September 2019 - GNSO-RPM-WG

ACTIONS & NOTES: RPM PDP WG 08 August 2018
by Ariel Liang Feb. 11, 2020

Feb. 11, 2020

Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-… * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

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Proposed Agenda for RPM Meeting on 02 October at 17:00-18:30 UTC
by Julie Hedlund Sept. 27, 2019

Sept. 27, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 02 October at 17:00-18:30 UTC. As a reminder, please also see the following action items from the meeting on 25 September: * Question 7: Proponents (Kleiman/Muscovitch and Greg Shatan) have until 19:00 UTC on Tuesday, 01 October to provide any revisions to their proposals. * Question 8: Rebecca Tushnet, Claudio diGangi, Jason Schaeffer, Susan Payne (and any WG member interested in joining the small group) provide a final revised proposal by Tuesday, 01 October at 19:00 UTC. * Deferred Questions: WG members may proposal relating to any of the deferred questions by 19:00 UTC on Tuesday, 01 October for discussion on the call on 02 October. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Conclude discussion of proposals relating to Open TMCH Charter Questions: * Revised Proposal(s) re: Charter Question 7 * Revised Proposal(s) re: Charter Question 8 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 * TMCH Category 5: Access & Accessibility: Charter Question 15 * TMCH Category 6: Balance: Charter Question 16 * TMCH Category 1: Education: Charter Questions 1, 2, and 3 * TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 4. Time permitting --Initiate discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. 5. AOB Best Regards, Mary, Julie, Ariel

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FW: [Gnso-rpm-trademark] Q#8
by Ariel Liang Sept. 26, 2019

