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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Feb. 8, 2017

Feb. 8, 2017

Dear All, Please find the attendance of the call attached to this email and 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, 08 February 2017 at 18:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/Q53DAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-08feb17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p8bvr705fpg/?OWASP_CSRFTOKEN=3301ff0f1fff3dfc 78bdba634380b2dc21423ab6ed922f1b623118fc8ae11f01> https://participate.icann.org/p8bvr705fpg/ 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 08 February 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 08 February 2017 at 18:00 UTC for 60 minutes Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q 53DAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ Q53DAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p 4&s=SHIx7tui6WpaWADTn2cmYHV8hhlNFKfjgpZu6M2CoKw&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=SH Ix7tui6WpaWADTn2cmYHV8hhlNFKfjgpZu6M2CoKw&e= Petter Rindforth:Hi, just a note that I have to be on another call at the same time, so I will only follow you/participate (mutely) online this time. Terri Agnew:thank you for this information Petter George Kirikos:Hi folks. Maxim Alzoba (FAITID):Hello All Philip Corwin:hello/dialing in now Ivett Paulovics:Hi everyone! Paul Tattersfield:Hi Everyone GraceM:hey Salvador Camacho:Hello everybody Ankur Raheja:Hello Martin Silva:Hi all Steve Levy:Hello all! George Kirikos:Perhaps Rebecca can email her statement to the mailing list. Rebecca Tushnet:My comment--my apologies for having to leave so soon: Rebecca Tushnet:the text symbols accepted into the TMCH and used to send notifications in case of matches, or used for Sunrise registration, should themselves be valid marks; if the symbols alone do not fully comprise a registered mark, the registration should not be accepted into the TMCH.]Special Trademark Issues Review TeamRecommendations, Rough consensus: The TC Database should be required to include nationally or multinationally registered "text mark" trademarks, fromall jurisdictions, . (Thetrademarks to be included in the TC are text marks because "design marks" provideprotection for letters and words only within the context of their design or logo and theSTI was under a mandate not to expand existing trademark rights.) Minority opinion of BC: did not like this overall provision because they wanted broader matching, but did not argue that text + design marks should be accepted as text entries in TMCH Mary Wong:Thanks, Rebecca - staff will note your comment. George Kirikos:Very fast typing! (or copy/paste) :-) Rebecca Tushnet:That last bit was a quote from the recommendations; it is my belief that the current rules implemented by the TMCH are not consistent with this direction Rebecca Tushnet:Sorry for going out of order! Paul keating:hi sorry for being late. Mary Wong:@George, if you think Rebecca types quickly (she DOES!) you should see her live-blogging. It's awesome :) George Kirikos::-) George Kirikos:The middle column is new, I think. J. Scott Evans:Yes, I had seen this last week. Paul Tattersfield:It was in two? parts Paul Tattersfield:it was available in parts earlier this week Susan Payne:it does pulltogether information we have seen already, ie responses from Deloitte and responses from the Registries which we have discussed George Kirikos:Right, first time consolidated like this before the "live" working group calls. Maxim Alzoba (FAITID):I wonder, is the situation when TMDB does not allow Registries to connect due to technical issues is a part of RPMs (do mind mediocre responce time of IBM service, few days without a meaningful responce is expected) J. Scott Evans:I still remain unconvinced that there needs to be any education on the Clearinghouse. J. Scott Evans:In contrast, I think registrars should be educating their customers about Sunrise and Trademark Claims. Mary Wong:Maybe one basic question is whether the TMCH should be educating other parties besides rights holders. Kristine Dorrain - Amazon Registry Services:@Mary, for instance, what would they educate on? Kristine Dorrain - Amazon Registry Services:They do educate THEIR users. Mary Wong:@Kristine, right - it may make a difference whether we are talking about the existence and scope of the TMCH vs how Claims and Sunrise work. Kristine Dorrain - Amazon Registry Services:and claims and sunrise are ICANN policies. George Kirikos:If challenges to TMCH recordals are allowed, then it's prospective domain name registrants who would want to be educated (to be able to deny someone else a sunrise registration). Susan Payne:I don't need to speak - completely agree with everything J.Scott has just said, which is what I was going to say Paul keating:I think what is included and how the inclusion decision is made IS an important aspect to openly disclose. Kristine Dorrain - Amazon Registry Services:Paul, that information is readily available. Is it necessary to make that information super easily digestable for the average internet user? If you care enough about the detailed workings of the TMCH, you can find that. J. Scott Evans:Are we sure they don't alreay? One of the big issues in educating users is to make sure there is not a glut of information. J. Scott Evans:Too much information is just as confusing as no information. Mary Wong:Note that what the TMCH is, what it does, and the Guidelines it uses for verification, are all available on the TMCH website and to some extent on the ICANN New gTLDs microsite. Paul keating:j. Scott, education does it only imply formal education. education occurs when information is disclosed, e.g. transparency. Ivett Paulovics:I agree with Philip Corwin J. Scott Evans:@Paul. What transparency are you wanting? J. Scott Evans:If you get a Claims Notice for adobe.software, the claims notice tells you that Adobe is claiming trademark rights in Adobe. J. Scott Evans:If I get adobe.software in a Sunrise Period, it is clear and transparent that I have registered my Adobe trademark registration