August 2020 - GNSO-RPM-WG - lists.icann.org

Public Comment Analysis Updated: URS Proposals 15/22, TMCH Proposal 7, TMCH Rec 1 & Sunrise Recs 1-4
by Ariel Liang Aug. 4, 2020

Aug. 4, 2020

Dear WG Members, Please note that the public comment analysis summary documents have been updated by including the WG’s deliberations in today’s meeting (4 August). This document is not meant to replace the WG’s transcript, recording, and chat record, which are published here: https://community.icann.org/x/uAGNC The updated content for Consolidated URS Proposals #15/#22 and TMCH Proposal #7 is included on pages 18, 52-53: https://docs.google.com/document/d/1Pnqor6rHjvowH66GPQG9XI23n8H2mgkbf39-jA4… The WG deliberation summaries for TMCH Recommendation #1 and Sunrise Recommendations #1-#4 are on pages 1, 3, 4, 7, and 8: https://docs.google.com/document/d/10mftuhNy7YMgtCIu2ZRwsCleDgbP8AAAFz_jMHB… You are welcome to point out any error/mischaracterization/missing content on list. Thank you for the review. Best Regards, Mary, Julie, Ariel

1 0

Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Tuesday, 04 August 2020 at 13:00 UTC
by Julie Bisland Aug. 4, 2020

Aug. 4, 2020

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Tuesday, 04 August 2020 at 13:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/uAGNC> 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 <https://mm.icann.org/pipermail/gnso-rpm-wg/> and the main wiki page<https://community.icann.org/x/wCWAAw>. Thank you. Kind regards, Julie

1 0

Proposed policy principles and proposed draft language for consolidating individual TMCH proposals #4 & #5
by Paul Tattersfield Aug. 4, 2020

Aug. 4, 2020

*Proposed policy principles *GIs are not eligible for Claims and Sunrise RPMs unless independently registered as an eligible trademark. GIs and other quality schemes protected by statute may be held in centralized ancillary databases. Treaty organizations and organizations protected by statute are not always able to register their word marks at a national trademark office. In some jurisdictions their marks are reflected as a “non registration” (e.g. #89 series in USPTO) which ensures no one can subsequently register an infringing trademark. Once such word marks are listed with a National or Regional Trademark Office they must be treated within the Clearinghouse in the same way as a registered word mark or a court validated word mark and must be eligible for Claims and Sunrise. There is no bar on the Clearinghouse Provider and other third party service providers providing other additional ancillary services. *Proposed draft language* 3.2 The standards for inclusion in the Clearinghouse are: ‘3.2.1 Nothing in section 3.2 shall exclude the Clearinghouse provider and registry operators from offering additional voluntary services to mark holders. ‘3.2.2 In this section “word mark” includes service marks, collective marks, certification marks and word marks protected by statute or treaty. ‘3.2.3 The standards for inclusion to be eligible for Claims and Sunrise are: (1) Nationally or regionally registered word marks from all jurisdictions. (2) Any word mark that has been validated through a court of law or other judicial proceeding. (3) Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion and is listed at a national or regional trademark office. (4) Subsection (3) does not apply to geographical indications and other quality schemes unless they also satisfy subsections (1) or (2). ‘3.2.4 The standards for inclusion in ancillary databases only and not eligible for Claims or Sunrise are: (1) Other marks that constitute intellectual property. (2) Geographical indications and other quality schemes protected by statute. ‘3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.

2 1

TMCH Proposal 7
by Michael Karanicolas Aug. 4, 2020

Aug. 4, 2020

Hi all, Further to our previous discussions, please see revised language for proposal #7, with the aim of addressing concerns associated with an open and searchable model, and in particular the need to mitigate the potential for misuse of information in the database: *ICANN should develop a limited system for reviewing TMCH records, accessible to a limited subset of certified applicants, such as intellectual property enforcement authorities, academic or civil society researchers, auditors, and other parties with a legitimate research interest in accessing information to affirm the functioning and scope of the TMCH. This includes searching for registrations which have subsequently deemed to be inadmissible to the TMCH database (i.e. geographic indicators), improper registrations, and general auditing of the functioning of the TMCH and the database used for sunrise and trademark claims notices. Access may be predicated on the fulfillment of particular requirements and safeguards to ensure that the information gathered is not used in a way which facilitates cybersquatting or other breaches of intellectual property rights, such as a written commitment to only use the information for permissible purposes.* Best, Michael

2 1