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

Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew March 1, 2017

March 1, 2017

Dear All, Please find the attendance of the call attached to this email. The MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 01 March 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/YZ3DAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-01mar17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p7748y84ny8/?OWASP_CSRFTOKEN=d2bb332eb83bd37e 112e25e7751c52e54fb922234e519726f89516ceebbbd6db> https://participate.icann.org/p7748y84ny8/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: <http://mm.icann.org/pipermail/gnso-rpm-wg/> http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 01 March 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 01 March 2017 at 17:00 UTC for 60 minutes Terri Agnew:wiki agenda page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Y Z3DAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ YZ3DAw&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b 8&s=ytx-KSkSEb3EACsRZ-ayBuXn6ktuEO_OY9Via6NzMLI&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b8&s=yt x-KSkSEb3EACsRZ-ayBuXn6ktuEO_OY9Via6NzMLI&e= George Kirikos:Hi folks. Elizabeth Featherman:Hello! George Kirikos:Welcome Elizabeth. Elizabeth Featherman:Thanks George! Paul Tattersfield:Hi everyone Maxim Alzoba (FAITID):Hello All George Kirikos:Hey Paul & Maxim. Martin Silva Valent:Hi all! Paul Tattersfield:Hi George is your part of Canada ready fro spring yet? George Kirikos:I think so, Paul, if the groundhogs are correct. :-) Paul Tattersfield::) Philip Corwin:Hello all, and welcome to our last WG meeting before Copenhagen Yuri Chumak:greetings George Kirikos:Welcome Phil & Yuri. Philip Corwin:Here in DC area it will be close to 80F today -- with predictions of snow showers on friday morning. Crazy weather roller coaster. Maxim Alzoba (FAITID):Note: there is a mistake in AGB - clearinghouse should be replaced with CZDS in Module 5, Transition to delegation (to avoid confusion with TMCH, which referenced in AGB 2012 as both Trademark Clearinghouse and Clearinghouse) - page 5-15 Terri Agnew:everyone can scroll themselves Philip Corwin:Great work by Mary on this document Mary Wong:@Maxim - we will check and correct Kristine Dorrain - Amazon Registry Services:+1 Phil George Kirikos:IRT was unrepresentative (I recall Phil wasn't allowed to join). David McAuley (RySG):The Strawman Solution - sounds like a good film Philip Corwin:There were complaints about IRT process that led to establishment of STI-RT -- which adopted and refined some IRT recommendations, while rejecting others, in my recollection. What's important now is what is actually in the Appricant Guidebook. Jeff Neuman:@George - The IRT was a group set up of professional IP experts on proposing a set of recommendations to the Board. Although I was on from the Registries and Jon Nevett from the Registrars, and Mary Wong at the time with the NCUC, it was not intended to be "representative" as you would define it. But that does not take away from the work that was done. George Kirikos:There's an echo (turn off speakers). Edward Morris:It would be iteresting to find out how we got from point a to point b. And whether we want to do a U turn. George Kirikos:+1 Martin GraceM: are there any examples of design marks in the tmch? Mary Wong:@Grace, the Working Group agreed to follow up with Deloitte to clarify how they handle design marks, and examples they can give George Kirikos:You're on the right track, Martin. Edward Morris:+1 Martin. Be interesting to know how this happened Pascal Boehner:But design or figurative marks also deserve TM protection as mere word marks; they might have another extent and scope of protection which is to be looked at. But there is no reason not to protect them GraceM:thanks @ Mary Philip Corwin:@Jeff--again, while the chronology is useful for understanding the history and source of the developed RPMs, our WG focus is on what is actually in the final AG, whether ithey are being properly implemented, and whether they are effective and balanced. Suggestions for any modifications can be new, or can be based on historic sources including as the IRT. Georges Nahitchevansky:Has this, in fact, been an actual issue with the TMCH (i.e., on the level of abuse) or is this anecdotal issue -- and thus a theoretical discussion George Kirikos:That's why it'd be nice to know how they handle specific examples, e.g. CARS, PARENTS, DEALHUNTER, MUSIC, the letter 'A', etc. http://mm.icann.org/pipermail/gnso-rpm-wg/2017-February/001064.html George Kirikos:they = TMCH George Kirikos:All those shouldn't be acceptable, if we stick to the strict interpretation of the STI. Martin Silva Valent:I agree I might be off here, I 've might missed a debate. I won't impose my impression. Mary Wong:Do the TMCH Guidelines published by Deloitte assist in explaining how word elements in design marks are handled? Edward Morris:Small team seems t be called for here. Edward Morris:We don't have enough time to go in depth in the main group. George Kirikos:There's also the related issue of whether the published guidelines are being followed (which is hard to know, if we're not allowed to view the list of recordals in public). Susan Payne:I'm not sure this is the time for a small group. arent we still asking deloitte questions and planning to meet with them Mary Wong:@Martin, does 5.2.1 (on page 2 of this table) of the TMCH Guidelines help you evaluate your question? Maxim Alzoba (FAITID):in AGB, 1. PURPOSE OF CLEARINGHOUSE, 1.4, 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. Do we know if additional services of TMCH are kept separated? Bradley Silver:+1 Susan - let's get feedback from Deloitte first on this question. Mary Wong:@Maxim, I believe the only ancillary service being offered is the Ongoing Claims Service Pascal Boehner:+1 Susan Kristine Dorrain - Amazon Registry Services:Agree Susan. I think it's premature. Martin Silva Valent:Mary, I'm basing my doubts on that text :-) Georges Nahitchevansky:I agree. let's get infor from Deloitte first and then decide if this a real issue to be addressed and debated Maxim Alzoba (FAITID):and the incentive of