Sept. 26, 2019

Forwarding Claudio’s proposal, which was originally sent to the TM Claims Sub Team mailing list. Best, Ariel From: Gnso-rpm-trademark <gnso-rpm-trademark-bounces(a)icann.org> on behalf of claudio di gangi <ipcdigangi(a)gmail.com> Date: Wednesday, September 18, 2019 at 1:43 PM To: "gnso-rpm-trademark(a)icann.org" <gnso-rpm-trademark(a)icann.org> Subject: Re: [Gnso-rpm-trademark] [GNSO-RPM-WG] Q#8 Here is my compromise proposal consolidated/clarified in one location: 1) Going forward, GI may be accepted in the Clearinghouse (and recorded separately as such within the database to distinguish them from TM records) under "3.2.4 - other marks that constitute intellectual property" OR shall be permitted to be recorded in one ancillary GI database, e.g. "the unitary, ancillary GI Database", that all registries/registrars may voluntarily connect with; 2) GIs shall NOT be protected during the Sunrise or TM Claims period, unless they are also registered as trademarks and otherwise meet the qualifying criteria for such trademarks; 3) the protection of GIs (those that are not also registered as trademarks) shall NOT be considered a mandatory RPM for any new gTLD registry; 4) for new gTLD registries that desire or choose to protect GIs (as permitted by the current rules) based on local laws and/or for other consumer protection reasons, GIs may be protected and registered as domain names during the Limited Registration Period, and/or by the issuance of a GI Claims Notice, and which shall be supported by the unitary, ancillary GI database. On Wed, Sep 18, 2019 at 12:34 PM Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: Claudio and All, For those who may not be able to follow all of the messages, could you send a full set of what you are thinking of for new language/Q#8? At least two Pauls have commented, so I am not sure what you are referencing. Having it all in one place would be useful. Tx, Kathy <<Rebecca, all, I support John's proposal below as the simplest approach, with Paul's language about 3.2.4 being the qualifying text for the inclusion of GIs, along with a provision this IP database will be centralized for all new gTLD registries. Rebecca - you asked about the supporting rationale in a recent note, so I would like to address your question. The purpose is to avoid creating a scenario of having 300 (or pick some number) of ancillary databases, each requiring separate submissions and validations. Again, I say this because Mary confirmed that currently the ancillary database concept is registry-specific. The main TMCH is not registry-specific, all new gTLD registries connect to the database in a unified manner. For the sake of providing examples, <.tea> launches as a new gTLD in the next round; that registry will need to expend time and resources to collaborate with Deloitte to establish a new ancillary database, and the regional authority/producers of DARJEELING TEA, (under the current model) would be required to submit the GI registration to the ancillary database of <.tea> and have it validated at that time. In the same round, <.चाय> launches ("tea" in the Hindi script - a language spoken in India, as an IDN), the current model requires this same (or different) registry operator to create another new ancillary database, with new submissions of registrations, additional validations, etc. <.drinks>, <.beverages>, <.web>, <.internet>, etc.. the list goes on and on, for every new gTLD there has to be separate ancillary databases. Each registry and registrar will then have to allocate resources to promote the registry-specific database to IP owners around the world, and connect to the database from a technical level. I can only imagine the confusion and unnecessary costs that this approach would impose on contracted parties and the public. It would also defeat the purpose and benefit of a having a centralized, unified system that simplifies recordation and validation from both an administrative and technical basis for all parties. The Limited Registration Period is an existing RPM that functions similar to Sunrise, but takes place after the Sunrise Period, during which time these 3.2.4. marks can be protected. Since it is already permitted, I propose that we specify there is a voluntary option for a IP Claims notice for these 3.2.4 marks (identical to the TM Claims notice, i.e. using the same language). These are completely voluntary RPMs for contracted parties - especially, for those that operate in jurisdictions where GIs are protected under local laws, and/or for those which decide to take proactive measures to prevent abusive registrations in their TLD(s) to have a safe namespace for their users. Since registries are already allowed to create voluntary RPMs, the proposal is based on improving things from a technical and administrative basis, in a manner that is fully consistent with the law, and with the overall goal of protecting consumers and promoting trust in new gTLDs. Finally, as Brian noted there is an existing database of GIs, managed by OriGin, which Deloitte/IBM can interface with to help simplify the process, which is an idea we can include for public comment in association with the main recommendation. All we need to do is agree that this approach makes sense from a policy perspective, and the IRT that follows this PDP can develop the appropriate implementation procedures to put everything into place. Please let me know of any questions. Best regards, Claudio On Tue, Sep 17, 2019 at 5:23 PM John McElwaine <john.mcelwaine(a)nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: I would propose simplifying this a bit. The issue that we have is that Deloitte should not be placing “other marks that constitute intellectual property” in the “Clearinghouse”. The Trademark Clearinghouse is more than just to service Sunrise and Claims services. See AGB TMCH Section 1.2 (“The Clearinghouse will be required to separate its two primary functions: (i) authentication and validation of the trademarks in the Clearinghouse; and (ii) serving as a database to provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Whether the same provider could serve both functions or whether two providers will be determined in the tender process.”) Unfortunately, Section 3.2 muddies the waters and lists “other marks” as being capable of inclusion “in the Clearinghouse”. However, the purpose behind Section 3.2.2 is provided a bit more light in Section 3.6: “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide.” With respect to such other IP, the “Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database.” Thus, as I mentioned on the call, a simple solution is that we recommend “other marks that constitute intellectual property (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse. John From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Tuesday, September 17, 2019 4:24 PM To: claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>>; Corwin, Philip <pcorwin(a)verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 ◄External Email► - From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility. Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, September 17, 2019 3:38 PM To: Corwin, Philip <pcorwin(a)verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin(a)verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ 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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy [icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_…>) and the website Terms of Service (https://www.icann.org/privacy/tos [icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_…>). 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You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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Actions & Notes: RPM PDP WG Meeting 25 September 2019
by Julie Hedlund Sept. 25, 2019

