September 2020 - GNSO-RPM-WG

Notes and Action Items: RPM PDP WG Meeting 10 September 2020
by Julie Hedlund Sept. 10, 2020

Sept. 10, 2020

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 10 September 2020 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/2020-09-10+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: ACTION ITEM: Sunrise Implementation Guidance (was Recommendation #7): -- RE: “Consequently, the Working Group agrees that the Sunrise Dispute Resolution Policy (SDRP) is not intended to allow challenges to Sunrise Registrations on the grounds that the Trademark Record on which the registrant based its Sunrise registration is invalid.”: Add a short sentence that the SDRP is intended to allow (with description). -- In footnote 10, we use a lot of capitalized terms – add that they are taken from Module 5 of the AGB. ACTION ITEM: TM Claims Recommendation #2: In WG deliberations – make it clear that the change from “should” to “MUST” is in the second bullet point of the recommendation. ACTION ITEM: TM Claims Recommendation #4 and Rec #5: Re: “and Section 6 of Specification 9 of the Registry Agreement” – indicate that this is a new recommendation, not the status quo. Also update the context and WG deliberations. Remove the context relating to the old Recs #4 and #5 incorrect reference to exceptions to Specs 13 and 9: for all new gTLDs, with the exception of those gTLDs who receive exemptions pursuant to Specification 13 and Section 6 of Specification 9 of the Registry Agreement (or their equivalent in subsequent new gTLD expansion rounds).” Reorder to improve the flow. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Update from Small Team on Sunrise Questions #3-#5 (TBD): Nothing new to report at this time. 3. Review Sunrise and TM Claims Final Recommendations; see: https://docs.google.com/document/d/12w5W2bQcviAqLwoDVB0vVK0n7SKj3fzP48NQyEW…: Sunrise Recommendations: -- Sunrise Recommendation #2 is deferred for discussion on Tuesday, 15 September when the Small Team 2 may have some language for the WG to consider in relation to this recommendation. Overview: -- Opportunity for WG to review draft Final Recommendations. -- Context is from the Initial Report but may have been expanded based on the WG deliberations. -- Summary of the WG’s deliberations – mostly based on what has been reviewed already in the public comment review analysis document. It is not new. -- The text provides context and background to the draft Final Recommendations. Sunrise Recommendation #6: -- Put footnote in recommendation text. -- Context language is from the Initial Report without changes. Sunrise Recommendation #5: -- No change from preliminary recommendation based on WG deliberation. Sunrise Recommendation #1: -- No change from preliminary recommendation based on WG deliberation. Sunrise Recommendation #8: -- Minor text change for grammatical correctness. -- No change in context from the Initial Report except grammatical adjustments. -- Support for the grammatical changes. Sunrise Recommendation #3: -- Add language to the recommendation to clarify the scope. -- Context language has not changed. Sunrise Recommendation #4: -- Public comment review section: public comments raised issue of Registry operational practices, which the WG considered. But did not agree to this as a mandatory recommendation. Sunrise Implementation Guidance: Sunrise Implementation Guidance (was Recommendation #7): -- RE: “Consequently, the Working Group agrees that the Sunrise Dispute Resolution Policy (SDRP) is not intended to allow challenges to Sunrise Registrations on the grounds that the Trademark Record on which the registrant based its Sunrise registration is invalid.”: Add a short sentence that the SDRP is intended to allow (with description). -- In footnote 10, we use a lot of capitalized terms – add that they are taken from Module 5 of the AGB. ACTION ITEM: Sunrise Implementation Guidance (was Recommendation #7): -- RE: “Consequently, the Working Group agrees that the Sunrise Dispute Resolution Policy (SDRP) is not intended to allow challenges to Sunrise Registrations on the grounds that the Trademark Record on which the registrant based its Sunrise registration is invalid.”: Add a short sentence that the SDRP is intended to allow (with description). -- In footnote 10, we use a lot of capitalized terms – add that they are taken from Module 5 of the AGB. TM Claims Recommendations: TM Claims Recommendation #2: -- WG agreed to change “should” to “MUST” and a minor grammatical change (“containing” to “contains”). -- In Context, added TM Claims RPM. -- In WG deliberations – make it clear that the change from “should” to “MUST” is in the second bullet point of the recommendation. ACTION ITEM: TM Claims Recommendation #2: In WG deliberations – make it clear that the change from “should” to “MUST” is in the second bullet point of the recommendation. TM Claims Recommendation #4: -- Changes clarified what TLDs are exempt. -- Clarified the claims period should run through the LRP. -- Public Comment Review provides the explanation of where these changes came from and why the WG agreed. -- Re: “and Section 6 of Specification 9 of the Registry Agreement” – this is a new recommendation, not the status quo. -- Remove the context relating to the old Recs #4 and #5 incorrect reference to exceptions to Specs 13 and 9. TM Claims Recommendation #5: -- Re: “and Section 6 of Specification 9 of the Registry Agreement” – this is a new recommendation, not the status quo. -- Remove the context relating to the old Recs #4 and #5 incorrect reference to exceptions to Specs 13 and 9. ACTION ITEM: TM Claims Recommendation #4 and Rec #5: Re: “and Section 6 of Specification 9 of the Registry Agreement” – indicate that this is a new recommendation, not the status quo. Also update the context and WG deliberations. Remove the context relating to the old Recs #4 and #5 incorrect reference to exceptions to Specs 13 and 9: for all new gTLDs, with the exception of those gTLDs who receive exemptions pursuant to Specification 13 and Section 6 of Specification 9 of the Registry Agreement (or their equivalent in subsequent new gTLD expansion rounds).” Reorder to improve the flow. TM Claims Recommendation #6: -- No changes to the preliminary recommendation. TM Claims Implementation Guidance: TM Claims Implementation Guidance (was Recommendation #3): -- Changed to Implementation Guidance since this recommendation is focused on operational issues. TM Claims Implementation Guidance (was Recommendation #1): -- Main redline is the third bullet – giving IRT flexibility to get input from internal or external resources. -- No change in the contextual language. -- Public Comment Review just notes the deliberations on the agreement to give the IRT flexibility.