in the Clearinghouse and that has been verified. George Kirikos:Volume is a bit low for Kristine. Kurt Pritz:One question on education: Should there be affirmative outreach to Trademark holders to make them aware of the TMCH, Sunrise and Claims? I.e., it is one matter for a trademark holder to decide to not participate in the TMCH;it is another matter that a trademark holder not participate because they are unaware of the TMCH one-stop shop. Kristine Dorrain - Amazon Registry Services:Sorry George, will speak up next time. Paul keating:e.g list of registered marks having rights in sunrise. just the list would show the number of potentially expansive registrations such as "the" as noted earlier this week. J. Scott Evans:Again, the free market allows for different versions of these things. Hence, it is up to registries and registrars to educate their consumers. Paul McGrady:@Kristine - agree. There are lots of things people need to know to participate in commerce. I'm not sure how this is in ICANN's remit (or the remit of its contracted parties or vendors for that matter). Marc Trachtenberg:+1 to J. Scott J. Scott Evans:Paul. The Trademark Community will not agree to disclose that information. It is a trade secret. Paul keating:@j Scott. neither of those have sufficient gross revenues to embark on education. Paul keating:how is a list of sunrise qualified registered trademarks a trade secret? George Kirikos:+1 Pauk Keating Kurt Pritz:I think it is ICANN's remit to ensure Trademark holders are aware of the TMCH protections J. Scott Evans:@Paul. How do you know what a registry or registrars revenues are? It seems to me that a service provider (who is smart) will want to ensure that their customers understand the system. Kristine Dorrain - Amazon Registry Services:@ PaulK, gross revenues? Again, it's not global education. It's a registry/registrar providing customer service. George Kirikos:Not a trade secret, when anyone can run a dictionary search to reverse engineer the entire list. Paul keating:I work for them J. Scott Evans:Agree with Kristine Dorrain. Marc Trachtenberg:@ George - how could you run a dictionary search that would show what registrations are entered into the TMCH or registered in various jurisdictions? Paul keating:@kristine. question is who is better positioned to educate. I say all should. you want only the entity with t)3 least interest and least amount of revenue per domain. J. Scott Evans:@George. Yes it is. You do not know which of my 3,000 marks I have deemed important enough to put in the TMCH. THAT tidbit is simply a road map for abuse. We will not agree to that and we were VERY clear during the STI and IRT that this information should not be publicly available. George Kirikos:@Marc: attempt to register tens of thousands of domain names (i.e. working through a "dictionary" -- e.g. a list of all USPTO marks, or some other list(s)), and see which generate notices. Kristine Dorrain - Amazon Registry Services:@PaulK, as others have pointed out, the people with the direct relationship to their own customer should be educating their customer. Paul McGrady:+1 Kristine. Kristine Dorrain - Amazon Registry Services:TMCH=brand owners, RgY/Rgr=RgT George Kirikos:@J.Scott: If I tried to register each of those 3,000 marks, and saw which ones generated TM claims notices, it would be easy to to know which were "deemed important enough to put in the TMCH" Kurt Pritz:Why are we leaving education behind - it seems like we are right in the middle of discussion and at what point to we attempt to answer these questions and get them behind us? Terri Agnew:as a reminder, to active your AC mic, top tool bar, select the telephone icon and follow the prompts Paul keating:j. Scott, I still fail to see how the list is a trade secret. if you have sunrise rights how can that be abused? I want to know the nature of words that have been reserved exclusively for sunrise. J. Scott Evans:@George. There is a difference btwn. handing someone a trade secret and a third party doing a work around or reverse engineering. George Kirikos:"I tried to register each of these 3,000 marks" == "I tried to register them as domain names in new gTLDs". Marie Pattullo:But that's not education about how the TMCH works George, that's education about Adobe's commercial choices. Not the same thing. George Kirikos:@J.Scott: not a big one, when it can be automated at low cost (for someone who cared; I personally don't care to do it, but it wouldn't be hard). Paul keating:the issue is finding abuse. J. Scott Evans:@Paul. The mere listing of a registration in the TMCH does not mean it will be used for a Sunrise. It might be if the TM owner wants a sunrise registration, but they don't need to nor is it automatic. George Kirikos:@Marie: see what Paul Keating said. Paul keating:j. Scott, for me it is seeing if there is abuse. Terri Agnew:Ivett is now connected via telephone with audio George Kirikos:Just like TM owners get a list of matching domain names, to "see if there is abuse". J. Scott Evans:You could put together a list of perceived "abuseive behaviors" and ask Deloitte if there are any TMCH rregistrations that fall within the parameters. If so, how many? That would let us have the information. You don't need to know specific marks to get this analysis. Kristine Dorrain - Amazon Registry Services:Thanks Phil! Paul Tattersfield:@ George - what's the current percentage of abusive registrations in new gTLDs v. more traditional gTLDs? Marc Trachtenberg:@ George - so you are saying if you could game the system and reverse engineer what marks are in the TMCH, that they wouldn't be trade secrets? George Kirikos:@PaulT: depends on the definition of 'abusive'?? George Kirikos:@Marc: I wouldn't call them trade secrets in the first place, given they're disclosed to any potential registrant. Paul keating:@mary we do need further responses from them, particularly in areas where they didn't understand - a good example of which is the 'figurative' mark that was described as design... exec. George Kirikos:Here's a US definition of "trade secret" https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_usc