Some trademark holders would be required to resort to curative proceedings if domain names over which they have a legitimate claim are registered by third parties. * -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm(a)eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

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