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Proposed Agenda for RPM PDP WG Meeting - Thursday, 10 September 17:00 UTC
by Julie Hedlund Sept. 9, 2020

Sept. 9, 2020

Dear RPM WG members, Please find the proposed agenda for the full WG meeting on Thursday, 10 September at 17:00 UTC for 90 minutes. Draft Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Update from Small Team on Sunrise Questions #3-#5 (TBD) 3. Review Sunrise and TM Claims Final Recommendations (link TBD) 4. AOB Proposed Co-Chair rotation for chairing the meeting: Phil Corwin. Best Regards, Mary, Julie, Ariel

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Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Tuesday, 08 September 2020 at 13:00 UTC
by Julie Bisland Sept. 8, 2020

Sept. 8, 2020

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Tuesday, 08 September 2020 at 13:00 UTC can be found on the agenda wiki page<https://community.icann.org/x/vQG-C> 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

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Public Comment Analysis Updated: URS Qs 9-10
by Ariel Liang Sept. 8, 2020

Sept. 8, 2020

Dear WG Members, Please note that the public comment analysis summary document has been updated by including the WG’s deliberations in yesterday’s meeting (8 Sept). This document is not meant to replace the WG’s transcript, recording, and chat record, which are published here: https://community.icann.org/x/vQG-C The WG deliberation summaries for URS Q9 and Q10 can be found at pp. 37-38: https://docs.google.com/document/d/110It4ZZMV6V4XY77J6DUq-H_ZGtdPNV8qCB_5Uk… You are welcome to point out any error/mischaracterization/missing content on list. Thank you for the review. Best Regards, Mary, Julie, Ariel

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Public Comment Analysis Updated: URS Rec 9, Rec 10 & Q6, Q7, Q8, and Q9
by Julie Hedlund Sept. 4, 2020

Sept. 4, 2020

Dear WG Members, Please note that the public comment analysis summary document has been updated by including the WG’s deliberations in yesterday’s meeting (03 Sept). This document is not meant to replace the WG’s transcript, recording, and chat record, which are published here: https://community.icann.org/display/RARPMRIAGPWG/2020-09-03+Review+of+all+R… The WG deliberation summaries for URS Rec 9 (pp. 29-30), Rec 10 & Q6 (pp. 31-33), Q7 (pp. 34-35), Q8 (p. 36), and Q9 (pp. 37-38) can be found at: https://docs.google.com/document/d/110It4ZZMV6V4XY77J6DUq-H_ZGtdPNV8qCB_5Uk… [docs.google.com]<https://urldefense.com/v3/__https:/docs.google.com/document/d/110It4ZZMV6V4…> You are welcome to point out any error/mischaracterization/missing content on list. Thank you for the review. Best Regards, Mary, Julie, Ariel

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Proposed Agenda for RPM PDP WG Meeting - Tuesday, 08 September 13:00 UTC
by Julie Hedlund Sept. 4, 2020