https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_content_blocking-2Dmechanisms-2Dtmch-2Dclients-2Ddpml <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_content_blocking-2Dmechanisms-2Dtmch-2Dclients-2Ddpml&d=DwICaQ&c= FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0 AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b8&s=X5gyXfELMYQ7sV FL4BeUDAi-NNULYEOFgC3K_HAb5V4&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b8&s=X5 gyXfELMYQ7sVFL4BeUDAi-NNULYEOFgC3K_HAb5V4&e= ? it is not in AGB Kristine Dorrain - Amazon Registry Services:I think the first question is ask Deloitte if there is indeed a discrepancy and what they can tell us about it. at least we would be able to know where to start digging. Edward Morris:Here's a chance to get into substance. Deloitte answers and a small groupcan run concurrently. Mark Massey:+1 Maxim Alzoba (FAITID):also AGB, Trademark Clearinghouse 1.5 have some incorrect reference to the policy process ...Before material changes are made to the Clearinghouse functions, they will be reviewed through the ICANN public participation model. Mary Wong:@Maxim, yes that sentence is in the AGB and has been added to the end of this table. Paul Tattersfield:should read geographical indications not geographical indicators Mary Wong:@Paul, oops, thanks for catching that, you're right Rebecca L Tushnet:Could I join the small group on design marks? Sorry I was delayed in joining. George Kirikos:So, 3.6 might include stock ticker symbols, if someone had a financial TLD and wanted to offer that in a sunrise. George Kirikos:*6 to mute/unmute Maxim Alzoba (FAITID):Also 2.1 of TM Clearinghouse : 2.1 The selection of Trademark Clearinghouse Service Provider(s) will be subject to predetermined criteria, but the foremost considerations will be the ability to store, authenticate, validate and disseminate the data at the highest level of technical stabilityand security without interference with the integrity or timeliness of the registration process or registry operations. ... in reality we saw some glitches and non working conditions of TMCH ... there is not mechanism to ensure that TMCH has to stick to " the highest level of technical stabilityand security without interference with the integrity or timeliness" , after the initial contract execution with ICANN ... basically SLA of some sort and annual review of technical issues Philip Corwin:This co-chair, speaking personally, believes that we are going to have to decide that some questions are good enough and leave detailed discussion only to thse few questions on which there is significant concern with the wording within the WG. If we discuss each Q in detail we won't reach Sunrise and Claim Notices until late spring or summer, and we should do all we can to avoid falling far behind on our schedule so long as it does not result in any corner cutting that undermines the integrity of our work. We can discuss all this in CPH. Terri Agnew:as a reminder to active your mic on the AC, select the telehpone icon top tool bar and follow the prompt or send me a private AC chat and I can have the operator dial out to you. Susan Payne:+1 Kristine Maxim Alzoba (FAITID):also 2.4.4 of the same TM Clearinghouse part of AGB, includes requirements to customer service availability... which were not met and need the same review process as 2.1 Massimo Vittori:I am sorry I ma not able to join the converstation George Kirikos:There's no international consensus that GIs should have protection, so that's likely the concern, e.g. https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_G eographical-5Findication-23Differences-5Fin-5Fphilosophy <https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_ Geographical-5Findication-23Differences-5Fin-5Fphilosophy&d=DwICaQ&c=FmY1u3P Jp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4 xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b8&s=DaVAutBtkh0OuXNy9G_Pv KtfG60TivduIArtUWYIikk&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b8&s=Da VAutBtkh0OuXNy9G_PvKtfG60TivduIArtUWYIikk&e= Paul Tattersfield:The TMCH already caters for marks other than registered tradmarks marks from states 6ter etc. Mary Wong:@Kathy, staff will consult the transcript when that is available to make sure Kristine's clarification and John's earlier question are accurately captured. George Kirikos:Champagne.wine was obtained the French organization. Do we know if it was via a GI in the TMCH and sunrise? Or some other way? https://urldefense.proofpoint.com/v2/url?u=http-3A__whois.domaintools.com_ch ampagne.wine <https://urldefense.proofpoint.com/v2/url?u=http-3A__whois.domaintools.com_c hampagne.wine&d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2d XAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDan oUtd09b8&s=UfVkfodiyppOlGt9LrR195G20tFK6Qw3LKPj_8xVKNA&e> &d=DwICaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=_4ykVYCNKhxycZFYfXClGpFutuKwNDkTDanoUtd09b8&s=Uf VkfodiyppOlGt9LrR195G20tFK6Qw3LKPj_8xVKNA&e= George Kirikos:insert *by above Kristine Dorrain - Amazon Registry Services:George, I don't think the TMCH labels as mark as "GI" or not. It Kristine Dorrain - Amazon Registry Services: It's a word, in a database. Mike Rodenbaugh:Have we asked Deloitte how many TM owners took advantage of the TM+50 feature, and at what quantity? Kristine Dorrain - Amazon Registry Services:If it passes the TM test, it's in, if not, it's not. Pascal Boehner:Even if there ist no international consensus: if "champagne" is protected in France as a GI, it shall get the same protection as a national French TM, even if in other jurisdictions, it would not be accepted Mary Wong:@George, the criteria for inclusion in the TMCH has been registered TMs, court-validated marks, and marks protected by statute or treaty. This has been the case through various versions of the AGB and dating back to the IRT. Paul Tattersfield:@Kristine The TMCH already accepts marks other than registered trademarks - eg marks protected by statue or treaty George Kirikos:Thanks Mary. Pascal Boehner:+1 Paul Edward Morris:That would be great Mike Rodenbaugh:That's what I was asking too Edward Morris:Thanks Mary - that would be helpful. Let's see what we got back. Kristine Dorrain - Amazon Registry Services:@Paul, yes, but then the submitter submits the statute or treaty Kristine Dorrain - Amazon Registry Services:If each line item in the DB has an appended TM, statute, or treaty, then the question is really just "do we have any unsupported marks"? Maxim Alzoba (FAITID):Are we going to make a poll to collect questions for Deloitte? Edward Morris:Thanks Kathy and Phil Paul Tattersfield:Kristine so what's wrong with asking / discussing for similar verification for Geographical INdications? Maxim Alzoba (FAITID):I suggested poll instead of e-mails - so it is more visible to participants Mary Wong:Q&A on Previously Abused Labels with/from Deloitte: "How many TMCH records include a TM+50 list; and how many are on this list on average? How many registrations were made for entries on the TM+50 list?The abused domain name labels can only be added in the event that a submitted trademark record has been verified. In this respect, 209 UDRP cases have been submitted to the trademark records linked to 209 TMCH records. These URDP cases cover in total 375 abused domain name labels. " Kristine Dorrain - Amazon Registry Services:@Paul. Nothing. Every item should have a validation/verification. TM, statute or treaty. Kristine Dorrain - Amazon Registry Services:@Paul, it's an excel spreadsheet. As long as a word can check the box, it's in. Unless we're saying someone is not properly checking a box, then I'm still not sure what the problem is. Paul Tattersfield:Is there a box to even check? Should there be? etc. Kristine Dorrain - Amazon Registry Services:Yes. EVERY entry has to be validated Kristine Dorrain - Amazon Registry Services:There is no "claiming to be a GI so I skip validation" step that I'm aware of. Edward Morris:Thanks Mary. Very useful. So TM+1.79 may be the average, if I undrrstand things correctly. Kristine Dorrain - Amazon Registry Services:LOL Ed. Edward Morris:@Kristine. My new proposal. I always liked decimal points. :) George Kirikos:Identical match for inclusion. But, I can see where a 'fuzzy match' might have some value, for informational purposes. George Kirikos:Thanks for the history, though, Kathy. Mary Wong:@Ed, my understanding is that a TM owner can submit 1 label for various TMs in one UDRP proceeding, or several for the same. Edward Morris:Thanks Mary. So we really don't have the numbers I'm looking for. Mary Wong:The question of "identical match" has attracted a lot of public comments, on both "sides", throughout the whole process of developing the TMCH - from the IRT to STI to the various AGB versions. Mike Rodenbaugh:+1 Susan - this is a key issue for discussion George Kirikos:Fuzzy matches would deter some of the intentional typosquatting. George Kirikos:But, I can see how some less informed people might feel a chilling effect. Sophisticated domain name owners wouldn't be deterred, but not everyone is equally educated. Mike Rodenbaugh:+1 George, there would be some deterrence. Chilling effect is debatable/unproven Mary Wong:Sorry, what will the sub group be doing? Pascal Boehner:+ 1 Susan & Mike: "Identical match" is fundamental, should be discussed by the whole WG George Kirikos:@Mike: I think for the registrant warning, it would need to be different language if it was an exact match, vs if it was just a "fuzzy" match. George Kirikos:(for sunrise, no rights to "fuzzy" versions of a mark) Georges Nahitchevansky:I agree that the identical match issues is one to look into. There have been situations where TMCH has taken an overly narrow view on the issue, which then has implications re sunrise etc. Mary Wong:Note that the Analysis Group's Final Report on the TMCH has some observations on this question as well. Edward Morris:+1 Mary. Was useful. Susan Payne:where are we getting the charter Qs out to? Mark Massey:Perhaps it would be useful to look at all of these questions from the perspective of someone trying to start a business not just existing trademart holders Kristine Dorrain - Amazon Registry Services:agree Susan...are we publishing something? Maxim Alzoba (FAITID):could we try to request IBM person to be there? Jeff Neuman:I would also note that the first hour and a half conflict with the subsequent procedures working group Maxim Alzoba (FAITID):the reason is, if the deny it, we might think that the service is not important for IBM John McElwaine:@Jeff maybe we can push it back Jeff Neuman:we tried, but ICANN could not move either meeting Maxim Alzoba (FAITID):we will need IBM representative to avoid Deloitte answering each time - we need to check it with IBM Kristine Dorrain - Amazon Registry Services:Maxim, do we have technical questions? Maxim Alzoba (FAITID):yes George Kirikos:Perhaps an email reminding folks of the times, URLs for remote participation, and times in different time zones might help. Maxim Alzoba (FAITID):it is related to AGB and TMCH , standards of service (downtimes and customer service quality) - it is referenced in TM Clearinghouse part of AGB Mary Wong:@George, we will send out the information George Kirikos:(since the URLs for remote participation are different than our usual link) George Kirikos:Thanks Mary. Mary Wong:@Maxim, it is probably too late to invite IBM unless they are already planning to be in Copenhagen (which I believe they are not). But we have sent them a few questions and are awaiting answers, and we can also invite them to a future call. Jeff Neuman:@KAthy - take comments on email Jeff Neuman:we are thinking Philip Corwin:We shall do our best as co-chairs George Kirikos:March 22? Kristine Dorrain - Amazon Registry Services:Maxim, is that related to the TMCH as an RPM and a charter question or more about the integration of TMCH with contracted parties, which might be a better fit for SubPro? Maxim Alzoba (FAITID):@Mary, as I understand we asked about it during 22nd FEB 2017. George Kirikos:March 29th, then. Susan Payne:I'd like to have a substantive discussion on some of these open issues - matching rules Maxim Alzoba (FAITID):@Kristine, it is about material for those who will look into AGB and TMCH intersections Kristine Dorrain - Amazon Registry Services:+1 susan David McAuley (RySG):Thanks all, good bye George Kirikos:Bye folks. Maxim Alzoba (FAITID):thanks all , safe travels Martin Silva Valent:bye bye ! Philip Corwin:bye all. See you in CPH Martin Silva Valent:see u there Paul Tattersfield:bye all

