October 2019 - GNSO-RPM-WG - lists.icann.org

3.2.4 transcript with ICANN General Counsel confirming status
by claudio di gangi Oct. 16, 2019

Oct. 16, 2019

All, I am very happy that ICANN is transparent and transcribes is meetings, which is particularly essential in this fluid and complex environment. Since I was involved in the ICANN committee that developed the proposal for the Trademark Clearinghouse, which was called the IP Clearinghouse, I have known from the start that the concept of allowing other forms of IP in the Clearinghouse was always part of the concept, because there was always broad agreement that the ICANN-imposed Mandatory RPMs, were the ceiling and not the floor. The new gTLD Registry controls the allocation of all domain names within its TLD, and can therefore establish voluntary mechanisms, consistent with local laws, to protect consumers from confusion and harm from malicious actors. Since the Clearinghouse database is just an administrative tool to support the implementation of these mechanisms, both mandatory and voluntary, there was never a reason to exclude certain forms of IP in the Clearinghouse for the sole purpose of supporting the voluntary RPMS that a specific Registry may adopt. We have reached consensus on this point, in particular through the ancillary database concept, but have gotten snagged on the wording of particular provisions, including 3.2.3 and 3.2.4 Section 3.2.4 currently states: "Other marks that constitute intellectual property" - and this category: 3.2.4 - is NOT for the mandatory Sunrise or Claims period, but for voluntary registry-specific RPMs. I located the transcript from the ICANN meeting when the Applicant Guidebook was essentially completed; it had reach the near final stage. 3.2.4 was specifically discussing during this meeting; the confusion with the language was identified (and it was even predicted that it was going to cause confusion) and ICANN staff and General Counsel agreed that 3.2.4 extended to other forms of IP beyond trademarks. In other words, we have been confused on this clause simply because of imprecise drafting of this provision. Please see the transcript here: https://archive.icann.org/en/ meetings/singapore2011/bitcache/Trademark%20Clearinghouse%20Implementation%20Plan-vid=26005&disposition=attachment&op=download.txt I am quoting the relevant section: "J. Scott Evans: Another comment to Amy. Amy, I think that the guidebook's use of "other marks" confusing, and that needs to be changed to "other indicia," because we're already talking about marks in trademarks, and if you just make that one change, because I think the idea is there are other indicia other than trademarks that might be protected by the local registry, and we just need to make that clear. Because I think there's some confusion, well, if trademarks are here, what are other marks. >>AMY STATHOS: Right. And with respect to the assignment issue, sometimes the database that has the assignment documents may be different than the actual database that has the actual registration, so looks like it's something that -- ------- So 3.2.4. was always intended to allow other forms of IP to be recorded in the main TMCH database for implementation of voluntary Registry-specific voluntary RPMs. I hope this closes the debate on 3.2.4. and here is my proposed modification to bring clarity to its meaning: "3.2.4 Other Signs or Indicia that constitute intellectual property" Best regards, Claudio

4 12

Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Wednesday 16 October 2019 at 17:00 UTC
by Terri Agnew Oct. 16, 2019

Oct. 16, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Wednesday, 16 October 2019 at 17:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/AYAzBw> (attendance included) and the GNSO Master calendar <https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> . These include: * Attendance (please let me know if your name has been left off the attendance list) * Audio recording * Zoom chat archive * Zoom recording (including audio, visual, rough transcript) * Transcript As a reminder only members can join the call, observers can listen to the recordings and read the transcript afterwards. Please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> if you would like to change your status from observer to member. For additional information, you may consult the mailing list archives <http://mm.icann.org/pipermail/gnso-rpm-wg/> and the main wiki page<https://community.icann.org/x/wCWAAw>. Thank you. With kind regards, Terri