Sept. 4, 2020

Dear RPM WG members, Please find the updated proposed agenda and materials below for the full WG meeting on Tuesday, 08 September at 13:00 UTC for 90 minutes. Draft Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. URS Q#9 (continued from the last meeting) & Q#10; See the Public Comment Analysis Summary at: https://docs.google.com/document/d/110It4ZZMV6V4XY77J6DUq-H_ZGtdPNV8qCB_5Uk…<https://urldefense.com/v3/__https:/docs.google.com/document/d/110It4ZZMV6V4…> and the Public Comment Review Tool at: https://docs.google.com/spreadsheets/d/16p196gjSt1CCXnowlWeXl_BcaggiXpoxiRS… [docs.google.com]<https://urldefense.com/v3/__https:/docs.google.com/spreadsheets/d/16p196gjS…> 3. AOB Proposed Co-Chair rotation for chairing the meeting: Phil Corwin. Best Regards, Mary, Julie, Ariel

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Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Thursday, 03 September 2020 at 17:00 UTC
by Andrea Glandon Sept. 3, 2020

Sept. 3, 2020

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Thursday, 03 September 2020 at 17:00 UTC can be found on the agenda wiki page<https://community.icann.org/x/ygG-C> 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, Andrea

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Question re: TM-PDDRP Draft from Small Group
by Corwin, Philip Sept. 3, 2020

Sept. 3, 2020

During this morning's call I said I had a question/concern about an aspect of the revised draft coming from the TM-PDDRP small group, and that I would post it on the WG list. This is it (referenced section of the PDDRP below), and it is posted in a personal capacity and not in my role as a co-chair. As we are aware, the purpose of the as yet unutilized PDDRP is to allow a mechanism for complaints by trademark owners, and enforceable remediation where they prevail, when a new gTLD registry operator directly and intentionally infringes a trademark, or when it encourages registrants to register infringing domain names and does so with bad faith intent to profit. My question and concern relates to the proposed addition of the phrase "offering for sale...of domain names". This is problematic because registries do not sell domain names; they enter into standard and uniform registry-registrar agreements with registrars, and it is the registrars who enter into contractual relationships with registrants for the sale and renewal of domain names (DNs). A registry has no control over a registrar's pricing, sales practices, or any domain names it may suggest to a prospective purchaser either via human agent or automated naming suggestion tool. A registry has no power to block a DN from being registered, and only learns the exact DN after it receives notification of the registration from the registrar, along with the technical information required to maintain an accurate database and provide the registry service of directing an inquiry for that DN to the correct server where the website will resolve. Now registries do designate premium status for certain domain names, and the small group may intend to target aspects of that practice to the extent it can be demonstrated to be tied to deliberate encouragement of second level infringement. Also, some registries offer their own name suggestion tools, which may occasionally suggest the registration of a trademarked term. But we have to be very careful in that regard, because- * Almost every dictionary name in every major language is trademarked for something, somewhere * It is unreasonable and impractical to expect registry operators to know, much less proactively check for identical or confusing similarity, every unique trademark registered in every national jurisdiction * Under the current UDRP and URS, actionable cybersquatting cannot be based on registration of a trademarked term alone, even if the registrant does so with bad faith intent - there must also be some bad faith use, and it would be even more unreasonable and impractical to imply that registry operators have some duty to monitor the content of every DN that has been registered in a gTLD they operate to check its use. While I realize that a violation of 6.2 requires "bad faith intent to profit", and while the closing lines of this section provide some protection for registry operators - "it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. The registry operator is not liable under the PDDRP solely because: (i) infringing names are in its registry; or (ii) the registry operator knows that infringing names are in its registry; or (iii) the registry operator did not monitor the registrations within its registry" - it remains problematic to use the term "'offering for sale" because registries do not sell DNs to registrants and have no direct relationship with them; registries offer and sell registry services to customers known as registrars. I would therefore urge the small group to determine more precisely what acts by registry operators not already covered by the current PDDRP they are seeking to target, and to bring back different language that does not use the phrase "offering for sale". Thanks in advance for consideration of this input. New proposed language in bold 6.2 Second Level Complainants are required to prove, by clear and convincing evidence that, through the registry operator's affirmative conduct: (a) there is a substantial pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) the registry operator's bad faith intent to profit from the systematic offering for sale or registration of domain names within the gTLD that are identical or confusingly similar to the complainant's mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant's mark; or (ii) impairs the distinctive character or the reputation of the complainant's mark, or (iii) creates a likelihood of confusion with the complainant's mark. In other words, it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. The registry operator is not liable under the PDDRP solely because: (i) infringing names are in its registry; or (ii) the registry operator knows that infringing names are in its registry; or (iii) the registry operator did not monitor the registrations within its registry. 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

