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

Documents for RPM Working Group call this week (if one is scheduled)
by Mary Wong July 31, 2017

July 31, 2017

Hello and thanks for the suggestion, Susan. We have since posted the latest version of the Sunrise document to the wiki space for this meeting: https://community.icann.org/x/vQchB. Please note: * The co-chairs will be confirming whether or not the call this week will take place by tomorrow. * The document that has been posted to the link above has been circulated to the Sunrise Sub Team for its review, in relation to certain additional edits (highlighted in yellow) that were made by staff at Lori’s (Sub Team chair) request. These edits do not relate to the Preamble questions or Question 1 (which are the questions slated for initial Working Group discussion) and it is anticipated that they will be reviewed by the full Working Group following approval (or further comments) from the Sunrise Sub Team. * As noted previously, none of the Preamble questions nor Question 1 have been associated with data collection suggestions to date. However, as the document is still under review, please make any such suggestions that you may have to this list as soon as possible, as staff and the co-chairs are working on collating a data collection proposal for all the Sunrise questions for which some data gathering has been suggested. Thanks and cheers Mary From: Susan Payne <susan.payne(a)valideus.com> Date: Monday, July 31, 2017 at 07:54 To: Mary Wong <mary.wong(a)icann.org>, Amr Elsadr <amr.elsadr(a)icann.org> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: [gnso-rpm-wg] PLEASE READ: RPM Working Group call next week, outstanding Action Items Hi Mary and Amr I note the proposal to start discussing the Preamble sections and Q1 from the Sunrise Report. Could you please post the final version of this Report to the WG wiki page in a self-evident location (or point me to it if I have missed it, which is quite possible). When documents tend to be posted on the page for the meeting at which they are to be discussed this is obviously useful for the purposes of that discussion, but makes it difficult to locate the correct version after the event. The section “WG Documents (drafts/polls)” would seem an obvious place perhaps? Thanks Susan Susan Payne Head of Legal Policy | Valideus Ltd 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 From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 28 July 2017 19:25 To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] PLEASE READ: RPM Working Group call next week, outstanding Action Items Dear Working Group members, The co-chairs wish to find out if it will be feasible to hold a Working Group call next week. As such, please respond to this email if you plan to attend the call. Please do so by the close of your business day on Monday 31 July so that a decision can be made as to whether to proceed with the call. If the call does proceed, a likely agenda will focus on those Preamble questions, and if time permits, Question 1, all from the Sunrise report – note that these questions were not identified as requiring data collection as a pre-condition. Additional notes/reminders: Staff and the co-chairs are continuing to work on the data collection suggestions for Sunrise. A number of those suggestions can be combined either because they target the same audience or sources, or because the exercise will likely utilize the same methodology. Some proposals will also require professional assistance (e.g. survey design). The Working Group should expect to see a collated proposal document in the next couple of weeks containing these additional details. There are also a few outstanding Action Items from the last two Working Group calls, which we hope you can review and comment on: * From 19 July – edits to the Trademark Claims document, updated and circulated by staff on 20 July to address suggestions made on the Working Group call of 19 July: https://community.icann.org/download/attachments/66091891/Trademark%20Claim…<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_do…> * From 26 July – Sunrise data collection suggestions and links to UDRP and URS decisions on design marks (provided by Griffin Barnett): https://community.icann.org/x/BwAhB[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> Thanks and cheers Mary

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PLEASE READ: RPM Working Group call next week, outstanding Action Items
by Mary Wong July 31, 2017

July 31, 2017

Dear Working Group members, The co-chairs wish to find out if it will be feasible to hold a Working Group call next week. As such, please respond to this email if you plan to attend the call. Please do so by the close of your business day on Monday 31 July so that a decision can be made as to whether to proceed with the call. If the call does proceed, a likely agenda will focus on those Preamble questions, and if time permits, Question 1, all from the Sunrise report – note that these questions were not identified as requiring data collection as a pre-condition. Additional notes/reminders: Staff and the co-chairs are continuing to work on the data collection suggestions for Sunrise. A number of those suggestions can be combined either because they target the same audience or sources, or because the exercise will likely utilize the same methodology. Some proposals will also require professional assistance (e.g. survey design). The Working Group should expect to see a collated proposal document in the next couple of weeks containing these additional details. There are also a few outstanding Action Items from the last two Working Group calls, which we hope you can review and comment on: * From 19 July – edits to the Trademark Claims document, updated and circulated by staff on 20 July to address suggestions made on the Working Group call of 19 July: https://community.icann.org/download/attachments/66091891/Trademark%20Claim… * From 26 July – Sunrise data collection suggestions and links to UDRP and URS decisions on design marks (provided by Griffin Barnett): https://community.icann.org/x/BwAhB Thanks and cheers Mary

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PLEASE READ EMAIL - REVISED, with Doodle poll (Re: PLEASE READ: RPM Working Group call next week, outstanding Action Items)
by Mary Wong July 28, 2017