2 1

Q12: TMCH Operational Considerations Proposal
by Maxim Alzoba Oct. 16, 2019

Oct. 16, 2019

Hello all, Please find Q12: TMCH Operational Considerations Proposal below === Given the importance of the TMCH to the roll-out of new gTLDs (Sunrise period), and Claims period in those, which have passed Sunrise period by then the availability of the main TMCH database and services is a necessity. Accordingly, the TMCH providers must provide a better design of the TMCH system -- with improved redundancy and availability. The Implementation Review Team may want to consider requiring the creation of two virtual TMCH operators (with appropriate synchronization and redundancy). In case where existence of only one TMCH provider is proven or regarded to be the only feasible option (either due to financial or technological reasons), the need of the better technological design will arise (not limited to two 'virtual TMCHs' inside of the TMCH platform and requirements to avoid maintenance done the way rendering the system partially unaccessible or partially functional). Here I referred not just to the situation of the total shutdown of the TMCH, but also to situations where some of services are not properly functioning (example - Registries not being able to upload LORDN file, which was experienced in the last years, and which is an grand issue for Sunrise and an issue for Claims period for a new TLD). Some TLDs have ongoing or ever extended Claims periods, not limited to 90 days of General Availability period. ==== Sincerely Yours, Maxim Alzoba Special projects manager, International Relations Department, FAITID Current UTC offset: +3.00 (.Moscow)

1 0

ICANN66: GNSO Sessions How to Get Organized and Remote Participation Details
by Julie Bisland Oct. 15, 2019

Oct. 15, 2019

Dear all, The one-stop wiki page for all your Remote Participation queries is now available. This wiki page covers remote participation details for all GNSO open and public meetings. In addition to this, ICANN Meetings’ Team has put together an updated ICANN meeting website which allows you to download all GNSO-related meetings to your inbox calendar in one go. 2 LINKS TO BOOKMARK NOW: ICANN66 Meeting Schedule<https://66.schedule.icann.org/> GNSO Remote Participation Wiki Page<https://community.icann.org/x/LYvkBg> Step 1 – Create a profile and your personalized ICANN66 schedule Go to the Meeting Schedule webpage and create a profile and login. Every session on the full schedule can be selected and added to your individual schedule by clicking the Add box to the bottom right of each meeting, this adds it to your individual schedule which you can then email to yourself or add to your calendar. See next step. Step 2 - There are two ways to import your schedule into Outlook: once you’ve added all your chosen meetings to “My Schedule” go to Export. · Downloading creates a one-time snapshot of your schedule and copies it into Outlook. If you subsequently make changes to your Pathable calendar, they will not be reflected in Outlook. · Subscribing creates a live feed of your schedule in Outlook. Outlook checks for changes every few hours and updates your calendar appropriately. Step 3 All sessions allowing remote participation will use Zoom rooms. You can find the Zoom room links for public meetings on the ICANN66 Meeting Schedule<https://66.schedule.icann.org> and on the <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> GNSO Remote Participation Wiki Page<https://community.icann.org/x/LYvkBg>. Zoom access details for closed meetings will be communicated separately. There are three options to connect your audio: 1) Via VoIP, choose Computer Audio 2) Getting a dial out from Zoom to your phone, choose Call Me 3) Phoning into the audio bridge (access numbers and Meeting ID are provided for that option), choose Telephone Audio If you cannot log into the Zoom room, but wish to connect via telephone only, to dial into the audio refer to the GNSO Remote Participation Wiki Page<https://community.icann.org/x/LYvkBg> for access numbers and individual Meeting IDs. Step 4 Please download the mobile app by searching for “ICANN Meetings” in your app stores. Nathalie Peregrine and Terri Agnew will be onsite in Montreal to assist you directly. For all GNSO meeting related queries (RP or others), please email us at: gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> and we will be more than happy to assist! Kind regards, GNSO SO/AC Support team -- Julie Bisland GNSO SO/AC Support coordinator Internet Corporation for Assigned Names and Numbers (ICANN) Email: julie.bisland(a)icann.org<mailto:julie.bisland@icann.org> Skype ID: 79613b691cb8a6c1 Find out more about the GNSO by visiting: https://learn.icann.org/<https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> See All SO and AC events on the ICANN Global calendar<https://features.icann.org/calendar>

1 0

Proposed Agenda for RPM Meeting on Wednesday, 16 October at 17:00-18:30 UTC
by Julie Hedlund Oct. 15, 2019

