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

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

April 13, 2017

Dear all, In following the recent mailing list discussion, staff thought it might be useful (especially for newer Working Group members) to provide some references to existing documents and materials that touch on some of the questions raised regarding disputes over Sunrise registrations, the Deloitte and IBM contracts, and the TMCH Database. Please therefore find attached a short document where we have attempted to provide the background information (note that for the TMCH Database the excerpt from the 2012 Implementation Advisory Group report had been circulated previously but we include it in the document for comprehensiveness). All of the links referenced are also available on the Working Group wiki space. We hope this is helpful. Thanks and cheers Mary

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

April 13, 2017

Dear all, Pending the circulation of the full set of Action Items and Notes from the Working Group call held earlier today, please note the following: o Working Group members are invited to submit proposals/recommendations concerning the three currently-open TMCH questions (see below for the questions) by close of business in your time zone on Wednesday 19 April. Please send your proposal to this mailing list. As noted previously, any such proposal/recommendation should be specific and include a description of the benefits/costs and advantages/disadvantages. Following receipt of all proposals, the co-chairs will work with staff to propose a constructive format for discussion of all proposals for the Working Group to consider. o There will not be a Working Group call next Wednesday 19 April, although the Sub Teams are expected to continue meeting. The Working Group will reconvene on Thursday 27 April 0300 UTC (i.e. Wednesday evening/night for our members in the Americas). The three currently-open TMCH questions are: TMCH Question 7: How are design marks currently handled by the TMCH provider? (one proposal received from Kathy Kleiman) TMCH Question 8: How are geographical indications, protected designations of origin, and protected appellations of origin currently handled by the TMCH provider? TMCH Question 10: Should the TMCH matching rules be retained, modified, or expanded, e.g. to include plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos of a mark? Thanks and cheers Mary & Amr From: Mary Wong <mary.wong(a)icann.org> Date: Monday, April 10, 2017 at 17:56 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Agenda and documents for Wednesday Working Group meeting (12 April) Dear all, The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Discuss remaining open TMCH Charter questions (see attached table and notes, below) 3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document) 4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call 5. Next steps/next meeting For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). Thanks and cheers Mary

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Text marks and terminology
by Rebecca Tushnet April 13, 2017

April 13, 2017

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

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

April 12, 2017

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

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

April 12, 2017

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

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

April 11, 2017

WG members: We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching.. In that regard, please take special note of this portion of the email sent by Mary--- For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions. That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response. In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory-- Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: · A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. · The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. · If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making. The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG. If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April) Dear all, The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Discuss remaining open TMCH Charter questions (see attached table and notes, below) 3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document) 4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call 5. Next steps/next meeting For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). Thanks and cheers Mary ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17

9 36

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

April 11, 2017

The information in the Clearinghouse is a deep insight into what marks a company finds most important = confidential information. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans(a)adobe.com www.adobe.com On 4/11/17, 2:13 PM, "gnso-rpm-wg-bounces(a)icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces(a)icann.org on behalf of paul(a)law.es> wrote: I find it simply amazing that the side arguing to keep the TMCH database secret has nothing but suspicions and supposition to support their positIon, what are you afraid of? If what you believe to be true is in fact true then exposing the TMCH database to the light shouldn't cause any issues. I am not fond of Trump but his bi-line "clean the swamp" comes to mind. Sent from my iPad > On 11 Apr 2017, at 20:10, George Kirikos <icann(a)leap.com> wrote: > > By that argument, all the HOTEL.TLD and HOTELS.TLD domain names > registered by Dirk, or all the other examples by "domain name > speculators" abusing the sunrise periods could have just as easily > have been bought by those registrants legitimately as "premium > domains" too! The registry operators were "too smart" to let > Flowers.TLD go through in sunrise to 1-800-Flowers.com, without a > premium sale, but were "too dumb" and let all those other desirable > names slip through the cracks to be registered by "speculators". > Implausible. > > So, by Georges' argument "we'll just never know" the truth, because it > can be explained away by some unlikely scenarios, and we shouldn't dig > any deeper, because this working group (or the positions of some > members) is better off in ignorance of the truth. Perhaps some people > can't handle the truth. > > "See no evil, hear no evil, speak no evil." > > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikiped… > > We shouldn't be turning a blind eye to what's wrong, but instead, as > Bret suggested, use all the brain power here to fix things. > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.co… > > On Tue, Apr 11, 2017 at 12:53 PM, Nahitchevansky, Georges > <ghn(a)kilpatricktownsend.com> wrote: >> I think you are right that these were likely premium names. Many registries, including Donuts and Minds & Machines offered names for sale in advance of a landrush at a premium (and some even after general availability periods started). If free speech is really the "concern" here then how does premium pricing not chill speech or skew the marketplace of ideas by favoring the rich over the poor. As an aside, on the flowers example, 1-800 Flowers obtained a number of their names well after the sunrise periods ended (e.g., flowers.london, flowers.today, flowers.country and flowers.website). Moreover, a bunch of flowers extensions have either been registered to other parties or are still available (e.g., flowers.xyz, flowers.guru, flowers.nyc, flowers.domains, flowers.pet, flowers.photography, flowers.photo, flowers.place, flowers.poker. flowers.property, flowers.republican, flowers.repair etc.) It hardly seems like there has been a conspiracy to take out common words. At b > est you have a trademark owner that registered and acquired some domain names (including flowers.com) that correlate to its legitimate business of ordering and delivering flowers, gift baskets etc. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o… _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…

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Improving transparency of TMCH sunrise registrations via WHOIS
by George Kirikos April 11, 2017

April 11, 2017

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

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

April 11, 2017

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

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

April 10, 2017

I have stated once and I believe others have agreed. The data in the database is confidential. That was a very important point when the TMCH was created. I think your attempt to bully people by saying we have to draw a certain conclusion (one the most surprisingly supports your viewpoint) is the outcome of keeping this information confidential. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans(a)adobe.com www.adobe.com From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Paul Keating <paul(a)law.es> Date: Monday, April 10, 2017 at 3:05 PM To: "Michael Graham (ELCA)" <migraham(a)expedia.com> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham(a)expedia.com<mailto:migraham@expedia.com>> wrote: George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainIncit…>: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainincit…> DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FOnlineDomai…>: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-d…<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fonlinedomai…> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.co…> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…>

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