July 28, 2017

Thanks for the suggestion, George – apologies that in the haste of getting this out to the group we did not stop to create a Doodle poll. We have since created the necessary Doodle poll, so we ask that Working Group members, especially those who are planning to attend the call next week (0300 UTC on Thursday 2 August), be so kind as to fill it out instead of doing a Reply All to the list: https://icannorg.doodle.com/poll/26dgf6m4uxsn39un We have already noted Cyntia, Wisdom, David M, Griffin and George as attending. With apologies for the possible confusion and email profusion, Mary On 7/28/17, 14:37, "gnso-rpm-wg-bounces(a)icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces(a)icann.org on behalf of icann(a)leap.com> wrote: Yes, I can attend. I hear they're giving out gold stars for perfect attendance.... ;-) However, instead of having 20 or 30 "Yes, I can attend" emails clogging up the mailing list, might i suggest that it would be better (next time) to have done this via a Doodle poll, etc? Sincerely, George Kirikos 416-588-026 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&… On Fri, Jul 28, 2017 at 2:24 PM, Mary Wong <mary.wong(a)icann.org> wrote: > Dear Working Group members, > > > > The co-chairs wish to find out if it will be feasible to hold a Working > Group call next week. As such, please respond to this email if you plan to > attend the call. Please do so by the close of your business day on Monday 31 > July so that a decision can be made as to whether to proceed with the call. > > > > If the call does proceed, a likely agenda will focus on those Preamble > questions, and if time permits, Question 1, all from the Sunrise report – > note that these questions were not identified as requiring data collection > as a pre-condition. > > > > Additional notes/reminders: > > Staff and the co-chairs are continuing to work on the data collection > suggestions for Sunrise. A number of those suggestions can be combined > either because they target the same audience or sources, or because the > exercise will likely utilize the same methodology. Some proposals will also > require professional assistance (e.g. survey design). The Working Group > should expect to see a collated proposal document in the next couple of > weeks containing these additional details. > > > > There are also a few outstanding Action Items from the last two Working > Group calls, which we hope you can review and comment on: > > > > From 19 July – edits to the Trademark Claims document, updated and > circulated by staff on 20 July to address suggestions made on the Working > Group call of 19 July: > https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_do… > > > > From 26 July – Sunrise data collection suggestions and links to UDRP and URS > decisions on design marks (provided by Griffin Barnett): > https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… > > > > Thanks and cheers > > Mary > > > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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FOR REVIEW: Answers to follow up questions on the TMCH from the Analysis Group
by Mary Wong July 27, 2017

July 27, 2017

Dear all, We have received the responses from the Analysis Group to the additional follow up questions that had been sent to them (below) last month. These responses are listed under Section A of the attached document. You may recall also that, following the call between the Working Group and Greg Rafert and Stacey Chan of the Analysis Group in April, they also responded to an initial set of follow up questions. These initial responses have been circulated previously; however, for your convenient reference, we have incorporated them into Section B of the attached document. Please let us know if you wish to discuss either the initial or the more recent responses, or if you have additional questions. We will also post these responses to the Working Group wiki space. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Monday, June 5, 2017 at 06:08 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)Icann.org> Subject: LAST CALL: Follow up questions for the Analysis Group Dear all, If you recall, we had asked that Working Group members send, by mid-May, any further follow up questions they may have for the Analysis Group relating to their revised report on the TMCH. If you had any questions that you had not submitted following their call with us several weeks ago, we ask that you send them to this list no later than this Wednesday 7 June. FYI, we have sent them the additional questions that were asked by several Working Group members on that call, and will forward the responses received to those in a separate email. For this last call, we have so far received the following suggested questions from John McElwaine, which have been passed through the Working Group co-chairs so staff will be sending them to the Analysis Group this week. 1) With respect to the Claims Service data referenced on page 7 of the Report, did this data include or identify the name of the registrar that provided the Claims Notices? 2) Why were there duplicate records in this Claims Service data. 3) How did IBM know that many registrars downloaded records from the TMDB? And why could these download attempts not be accounted? 4) Who were the two registrars that averaged more than 20 download attempts referenced on page 7 of the Report. 5) What does the reference to "individual" being a "Trademark Holder" in Table 1 on page 8 represent? 6) Did you ask registrars what their abandonment rate was for .COM domain name registration attempts? 7) Why could you not observe the registration abandonment rate for registrations that are attempted outside of the Claims Service period? Thanks and cheers Mary

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New blog and whitepaper "How Threats Against Domain Names Are Used to Censor Content"
by Jeremy Malcolm July 27, 2017

July 27, 2017

EFF is now encouraging registrants to avoid domains that are subject to the TMCH. From https://www.eff.org/deeplinks/2017/07/how-threats-against-domain-names-used…: "Today EFF and Public Knowledge are releasing a whitepaper titled Which Internet registries offer the best protection for domain owners? <https://www.eff.org/files/2017/07/26/domain_registry_whitepaper.pdf> ... To draw one example of out of our whitepaper, if you're running a website to criticize an established brand and you use that brand as part of your domain name, it may be wise to avoid registering it in a top-level domain that offers special rights and procedures to brand owners, that could result in your domain name being wrongly taken away or could embroil you in dispute settlement proceedings. This probably means you'll want to think twice about registering in any of the newer global top-level domains (gTLDs), which provide brand owners access to a privately-run Trademark Clearinghouse that gives them veto powers that go far beyond those they would receive under the trademark law of the United States or those of most other countries. For example, under U.S. trademark law, if a trademark applicant sought to register an ordinary word such as smart, forex, hotel, one, love, cloud, nyc, london, abc, or luxury, they would have to specify the category of goods or services they provide, and protection for the mark might only be extended to its use in a logo, rather than as a plain word. Yet each of the plain words above has been registered in the Trademark Clearinghouse <https://www.eff.org/deeplinks/2017/03/icanns-special-privileges-trademark-o…>, to prevent them being used in /any /of the new gTLDs without triggering a warning to prospective registrants about possible infringement. This applies regardless of whether the planned usage covers the same category of goods or services as the original trademark—indeed there isn't even any way for the registrant to find out what that category was, or even which country accepted the mark for registration, because the contents of the Trademark Clearinghouse database are secret. And since 94% of prospective registrants abandon <https://www.icann.org/news/announcement-2017-02-23-en> their attempted registration of a domain after receiving a trademark warning, this has a drastic chilling effect on speech. EFF is currently participating in an ICANN <https://www.eff.org/issues/icann> working group fighting to ensure that brand owners' veto rights aren't extended even further (for example to catch domains that include /typos/ of brand names), and to prevent these outrageous rules being applied to older gTLDs such as .com, .net, and .org. But for now, you can minimize your exposure to trademark bullying by avoiding registering your website in one of the new domains that is subject to these unfair policies. Our whitepaper explains what to look for." -- 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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Action Item and Notes from GNSO Review of all RPMs in all gTLDs PDP WG Call - 27 August 2017
by Amr Elsadr July 27, 2017

