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

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

April 14, 2017

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

April 14, 2017

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

April 14, 2017

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

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

April 14, 2017

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

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

April 13, 2017

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

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

April 13, 2017

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

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Subgroup Member Lists
by Greg Shatan April 13, 2017

April 13, 2017

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

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

April 13, 2017

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

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

April 13, 2017

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

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

April 13, 2017

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

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