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Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP
by McGrady, Paul D. Sept. 3, 2020

Sept. 3, 2020

Copying in the full WG so that they can have the benefit of this exchange. ___________ Hi Phil. Responding now to your second message (or was it first?). Comment in line in [brackets]. Speaking now as a co-chair: *If the small group believes this is a final version ready for full WG consideration, the next step would be to have that discussion and see if it satisfies the same criteria to become a WG recommendation that was applied for the Initial Report (we are long past the point for further Final Report consideration/inclusion of proposals from individuals, or even groups of individuals) [Thanks Phil. Unfortunately, because the deadline of this Friday was not disclosed on the last call and only came out today when Staff mentioned it, the co-chairs (assuming you are speaking for the other two - it's not clear) seem to have put us in a pickle where there is not time to take a roll call of the small group prior to tomorrow's call. But for reasons noted below, I don't think that is an issue. What can be said is that what I sent around today is the result of a small group call, a WG call, and two days on the list. All of the comments were helpful improvements and there weren't many comments. To now suggest the proposal might not be considered is quite the surprise! Importantly, I don't know of any written rules or procedures for small groups that require some sort of small group vote before something comes back to the full WG for discussion. Where can I find that? Surely if such a rule existed the time for that to happen was prior to our last call when this was discussed by the full WG (however briefly due to your intervention asking that it be given only a small amount of time) and proposed changes were made as a result. Even if such a rule exists, and again I can't find it in the GNSO Operating Procedures, surely the ship has sailed on it. Instead of finding ways to block further consideration of work products discussed in small group, in the full WG, and on the list for days, let's find a way to have the WG look over what was done here and get to a conclusion.] *If the proposal receives the requisite level of support vs. opposition to be considered a WG recommendation, the co-chairs will discuss and determine, in consultation with support staff, whether it should be put out for 21 days public comment under the standards contained in the GNSO WG Guidelines [Great news! This comment makes me believe that you will in fact give this the air time it needs tomorrow.] I believe that is the correct procedure, but I'm sure that staff will chime in if it's not. [I'm not sure if this comment refers only to the last bullet, if so I agree. If it refers to both bullets, I don't fully agree for the reasons noted above.] I would also note that it is possible that when the co-chairs and liaison confer with staff for our next planning meeting scheduled on the morning of Wednesday, September 9, we may opt to submit a short-term (likely 30 day) Project Change Request to Council regardless of what happens with this PDDRP proposal. Staff has already alerted us to concern that any unexpected delay in the Final Report review or Consensus Call last steps could make it impossible to meet our current deadline, and submission of a PCR by September 14th is our last opportunity to make the request as a safety measure. [Thanks for letting us know this. Sounds like a short extension is needed.] Rest assured that the co-chairs are all dedicated to the proposition that the Final Report will be delivered to Council prior to Thanksgiving (which, for non-US members, is November 26th). [I will miss the calls and email, but a quiet Thanksgiving, especially after all that 2020 has turned out to be, sounds lovely.] Best, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. -----Original Message----- From: Corwin, Philip <pcorwin(a)verisign.com> Sent: Wednesday, September 2, 2020 5:23 PM To: julie.hedlund(a)icann.org; McGrady, Paul D. <PMcGrady(a)taftlaw.com>; brian.beckham(a)wipo.int; McAuley, David <dmcauley(a)Verisign.com>; zak(a)muscovitch.com; gregshatanipc(a)gmail.com Cc: ariel.liang(a)icann.org; kathy(a)dnrc.tech; mary.wong(a)icann.org Subject: RE: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Speaking now as a co-chair: *If the small group believes this is a final version ready for full WG consideration, the next step would be to have that discussion and see if it satisfies the same criteria to become a WG recommendation that was applied for the Initial Report (we are long past the point for further Final