July 27, 2017

Dear Working Group Members, The following action item is the one action item captured during yesterday’s WG call: * WG members to review the draft proposal for data collection for Sunrise Registrations (attached to this email), and provide feedback on the WG mailing list The action item, notes, documents and materials, recordings and transcripts from yesterday’s call have all been posted on the meeting wiki page here: https://community.icann.org/x/BwAhB Thanks. Amr

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group
by Terri Agnew July 26, 2017

July 26, 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) PDP Working Group call held Wednesday, 26 July 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/BwAhB MP3: http://audio.icann.org/gnso/gnso-rpm-review-26jul17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p8wfw9s3oo0/?OWASP_CSRFTOKEN=a734cab52dd0f74b 6487850c643c955ffb306ed2d345023772faa3091aafe84d> https://participate.icann.org/p8wfw9s3oo0/ 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/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri Adobe Connect chat transcript for 26 July 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 26 July 2017 at 17:00 UTC for 90 minute duration. Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_B wAhB <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ BwAhB&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCI gmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiBlU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4 &s=nKyNZB4tl8mIcVKRptImOeDLY-PcoDLSEpNiiZB3yh0&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiBlU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4&s=nK yNZB4tl8mIcVKRptImOeDLY-PcoDLSEpNiiZB3yh0&e= George Kirikos:Hi folks! Jeremy Malcolm:Hello George Kirikos:Hi Jeremy. Martin Silva:Hi all George Kirikos:Welcome Martin. Philip Corwin:Hello all. I'm dialing in now. George Kirikos:<<----- Wal-Mart greeter in another life George Kirikos:Welcome Phil. Paul Tattersfield:Hello everyone Steve Levy:Hi all! George Kirikos:Some of those 30 are actually ICANN staffers, though. George Kirikos:Hi Paul and Steve. Paul Tattersfield:Hi George Maxim Alzoba (FAITID):Hello all George Kirikos:Hi Maxim. Terri Agnew:everyone can scroll themselves George Kirikos:File is also at: http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170725/97b714a2/Anno tatedResults-OpenTMCHQuestionsPoll-0001.pdf if anyone wants to view on their computer directly. George Kirikos:"I can live with this" should be added to "Yes", not "No" David McAuley:not sure the 'nos' go with the 'live with' George Kirikos:So, it would be 22% to 78%, not 13% to 87%. David McAuley:Thanks to co-chairs and staff for pre-checking and ensuring clarity John McElwaine:Why would we even have a "I can live with this" category? George Kirikos:Add up to 39 who took the poll, but 164 participants at https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag es_viewpage.action-3FpageId-3D58729950 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pa ges_viewpage.action-3FpageId-3D58729950&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfk bPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiB lU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4&s=ZO7AxE51PlVqKH_y2LZuakMPES8d1SK3T97pL43 0iNI&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiBlU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4&s=ZO 7AxE51PlVqKH_y2LZuakMPES8d1SK3T97pL430iNI&e= George Kirikos:I can understand everyone can't make the phone calls, but the survey was relatively easy, and there were several weeks to fill it out. Amr Elsadr:@John: To allow respondents who don't have terribly strong opinions on any given question a third choice to select. George Kirikos:I think we did go over several of these last week. John McElwaine:@Amr I think it would be better to have a response that says simply "no opinion". I am concerned that "I can live with this" is a loaded question to detract from - as George mentioned - people who were intending to respond "yes". George Kirikos:The difference now is we have the breakdown into the composition of each answer. George Kirikos:Q3, it's mostly a division between TM interests and non-TM. Bradley Silver:Agree with @john. It could also be explained that those who "coudl live with this" should select "yes". As in, "yes, I can live with this." George Kirikos:@Bradley: although, the "I can live with this" implies they were between yes and no....i.e. there were some reservations. Amr Elsadr:@John: Thanks and noted. Will keep that in mind in the event that we run another poll in the future, perhaps as a fourth option? Bradley Silver:Benig able to ive with something is acquiescence, acceptance - perhaps not without some reservations, but on balance, its a yes. Pascal Boehner:fully agree with Steve; same would apply under EU trademark laws Colin O'Brien:+1 Steve Griffin Barnett:Agree with Steve - this is supported not only in national trademark law, but also in UDRP and URS decisions, where stylized marks served as the basis for decisions in favor of the TM owner Bradley Silver:+1 Steve Scott Austin:+1 Steve Marie Pattullo:Another +1 to Steve. Susan Payne:yep Mary Wong:@Griffin, do you have citations or links to some of the UDRP and URS decisions handy? That may be helpful. George Kirikos:@Mary: some are listed in section 1.10 of https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma ins_search_overview3.0_ <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_dom ains_search_overview3.0_&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I 5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiBlU9k_tb_FClgj_R ASx2R95O92NQIuOVWJ4&s=QP-o7pKXf0IYsRZOwu8Iw19ccXLc38BPCaSu_apQbho&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiBlU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4&s=QP -o7pKXf0IYsRZOwu8Iw19ccXLc38BPCaSu_apQbho&e= George Kirikos:+1 Rebecca Mary Wong:Thanks, George. We will add that to the notes for this call. Steve Levy:What's disclaimed is a separate issue from what's stylized Jeremy Malcolm:+1 Rebecca George Kirikos:Right, Rebecca. It's all too easy for weak TM owners to want the TMCH to default to inclusion of these marks, as opposed to default to exclusion. Financially, the TMCH operators make more money if they're included, so the incentives are all wrong. Rebecca L Tushnet:There is a way for the TMCH to make a determination whether a mark is registered in the text that would be used to match in the TMCH, though. I agree that examination is required to determine descriptiveness. Jeff Neuman:@george - I dont see any TMCH Operators on this call advocating one way or the other, so your comment on incentives is not applicable Jeff Neuman:@george - I dont see any TMCH Operators on this call advocating one way or the other, so your comment on incentives is not applicable Griffin Barnett:@Mary - I will look for some Rebecca L Tushnet:It's interesting how "you don't have evidence" is deployed in these discussions--I will simply ask for equal treatment of inferences from lack of evidence. John McElwaine:@Mary and @George - WIPO Overview Section 1.10 is not the correct citation for issues concerning stylized marks. It is relevant to the question of how UDRP panels have treated "design elements or disclaimed text treated in assessing identity or confusing similarity" George Kirikos:@Jeff: but we know from the examples submitted to Deloitte, where 100% of them were acceptable to them. Steve Levy:Agree with Greg. TMCH policy should be neutral as to size of the TM owner Mary Wong:@John, thanks for the clarification. I hadn't looked at the section so that is helpful. Hopefully Griffin can provide some information shortly. Rebecca L Tushnet:TMCH should not decide scope of protection at the mark intake stage. Marie Pattullo:Rebecca: you're suggesting that the TMCH operator should examine each mark? That's a technical legal role performed by IPOs, not Deloitte. Rebecca L Tushnet:No, the opposite. Pascal Boehner:+1 Marie Rebecca L Tushnet:Susan's point is that scope may be larger than what is registered, which is absolutely true. Rebecca L Tushnet:But what is registered is the TMCH guide, and is really the only thing that can be decided w/o substantive examination. Susan Payne:Rebecca, I was responding to your point that EU marks are limited to only the exact amrk - which is an inaccuracy Rebecca L Tushnet:No, my point was that the registration is the sign on the registert Rebecca L Tushnet:The scope is a different question Marie Pattullo:Thanks Rebecca - then what does this mean please: "here is a way for the TMCH to make a determination whether a mark is registered in the text that would be used to match in the TMCH, though. I agree that examination is required to determine descriptiveness." Michael R Graham:Sorry for joining late. Anything I need to know/catchup on? Rebecca L Tushnet:The EUIPO doesn't allow disclaimers because it doesn't register parts of marks Jeff Neuman:@Kathy - I do not agree with the assesment that the STI fully considered these issues as definitive as you are making it sound Rebecca L Tushnet:Substantive examination is not required to identify whether a mark is in text form or not in text form Jeff Neuman:We all agreed to compromises given the short time frame George Kirikos:Maybe Louboutin shoes (which has a TM for the colour "red" for shoe bottoms) is entitled to the string "RED.TLD" in the eyes of some??!!?? Susan Payne:don't be ridiculous George Mary Wong:The IRT and STI didn't expressly distinguish between text marks that are "pure" text or "stylized" text Kathy Kleiman:See 4.1 George Kirikos:@Susan: given the expansive TM rights asserted by some are equally ridiculous, it's something to be aware of.... Rebecca L Tushnet:If we are considering rights in the mark then there is no reason to limit to registered marks George Kirikos:It's the natural progression.... Rebecca L Tushnet:The UDRP lets people prove their rights in many ways Kathy Kleiman:@Greg, if the USPTO does not say that, how can you? Rebecca L Tushnet:We should be considering registration, not rights Susan Payne:noe of us have been arguing that so let's not go down rabbit holes Marie Pattullo:Non-traidtional marks (colour, sound, smell) aren't text. Marie Pattullo:*traditional. Sorry for lack of typing skills today. Emily Weaver:That is correct. Stylizations of marks are currently accepted by the TMCH as long as there is a text element George Kirikos:That's why some folks want to keep the TMCH DB secret, so we can't examine what was accepted. Scott Austin:it should be noted that even the own your power mark as registered had no disclaimer; none was required by the USPTO for descriptiveness; Rebecca L Tushnet:Scott's point is exactly why the TMCH should not accept stylized marks: it turns out