ode_text_18_1839 <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_us code_text_18_1839&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=D Ra2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXB Jrv1SeGIj7p4&s=P15ykteyxgJgvN4V9WsAxbit6HzeMHN6ccZq8V2WiRQ&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=P1 5ykteyxgJgvN4V9WsAxbit6HzeMHN6ccZq8V2WiRQ&e= Mary Wong:@Paul, yes - staff will compile a list based on what Deloitte said they didn't understand, plus WG members' suggestions George Kirikos:Seems it fails under (A), given any prospective registrant can determine the information. Paul keating:j. Scott and Paul, I still fail to see a trade secret here. why do I need to rely upon Deloitte? J. Scott Evans:The trade secret isn't the individual registration listed in the TMCH, but rather, the report showing which marks a trademark owner with multiple marks has chosen to put into the Clearinghouse. Marc Trachtenberg:@ George - the entire list of all trademarks registered by a particular company is not disclosed to a potential registrant in the claims notice Kathy Kleiman:To the discussion above, one of the questions above is Category 1, Question, 1, Section iii: Is the TMCH clearly communicating... options for third parties who may have challenges to or questions about recordals in the TMCH? There should be a way to address this question... George Kirikos:@Marc: It's disclosed via a public US database, and can be easily compared. George Kirikos:(some foreign jurisdictions don't disclose, I know...) Elizabeth Featherman:Sorry, I have to run to a meeting. Marc Trachtenberg:@ George - the worldwide list of all TM registrations is not disclosed in a public US database Mary Wong:@Kathy, we have a note on that which says that as the TMCH Database is not publicly searchable, it may be impossible for third parties to even know what to challenge. Maxim Alzoba (FAITID):@George, some of those wants money :) Susan Payne:@George the whole point is that the confidential part is the tM owner's strategy - which of their marks they decide to pt int he TMCH and which they don't. The marks themselves are all on public TM office databases around the world. the strategy of which they put in the TMCH should not be George Kirikos:Adobe doesn't seem to keep its TMs much of a secret, given they post the list on their website: https://urldefense.proofpoint.com/v2/url?u=http-3A__wwwimages.adobe.com_cont ent_dam_acom_en_legal_licenses-2Dterms_pdf_adobe-5Ftrademark-5Fdatabase-5Fex ternal.pdf <https://urldefense.proofpoint.com/v2/url?u=http-3A__wwwimages.adobe.com_con tent_dam_acom_en_legal_licenses-2Dterms_pdf_adobe-5Ftrademark-5Fdatabase-5Fe xternal.pdf&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXA vSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1Se GIj7p4&s=vjZsIR76XOM58Wc4-4jAKOhcutq3E7FJ2rhEK5plcLg&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=vj ZsIR76XOM58Wc4-4jAKOhcutq3E7FJ2rhEK5plcLg&e= George Kirikos:(although, that list isn't complete) Paul McGrady:RE: "1 year from now", we are just applying ICANN calendar calculation rules, e.g. This is the first round of what is to be an ongoing process forthe introduction of new TLDs = at least an 6 year gap. :) Marie Pattullo:Agree with Susan. Kristine Dorrain - Amazon Registry Services:I'm having a hard time connecting the chat discussion about making the list of marks in the TMCH available to anyone (apparently for the purpose of policing the entries for abuse (as subjectively determined by a 3P?)) with the discussion about education. J. Scott Evans:Oh George. You are just missing my point. None of our trademarks are secret, by virture of the fact they are trademarks. However, which of those marks publicly listed that are in the TMCH, is not a public record. Marie Pattullo:And agree with Kristine too! George Kirikos:@Susan: it's easy to infer their strategy, though. Not being in the TMCH doesn't act as some waiver of the TM owner's rights. Paul keating:@ Mary Phil, per j Scott suggestion pls ask Deloitte for list of all registrations in tmch with sunrise preference and which are dictionary terms. Kurt Pritz:Is question #4 where we would discuss "proof of use" - its efficacy, importance, cost, benefits, etc? J. Scott Evans:@Paul. Yes, but enforcing trademark rights is an expensive endeavor. Susan Payne:@George of course not I did not suggest anything of the sort George Kirikos:@PaulK: @ Mary: plus all acronyms less than 5 characters. Paul keating:Deloitte should of course NOT identify the trademark owner. but should list if there are multiple entries for any given term. Paul McGrady:@Paul K - none of the numbers in our social security numbers are secret, but I suspect we would all resist not only posting the individual numbers in order in the chat, but posting the individual numbers at all. Paul keating:@jscott, enforcing any right is expensive. missing a valuable generic/descriptive domain registration is also expensive. Kathy Kleiman:.. and on the last call too, Phil. Vinzenz Heussler:the link leading to the TMCH guidelines doesn't work Kathy Kleiman:People seemed pretty satisfied. Mary Wong:@Vincenz, we will check and fix the link, thank you for spotting it. J. Scott Evans:@Paul. What makes you thing you or anyone deserves to use a word it believes is generic and I have trademarked? George Kirikos:https://urldefense.proofpoint.com/v2/url?u=http-3A__thettablog.blogs pot.ca_2017_02_new-2Dpost-2Dregistration-2Dproof-2Dof-2Duse-2Drule.html&d=Dw IFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7a r9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=iW6-xeC m8MPJa22a0NSZ9VXXl0Y6VOrFa--SRZrkqYQ&e= "A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public." Paul keating:@paul G, agreed but let's drop the trade secret label and agree that we can protect against inappropriate disclosure. the underlying issue is important. George Kirikos:@JScott: That's like suggesting a TM provides a monopoly. No one needs to "deserve" it; they have a right to use terms in a non-infringing manner. Marie Pattullo:And what happens if a string of letters is fanciful in language A, a