Report consideration/inclusion of proposals from individuals, or even groups of individuals) *If the proposal receives the requisite level of support vs. opposition to be considered a WG recommendation, the co-chairs will discuss and determine, in consultation with support staff, whether it should be put out for 21 days public comment under the standards contained in the GNSO WG Guidelines I believe that is the correct procedure, but I'm sure that staff will chime in if it's not. I would also note that it is possible that when the co-chairs and liaison confer with staff for our next planning meeting scheduled on the morning of Wednesday, September 9, we may opt to submit a short-term (likely 30 day) Project Change Request to Council regardless of what happens with this PDDRP proposal. Staff has already alerted us to concern that any unexpected delay in the Final Report review or Consensus Call last steps could make it impossible to meet our current deadline, and submission of a PCR by September 14th is our last opportunity to make the request as a safety measure. Rest assured that the co-chairs are all dedicated to the proposition that the Final Report will be delivered to Council prior to Thanksgiving (which, for non-US members, is November 26th). Best, Philip 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: Julie Hedlund <julie.hedlund(a)icann.org> Sent: Wednesday, September 02, 2020 5:54 PM To: McGrady, Paul D. <PMcGrady(a)taftlaw.com>; BECKHAM Brian <brian.beckham(a)wipo.int>; McAuley, David <dmcauley(a)Verisign.com>; Zak Muscovitch <zak(a)muscovitch.com>; Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>; kathy(a)dnrc.tech; Corwin, Philip <pcorwin(a)verisign.com>; Mary Wong <mary.wong(a)icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Many thanks Paul for your very helpful suggested approach! Kind regards, Julie From: "McGrady, Paul D." <PMcGrady(a)taftlaw.com> Date: Wednesday, September 2, 2020 at 5:47 PM To: Julie Hedlund <julie.hedlund(a)icann.org>, BECKHAM Brian <brian.beckham(a)wipo.int>, "McAuley, David" <dmcauley(a)Verisign.com>, Zak Muscovitch <zak(a)muscovitch.com>, Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>, "kathy(a)dnrc.tech" <kathy(a)dnrc.tech>, "Corwin, Philip" <pcorwin(a)verisign.com>, Mary Wong <mary.wong(a)icann.org> Subject: RE: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Thanks Julie. Good to know that now, although now it is quite difficult to try to reconvene with short notice on a holiday weekend. Even so, since the only change that was made from the call was the addition of the work "significantly" before where "higher" appears, and since Marc introduced language to deal with the question of whether or not registries sell domain names ("or otherwise making available for registration"), and since we don't really have time to reconvene the small group, I suggest we simply put this back on the agenda for tomorrow's call. Small group members can either support it or not on the call as can working group members. Ultimately, the small group can't dictate an outcome either way, so missing a deadline to discuss the very reasonable addition of "significantly" and seems like process over substance. Toward that end, attached is the latest version for discussion tomorrow. Thanks! Best, Paul To receive regular COVID-19 updates from Taft, subscribe here [taftlaw.com] For additional resources, visit Taft's COVID-19 Resource Toolkit [taftlaw.com] This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Julie Hedlund <julie.hedlund(a)icann.org> Sent: Wednesday, September 2, 2020 4:27 PM To: McGrady, Paul D. <PMcGrady(a)taftlaw.com>; BECKHAM Brian <brian.beckham(a)wipo.int>; McAuley, David <dmcauley(a)Verisign.com>; Zak Muscovitch <zak(a)muscovitch.com>; Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>; kathy(a)dnrc.tech; Corwin, Philip <pcorwin(a)verisign.com>; Mary Wong <mary.wong(a)icann.org> Subject: Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi Paul, The Co-Chairs are meeting next Wednesday morning to review the Work Plan and a Project Change Request (PCR), if needed. They wouldn't likely be able to make a decision on whether to include a new Public Comment Period until the WG has decided what to do with the final language from the Small Team. The PCR must be filed by the Document and Motion deadline of Monday, 14 Sept, so it has to be finalized next week, the earlier the better. So, unfortunately there really isn't much time. I hope that's more explanation for why we'd need to get this done on Friday in order to have it in front of the WG on Tuesday. Kind regards, Julie From: "McGrady, Paul D." <PMcGrady(a)taftlaw.com> Date: Wednesday, September 2, 2020 at 5:22 PM To: Julie