that you can't tell whether there are rights in text alone from the fact of a registration for a stylized version. Michael R Graham:@All -- Please do not presume motives you do not know, or expand the sublime to the ridiculous. Doesn't help further our discussion/understanding. Scott Austin:but neiter should we have to wait for a court decision to determine whether a mark should be accepted merely to allow an owner to receive notice Jeff Neuman:Part of the problem with these questions is not whether its in the TMCH, but how it is ultimately is used George Kirikos:Half the folks would accept that "CARS" example, unbelievable. Jeff Neuman:Somethings may be acceptable for claims, but not Sunrise....as an example Marie Pattullo:No George, that's not why. As you know it's because my members don't wish to share their commercial DN strategy with others. Should anyone wish to examine their marks they are welcome to do so via the IPOs' registers. Greg Shatan:There is a presumed right in non-disclaimed text. Clearly, OWN YOUR POWER was chosen as an example because there was a case that was helpful to some points of view. Indeed all the examples were chosen because they were helpful to one (and the same) point of view. Michael R Graham:@Phil -- The "Registrant" "TM Owner" option created a false dichotomy since both classes overlap the other. Jeremy Malcolm:If lack of consensus means we have to accept the current misapplication of policy then this is a problem - consensus can only ratchet protections up, never down? George Kirikos:We know Deloitte WOULD accept it --- that was a question asked of them. Greg Shatan:So, the examples should not be seen as random or representative. Rebecca L Tushnet:+1 George George Kirikos:(Deloitte accepted all of the examples we sent them) Steve Levy:The word "Cars", whether in a composite mark or othewise, can certainly be owned as a TM for goods that have nothing to do with automobiles (ex. socks, candy bars, etc.) George Kirikos:CARS was one of the specific examples sent to them. Greg Shatan:@Jeremy, IMHO it is not a misapplication of policy. I think those who voted as I did share that view. Rebecca L Tushnet:And movies about cars, which was the actual registration? George Kirikos:Volume is a bit low. Rebecca L Tushnet:Point being, again, we don't know anything about the scope from the existence of a stylized/composite registration, once again. John McElwaine:@Phil - this is what the TMCH is doing with respect to non-Word only marks: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_content_what-2Dabout-2Ddeviceimage-2Dmarks <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_content_what-2Dabout-2Ddeviceimage-2Dmarks&d=DwIFaQ&c=FmY1u3PJp6w rcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2E Bk&m=ET79ZsAiBlU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4&s=DpSaRnSGdu6AeTES76UcoRwoJ UyFH_E_IVxYRkBERiw&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=ET79ZsAiBlU9k_tb_FClgj_RASx2R95O92NQIuOVWJ4&s=Dp SaRnSGdu6AeTES76UcoRwoJUyFH_E_IVxYRkBERiw&e= Greg Shatan:Rebecca, is that the description of goods and services for CARS? Jeremy Malcolm:Really problematic that Deliottes can't be held to account for their misapplication of policy unless we have a full consensus Jeff Neuman:No one on this call is saying that TM owners should have greater rights than they have under their own laws....opn the other hand, they dont want less rights. David McAuley:please mute Jeff Neuman:So how can we find the right balance Jon Nevett:@jeremy good point if what the TMCH is doing goes against its direction Jeremy Malcolm:Well EFF can and will call them out for it Susan Payne:The point about these examples is that we were meant to be looking just at what was in the document, not conducting our own research on the goods/services or any litigatioon there may have been George Kirikos:Better balance is to kill the sunrises. George Kirikos:For starters. Jeremy Malcolm:+1 George Mary Wong:From the link provided by John: "The recorded name of the Trademark is an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, keyboard signs, and punctuation marks ("Characters") that are:predominantclearly separable or distinguishable from the device element;and all predominant characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark." Susan Payne:No - better balance is not to kill the sunrise Colin O'Brien:+1 Susan Mary Wong:That is the instructions for marks that do"not exclusively consist of letters, words" George Kirikos:If the TMCH will be a database of weak marks, let them pay for notice (which the national databases already provide for), but not pay for jumping the queue. Jeff Neuman:@George - lots of assumptions here. Scott Austin:one of the CARS design registrations is for CANDY US Reg. No. 3,257,190 Paul Tattersfield:@George they can just use a different jurisdiction George Kirikos:TM rights in the real world are remedial in nature, and don't preempt the rights to others to speak (they do so at the risk of later being held in violation of someone's marks). Jeff Neuman:If people keep coming to this group with a preset position (eg., kill sunrise), then this group will get no where and I would recommend folding up shop Jeff Neuman:because we will get no where Susan Payne:+1 Jeff Greg Shatan:@Jeremy, I would hope EFF would be careful about misinterpreting policy before "calling out" the TMCH on a purported "misapplication" of