trade mark in language B, and against public policy rules in language 3? George Kirikos:+1 Kathy. J. Scott Evans:George. A trademark is a monopoly. See McCarthy on Trademarks and Unfair Competition. George Kirikos:lol I just said the word "Adobe", J. Scott. Are you saying I can't use that word now? :-) Paul keating:@phil, there should be a mechanism set out, even if it is nothing but an agreement as to jurisdiction. George Kirikos:I can say "Adobe products are great." Did you stop me from saying that? :-) J. Scott Evans:@Kathy. Shouldn't we look at the TMCH website and see if this informaiton is availabe and, if not, then asked the question. George Kirikos:Or, I designed my house in the adobe style of Mexico..... Kristine Dorrain - Amazon Registry Services:Here you go, Kathy... https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghous e.com_dispute <https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghou se.com_dispute&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2 dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv 1SeGIj7p4&s=VZaLNs7LQSC8oDXx6eMvp3d3FtEUv_XIzJ8Qos2NpgY&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=VZ aLNs7LQSC8oDXx6eMvp3d3FtEUv_XIzJ8Qos2NpgY&e= J. Scott Evans:George. You clearly do not understand trademark law. Marie Pattullo:+ 1 to J.Scott... George Kirikos:@JScott: I do, and also its limitations. Kristine Dorrain - Amazon Registry Services:+1 J. Scott Griffin Barnett:+1 Griffin Barnett:(to J. Scott) Susan Payne:+1 J Scott Kathy Kleiman:Tx Kristine; and fair enough J. Scott! George Kirikos:Trademarks are not monopolies: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.lexisnexis.com_lega lnewsroom_intellectual-2Dproperty_b_copyright-2Dtrademark-2Dlaw-2Dblog_archi ve_2013_06_28_trademarks-2Dare-2Dnot-2Dmonopolies.aspx <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.lexisnexis.com_leg alnewsroom_intellectual-2Dproperty_b_copyright-2Dtrademark-2Dlaw-2Dblog_arch ive_2013_06_28_trademarks-2Dare-2Dnot-2Dmonopolies.aspx&d=DwIFaQ&c=FmY1u3PJp 6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR 2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=8YD5t1HIfTVQId3aH5ze8n3 jYttaCHIhjxk5z999bXs&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=8Y D5t1HIfTVQId3aH5ze8n3jYttaCHIhjxk5z999bXs&e= J. Scott Evans:George. A trademark is by its very essence a monopoly for the goods and services for which is registered. Kathy Kleiman:@Mary: proposal again to clarify our question: relocate Category 1, Question, 1, Section iii to Category 2, Question 2. These are similar questions - challenges by TM owners and third parties. George Kirikos:J. Scott: you're adding a limitation there, "for the goods and services for which it is registered". Paul McGrady:@George K - I'm unawaree of any house built out of domain names, so your example seems unrelated to the conversation. Mary Wong:@George, I thought Kathy had wanted it moved to Cat 2 Q4 or 5, not Q2 George Kirikos:That's all I'm saying, that that limitation exists. One doesn't have a limitation over the use of the word itself. Scroll up. George Kirikos:@Paul: I wan't talking about domain names, I was talking about the use of the word "adobe", which Adobe Corporation doesn't exclusively control in the English language. Paul McGrady:@George K - oh, OK, but the rest of us are talking about domain names, not home construction. George Kirikos:(i.e. they might have exclusive use of it in the realm of software, but not in the English language for non-infringing uses) Paul keating:@phil, Deloitte should poll the various public registries to find if cancellation occurred. Paul keating:@phil, API access is available. George Kirikos:@Paul: I can certainly find a non-infringing use for Adobe.houses, etc., if you want to talk about domains. Why should Adobe Corp get first dibs on that? Greg Shatan:Good point, Susan. George Kirikos:+1 Kathy J. Scott Evans:Correction: Cancelled registration. REDSKINS remains a valid common law mark. Paul keating:@ Phil, cancellation includes failure to file section 8 with USPTO. they have a limited number of entries and know the jurisdiction of registration. they can easily verify. Marc Trachtenberg:@Paul - you are kidding, right? First, there is not API access to every Trademark Office registry. Regardless, this is a gigantic burden on the TMCH and not possible from a practical perspective. It would also require the cooperation of the trademark offices George Kirikos:REDSKINS is probably still a registered mark, outside the USA. Paul McGrady:@George K - I am unaware of a <.houses> top level domain name Paul keating:jscott, perhaps but no longer able to benefit from the TMCH process. George Kirikos:Yep, Washington Redskins in Canada, TMA251755 Paul Tattersfield:.eco would be a better example that could coexist George Kirikos:@PaulM: nitpicking typos. I meant ".house" Paul keating:@mark, I'm not kidding. do you know the source registrations? confirmation is a simple process as it is an exact match and has reg number. Kristine Dorrain - Amazon Registry Services:with a valid CA mark, then the redskins could keep their mark in the TMCH...not sure what the problem is. US TM DB is not conclusive. Paul keating:certainly not more silly than domain registrants should conduct a trademark search before registration of a domain. George Kirikos:"REDSKINS" in the Benelux and other countries, see TMView. Terri Agnew:next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 15 February 2017 at 17:00 UTC for 60 minutes Kathy Kleiman:I'll be in Iceland too Terri Agnew:@Phil and Kathy apology is noted Kathy Kleiman:The Slants George Kirikos:An interesting case, for sure. Paul keating:@phil, yes but raises the issue of a Tm being cancelled in one j but not others. J. Scott Evans:adious J. Scott Evans:cia J. Scott Evans:ciao Maxim Alzoba (FAITID):bye all Vaibhav Aggarwal, NCSG:Thanks Phil & kathy for leading this WG. It is wonderful to work with gr8 leadership Paul keating:thank you all for the discussions. Kathy Kleiman:Tx Phil! Vaibhav Aggarwal, NCSG:BY Bye Steve Levy:Ciao Salvador Camacho:Bye! Martin Silva:By all! Paul Tattersfield:thanks bye all