Hedlund <julie.hedlund(a)icann.org>, BECKHAM Brian <brian.beckham(a)wipo.int>, "McAuley, David" <dmcauley(a)Verisign.com>, Zak Muscovitch <zak(a)muscovitch.com>, Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>, "kathy(a)dnrc.tech" <kathy(a)dnrc.tech>, "Corwin, Philip" <pcorwin(a)verisign.com>, Mary Wong <mary.wong(a)icann.org> Subject: RE: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Thanks Julie. I don't think we need to cram this in on Friday. If the co-chairs reach a decision that it needs to go out for public comment then we will need a change request no matter what. If the co-chairs decide that it does not need to go out for public comment, we have plenty of time. So, I think we should try to schedule this for next week after the holiday when people are more likely to be back at their desks, especially David M. who has been very helpful getting this refined. Best, Paul To receive regular COVID-19 updates from Taft, subscribe here [taftlaw.com] For additional resources, visit Taft's COVID-19 Resource Toolkit [taftlaw.com] This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Julie Hedlund <julie.hedlund(a)icann.org> Sent: Wednesday, September 2, 2020 4:16 PM To: McGrady, Paul D. <PMcGrady(a)taftlaw.com>; BECKHAM Brian <brian.beckham(a)wipo.int>; McAuley, David <dmcauley(a)Verisign.com>; Zak Muscovitch <zak(a)muscovitch.com>; Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>; kathy(a)dnrc.tech; Corwin, Philip <pcorwin(a)verisign.com>; Mary Wong <mary.wong(a)icann.org> Subject: Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi Paul, It looks like our emails crossed and I see that you've requested a Doodle for a meeting via a separate email. If we are to get this item on the agenda for next Tuesday, and considering that next Monday is a holiday in the US, we'd need to aim for this Friday to give people time to plan. We can do a Doodle for a few times Friday morning. Thanks! Julie From: Julie Hedlund <julie.hedlund(a)icann.org> Date: Wednesday, September 2, 2020 at 5:10 PM To: "McGrady, Paul D." <PMcGrady(a)taftlaw.com>, BECKHAM Brian <brian.beckham(a)wipo.int>, "McAuley, David" <dmcauley(a)Verisign.com>, Zak Muscovitch <zak(a)muscovitch.com>, Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>, "kathy(a)dnrc.tech" <kathy(a)dnrc.tech>, "Corwin, Philip" <pcorwin(a)verisign.com>, Mary Wong <mary.wong(a)icann.org> Subject: Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi Paul, In light of the discussion on the list, do you plan to produce a new slightly revised version for the Small Team to review? Also, does the Small Team envision needing a meeting, or can the revision be addressed on the list? Staff also put a placeholder in the agenda for an update on this item for tomorrow's call. If there's nothing new to report (revisions ongoing) then that could simply be noted. But we probably should anticipate putting it on the agenda for WG discussion no later than next Tuesday's call, because if the WG sticks to its work plan it will begin to review Final Recommendations next Thursday, 10 September (if not sooner). Thanks! With kind regards, Mary, Ariel, and Julie From: "McGrady, Paul D." <PMcGrady(a)taftlaw.com> Date: Monday, August 31, 2020 at 9:40 PM To: BECKHAM Brian <brian.beckham(a)wipo.int>, "McAuley, David" <dmcauley(a)Verisign.com>, Zak Muscovitch <zak(a)muscovitch.com>, Greg Shatan <gregshatanipc(a)gmail.com> Cc: Ariel Liang <ariel.liang(a)icann.org>, Julie Hedlund <julie.hedlund(a)icann.org>, "kathy(a)dnrc.tech" <kathy(a)dnrc.tech>, "Corwin, Philip" <pcorwin(a)verisign.com>, Mary Wong <mary.wong(a)icann.org> Subject: RE: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi Small Group 2! As discussed, attached is the mark up to the relevant sections of the TM-PDDRP taking the minimalist approach we kicked around on the call. I look forward to your comments back! Best, Paul To receive regular COVID-19 updates from Taft, subscribe here [taftlaw.com] For additional resources, visit Taft's COVID-19 Resource Toolkit [taftlaw.com] This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: BECKHAM Brian <brian.beckham(a)wipo.int> Sent: Monday, August 31, 2020 11:20 AM To: Mary Wong <mary.wong(a)icann.org>; McAuley, David <dmcauley(a)Verisign.com>; McGrady, Paul D. <PMcGrady(a)taftlaw.com>; Corwin, Philip <pcorwin(a)verisign.com> Cc: Ariel Liang <ariel.liang(a)icann.org>; Julie Hedlund <julie.hedlund(a)icann.org>; kathy(a)dnrc.tech Subject: RE: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP PS, do consider me a volunteer / observer. From: Mary Wong <mary.wong(a)icann.org> Sent: Monday, August 31, 2020 6:18 PM To: BECKHAM Brian <brian.beckham(a)wipo.int>; McAuley, David <dmcauley(a)Verisign.com>; 