policy. Marie Pattullo:TM rights in the real world are a badge of origin for consumers. They protect consumers from confusion. George Kirikos:@Jeff: it's not a "preset position" --- it's an evolved conclusion, after seeing the *evidence* of how it's being misused. Jeremy Malcolm:why is closing Sunrise a preset position any more than allowing it to continue as it is, abuses and all? George Kirikos:Others don't even want the evidence to be collected, let alone be examined and neutrally used to come to a reasonable conclusion. Jeremy Malcolm:Thanks for the friendly advice Greg but we are pretty comfortable with our criticisms Jeff Neuman:@George - what are you talking about? George Kirikos:@Jeff: in regards to what? Kathy Kleiman:@Jeff, it's funny that what some people view as the inherent balance of the TMCH (e.g., Sunrise) and what other people view as part of the inherent balance (text marks only) is not fair game for all equally. Scott Austin:Of the 32 registrations to Disney for the CARS words plus design mark in the Deloitte response only one is for motion pictures; the rest are merchandise Greg Shatan:I'm sure the one for motion pictures was chosen at random. Rebecca L Tushnet:@Scott, and yet that merchandise is about the movie CARS--which would matter for substantive examination, though it shouldn't for the TMCH Michael R Graham:@Kathy -- I'm not following what you are referring to -- seems to be oblique reference to a lack of balance? Kathy Kleiman:@Michael, tx for asking. I'm confusing about what question re: "balance" are allowed and which ones are off limits? Scott Austin:and the cybersquatting would be to capitalize on the internet traffic from the movie CARS; which is still not discriptive of motion pictures; so Disney, with 32 registrations shuld be denied TCMH protection? George Kirikos:@Scott: it's descriptive for "movies about cars", though! Rebecca L Tushnet:Speaking of unwarranted inferences--when I search for CARS very few sites are trying to free ride on Disney. Scott Austin:@ George in what dictionary is that? Rebecca L Tushnet:More to the point: yes, Disney should be treated like every other registrant, if it doesn't have a text registration. Scott Austin:@ Rebecca Apparently the TMCH is working for that mark. Greg Shatan:Speaking substantive examination, I looked at one CARS registration and the only problem the examiner had was that "non-alcoholic beverages" was unacceptable as indefinite in the description of goods. David McAuley:make a difference = not accepted in TMCH, no? Greg Shatan:@George, that's now how "descriptiveness" works. Mary Wong:@David, yes Greg Shatan:I agree with that guess and David's remark in the chat. I thought it was quite clear. George Kirikos:Question was confusing, because the part in brackets was "mark should NOT be accepted into the TMCH". David McAuley:very low audio Rebecca Mary Wong:@Paul, that is Question 10 :) Greg Shatan:Rebecca, if you feel comfortable, did you answer "no"? Rebecca L Tushnet:@Scott, are you seriously suggesting that CARS is mainly in use online to identify Disney? Rebecca L Tushnet:Because I think Toyota et al. might disagree Rebecca L Tushnet:@Greg, yes, I did. George Kirikos:lol George Kirikos:The longer answers to the question might be better than the yes/no. Scott Austin:Own your power as a stylized mark was substantively examined by the USPTO and no disclaimer was required so it raises the question why this mark was used next to an assumption of being "expressly disclaimed" Jeff Neuman:If I were to boil down these discussions I would say that we have some different camps on this call. (1) Some believe that only text based marks should be allowed in the clearinghouse regardless of whether other types of marks have legal rights. (2) Others are making the point that any mark that has legal rights, whether text based, stylized, etc. should be allowed in. I have not heard anyone argue that everything should be protected regardless of whether they have legal rights or not. But I do not see those in Camp 1 moving to Camp 2 or vice versa Jeff Neuman:If neither "camp" wants to move, then this discussion should be cut short as being no ability to reach consensus. Talking about it more is not likely to make progress. But I could be wrong David McAuley:If a reg TM is also protected by statute or treaty why would the language statute or treaty be needed? Rebecca L Tushnet:+1 David Michael R Graham:I think Q13 is extremely confusing. What was being asked? And is this not asking us to comment on the definition of types of Marks that are intended to be protected ? John McElwaine:I am not sure that you can attribute "I can live with this" to either a yes or a no Michael R Graham:@John -- Agree George Kirikos:@Jeff: the issue is what data can be collected to inform the discussion, i.e. if folks cannot be swayed by evidence, then........ ? Jeff Neuman:@George, this discussion today is only being formed by opinions without evidence Steve Levy:Good synopsis, Jeff. Thanks George Kirikos:I think some people in each of the camps are open-minded, and can move based on evidence. Paul Tattersfield:Statute can be the domestic implementation of a treaty George Kirikos:@Jeff: right, this is just initial opinions. Jeff Neuman:@George, after over a year, shouldnt we be past inition opinions Jeff Neuman:initial opinions George Kirikos:Bayesian approach: (1) prior beliefs, (2) data, (3) posterior beliefs (as 1 gets updated by 2). Paul McGrady:Doesn't "marks protected by statute or treaty" just capture marks which exist by way of statute or treaty and not just common law marks? Paul Tattersfield:in the US you need to consider marks that begin 89 George Kirikos:@Jeff: I agree with you, we're stuck without data. George Kirikos:All those Article 6ter IGO names, too. Paul Tattersfield:I think people are misunderstanding the phrase by statute or treaty Jeff Neuman:in this case, preconceived beliefs will cause gravitation towards data that supports your point of view. For example, those that believe that the TMCH has been captured by "weak" marks, will pull that data. Those that believe it has not will pull the thousands of other records. John McElwaine:@Rebecca - I agree. I believe that this was meant to cover "designations" such as Red Cross, Red Crescent, Boy Scouts, Olympics George Kirikos:Statute/treaty also has some overlap with GIs, doesn't it? Rebecca L Tushnet:@John, I think that then might extend to certain GIs--if I recall correctly, at least a number of EU GIs have specific statutes behind them--that seems like the key issue/problem to me. Jeff Neuman:This was added after the GAC Consultations with the ICANN Board in Brussels David McAuley:Useful info, thanks Mary Mary Wong:I think the number was 75 marks Mary Wong:But will check Jeff Neuman:But they could not break that down into whether they were GIs, IGO names, etc. John McElwaine:@George and @Rebecca - I think some believe GIs are a different matter as they are not always owned by one party. George Kirikos:*6 to mute/unmute George Kirikos:Or did we lose Greg? Greg Shatan:Audio dropped Rebecca L Tushnet:@John, I agree--but some are, for example Champagne has an authority, equivalent to the US certification mark, which I think we all agree is covered Jeff Neuman:@George, if there anyone that knows the speaking rules for Adobe, it is Greg :) Mary Wong:UPDATE: Deloitte's report on "marks protected by statute or treaty" - as of Feb 2017, 98 were submitted, 75 were successfully verified. George Kirikos:So, if one of the smaller nations (e.g. Tuvalu) passes a statute/law protecting "SEX", "CARS", "HOTELS", etc., that nation could have sunrise over a large swath of internet real estate? Paul Tattersfield:its for marks like UNHCR Jeff Neuman:@George - unfortunately, yes Mary Wong:@George, from reviewing the explanation, the "mark" must still function as a mark, albeit unregistered. Paul Tattersfield:of course they should be in they can't be registered in a tradional way so they are added with serial numbers beginning 89 George Kirikos:Pitcairn Islands -- population 57. :-) Kathy Kleiman:Mutiny on the Bounty... Paul Tattersfield:no Greg Shatan:The statute or treaty functions as a form of "registration." Petter Rindforth:So, the "YES" majority may well have been a "NO" majority with this clarification. Rebecca L Tushnet:Seems the logical implication George Kirikos:Does statute/treaty even contemplate different levels of government? (i.e. local, provincial/state, federal?) John McElwaine:@George - treaty does (i.e, federal or national). Statute does not. George Kirikos:@John: so, a small local jurisdiction (population 10) within a larger country could pass a statute, that would allow for its preferred terms to be registered into the TMCH? Greg Shatan:+1 Paul. Paul Tattersfield:GI just confuses the issue Paul Tattersfield:+1 Paul Rebecca L Tushnet:If GIs aren't marks, why is UNCHR a mark? Rebecca L Tushnet:If certification marks are marks when registered, why aren't GIs marks? Greg Shatan:Apples and oranges. George Kirikos:Who is speaking now? John McElwaine:@Rebecca certification marks have only one (indicator of source) certifying organization Greg Shatan:Because some trademarks are not registered, but are still protected by statute or treaty. Rebecca L Tushnet:Let me be clear: I could be happy if we end up with a definition that excludes many GIs, or includes many; I just want one that helps people understand what's covered and why. Greg Shatan:GIs, when protected as such, are a sui generis form of protection. Maxim Alzoba(FAITID):Red Cross is not a good example,. they have special protection on different level (prohibition to register based on ICANN's XML) Rebecca L Tushnet:@John, also true of Champagne given French law Maxim Alzoba(FAITID):in RA Greg Shatan:When protected as a registered trademark, it meets the requirements for trademark protection and should be treated as such. Rebecca L Tushnet:... or by statute or treaty, whatever that means. Terri Agnew:everyone can scroll themselves Greg Shatan:@Maxim, that stemmed from their protection by treaty. George Kirikos:4 pages Rebecca L Tushnet:@Maxim, we can also do Boy Scouts as our example from the US if that works better Marie Pattullo:Any collection of pricing info must be anonymised/aggregated. Mary Wong:Also, concrete suggestions as to particular stakeholders to reach out to, or what sources you know already exist, wil be VERY welcome. George Kirikos:Are we at 1 pm (Eastern) next week? Or 11 pm? Terri Agnew:fourth rotation: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Thursday, 03 August 2017 at 03:00 UTC for 90 minute duration. Maxim Alzoba(FAITID):bye all George Kirikos:Bye folks. David McAuley:thanks all, good bye Steve Levy:Thanks all! Paul Tattersfield:thanks all bye Mary Wong:Thanks, Phil and everyone