Sept. 25, 2019

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 25 September 2019 at 17:00 UTC. Staff have posted 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/2019-09-25+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: 1. Staff will circulate the table of definitions collated in 2017 (DONE – Attached) 2. Question 7: Proponents (Kleiman/Muscovitch and Greg Shatan) have until 19:00 UTC on Tuesday, 01 October to provide any revisions to their proposals. 3. Question 8: Rebecca Tushnet, Claudio diGangi, Jason Schaeffer, Susan Payne (and any WG member interested in joining the small group) provide a final revised proposal by Tuesday, 01 October at 19:00 UTC. 4. Deferred Questions: WG members may proposal relating to any of the deferred questions by 19:00 UTC on Tuesday, 01 October for discussion on the call on 02 October (see attached document). TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 TMCH Category 5: Access & Accessibility: Charter Question 15 TMCH Category 6: Balance: Charter Question 16 TMCH Category 1: Education: Charter Questions 1, 2, and 3 TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 Notes: 1. Updates to Statements of Interest: No updates provided. 2. Conclude discussion of proposals relating to Open TMCH Charter Questions: a. Charter Question 7 Discussion: -- On the question of design marks, it was agreed at the last meeting to put two proposals out for public comment: Kleiman/Muscovitch and Shatan. -- What hasn’t been discussed is any countervailing definition of “design mark”. May miss an elemental point in the discussion. -- No legal definition of the term “design marks”. For the Initial Report we can refer to the WG’s discussions around the various marks and the WG can develop language of what they mean by “design marks”. -- Kleiman/Muscovitch proposal defines “word marks” so don’t need to define “design marks”. Actually, it includes both. -- Neither proposal should start with “We the WG” as neither has consensus, just putting them out for discussion. The competing proposals need to be managed appropriately. -- Each proposal should put forward their own definition of "word mark" as part of what gets included in the initial report for consideration. -- Not just talking about “word marks”. Should Greg Shatan explain in more detail the types of marks, or staff may have some examples? -- There is a staff-prepared table from 2017 that tries to show the different examples of types of marks, and the WG did discuss visual examples drawn from USPTO practice. This information could be included in an introduction. -- One proposal defines “design marks” and the other doesn’t say that’s the definition. Try to put out something that can be understood. -- Important to have the context for the discussions. The context that Phil mentioned will be quite important inasmuch as this topic is hard for us even to grapple with, much less the community that has not been engaged in these discussions -- So, when the proposal is put out it has to be made absolutely clear that these are the assertions of some WG members (ie as to improper acceptance of marks by Deloitte) and there is strong disagreement with that assertion by many others. The staff assumption is that it will indeed be the case - i.e. proposals will clearly be noted as being from a WG member, or 2 WG members, etc. -- Let staff prepare the language for the Initial Report, providing the context, essence of the proposals, level of support. -- Greg Shatan: Brief addition to his proposal to compare and contrast with Kleiman/Muscovitch proposal. -- Both proponents can provide any changes by Tuesday, 01 October at 19:00 UTC. b. Charter Question 8 From Rebecca: 1. The TMCH is for trademarks: those that are registered as trademarks, confirmed by court decision as trademarks, or protected by statute or treaty that specifies the trademarks covered (as opposed to, for example, Lanham Act §43(a), which grants statutory protection to unregistered marks but doesn’t specify the marks covered). What counts as a trademark should be determined by national law, not by the TMCH. 2. Specifically, GIs (that do not also fall under (1)) are not trademarks. 3. GIs, like other things that are not trademarks, can be the subject of ancillary services. These ancillary services are voluntary, not mandatory, in new gTLDs. Different providers should be able to compete to provide them if desired. There is no existing barrier to multiple registries using the same ancillary service, nor should we impose any barriers to that possibility. 4. GIs and other subject matter of ancillary services should not be subject to Sunrise or Notice under the existing RPMs. 5. Deloitte is (a) registering GIs under the theory that they are covered by "statute/treaty," and (b) indicating to TMCH potential registrants that "other IP" is eligible for Claims and Notice in the TMCH by grouping “other IP” with registrations, court-confirmed marks, and marks protected by statute or treaty in its public-facing materials. Both of these practices should stop. 6. As long as the public-facing aspects of the RPMs operate properly, we should be indifferent to the “back end”—whether ancillary databases are in the “same database” or a “different database,” should Deloitte choose to operate an ancillary database. Discussion: -- Don’t need to call out what Deloitte is doing, but clarifying misunderstanding and to stop doing what they are doing. -- Key points: GIs shouldn’t be registered pursuant to the statute or treaty, but if they are protected as trademarks. -- Other IP shouldn’t get Sunrise and TM Claims. -- Need an amendment to the AGB since Deloitte’s interpretation needs to be corrected. -- Shouldn’t expand/make mandatory Deloitte providing ancillary databases. -- Don’t pick out GIs for ancillary services. Don’t need to say it, or if we do, then don’t address how GIs would be protected. Anything can go into an ancillary database. Could say things that are not trademarks can be the subject of ancillary services. -- Include an intro on ancillary services. That may also be in the AGB enough that if we are proposing language changes it can be worked in. -- If a registry has multiple new gTLDs and they want to connect to an ancillary database, we shouldn’t put up a barrier. -- GIs are a problem; they are not trademarks. GIs, unless they are trademarks, should not get claims notice or Sunrise. ACTION: Rebecca Tushnet, Claudio diGangi, Jason Schaeffer, Susan Payne (and any WG member interested in joining the small group) provide a final revised proposal by Tuesday, 01 October at 19:00 UTC. 3. Discussion of Deferred Questions: TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 TMCH Category 5: Access & Accessibility: Charter Question 15 TMCH Category 6: Balance: Charter Question 16 TMCH Category 1: Education: Charter Questions 1, 2, and 3 TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 ACTION: WG members may proposal relating to any of the deferred questions by 19:00 UTC on Tuesday, 01 October for discussion on the call on 02 October.