Oct. 15, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 16 October at 17:00-18:30 UTC. See all TMCH proposals at: https://community.icann.org/display/RARPMRIAGPWG/TMCH+Proposals. Draft Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Status of Questions Q7, Q8, Q12, and Q15 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * Close Discussion: TMCH Category 6: Balance: Charter Question 16 * Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://community.icann.org/download/attachments/109482780/Martin%20Pablo%2…>) * Close Discussion: TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq…> 5. AOB Best Regards, Mary, Julie, Ariel

3 3

Proposal re Q8.
by Tushnet, Rebecca Oct. 14, 2019

Oct. 14, 2019

This is the same text but with the subject line proper. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759

9 48

Q#15 Transparency for the TMCH
by Jason Schaeffer Oct. 14, 2019

Oct. 14, 2019

Hi All, Sorry for not being able to address this on yesterday's call - I was bounced from the Zoom and couldn't reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I've parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale: Large brand owners like the ability to file in "remote" jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could "secretly" register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to "go public." In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its "secret" brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday. This use of the "secret TM priority" filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use. If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH? In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I'm not yet seeing an important justification that outweighs the important benefits of an open TMCH. Thanks, Jason

11 30

Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Thursday, 10 October 2019 at 17:00 UTC
by Andrea Glandon Oct. 10, 2019

Oct. 10, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Thursday, 10 October 2019 at 17:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/TpYCBw> (attendance included) and the GNSO Master calendar <https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> . These include: * Attendance (please let me know if your name has been left off the attendance list) * Audio recording * Zoom chat archive * Zoom recording (including audio, visual, rough transcript) * Transcript As a reminder only members can join the call, observers can listen to the recordings and read the transcript afterwards. Please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> if you would like to change your status from observer to member. For additional information, you may consult the mailing list archives <http://mm.icann.org/pipermail/gnso-rpm-wg/> and the main wiki page<https://community.icann.org/x/wCWAAw>. Thank you. With kind regards, Andrea

1 0

Zoom Security Update
by Nathalie Peregrine Oct. 10, 2019

Oct. 10, 2019

https://www.icann.org/news/blog/zoom-security-update · Author: Ashwin Rangan, SVP Engineering & Chief Information Officer · 10 Oct 2019 · · Zoom recently added new settings to increase security and ensure meeting privacy. These new settings will enforce a password on all new meetings scheduled, but will not affect meetings that have been scheduled prior to 29 September 2019. The only participants who will be required to enter a password are those who join a meeting via the Zoom app and manually type in the meeting ID. Participants who join a meeting via a link in a calendar or e-mail invitation will not be required to enter the password upon joining, as it is included in the URL by default. To learn more about the new settings, please visit the Zoom Help Center and read the FAQ here<https://support.zoom.us/hc/en-us/articles/360033331271>. At the recommendation of ICANN’s internal InfoSec team, these new settings will be enabled immediately. Because the vast majority of ICANN meeting participants join via invitation links, we expect the impact on community members and staff to be minimal. Please reply here or contact the Meetings Technical Services team directly at mts(a)icann.org<mailto:mts@icann.org> if you have any questions or concerns regarding this update. Nathalie Peregrine Manager, Operations Support (GNSO) Internet Corporation for Assigned Names and Numbers (ICANN) Email: nathalie.peregrine(a)icann.org <nathalie.peregrine(a)icann.org%20> Skype: nathalie.peregrine.icann Find out more about the GNSO by visiting: https://learn.icann.org/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> See All SO and AC events on the ICANN Global calendar<https://features.icann.org/calendar> Nathalie Peregrine Manager, Operations Support (GNSO) Internet Corporation for Assigned Names and Numbers (ICANN) Email: nathalie.peregrine(a)icann.org <nathalie.peregrine(a)icann.org%20> Skype: nathalie.peregrine.icann Find out more about the GNSO by visiting: https://learn.icann.org/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> See All SO and AC events on the ICANN Global calendar<https://features.icann.org/calendar>

1 0

Actions & Notes: RPM PDP WG Meeting 10 October 2019
by Julie Hedlund Oct. 10, 2019