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Additional notes on stylized and composite marks - Deloitte's guidelines
by Mary Wong July 26, 2017

July 26, 2017

Dear all, Following up on the Working Group call that just concluded, and on the topic of “stylized marks” and “composite marks” (both phrases used here as defined in the Reference Guide that was circulated along with the Open TMCH Questions poll), staff went back to the TMCH Guidelines that were issued by Deloitte. Here are a few notes which we hope the Working Group will find helpful. Question: Does Deloitte accept into the TMCH “stylized marks” (i.e. marks comprised only of text but where the font is stylized) and “composite marks” (i.e. marks comprised of text and a design element such as pictures or graphics)? (1) It would appear that Deloitte considers what the Working Group is calling “stylized marks” to be potentially within the scope of the TMCH, as falling within the category of marks that exclusively consist of letters, words, numerals and/or special characters: * In Section 5.2.1 of the TMCH Guidelines (trademarks “exclusively consisting of letters, words, numerals and/or special characters”), the first example cited is the Dealsafe mark, registered as a composite mark (more accurately called in the EU a “figurative mark with letters”) in the EU. It is this EU registration that Deloitte uses as an example of this category of marks (see Page 24 of the TMCH Guidelines: http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/…) * Because the test used by Deloitte for such marks is that “the recorded name of the mark is an identical match to the reported name as long as all characters are included in the Trademark Record provided to the Clearinghouse, and in the same order in which they appear on the Trademark certificate”, Deloitte notes that the recorded name of the mark in this example is DealSafe. (2) It would also appear that Deloitte accepts some “composite marks”, as marks that do “not exclusively consist of letters, words, numerals, special characters”, if they fulfil certain criteria: * As John McElwaine noted in the AC chat during the call, Deloitte will only accept these marks if they have the following characteristics: The recorded name of the Trademark is an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, keyboard signs, and punctuation marks (“Characters”) that are: * predominant; and * clearly separable or distinguishable from the device element; and * all predominant characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark. The point has been made previously in this Working Group that Deloitte’s determination of which “composite marks” are accepted into the TMCH may require some form of judgment on Deloitte’s part. Staff expresses no opinion on this point, but we hope that these examples facilitate the Working Group’s discussions on these matters, since it appears that there is no basic prohibition against either “stylized” or “composite” marks in the current operation of the TMCH. Finally, we could not find any indication in Deloitte’s guidelines as to whether a trademark holder has to specify the fact that part or all of the text portion has been disclaimed as part of a trademark registration, and what Deloitte’s rule or procedure is in respect of such disclaimers. As we are not experts in the TMCH operations, if the above notes are erroneous in any way, we will be grateful to have them corrected. Thanks and cheers Mary

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FOR REVIEW: Annotated Open TMCH Poll Results (Re: Agenda and documents for the next RPM Working Group call)
by Mary Wong July 25, 2017

July 25, 2017

Dear all, Please find attached an updated version of the results of the Open TMCH Questions Poll – as requested on the call last week, the update made was to: (1) insert information as to the breakdown of who (e.g. registry, registrar, registrant, TM owner, other) answered “Yes”, “No”, or “I can live with this” to each question; and (2) indicate the same with respect to the comments made to each question. In reviewing this updated set of results, please note the following: * A number of respondents identified with more than one category (e.g. “Registrant/TM Owner”) when answering the poll. * As a result, the breakdown of the numbers for each answer reflects all the different sets of respondents, since it was not possible for staff to assign respondents who identified with more than one category to one specific category only. * In consequence of this “cross-categorization” of some respondents, it may not be possible to draw clear and clean conclusions in some cases (e.g. whether all TM owners said Yes or No). However, we hope that the breakdown gives a better sense of who is more likely to have said Yes or No in some instances than the raw percentages from last week, especially when coupled with the comments to each answer that are now also similarly annotated. In reviewing the updates with the Working Group co-chairs, staff realized that It may be helpful to also have available the breakdown by respondent numbers (e.g. 2 respondents said Yes, 3 said No) rather than simply in percentages of percentages – as such, staff will endeavor to have those numbers available by the time of our call tomorrow, at least for Questions 3, 7, 8, 9 and 13 (highlighted in the agenda for tomorrow). We will also post this document, along with the others sent previously with the proposed agenda, to the Working Group’s wiki space for this meeting. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Friday, July 21, 2017 at 19:55 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Agenda and documents for the next RPM Working Group call Dear all, The proposed agenda for the next RPM Working Group call, scheduled for Wednesday 26 July at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Continue discussion on the poll results for the Open TMCH Questions (focus on Questions 3, 7-9, and 13) NOTE: the collated poll results were distributed prior to our last call and are available here: https://community.icann.org/download/attachments/66091891/Open%20TMCH%20Que… 1. Review draft data collection proposal for the Sunrise RPM (see attached) 2. Next steps/next meeting For Agenda Item #3, please note that the document being circulated is a staff draft, which the Working Group co-chairs have not had the chance to review fully. It is being distributed at this time, with the co-chairs’ consent, to allow Working Group members to review the contents with a view to providing comments and suggestions for discussion by the rest of the group. You will see that the first two columns in the document reflect the refined Charter questions and the proposals for data collection as formulated by the Sunrise Sub Team. The third column reflects suggestions from staff for possible starting points for data collection, as well as questions on methodology for further discussion by the Working Group. Thanks and cheers Mary

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Agenda and documents for the next RPM Working Group call
by Mary Wong July 21, 2017

July 21, 2017

Dear all, The proposed agenda for the next RPM Working Group call, scheduled for Wednesday 26 July at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Continue discussion on the poll results for the Open TMCH Questions (focus on Questions 3, 7-9, and 13) NOTE: the collated poll results were distributed prior to our last call and are available here: https://community.icann.org/download/attachments/66091891/Open%20TMCH%20Que… 1. Review draft data collection proposal for the Sunrise RPM (see attached) 2. Next steps/next meeting For Agenda Item #3, please note that the document being circulated is a staff draft, which the Working Group co-chairs have not had the chance to review fully. It is being distributed at this time, with the co-chairs’ consent, to allow Working Group members to review the contents with a view to providing comments and suggestions for discussion by the rest of the group. You will see that the first two columns in the document reflect the refined Charter questions and the proposals for data collection as formulated by the Sunrise Sub Team. The third column reflects suggestions from staff for possible starting points for data collection, as well as questions on methodology for further discussion by the Working Group. Thanks and cheers Mary

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