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Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Wednesday, 25 September 2019 at 17:00 UTC
by Andrea Glandon Sept. 25, 2019

Sept. 25, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Wednesday, 25 September 2019 at 17:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/640CBw> (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

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Update re: Proposed Agenda for RPM Meeting on 25 September 17:00-18:30 UTC
by Julie Hedlund Sept. 24, 2019

Sept. 24, 2019

Dear RPM WG members, Please see the attached revised version of the Status of WG Discussions on Agreed TMCH Charter Questions. The only difference from the previous version is that the formatting is fixed so that none of the text is cut off at the margins. Best regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund <julie.hedlund(a)icann.org> Date: Monday, September 23, 2019 at 6:17 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 25 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 25 September at 17:00-18:30 UTC. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Conclude discussion of proposals relating to Open TMCH Charter Questions (see attached Summary document updated as of 18 September 2019): * Charter Question 7 * Charter Question 8 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 * TMCH Category 5: Access & Accessibility: Charter Question 15 * TMCH Category 6: Balance: Charter Question 16 * TMCH Category 1: Education: Charter Questions 1, 2, and 3 * TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 4. AOB Best Regards, Mary, Julie, Ariel

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Proposed Agenda for RPM Meeting on 25 September 17:00-18:30 UTC
by Julie Hedlund Sept. 23, 2019

Sept. 23, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 25 September at 17:00-18:30 UTC. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Conclude discussion of proposals relating to Open TMCH Charter Questions (see attached Summary document updated as of 18 September 2019): * Charter Question 7 * Charter Question 8 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 * TMCH Category 5: Access & Accessibility: Charter Question 15 * TMCH Category 6: Balance: Charter Question 16 * TMCH Category 1: Education: Charter Questions 1, 2, and 3 * TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 4. AOB Best Regards, Mary, Julie, Ariel

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On Q8 ("Marks protected by statute or treaty")
by Mary Wong Sept. 20, 2019

Sept. 20, 2019

Dear all, In the hopes that it will help consolidate and perhaps close off the Working Group’s discussions over Q8 and the issue of how to handle Geographical Indications (GIs), Designations/Appellations of Origin and the like, staff thought it may be helpful to note the suggestions proffered during the Working Group call this past Wednesday (to allow the Working Group to assess subsequent suggestions in light of the various proposals that had been made by Working Group members to date) as well as provide some additional background information. SUGGESTIONS MADE DURING THE WEDNESDAY CALL: * From Griffin Barnett, a possible definition for what might qualify under Section 3.2.2 (“marks protected by statute or treaty”): “Any designations specified in and protected by statute or treaty in effect at the time the designation is submitted to the Clearinghouse for inclusion, where such designation is also the subject of a trademark registration. For any such designations not the subject of a trademark registration, such designations could be recorded in a separate centralized ancillary database specifically for such designations.” * From ICANN staff, a possible conceptual starting point for Section 3.2.2: Does the Working Group agree that, for the category of “marks protected by statute or treaty”, its scope ought to be limited to marks (not otherwise eligible under 3.2.1) that are nevertheless protected under a statute or treaty as a sign that functions as a trademark/source identifier? ADDITIONAL BACKGROUND INFORMATION: * For the rules that Deloitte currently uses to validate “marks protected by statute or treaty”, see the TMCH Guidelines, Section 2.4, pages 15-18: https://www.trademark-clearinghouse.com/sites/default/files/files/downloads… * In 2017, Deloitte reported to the Working Group that, of around 98 marks submitted for validation under this category, 75 were admitted. However, because the category is about “marks protected by statute or treaty” and without a requirement to define/distinguish between a G.I. and other marks protected by way of this category, Deloitte was not able to tell us which, or how many, amongst the 75 will be considered “G.I.s” or Designations/Appellations of Origin (as those terms may be used in international treaty discourse or applicable law). * In 2017, ICANN staff also prepared a partial glossary of terms that was done to try to assist with the Working Group’s deliberations on the TMCH (including the scope of “word marks”, composite/figurative marks, as well as G.Is.) Please see the attached document for the staff work product in this effort. Thanks and cheers Julie, Ariel & Mary