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Re: [gnso-rpm-wg] [Ext] RE: Second table summarizing TMCH Charter questions, relevant input and potential follow up
by Mary Wong Feb. 8, 2017

Feb. 8, 2017

Hello Massimo and everyone, The topic of geographical indications may be something the Working Group can discuss following up with Deloitte about. What you see in the table is the exact text of the response that was received from Deloitte. - note, however, that it was not in response to a specific question about geographical indications, since that was not something we had asked them. The specific question to which that answer was provided related to the number of “[o]ther marks that constitute intellectual property and meet a registry's individual requirements" (for comparison with court-validated and registered marks). I hope this helps. Cheers Mary From: Massimo <Massimo(a)origin-gi.com> Date: Tuesday, February 7, 2017 at 11:04 To: Mary Wong <mary.wong(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo(a)origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com[origin-gi.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=…> [witter][twitter.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetw…>[inkedin][linkedin.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_compa…>[ogos_youtubeBin1][youtube.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_o…> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up Dear all, Following on the circulation of the previous summary table of the questions, input and discussions so far on TMCH Charter Questions categories 1 and 2 (below), please find attached a similar summary table for the remaining categories (3 – 6). As the Working Group has yet to begin discussing these, staff has taken the liberty of adding what we believe to be relevant background information from the community comments to the TMCH that were provided for the 2015 RPM Paper. We will post both tables to the Working Group wiki for your easy reference as well. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 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: Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators Dear all, As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies). Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions. We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following: · What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH? · What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58? Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions. The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…>. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Resp…<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_do…>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889

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Proposed agenda and documents for Working Group call on 8 February 2017
by Mary Wong Feb. 8, 2017

Feb. 8, 2017

Dear all, The proposed agenda for our next Working Group meeting, scheduled for 8 February 2017 at 1800 UTC, is as follows: 1. Roll call (via Adobe Connect and telephone bridge only); updates to Statements of Interest 2. Review staff table for Categories 1 & 2, with a view toward agreement on follow up with Deloitte or for other data/input required 3. Commence review of staff table for Categories 3 – 6 4. Update on Working Group sessions at ICANN58 5. Next steps/next meeting The tables to be reviewed under Agenda Items #2 and #3 have been circulated previously via email. You can also find them on this page of our Working Group wiki space: https://community.icann.org/x/_pHRAw. 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

3 2

TMCH Blog
by Jon Nevett Feb. 6, 2017

Feb. 6, 2017

FYI -- for those who haven't seen this blog: https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so… The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens <https://www.thedomains.com/author/michael-berkens/> 5 Comments <https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so…> The Trademark ClearingHouse (TMCH) <http://www.trademark-clearinghouse.com/> which was set up/ contracted by ICANN to protect those famous worldwide brand names from abuse by those nasty domain name squatters resulted in a whole new industry. Those playing the TMCH for their own benefit to get first jump at new gTLD domain names to get registered in Sunrise ahead of all other under common words like “the” Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the word”the”, which is the most used word in the English language <https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com owns an amazing amount of domain names approaching nearly 100, but was able to get all of the following new gTLD’s using their globally well-known trademark on the word “the” under the ICANN trademark clearinghouse rules which allows them to obtain the domain names ahead of all other applicants. Of course the company could have had obtained even more “the” new gTLD domain names in Sunrise but apparently did not apply for more. Somehow the company doesn’t appear to own the domain name The.Com For all Trademark Holders its nice to know the world is a safer place: the.car the.career the.cars the.casino the.doctor the.earth the.foundation the.furniture the.game the.group the.ltd the.mba the.pub the.report the.run the.school the.services the.storage the.tools the.university the.watch the.wine

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ICANN58 sessions for our Working Group
by Mary Wong Feb. 3, 2017

Feb. 3, 2017

Dear all, Although the sessions and timings are not yet confirmed, staff thought it would be helpful for your schedule and travel planning to let you know that we have requested the following slots at the upcoming ICANN58 Public Meeting in Copenhagen: · Saturday 11 March 2017 (10.00 – 13.45 local time, with a brief break for lunch): 3-hour face-to-face Working Group meeting; and · Wednesday 15 March 2017 (09.00 – 10.30 local time): Open community session We will try to confirm the final slots as soon as we can. As many of you know, ICANN meeting schedules are very tightly packed, so these slots were requested following coordination with colleagues supporting other Policy Development Processes, Cross Community Working Groups and other projects of interest to the GNSO community. Please be assured that we have tried to avoid clear conflicts as best we can. As with all Working Group sessions at ICANN Public Meetings, all our sessions will be open to anyone to attend and observe, and will be recorded and transcribed. For those who will not be participating in person in Copenhagen, there will be remote participation via an Adobe Connect virtual meeting room, live audio stream and telephone bridge (though please note that these will be in the “ICANN meeting format” and so will have different set ups than our weekly calls – we will send out these details closer to the meeting date). Finally, to help me try to minimize the likelihood that we will encounter the same “seating shortage emergency” that we had in Hyderabad, it will be helpful if you can let me know if you plan to be at our sessions in Copenhagen in person – please reply off-list to me directly rather than to this list. Thank you! 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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Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators
by Mary Wong Feb. 3, 2017

Feb. 3, 2017

Dear all, As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies). Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions. We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following: · What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH? · What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58? Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions. The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Resp…. 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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Role of the TMCH and proof of use (Re: TMCH Blog)
by Mary Wong Feb. 3, 2017