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List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)
by Mary Wong Feb. 28, 2017

Feb. 28, 2017

Dear all, I’m sending this message on behalf of Rebecca Tushnet in relation to one Action Item from the 15 February Working Group call. This was for her to take the lead in suggesting some examples of design marks that we can send to Deloitte for their opinion on whether the examples will or will not likely be accepted into the TMCH. Please review the attached examples and send your comments to this list. Thank you. Cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: Action items and updated documents from Working Group call of 15 February Dear all, This is just a gentle reminder to circulate your suggestions this week for follow up questions and clarifications for Deloitte, based on the Working Group’s discussions to date of the tables for Categories 1 – 6. To assist those who were not able to attend both sessions where the tables were discussed: · Wiki page containing call recording, transcript and updated table from 15 February (discussion of Categories 3 – 6): https://community.icann.org/x/TZ3DAw · Wiki page containing call recording, transcript, AC chat, updated table from 8 February (last discussion of Categories 1 -2), and compilation of TMCH Dispute Resolution Procedures: https://community.icann.org/x/Q53DAw. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Action items and updated documents from Working Group call of 15 February Dear all, Please find attached the updated Tabular Summary for Categories 3-6 for your review (also posted to the Working Group wiki page with notes and recordings for this call, at https://community.icann.org/x/TZ3DAw) Please also note the following action items, which are also reflected in the updated table. Action Items: · On Q7 (design marks) – Rebecca Tushnet to take the lead in developing a few examples of hypothetical design marks for sending to Deloitte for their views · On Q8 (Geographical Indicators) – Staff to confirm with OriGIn who may be able to submit G.I.s. · On Q9 (TM+50) – Working Group to review questions submitted by the Registries Stakeholder Group with a view toward agreement on whether to send them on to Deloitte · On Q14 (Accessibility) – Working Group to consider if there are additional/alternative sources that can provide us with more information. · [From last week] – please review the updated Tabular Summary for Categories 1 & 2 from last week and submit any follow up questions or suggestions for Deloitte to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw. · [From last week] – please review the TMCH Dispute Resolution Procedures and suggest areas for discussion or follow up to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw. Next Steps: · Staff will compile additional suggestions received from Working Group members on possible questions and requests for follow up with Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last week) and for Categories 3-6. Please try to submit your feedback by close of business in your time zone on Tuesday 21 February at the latest so that we can have a full list ready as soon as possible. Thank you. Cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for RPM Working Group call on 15 February Dear all, The proposed agenda for the next Working Group call, scheduled for 15 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Review table for Categories 3-6, with view to developing additional questions for Deloitte or that require further information 3. Next steps/next meeting Please note that the table for Agenda Item #2 had been circulated previously, on 6 February, and is also available on our Working Group wiki space here: https://community.icann.org/x/_pHRAw. Please note also the Action Items from the meeting last week, which were as follows: · Over the next week, WG members to review the table for Categories 1 & 2 and the discussions to date, in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 (updated table was circulated on 10 February and is also available here: https://community.icann.org/x/_pHRAw) · WG members to also review the TMCH Dispute Resolution Procedures and agree on any follow up questions for Deloitte (the Procedures were circulated on 10 February and are also available here: http://trademark-clearinghouse.com/dispute) Thanks and cheers Mary

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FOR REVIEW: Documents for Working Group call on Wednesday 1 March 2017
by Mary Wong Feb. 28, 2017

Feb. 28, 2017

Hello again everyone, Please find attached the summary table referred to in my earlier email, for your review and discussion on our upcoming call. The table is a compilation of the following: 1. The TMCH Charter questions from Category 3 (Breadth and Reach); 2. Extracts from the 2009 Special Trademark Issues (STI) Review Team report that was approved by the GNSO Council and the Board; 3. The text from Module 5 of the final version of the Applicant Guidebook (AGB, June 2012) describing the TMCH; 4. Extracts from other relevant Program Documentation, such as Deloitte’s TMCH Guidelines; and 5. A column for Working Group discussion and comments (the current text shown is what was in the last version of the Tabular Summary as circulated last week). This table, as well as the foundational documents for the TMCH that were circulated previously – the framework description from Module 5 of the AGB and the recommendations from the STI – has now been uploaded to the Working Group wiki space for this call: https://community.icann.org/x/YZ3DAw. You’ll also find the staff-compiled Chronological Table about the development of the TMCH on the same wiki page for reference. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Mary Wong <mary.wong(a)icann.org> Date: Tuesday, February 28, 2017 at 15:03 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Agenda for Working Group call on Wednesday 1 March 2017 Dear all, The proposed agenda for our next Working Group meeting on 1 March 2017, at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss whether the TMCH as operated today fulfills the requirements in the Applicant Guidebook for the 2012 New gTLD Program round for specified TMCH Charter Questions (see below) 3. Review and agree on proposed agenda for the Working Group meetings at ICANN58 4. Reminder: remote participation for ICANN58 sessions 5. Next steps/next meeting (note: no Working Group call scheduled for 8 March 2017) For Agenda Item #2, please refer to the materials that were circulated on Friday 24 February (i.e. the June 2012 TMCH framework published in Module 5 of the Applicant Guidebook, the December 2009 recommendations from the Special Trademark Issues (STI) Review Team, and the chronological table of documents, community work and other milestones in the development of the final form of the TMCH) as well as a further summary table that will be circulated very shortly. Proposed agendas for the ICANN58 sessions will also be circulated as soon as they are available. All documents will be posted to the Working Group wiki page for this call for your easy reference. Thanks and cheers Mary

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Re: [gnso-rpm-wg] Agenda for Working Group call on Wednesday 1 March 2017
by Paul Keating Feb. 28, 2017

Feb. 28, 2017

All, I will be traveling at that time in route to Boston. Sorry for missing the call. Paul Keating From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Mary Wong <mary.wong(a)icann.org> Date: Tuesday, February 28, 2017 at 9:03 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Agenda for Working Group call on Wednesday 1 March 2017 > Dear all, > > The proposed agenda for our next Working Group meeting on 1 March 2017, at > 1700 UTC, is as follows: > > 1. Roll call (via Adobe Connect and phone bridge only) and updates to > Statements of Interest > > 2. Discuss whether the TMCH as operated today fulfills the requirements > in the Applicant Guidebook for the 2012 New gTLD Program round for specified > TMCH Charter Questions (see below) > > 3. Review and agree on proposed agenda for the Working Group meetings at > ICANN58 > > 4. Reminder: remote participation for ICANN58 sessions > > 5. Next steps/next meeting (note: no Working Group call scheduled for 8 > March 2017) > > > For Agenda Item #2, please refer to the materials that were circulated on > Friday 24 February (i.e. the June 2012 TMCH framework published in Module 5 of > the Applicant Guidebook, the December 2009 recommendations from the Special > Trademark Issues (STI) Review Team, and the chronological table of documents, > community work and other milestones in the development of the final form of > the TMCH) as well as a further summary table that will be circulated very > shortly. Proposed agendas for the ICANN58 sessions will also be circulated as > soon as they are available. > > All documents will be posted to the Working Group wiki page for this call for > your easy reference. > > Thanks and cheers > Mary > > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Agenda for Working Group call on Wednesday 1 March 2017
by Mary Wong Feb. 28, 2017