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Additional background information on "word marks" and the limitations of the TMCH
by Mary Wong Sept. 19, 2019

Sept. 19, 2019

Dear all, Following on from the Working Group call earlier today and to facilitate your deliberations as to what ought to constitute a “word mark” for purposes of inclusion in the Trademark Clearinghouse (TMCH), staff thought it might be helpful to provide you with the specific references from which our remarks concerning the purpose and remit of the TMCH were drawn. We hope that this information is useful, and further underscores why it is likely critical for the Working Group to agree on what, specifically, the term “word mark” covers in order to develop a clear policy recommendation for this topic. From ICANN Org’s 2015 paper consolidating community feedback on the RPMs developed for the 2012 New gTLD Program (emphasis added): * “The [TMCH] Guidelines are designed for review of trademark submissions according to a standard that does not favor one jurisdiction over another. * While there is no generally accepted or international definition of a word mark, there are multiple laws that distinguish between a mark that is comprised of characters versus a mark that protects the manner in which those characters are presented. * There are over 100 definitions of a “word mark” across trademark jurisdictions. * The territorial component of trademark rights does not lend itself to any one definition of universal applicability. * A review of UDRP case law indicates that the analysis of whether a domain name is confusingly similar in terms of a mark that incorporates graphic or design elements occurs on a case by case basis.” From ICANN Org’s Explanatory Memorandum on implementing the matching rules (September 2012, updated July 2016), emphasis added: * “Trademarks can include elements that are not able to be represented in the DNS at the present time. For example, trademarks in many jurisdictions around the world can include colors, punctuation, and design elements such as graphical images … It is explicitly beyond the scope and remit of the Clearinghouse to perform legal analysis, provide legal advice or apply discretionary assessments as to the range of domain names that a party owning given a certain trademark may or should be interested in protecting.” From Deloitte’s responses to the Working Group’s questions (2017): * Deloitte explained how it conducts its checks as follows: “For those marks that to do not exclusively consist of letters, words, numerals or special characters, the verification agents will verify the trademark name based upon the image on the trademark certificate. In the event that there is any doubt about the order in which the characters appear, the description provided by the Trademark office will prevail. In the event no description is provided, such Trademark records will be allocated to a Deloitte internal team of specialists with thorough knowledge of both national and regional trademark law who will conduct independent research on how the trademark is used, e.g. check website, or they may request that the trademark holder or agent provide additional documentary evidence on how the Trademark is used.” * Note that the TMCH Guidelines specifies, in Section 5.2.1, that: “For marks that do not exclusively consist of letters, words, numerals, special characters: 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”. * In response to the WG’s question as to how many device or image marks have been validated, Deloitte’s response was that: “As there is no unilateral international definition of different types of trademarks and the TMCH was designed as a global trademark database covering all jurisdictions the TMCH cannot make a distinction in types of marks and therefor no data is collected on the types of marks submitted in the TMDB”. Thanks and cheers Julie, Ariel & Mary

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Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Wednesday, 18 September 2019 at 17:00 UTC
by Terri Agnew Sept. 18, 2019

Sept. 18, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Wednesday, 18 September 2019 at 17:00 UTC can be found on the agenda wiki page<https://community.icann.org/x/_IYCBw> (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

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