'PMcGrady(a)taftlaw.com' <PMcGrady(a)taftlaw.com>; Corwin, Philip <pcorwin(a)verisign.com> Cc: Ariel Liang <ariel.liang(a)icann.org>; Julie Hedlund <julie.hedlund(a)icann.org>; kathy(a)dnrc.tech Subject: Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi Brian and everyone, I think the calendar invitation went only to the small team volunteers, so that they can work out amongst themselves what they wish to recommend to the Working Group. I've forwarded you the details for the call that's going on now, in case you wish to join. Cheers Mary From: BECKHAM Brian <brian.beckham(a)wipo.int> Date: Monday, August 31, 2020 at 12:16 To: "McAuley, David" <dmcauley(a)Verisign.com>, "'PMcGrady(a)taftlaw.com'" <PMcGrady(a)taftlaw.com>, "Corwin, Philip" <pcorwin(a)verisign.com>, Mary Wong <mary.wong(a)icann.org> Cc: Ariel Liang <ariel.liang(a)icann.org>, Julie Hedlund <julie.hedlund(a)icann.org>, "kathy(a)dnrc.tech" <kathy(a)dnrc.tech> Subject: RE: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi all, Did I miss the invite (and doodle) for this call today? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of McAuley, David via GNSO-RPM-WG Sent: Saturday, August 29, 2020 1:09 PM To: 'PMcGrady(a)taftlaw.com' <PMcGrady(a)taftlaw.com>; Corwin, Philip <pcorwin(a)verisign.com>; 'mary.wong(a)icann.org' <mary.wong(a)icann.org>; 'gnso-rpm-wg(a)icann.org' <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hi Paul, and all, I am away on vacation and my replies will be delayed but I will be on the call Monday assuming wifi connection remains fine - so far, so good. I attempted to draft some new language but felt that it would not be helpful - I remain opposed to the new TM-PDDRP proposal for the reasons I mentioned when we discussed this but will endeavor to help with drafting if we can reach suitable compromise. But I also remain of the view that if anything like the proposal is submitted to the WG and the WG wants to adopt it then it must go for public comment. Sunrise Rec #2 would affect only future new gTLDs via a provision in their RA - a matter they would address with ICANN Compliance, not in a formal DRP. The proposal we are considering is a new cause of action under a DRP, it materially changes the present TM-PDDRP standard (section 6.2 Second Level),and it affects all gTLDs. Best regards, David David McAuley Sr International Policy & Business Development Manager Verisign Inc. 703-948-4154 From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of McGrady, Paul D. Sent: Friday, August 28, 2020 2:52 PM To: Corwin, Philip <pcorwin(a)verisign.com>; mary.wong(a)icann.org; gnso-rpm-wg(a)icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [Ext] RE: Small Group for proposed amendments to TM-PDDRP Thanks Mary. Thanks Phil. We will, of course, get back to the main WG as quickly as possible. However, I think we may be jumping to the conclusion that the proposed amendments to the TM-PDDRP that are designed to prevent circumventing the mandatory RPMs imposed by ICANN or restricting brand owners' reasonable use of the Sunrise rights protection mechanism would need to be put out to public comment. The WG has already settled on Sunrise Recommendation #2 which is essentially the same idea: "Sunrise Recommendation #2 The Working Group recommends that the Registry Agreement for future new gTLDs includes a provision stating that a Registry Operator shall not operate its TLD in such a way as to have the effect of circumventing the mandatory RPMs imposed by ICANN or restricting brand owners' reasonable use of the Sunrise rights protection mechanism." Also, the idea of improvements to the TM-PDDRP came directly from public comment. I hope this helps with any angst over the timeline. Thanks! Best, Paul To receive regular COVID-19 updates from Taft, subscribe here [taftlaw.com] For additional resources, visit Taft's COVID-19 Resource Toolkit [taftlaw.com] This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Corwin, Philip <pcorwin(a)verisign.com> Sent: Friday, August 28, 2020 10:52 AM To: mary.wong(a)icann.org; McGrady, Paul D. <PMcGrady(a)taftlaw.com>; gnso-rpm-wg(a)icann.org Cc: brian.beckham(a)wipo.int; kathy(a)kathykleiman.com Subject: RE: [Ext] RE: Small Group for proposed amendments to TM-PDDRP Thanks Mary. That is pretty much the language I quoted, plus confirmation of the 21-day minimum comment period. 