Feb. 3, 2017

Hello everyone, As the group continues to discuss questions that have arisen in relation to possible “gaming” and proof of use, staff thought we should highlight the following extracts from the 2015 RPM Paper that was prepared by ICANN. The final version of the Paper was published in September 2015, and it summarized the feedback received from the community on the draft that had been issued for public comment in February 2015. The Paper acknowledged the possibility of gaming occurring via Sunrise due to the TMCH’s accepting marks from some jurisdictions that might grant trademark protection for so-called generic words or other highly-sought after terms. Nevertheless, the stated principle is that rights-holders globally will undergo the same validation process regardless of where the marks were registered: “[the] Clearinghouse processes are designed to verify trademark information as it has been issued by the authorities in the various jurisdictions; the Clearinghouse does not play the role of trademark examiners. The [TMCH] Guidelines are designed for review of trademark submissions according to a standard that does not favor one jurisdiction over another.” (see pp. 31-33 of the Paper, which you can find in full on our Working Group wiki page: https://community.icann.org/x/4SWAAw) Regarding proof of use, the Paper noted community feedback on challenges with satisfying the requirement. Some commenters to the draft version of the Paper thought the requirement was too strict, as the same evidence of use sufficient for renewal with the relevant jurisdiction was not always adequate for what the Clearinghouse verification process required. A specific example given was the rejection of samples containing extra text, since the sample must contain the exact name of the registered trademark as recorded in the trademark record. Others had difficulty with submitting samples that were not yet commercialized (although registered), and yet others found the process too time-consuming. In terms of suggestions for improving the process for submission of proof of use, the Paper listed specific suggestions that included adding an electronic signature option for declaration of use, and providing exemptions for specific countries from being required to submit proof of use when such evidence is already approved by the relevant jurisdiction. On a more general note, many of the topics, questions and suggestions described in the Paper are likely to be relevant to our work in this PDP. Staff will continue to highlight them as well as specific community feedback as appropriate, though you may like to read the full paper for yourself if you have not done so already. I hope the above notes are helpful, especially for the Working Group’s evaluation of the TMCH verification criteria, and, possibly, the proof of use requirement. Thanks and cheers Mary On 2/2/17, 14:55, "gnso-rpm-wg-bounces(a)icann.org on behalf of Brian F. Cimbolic" <gnso-rpm-wg-bounces(a)icann.org on behalf of BCimbolic(a)pir.org> wrote: Folks: I feel like we've gotten off on quite a tangent (or 10), at least in relation to the original post. Without arguing the fundamentals of what a trademark is or what rights it bestows, is there anyone out there who thinks that the example in the blog is how the TMCH is intended to work? Allowing this registrant/mark holder to obtain those "the.example" names seems absolutely exploitative. To say that "any system can be gamed, so why bother fixing it" - that analysis works for any number of examples this group will come across (premium pricing of sunrise domains comes to mind) and doesn't advance the conversation constructively. To me the question is, is this exploitation something that we should look at fixing or addressing within this group? Brian Brian Cimbolic Deputy General Counsel, Public Interest Registry Office: +1 703 889-5752| Mobile: + 1 571 385-7871| www.pir.org | Facebook | Twitter | Instagram | YouTube Confidentiality Note: Proprietary and confidential to Public Interest Registry. If received in error, please inform sender and then delete. -----Original Message----- From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 2:47 PM To: George Kirikos <icann(a)leap.com>; gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog One trademark registration in most countries costs significantly more than $10. -----Original Message----- From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:43 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans(a)adobe.com> wrote: > The evidentiary weight of a trademark registration differs from > jurisdiction to jurisdiction. In the US, a certificate of registration > from the USPTO does have some proof value, that is subject to certain > defenses for 5 years and a lesser set of defenses should the mark > reach incontestable status after 5 years. I think making sweeping > statements like those contained in your closing paragraph are not helpful. I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIFAw&… _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