Feb. 28, 2017

Dear all, The proposed agenda for our next Working Group meeting on 1 March 2017, at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss whether the TMCH as operated today fulfills the requirements in the Applicant Guidebook for the 2012 New gTLD Program round for specified TMCH Charter Questions (see below) 3. Review and agree on proposed agenda for the Working Group meetings at ICANN58 4. Reminder: remote participation for ICANN58 sessions 5. Next steps/next meeting (note: no Working Group call scheduled for 8 March 2017) For Agenda Item #2, please refer to the materials that were circulated on Friday 24 February (i.e. the June 2012 TMCH framework published in Module 5 of the Applicant Guidebook, the December 2009 recommendations from the Special Trademark Issues (STI) Review Team, and the chronological table of documents, community work and other milestones in the development of the final form of the TMCH) as well as a further summary table that will be circulated very shortly. Proposed agendas for the ICANN58 sessions will also be circulated as soon as they are available. All documents will be posted to the Working Group wiki page for this call for your easy reference. Thanks and cheers Mary

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Further information on the Pre-ICANN58 Policy Open House
by Mary Wong Feb. 27, 2017

Feb. 27, 2017

Hello everyone, As we have some new ICANN community participants in our Working Group, staff thought it might be helpful to provide some additional background on the Pre-ICANN58 Policy Open House webinar. It has been a regular practice for the ICANN Policy Staff to conduct a webinar, prior to each ICANN Public Meeting, to update the community on current policy work that is taking place across the ICANN community (and not just the GNSO). For the community veterans, you’ll see that this new Open House is essentially the old Policy Update webinar, with a substantially revamped format in light of feedback to try to provide a more interactive and relevant experience for all. We encourage you to attend the Open House if you’re interested in what else is going on in the GNSO and the other ICANN Supporting Organizations and Advisory Committees (SO/ACs); however, to get the most out of your time we strongly encourage you to first read the very brief Policy Update papers linked in Nathalie’s message – the first is an overall update across all SO/ACs focusing on what you can expect from each group at ICANN58; the second is a set of very short (around 2 pages per PDP) Briefing Papers that GNSO Policy Staff publishes to facilitate community members’ preparations for the various GNSO sessions. Please feel free to submit any questions you may have that you wish to be asked and answered during the Open House – I’m happy to forward these if you’ll send them to me. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Nathalie Peregrine <nathalie.peregrine(a)icann.org> Date: Monday, February 27, 2017 at 08:02 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Announcement: Pre-ICANN58 Policy Open House Registration https://www.icann.org/news/announcement-2017-02-27-en[icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_ann…> Pre-ICANN58 Policy Open House Monday, 6 March 2017 10:00 UTC and 19:00 UTC Please register via this form[goo.gl]<https://urldefense.proofpoint.com/v2/url?u=https-3A__goo.gl_vZw8kM&d=DwMGaQ…> by 3 March 2017! 27 February 2017 The Policy Development Support Team is pleased to announce two sessions for the Pre-ICANN58 Policy Open House on Monday, 6 March 2017 at 10:00 UTC and 19:00 UTC. The Policy Open House builds on the previous Policy Update Webinar and incorporates more interaction. The focus of each open house session is an active question and answer session with the Policy Development Support Team. The new format will feature: · Decreased Duration | Two 60-minute sessions, rather than two 90-minute briefings · Interactive Format | A question and answer exchange with the Policy Team · Preparatory Materials | The Pre-ICANN58 Policy Report[icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_resource…> and Generic Names Supporting Organization Policy Briefing ICANN58 Edition[gnso.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issu…> This improved structure will allow the ICANN community to ask questions about policy and advice development work taking place at ICANN58. The Policy Team also welcomes questions through the registration form[goo.gl]<https://urldefense.proofpoint.com/v2/url?u=https-3A__goo.gl_forms_dVbmhQOT8…> and via email at policyinfo(a)icann.org<mailto:policyinfo@icann.org>. The Policy Team will provide brief overviews and answer questions regarding current work within each Supporting Organization and Advisory Committee: · Address Supporting Organization (ASO) · Address Supporting Organization Address Council Annual Meeting · Internet Assigned Numbers Authority (IANA) Numbering Services Review Committee Meeting · Country Code Names Supporting Organization (ccNSO) · Implementation of the Processes and Mechanisms Related to The Empowered Community · Interim Report Cross-Community Working Group: Framework for Use of Country and Territory Names as Top Level Domains open for Public Comment · Policy Development Process regarding the retirement of country code Top Level Domains and the development of a review mechanism for the decisions on delegation, revocation and retirement of country code Top Level Domains · Generic Names Supporting Organization (GNSO) · Generic Names Supporting Organization Policy Development Processes (including new generic Top Level Domain Subsequent Procedures, the Review of All Rights Protection Mechanisms (RPMs) in All generic Top Level Domains, the Next-Generation Registration Directory Service (RDS) to Replace WHOIS, the International Governmental Organization (IGO)-International Non-Governmental Organization (INGO) Access to Curative Rights Protection Mechanisms) · Non-Policy Issues (such as Generic Names Supporting Organization Review Implementation, Bylaws updates and Generic Name Supporting Organization Standing Selection Committee) · Cross-Community Working Groups (including new generic Top Level Domain Auction Proceeds and Use of Country & Territory names as Top Level Domains) · At-Large Advisory Committee (ALAC) and At-Large Community · The At-Large Review · The work of the At-Large Structures Criteria and Expectations Taskforce · At-Large and Work Stream 2 Issues · Governmental Advisory Committee (GAC) · Protection of Red Cross/Red Crescent national names & Protection of International Governmental Organization acronyms · Accountability Work Stream 2 Issues · Input to Generic Names Supporting Organization Policy Development Process on Subsequent Procedures for new generic Top Level Domains and Registration Directory Services · Root Server System Advisory Committee (RSSAC) · [RSSAC023]: History of the Root Server System · [RSSAC024]: Key Technical Elements of Potential Root Operators · [RSSAC025]: Root Server System Advisory Committee October 2016 Workshop Report · Security and Stability Advisory Committee (SSAC) Update · [SAC091]: Security and Stability Advisory Committee Comment on Identifier Technology Health Indicators (20 January 2017) · [SAC090]: Security and Stability Advisory Committee Advisory on the Stability of the Domain Namespace (22 December 2016) · [SAC089]: Security and Stability Advisory Committee Response to ccNSO Comments on SAC084 (12 December 2016) The open house will run in English and will be conducted in Adobe Connect along with a dial-in conference bridge for audio. Recordings of the sessions will be made available here[icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_resource…>. The Policy Team looks forward to assisting the ICANN community prepare for ICANN58! Please register via this form[goo.gl]<https://urldefense.proofpoint.com/v2/url?u=https-3A__goo.gl_vZw8kM&d=DwMGaQ…> by 3 March 2017!