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: Mary Wong <mary.wong(a)icann.org> Sent: Friday, August 28, 2020 11:45 AM To: Corwin, Philip <pcorwin(a)verisign.com>; PMcGrady(a)taftlaw.com; gnso-rpm-wg(a)icann.org Cc: brian.beckham(a)wipo.int; kathy(a)kathykleiman.com Subject: [EXTERNAL] Re: [Ext] RE: Small Group for proposed amendments to TM-PDDRP Hello Paul, Phil and all - the Doodle polls were sent out yesterday but we realize that it went to Paul's old email address. The GNSO Secretariat has just re-sent the polls to Paul at his updated email address. With regard to a public comment proceeding, here is the relevant language from the GNSO's PDP Manual that was the basis for my previous guidance (noted by Phil): "In addition to any required public comment periods, the PDP Team may seek public comment on any item that the PDP Team notes it will benefit from further public input. The PDP Team does not have to seek approval from the GNSO Council to seek public comment on interim items. The minimum duration of a public comment period that does not concern the Initial Report is twenty (21) days." I hope that is helpful. Cheers Mary From: "Corwin, Philip" <pcorwin(a)verisign.com> Date: Friday, August 28, 2020 at 11:09 To: "PMcGrady(a)taftlaw.com" <PMcGrady(a)taftlaw.com>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Cc: "brian.beckham(a)wipo.int" <brian.beckham(a)wipo.int>, "kathy(a)kathykleiman.com" <kathy(a)kathykleiman.com>, Mary Wong <mary.wong(a)icann.org> Subject: [Ext] RE: Small Group for proposed amendments to TM-PDDRP Paul, Thanks for staying on top of this. We do need that small group to bring something back to the full WG ASAP so that if the co-chairs decide it needs public comment we can hopefully close that 21-day period by the end of September and not have to submit another Project Change Request (ugh). Back in late July, Mary told us, "a PDP Working Group also has the ability to post interim items for public comment that it believes "will benefit from further public input" - this may be an option where there is a need to resolve specific, concrete items during deliberations on a Final Report. You will therefore not need to wait for there to be a full draft report to exercise this option (though staff advises that any such items should be consolidated and posted as a single public comment proceeding and not on a piecemeal basis)." My own view would be that we should seek public comment where we have a substantially new proposal that could have a material effect on the community or portions thereof. Very best, Philip 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: McGrady, Paul D. <PMcGrady(a)taftlaw.com> Sent: Friday, August 28, 2020 10:43 AM To: gnso-rpm-wg(a)icann.org Cc: Corwin, Philip <pcorwin(a)verisign.com>; Brian Beckham <brian.beckham(a)wipo.int>; Kathy Kleiman <kathy(a)kathykleiman.com>; Mary Wong <mary.wong(a)icann.org> Subject: [EXTERNAL] Small Group for proposed amendments to TM-PDDRP Hi Staff, I've not seen a doodle go out on getting this small group together. I don't think merely trying to work this out on the list is what we need. Can you please send out a doodle and try to get us together as early as possible next week so that we don't have to ask the co-chairs for an extension on our report date? Thanks much! Best, Paul Taft / Paul D. McGrady / Partner Taft Stettinius & Hollister LLP 111 E. Wacker Drive, Suite 2800 Chicago, Illinois 60601-3713 Tel: 312.527.4000 * Fax: 312.754.2354 Direct: 312.836.4094 * Cell: 312.882.5020 www.taftlaw.com [secure-web.cisco.com] / PMcGrady(a)taftlaw.com Taft Bio [secure-web.cisco.com] Taft vCard [secure-web.cisco.com] Subscribe to our law updates [secure-web.cisco.com] To receive regular COVID-19 updates from Taft, subscribe here [secure-web.cisco.com] For additional resources, visit Taft's COVID-19 Resource Toolkit [secure-web.cisco.com] This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. [wipo.int] World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Proposed Agenda for RPM PDP WG Meeting - Thursday, 03 September 17:00 UTC
by Julie Hedlund Sept. 2, 2020

Sept. 2, 2020

Dear RPM WG members, Please find the proposed agenda and materials below for the full WG meeting on Thursday, 03 September at 17:00 UTC for 90 minutes. Draft Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. TM-PDDRP – Revised Text from Small Team (TBD) 3. URS Rec #9 & URS Proposal #34, URS Rec #10 & Q#6; See the Public Comment Analysis Summary at: https://docs.google.com/document/d/110It4ZZMV6V4XY77J6DUq-H_ZGtdPNV8qCB_5Uk…<https://urldefense.com/v3/__https:/docs.google.com/document/d/110It4ZZMV6V4…> and the Public Comment Review Tool at: https://docs.google.com/spreadsheets/d/16p196gjSt1CCXnowlWeXl_BcaggiXpoxiRS… [docs.google.com]<https://urldefense.com/v3/__https:/docs.google.com/spreadsheets/d/16p196gjS…> 4. Overarching Recommendation XX on Data Collection (TBD) 5. AOB Proposed Co-Chair rotation for chairing the meeting: Brian Beckham. Best Regards, Mary, Julie, Ariel

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