1 0

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

Feb. 1, 2017

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 18 January 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/JZ3DAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-18jan17-en.mp3 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/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 18 January 2017: Terri Agnew 2:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 18 January 2017 at 17:00 UTC for 60 minutes. Terri Agnew 2:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi everyone. Paul Tattersfield:Hi George, Everyone Ivett Paulovics:Hello everyone, greetings from Italy. Maxim Alzoba (FAITID):Hello All Paul Tattersfield:For people not able to attend the meeting ICANN publishes the .mp3 - I was wondering if it would be possible for ICANN to publish a recording of the meeting? George Kirikos:Hi Paul. How's it going? Paul Tattersfield:So those not able to attend could 'watch' the meeting i.e. see the slides and audio in real time while listening to the audio Mary Wong:@Paul, do you mean a live stream? George Kirikos:@Paul: I think they tecnically can save the Adobe sessions. Not sure if they've been doing that, though. Paul Tattersfield:Yes Mary George Kirikos:*technically, even Paul Tattersfield:something like https://urldefense.proofpoint.com/v2/url?u=https-3A__helpx.adobe.com_adobe-… perhaps? Mary Wong:@Paul, during ICANN meetings there's usually a live audio stream (but not for regular WG meetings outside the ICANN meeting) Paul Tattersfield:that's a good way to describe what I was thinking George 'save the session' Maxim Alzoba (FAITID):do we need to log in again? Philip Corwin:I am attempting to call in Philip Corwin:When I call in the recording starts, cuts out, then drops me. Maxim Alzoba (FAITID):skype to 1800 usually works Paul Tattersfield:It would really improve the experience for those not able to attend the calls because of TimeZone considerations I was thinking Maxim Alzoba (FAITID):I meant to one of the toll free phones in US Philip Corwin:Just requested a dial out George Kirikos:@Paul / @Mary: See https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org_en_me… for how they've been archived in the past. Terri Agnew 2:We are having the dial out to Phil Philip Corwin:Thx Terry. Awaiting call Terri Agnew 2:Phil has joined on audio Philip Corwin:I am now connected by phone Lori Schulman:Hello. Sorry that I am late. WIPO:We have tried over a dozen times, and keep getting dropped from the line before an operator comes on. Kristine Dorrain - Amazon Registry Services:Me too Renee Fossen (Forum):same WIPO:We have (finally) made it on the call. Philip Corwin:Same here -- co-chairs get same treatment ;-) Kristine Dorrain - Amazon Registry Services:Switched to speakers for now...no mic. will keep trying to call. George Kirikos:Probably too many meetings scheduled at noon Eastern time. If we were to schedule the call at 11:45 am Eastern, probably easier for everyone to get on..... Alternatively, if there was an automated way to get on (i.e. with individual PIN codes), instead of requiring human intervention for each caller. Terri Agnew 2:I am having the operator report his issue on joining audio Terri Agnew 2:Please let me know if a dial out on the telephone is needed Beth Bacon:I also had an issue dialing in. The line kept disconnecting. Terri Agnew 2:@Beth, I am sending you a private AC chat George Kirikos:For 1.(iii) do these options even exist at present? George Kirikos:(i.e. the TMCH might clearly communicate that those options don't exist) :-) Mary Wong:@Phil, that was the point staff had wondered too - how would people know if they can't search the database? Mary Wong:There was a lot of community feedback - to the 2015 RPM Staff Paper - about inconsistencies and difficulties with submissions into the TMCH. Susan Payne:perhaps you could share paul's comments since he did not send to the list Mary Wong:@Susan we will follow up with Paul. George Kirikos:Since the underlying TMs are public, it's difficult to justify why the TMCH recordals are not public. Kathy Kleiman:Tx Beth, I think that's exactly what we are looking for (i) and (ii) Lori Schulman:Because what you chose to record can be part of an underlying proprietary stategy...which marks may have more value or be part of a greater enforcement plan George Kirikos:Remember, that people are registering common terms like "pizza" into the TMCH, see: https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014… Maxim Alzoba (FAITID):in russian case it was more generic IDN name for "we" Mary Wong:I believe TM holders and agents have to provide the relevant description of goods and services according to the Nice classification, as well as registration number and jurisdiction, when submitting a registered TM. Kathy Kleiman:Mary: can we add what Phil just said to our Notes -- are there any troubles for multiple registrations of the same TM string by multiple trademark owners? Mary Wong:@Kathy, I'll double check the transcript and add, yes, thank you. Maxim Alzoba (FAITID):for example one company has right for "special kind of boots" in France and the other in China? Mary Wong:The TMCH Guidelines provide a sample of a signed Declaration of Use, but specifically for a sample of proof of use, it's not an exhaustive list (meant to be flexible) Maxim Alzoba (FAITID):but if a person sends only one existing item in the world to the only customer (nis neighbour) is it a valid proof of use? Susan Payne:Would it be helpful for us to pull out the comments submitted to the staff RPMs review of examples of problems. Would the Implementation Review also have anything relevant on this - apologies I do not recall? George Kirikos:*6 to mute/unmute Jonathan Matkowsky - RiskIQ:I'm not muted Terri Agnew 2:@Jonathan, your mic isn't active Kathy Kleiman:@Mary: could you kindly add the words "piecemeal approachand clarity of proof of use Maxim Alzoba (FAITID):I think we disconnected from bridge (adobe users) Terri Agnew 2:to activate your mic, top tool bar, telephone icon and follow prompts Jonathan Matkowsky - RiskIQ:I can type my comment Jonathan Matkowsky - RiskIQ:Not sure what the problem is with the mic, sorry about that Kathy Kleiman: @Mary... to the NOtes. I think it will help peopel remember this discussion. Mary Wong:@Susan, we have a link to the public comments and staff summary for the 2015 paper. I will check if I've uploaded it to the wiki. Jonathan Matkowsky - RiskIQ:I am on Adobe connect Jonathan Matkowsky - RiskIQ:In any case, I just wanted to promote transparency in the process Jonathan Matkowsky - RiskIQ:Perhaps an analogy can be made to prosecution of a specimen in the USPTO David McAuley (RySG):yes Maxim Alzoba (FAITID):a screenshot of the website (anyone can create one with offers of somethings non-existent) is a valid proof of use? https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Kristine Dorrain - Amazon Registry Services:Can anyone weigh in on the process over time? did people experience troubles early on? did people have the same troubles recently? Did the issues change, get better, get worse? Was there a learning curve that the TMCH needed? Mary Wong:The contract is not published, but there is a summary