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Announcement: Pre-ICANN58 Policy Open House Registration
by Nathalie Peregrine Feb. 27, 2017

Feb. 27, 2017

https://www.icann.org/news/announcement-2017-02-27-en Pre-ICANN58 Policy Open House Monday, 6 March 2017 10:00 UTC and 19:00 UTC Please register via this form<https://goo.gl/vZw8kM> by 3 March 2017! 27 February 2017 The Policy Development Support Team is pleased to announce two sessions for the Pre-ICANN58 Policy Open House on Monday, 6 March 2017 at 10:00 UTC and 19:00 UTC. The Policy Open House builds on the previous Policy Update Webinar and incorporates more interaction. The focus of each open house session is an active question and answer session with the Policy Development Support Team. The new format will feature: · Decreased Duration | Two 60-minute sessions, rather than two 90-minute briefings · Interactive Format | A question and answer exchange with the Policy Team · Preparatory Materials | The Pre-ICANN58 Policy Report<https://www.icann.org/resources/pages/presentations-2012-08-27-en> and Generic Names Supporting Organization Policy Briefing ICANN58 Edition<https://gnso.icann.org/en/issues/background-briefings> This improved structure will allow the ICANN community to ask questions about policy and advice development work taking place at ICANN58. The Policy Team also welcomes questions through the registration form<https://goo.gl/forms/dVbmhQOT8sakSsmg2> and via email at policyinfo(a)icann.org<mailto:policyinfo@icann.org>. The Policy Team will provide brief overviews and answer questions regarding current work within each Supporting Organization and Advisory Committee: · Address Supporting Organization (ASO) · Address Supporting Organization Address Council Annual Meeting · Internet Assigned Numbers Authority (IANA) Numbering Services Review Committee Meeting · Country Code Names Supporting Organization (ccNSO) · Implementation of the Processes and Mechanisms Related to The Empowered Community · Interim Report Cross-Community Working Group: Framework for Use of Country and Territory Names as Top Level Domains open for Public Comment · Policy Development Process regarding the retirement of country code Top Level Domains and the development of a review mechanism for the decisions on delegation, revocation and retirement of country code Top Level Domains · Generic Names Supporting Organization (GNSO) · Generic Names Supporting Organization Policy Development Processes (including new generic Top Level Domain Subsequent Procedures, the Review of All Rights Protection Mechanisms (RPMs) in All generic Top Level Domains, the Next-Generation Registration Directory Service (RDS) to Replace WHOIS, the International Governmental Organization (IGO)-International Non-Governmental Organization (INGO) Access to Curative Rights Protection Mechanisms) · Non-Policy Issues (such as Generic Names Supporting Organization Review Implementation, Bylaws updates and Generic Name Supporting Organization Standing Selection Committee) · Cross-Community Working Groups (including new generic Top Level Domain Auction Proceeds and Use of Country & Territory names as Top Level Domains) · At-Large Advisory Committee (ALAC) and At-Large Community · The At-Large Review · The work of the At-Large Structures Criteria and Expectations Taskforce · At-Large and Work Stream 2 Issues · Governmental Advisory Committee (GAC) · Protection of Red Cross/Red Crescent national names & Protection of International Governmental Organization acronyms · Accountability Work Stream 2 Issues · Input to Generic Names Supporting Organization Policy Development Process on Subsequent Procedures for new generic Top Level Domains and Registration Directory Services · Root Server System Advisory Committee (RSSAC) · [RSSAC023]: History of the Root Server System · [RSSAC024]: Key Technical Elements of Potential Root Operators · [RSSAC025]: Root Server System Advisory Committee October 2016 Workshop Report · Security and Stability Advisory Committee (SSAC) Update · [SAC091]: Security and Stability Advisory Committee Comment on Identifier Technology Health Indicators (20 January 2017) · [SAC090]: Security and Stability Advisory Committee Advisory on the Stability of the Domain Namespace (22 December 2016) · [SAC089]: Security and Stability Advisory Committee Response to ccNSO Comments on SAC084 (12 December 2016) The open house will run in English and will be conducted in Adobe Connect along with a dial-in conference bridge for audio. Recordings of the sessions will be made available here<https://www.icann.org/resources/pages/presentations-2012-08-27-en>. The Policy Team looks forward to assisting the ICANN community prepare for ICANN58! Please register via this form<https://goo.gl/vZw8kM> by 3 March 2017!

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FOR REVIEW & DISCUSSION: Information on the development of the final scope of the TMCH
by Mary Wong Feb. 24, 2017

Feb. 24, 2017

Dear all, To follow up on the last Working Group call, please find attached the following documents which we hope will be helpful in the discussion over “whether the TMCH as it operates today fulfills the requirements of the Applicant Guidebook for the 2012 New gTLD Program round” (Agenda Item #3 from last week, deferred for discussion on the upcoming call on 1 March): · The final TMCH framework document, as published in the final version of the Applicant Guidebook for the 2012 New gTLD Program (June 2012); · The report from the GNSO Special Trademark Issues (STI) Review Team (December 2009); and · A staff-compiled Chronological Table of TMCH Developments, outlining the major steps, documents and milestones in the evolution of the TMCH All the above documents have also been uploaded to the Working Group wiki space, at https://community.icann.org/x/0AusAw (for the first two documents), and https://community.icann.org/x/_pHRAw (for the staff table). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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TMCH Independent Review Revised Report has just been published
by Mary Wong Feb. 24, 2017