Oct. 10, 2019

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 10 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-10+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Charter Questions: 1. Q 7: Include both proposals (Shatan and Kleiman/Muscovitch) in the Initial Report for public comment. 2. Q8: Agree to a proposal that section 3.2.4 should be a completely separate section. Clarify at a structural level. Move forward as a recommendation for the Initial Report. 3. Q12: Ask Maxim Alzoba to send his proposal to the list for consideration and adding to the archives/record. 4. Q13: Put the proposal (Karanicolas) in the Initial Report for public comment noting pros and cons from deliberations. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq…> and see email from Co-Chairs to WG: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-October/003931.html: Continue discussion on the list and put on the agenda for a meeting on Wednesday, 16 October. Notes: 1. Updates to Statements of Interest: Steve Levy had an update. See: INSERT. 2. Conclude discussion of proposals relating to Open TMCH Charter Questions (see attached document): a. Revised Proposal(s) re: Charter Question 7: Proposal submitted by Greg Shatan for Q7 (1 Oct 2019): https://community.icann.org/download/attachments/109482780/Comparison%20of%… -- Greg added a preamble to make his proposal parallel the proposal from Kleiman/Muscovitch. -- Clarifies the nature of the disagreement. -- Principle differences between the proposals so include both in the Initial Report. -- The last version of the AGB uses “word mark” but it was originally “text mark”. Whatever the WG decides some kind of definition is a good idea. -- I wouldn’t rely on either “text mark” or “word mark” to have a well understood “term of art” meaning, especially globally. So if we stick with the current term, the focus is squarely on the definitional issue. -- This proposal could be simplified by removing the “word mark”/”text mark” aspects (delete #1). -- ACTION: Include both proposals in the Initial Report al for comment. b. Revised Proposal(s) re: Charter Question 8: Proposal submitted by Claudio DiGangi for Q8 (1 Oct 2019) and Proposal submitted by Rebecca Tushnet for Q8 (1 Oct 2019), with comments from Paul Tattersfield: -- Core struggle is the question of what it a trademark. -- Also discussion about trying to do something else. The concern is what about these other things that don’t say they are trademarks in statutes. -- Seems like a non-issue because examples all seem to be trademarks somewhere. -- Paul Tattersfield: Has to be specified in a statute. -- Seems that there are bunch of laws around the world that specify GIs. If there is a national law (such as tequila in Mexico) are we okay with that? -- Currently the AGB apparently *requires* databases to be nonexclusive; we should be clear about whether we want to change that. -- 3.2.4 is needed -- any mark that isn't part of the RPMs. -- It seems as though the basic change ought to be simply NOT including 3.2.4 in the chronological listing; but to explain what it includes elsewhere. So it’s clear that the three categories before it are the ones that qualify for mandatory Sunrise and Claims. -- 3.2.4 seems to be an over the edge case. -- Current 4.1 of the AGB seems to require that anything run by the TMCH be non-exclusive. -- If 3.2.4 can be divorced from the other sections, that would be a big help in clarifying this. -- 3.2.4 could certainly be moved to 3.6 as, say, 3.6.1 -- Right, and maintain the distinction between marks that enter the TMCH for mandatory Sunrise and Claims, and marks that enter the TMCH for other registry-voluntary services. -- 75 as of Feb 2017.  And they had no way of deciding which of the 75 are, or are not, considered GIs under specific laws. -- ACTION: Agree to a proposal that section 3.2.4 should be a completely separate section. Clarify at a structural level. Move forward as a recommendation for the Initial Report. 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 – Action: Staff to see if there are data on TMCH outages. Question 12: -- From Maxim: I came to the conclusion that another option is for the single TMCH operator to have a better design of the system which effectively creates two virtual TMCH operators (with the synchronization and proper redundancy). -- ACTION: Ask Maxim to send his proposal to the list for consideration and adding to the archives/record. Question 13: -- Doesn’t seem to be a concern. Cost allocations might be fine. b. TMCH Category 5: Access & Accessibility: Charter Question 15 – Proposal submitted by Michael Karanicolas for Q15 (1 Oct 2019<https://community.icann.org/download/attachments/109482780/Transparency%20P…>) -- I went back to check this with my members. They still oppose it being open as their choice of what TMs to put/not out into the TMCH is part of their commercial and/or enforcement strategy. *not put -- ACTION: Put the proposal in the Initial Report for public comment noting pros and cons from deliberations. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq…> -- See email from Co-Chairs to WG: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-October/003931.html -- Continue discussion during the meeting on 16 October.

1 0