Feb. 24, 2017

Dear all, You might like to know that the Revised Report from the Analysis Group on the TMCH Independent Review has just been published: https://www.icann.org/news/announcement-2017-02-23-en. As you may recall, the Analysis Group’s initial report was published for public comment in late July 2016, and this Revised Report incorporates some suggestions made by commentators and includes clarifications on some of the data that was used. Our Working Group’s Data Gathering Sub Team also discussed the findings in the initial report and met with the Analysis Group during that time. The Revised Report has been published in both a clean and a “redlined” version, to facilitate reading and comparison. Please feel free to share any comments you may have on the Revised Report as they relate to our work on the TMCH review via this mailing list. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Re: [gnso-rpm-wg] [Ext] Re: List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)
by Mary Wong Feb. 23, 2017

Feb. 23, 2017

Hello Paul, Some clarity can be found in Section 3.6 of the TMCH document, which states that, for this Section 3.2.4: 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. In that regard, our Data Gathering Sub Team had sought information from Deloitte as to how many marks had been submitted under this category. Deloitte’s answer was that no registry operator has pursued this option with the TMCH to date. As requested, staff has added a link to the Final TMCH Framework Document (as published in the final version of the Applicant Guidebook (AGB) in June 2012) to the list of TMCH resources on the Working Group wiki space (https://community.icann.org/x/0AusAw) You can also access it directly from ICANN’s microsite for the 2012 New gTLD Program, at https://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun1…) This TMCH Framework Document, as well as the full STI report on which the features of the TMCH were based (starting from AGB version 4, in 2010) and other materials showing the development of the final scope of the TMCH, has been included in a chronological tabular compilation of such materials which is currently being reviewed by the co-chairs. Thanks and cheers Mary From: Paul Keating <Paul(a)law.es> Date: Thursday, February 23, 2017 at 14:31 To: Mary Wong <mary.wong(a)icann.org>, Greg Shatan <gregshatanipc(a)gmail.com>, "Beckham, Brian" <brian.beckham(a)wipo.int> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) 3.2.4 Other marks that constitute intellectual property. I confess to not having read the document in a long time (Mary could you provide a link?). However, the above seems to include virtually any type of mark including the figurative element/design marks we have been discussing. PRK From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 23, 2017 at 8:12 PM To: Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>>, "Beckham, Brian" <brian.beckham(a)wipo.int<mailto:brian.beckham@wipo.int>> 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] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Hello all – in response to Brian and Greg, I’m forwarding the message below on behalf of Rebecca Tushnet, as her email does not seem to have reached the full mailing list. In addition, Working Group members may wish to review the final TMCH framework document that was published in the final version of the Applicant Guidebook (AGB) in June 2012, following previous versions that had appeared in earlier iterations (AGB v4 through 9) based on ICANN staff implementation of the STI recommendations. The final TMCH framework notes that the standards for inclusion into the TMCH 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 mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. Here is Rebecca’s email, in full: As I'm still having trouble posting to the list, I'd appreciate it if someone would forward this. From the Recommendations of the Special TM Issues Review Team, 2009, reflecting both the rough consensus and the business constituency minority: The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Many members of this working group believe that the TMCH shouldn't make "judgment calls" limiting registrants' entitlements under the TMCH system. This is an understandable conclusion, and one I'm inclined to endorse for ease of implementation, but one that has the practical effect of expanding the ability of registrants to control domain names beyond the goods and services for which their marks are registered. At the very least, the same modesty of judgment counsels against the TMCH making judgments about what the important parts of a registered mark are, given the mandate not to expand rights. If someone does have a registration for a word mark without design elements, they can submit it. In response to Greg Shatan’s note, I’m happy to add in additional information that would help Deloitte evaluate the registration, though I doubt I want to shell out for verified copies of the registrations at issue. I have added in a question at the beginning of my list to ask for clarification of what qualifies as “prominent” in Deloitte’s inquiry. In response to Brian Winterfeldt’s specific concerns, I don’t think the issue the Working Group is concerned with is simply with “generic” terms—though given the TMCH’s coverage of domain names regardless of the underlying goods and services, the fact that PARENTS might not be generic for a magazine about parenting is not particularly significant, as our previous discussions of registrations for “and,” “the,” etc. indicate. I used “parents” because of Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) (“[T]he district court ... properly distinguished between the strength of the trademark PARENTS and the weak, descriptive nature of what it called the ‘mere word “parents”.’ … [T]he trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word ‘parent,’ such term being more generic than descriptive.”). I thought CARS was a strong additional suggestion because of the clear limit on Disney’s rights to the term with associated image. I added FRUIT OF THE LOOM at J. Scott’s suggestion. It seems to me that FRUIT OF THE LOOM makes a good test case precisely because of the issue Brian W. identifies: by using the graphic version we can see whether Deloitte is in fact making judgments about what’s “important” in the registration submitted to it. The question is not whether textual matter standing alone is registrable; the question is whether it is registered. My understanding is that this was an important limit on the TMCH, which by consensus does not cover common-law rights that may exist in variants on a registered mark. So this is a mark that could help us understand what Deloitte is doing. A small point about Brian W's statement that “our preliminary search did not yield a basic word mark for CARS owned by the same entity as the listed CARS design mark (Disney), this is likely because they only use the design mark in commerce and would not be able to show actual use in commerce of the basic word mark, a fundamental requirement of trademark registration in the US”: In fact, where a word mark is used only in one font or with one design, it can still be registered as a word mark (in standard character form) as long as the word standing alone is registrable. Thus, use in commerce of a stylized version of a word constitutes “use in commerce” of the associated word. The barrier to Disney’s registration of CARS as a standard character mark is assuredly not “use in commerce”; it is the more fundamental issue of whether CARS can serve as a trademark without its recognizable stylization indicating the Disney franchise. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011) (explaining the scope of a standard character mark). I think it’s a great idea to add an example of “marks where the underlying word element is expressly disclaimed in the registration.” MUSIC has been suggested, which I think is a very good example, as well as stylized letters such as A. The recently litigated OWN YOUR POWER case, where the Second Circuit noted that there was no claim to the words apart from their stylized presentation, says instead “[t]he color(s) light blue is/are claimed as a feature of the mark,” and so it is probably also worth adding. From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>> Date: Thursday, February 23, 2017 at 10:59 To: "Beckham, Brian" <brian.beckham(a)wipo.int<mailto:brian.beckham@wipo.int>> 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] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Brian, Thanks for asking that. I'm sure it's "somewhere" we could find it eventually, but having it in this thread would be very helpful. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Feb 23, 2017 at 6:44 AM, Beckham, Brian <brian.beckham(a)wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, all, particularly further to Greg's concluding question (re different understandings of what we are trying to achieve), would you be so kind as to remind us what it was the GNSO said on this? Did the recommendations e.g. bar all marks with stylized text or design elements (which would seem in trademark law terms to be a somewhat misguided overcorrection) or was the recommendation concerned with marks in which the entire textual element was disclaimed? It seems that much of the discussion here on generic vs dictionary terms at least is rightly focused on the latter, but clarity would be welcome. Thanks! Brian On 22 February 2017 at 18:39:58 GMT, Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: I agree with J. Scott that asking Deloitte to tell us "if the textual elements of Rebecca’s examples and for an explanation of their analysis would be very enlightening and helpful." It is good to wrestle with real world issues through real world examples. Tx you, Rebecca, for providing this input. Re: Paul's suggestion, why not add to our questions for Deloitte the one he has shared: "what rules are applied in practice to determine the "prominent" textual aspects of a figurative mark?" These seems quite relevant to our work. Frankly, I think we have to wrestle too with the question of why Deloitte is accepting figurative marks at all -- particularly when the GNSO Policy Recommendations (as adopted by the GNSO Council and then the Board) appear to bar them in favor of text marks/word marks only. But that's a question for a different time... Best, Kathy On 2/22/2017 5:48 AM, J. Scott Evans via gnso-rpm-wg wrote: Team: I disagree with Paul. I think asking Deloitte to tell us if the textual elements of Rebecca’s examples and for an explanation of their analysis would be very enlightening and helpful. J. Scott Evans From: <gnso-rpm-wg-bounces(a)icann.org><mailto:gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul(a)law.es><mailto:paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong(a)icann.org><mailto:mary.wong@icann.org> 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] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) While a laudable effort imho this will not likely receive a useful response. It might be more productive to simply request a list of those Figurative marks that have been accepted. Alternatively ask what rules are applied in practice to determine the "prominent" textual aspects of a figurative mark. The issue I feel is not the figurative containing textual elements otherwise registrable. Rather we are really after a figurative mark used to protect a textual element not otherwise protectable as a trademark. E.g. "Fast Cars" with a green squiggly mark to claim rights in fast cars to sell automobiles. Sincerely, Paul Keating, Esq. On Feb 22, 2017, at 7:47 AM, Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, I’m sending this message on behalf of Rebecca Tushnet in relation to one Action Item from the 15 February Working Group call. This was for her to take the lead in suggesting some examples of design marks that we can send to Deloitte for their opinion on whether the examples will or will not likely be accepted into the TMCH. Please review the attached examples and send your comments to this list. Thank you. Cheers Mary From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Monday, February 20, 2017 at 12:23 To: "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: Action items and updated documents from Working Group call of 15 February Dear all, This is just a gentle reminder to circulate your suggestions this week for follow up questions and clarifications for Deloitte, based on the Working Group’s discussions to date of the tables for Categories 1 – 6. To assist those who were not able to attend both sessions where the tables were discussed: · Wiki page containing call recording, transcript and updated table from 15 February (discussion of Categories 3 – 6): https://community.icann.org/x/TZ3DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> · Wiki page containing call recording, transcript, AC chat, updated table from 8 February (last discussion of Categories 1 -2), and compilation of TMCH Dispute Resolution Procedures: https://community.icann.org/x/Q53DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 16, 2017 at 18:37 To: "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: Action items and updated documents from Working Group call of 15 February Dear all, Please find attached the updated Tabular Summary for Categories 3-6 for your review (also posted to the Working Group wiki page with notes and recordings for this call, at https://community.icann.org/x/TZ3DAw)[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. Please also note the following action items, which are also reflected in the updated table. Action Items: · On Q7 (design marks) – Rebecca Tushnet to take the lead in developing a few examples of hypothetical design marks for sending to Deloitte for their views · On Q8 (Geographical Indicators) – Staff to confirm with OriGIn who may be able to submit G.I.s. · On Q9 (TM+50) – Working Group to review questions submitted by the Registries Stakeholder Group with a view toward agreement on whether to send them on to Deloitte · On Q14 (Accessibility) – Working Group to consider if there are additional/alternative sources that can provide us with more information. · [From last week] – please review the updated Tabular Summary for Categories 1 & 2 from last week and submit any follow up questions or suggestions for Deloitte to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. · [From last week] – please review the TMCH Dispute Resolution Procedures and suggest areas for discussion or follow up to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. Next Steps: · Staff will compile additional suggestions received from Working Group members on possible questions and requests for follow up with Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last week) and for Categories 3-6. Please try to submit your feedback by close of business in your time zone on Tuesday 21 February at the latest so that we can have a full list ready as soon as possible. Thank you. Cheers Mary From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, February 14, 2017 at 11:08 To: "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: Proposed agenda and documents for RPM Working Group call on 15 February Dear all, The proposed agenda for the next Working Group call, scheduled for 15 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Review table for Categories 3-6, with view to developing additional questions for Deloitte or that require further information 3. Next steps/next meeting Please note that the table for Agenda Item #2 had been circulated previously, on 6 February, and is also available on our Working Group wiki space here: https://community.icann.org/x/_pHRAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. Please note also the Action Items from the meeting last week, which were as follows: · Over the next week, WG members to review the table for Categories 1 & 2 and the discussions to date, in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 (updated table was circulated on 10 February and is also available here: https://community.icann.org/x/_pHRAw)[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> · WG members to also review the TMCH Dispute Resolution Procedures and agree on any follow up questions for Deloitte (the Procedures were circulated on 10 February and are also available here: http://trademark-clearinghouse.com/dispute)[trademark-clearinghouse.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghou…>. Thanks and cheers Mary <List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx> _______________________________________________ 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 _______________________________________________ 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 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. 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