framework that was published - I will try to find it. George Kirikos:If one eliminated proof of use, one would need to balance that with reduced benefits for TMCH recordals. Personally, the TMCH could be entirely eliminated if each national TM office had an automated API (some appear to have one, e.g. see aggregated search sites like TMview, https://urldefense.proofpoint.com/v2/url?u=https-3A__www.tmdn.org_tmview_we… George Kirikos:(registrars could then query national TM offices via APIs, and create the "notice" that way to domain name registrants) Marie Pattullo:@George: TMView is great, as a work in progress. It's still being developed (moved over to the ECP in the EUIPO) but it's really not reliable at the moment. Also TMView would never have the technical capability to interact with the registries. Mary Wong:Summary of Validation Framework agreement (Deloitte): https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_… Lillian Fosteris:Kristine - I'd say the TMCH has been inconsistent in how stringent it is in its review of each TMCH registration (both errors in the TMCH submission and then whether the POU was accepted or not). For example, a lot of marks were marked as "Incorrect" a year after the marks were submitted and accepted to the TMCH. In some cases, there were errors in the TMCH information submitted originally and in other cases, the POU was marked as insufficient (even though it had been approved originally). So, I'd say a little bit of learning at the beginning, but generally an issue with consistency across marks and time. George Kirikos:@Marie: right. Perhaps the money would be better spent making that system more reliable (a "carrot" by ICANN to national TM offices), rather than trying to duplicate and reinvent things via the TMCH. Mary Wong:Summary of Database Framework agreement (IBM): https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_… Lori Schulman:Not all TM offices requre proof of use upon initial registration Jeff Neuman (Valideus):@Kathy - You state "a llot of frustration in the community". Can you point to a source where the community has stated that they are frustrated? Lori Schulman:US is an outlier I think. It's been a while since I have done global registrations but I recall that standards vary from jurisdiction to jurisdiction Maxim Alzoba (FAITID):I wonder how transparent is a secret contract with ICANN (conflict of interests potentially exists) ? George Kirikos:Right, Lori. The "benefits" for TM holders would need to be scaled back accordingly (i.e. no more "first dibs" in sunrise). Jonathan Matkowsky - RiskIQ:Broad stakeholder discussions took place to develop the proof of userequirement, intended to ensure that all registered trademarks are treated equally inorder to be eligible to participate in Sunrise periods. Requirements related to proof usemay be taken into account as a larger topic for consideration in policy development andother community discussions. Lori Schulman:George, that is not the point. The point is that unique proof of use for sunrise makes sense since global practice varies. Jonathan Matkowsky - RiskIQ:This is from the 2015 Rights Protection Mechanisms Review Revised REport Marie Pattullo:@George - it's already funded but by the EUIPO - many, many carrots have been held out to the NPTOs under the new EUTMR and this is one of them... ;-). George Kirikos:i.e. if the goal of the TMCH is simply to reduce cybersquatting, increased notice to prospective registrants is a sufficient safeguard. Jumping to the front of the line (which is a "benefit" diminished in many ways due to "premium" pricing by registry operators in any event) should be an entirely separate discussion (one that I don't see as justified). Jonathan Matkowsky - RiskIQ:There's no mention of the concern of transparency or inconsistency George Kirikos:@Lori: I agree with you. George Kirikos:Since the average number of sunrise registrations is around 300 or so, the "actual" benefits to those companies routinely registering in all gTLDs (e.g. Apple, Microsoft, Google) are really small, when you think about it. Marie Pattullo:5 years to prove use in the EU. George Kirikos:*actual benefits overall, I mean (I'm sure those 300 companies like jumping to the front of the line) George Kirikos:Presumably the TMCH goes to shows run by folks like INTA, etc. to drum up business (i.e. "educate"). Kurt Pritz:Proactive: The TMCH conducts webinars for agents and also for individual TLDs to announce their sunrise periods David McAuley (RySG):very feint George Kirikos:Volume low for Kristine. David McAuley (RySG):that is better sound George Kirikos:Here's what a TMCH notice looks like: https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014… It doesn't seem to link to the TMCH itself for further details, etc. George Kirikos:(I don't register new gTLDs, so I've never seen one personally) Kristine Dorrain - Amazon Registry Services:For sake for arguement: Education about notices still seem odd. The TMCH didn't write it. They are providing a token to the registrar who then displays a form notice. Mary Wong:Note that we have a specific Charter question (in a subsequent category) about outreach, at least w.r.t. developing countries: "How accessible is the TMCH Database and RPM Rights Protection Actions and Defenses to individuals, organizations and rights-holders; as well as trademark agents in developing countries?" Kristine Dorrain - Amazon Registry Services:Yes, Susan, +1, thats that I was saying. Maxim Alzoba (FAITID):ICANN's part of TMCH? Lori Schulman:My response dove tails Susan's. I think that end users who receive notices probably do need education. Lori Schulman:But not necessarily TMCH Kristine Dorrain - Amazon Registry Services:but the TMCH is a rather neutral provider of data. I think training for registrants would fall on ICANN, as directed by the community. Maxim Alzoba (FAITID):the language of the claim notice is horrible Lori Schulman:doing the training Lori Schulman:TM owners would agree that the language is horrible. Not clear. Lori Schulman:Confusing and inconsistent. Kristine Dorrain - Amazon Registry Services:and how do you provide notice without giving legal advice Susan Payne:Kathy - that sounds like relevant feedback - perhaps you could ask them to subbmit it to the WG if we are to take it into account Jonathan Matkowsky - RiskIQ:https://urldefense.proofpoint.com/v2/url?u=https-3A__www.google.com_… Mary Wong:That is the final input from the Implementation Asssistance Group for the TMCH, I think Mary Wong:(Jonathan's link, I mean) George Kirikos:With ICANN staff away for their retreat, etc. next week, are we having a call next Wednesday? Mary Wong:2012 Mary Wong:This is the IAG Kathy Kleiman:Tx for the link! Mary Wong:That document has been uploaded to the TMCH information page on the WG wiki :) Paul Tattersfield:@George isn't it at the new time of 4.00am GMT? Terri Agnew 2:Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 25 January 2017 at 04:00 UTC for 60 minutes. Maxim Alzoba (FAITID):most people can not read in English , and it is a must to use it in the claim notice George Kirikos:So, that'll be Tuesday night Eastern time. Mary Wong:Staff will be available to staff the call but NamesCon may be a bigger problem Mary Wong:TMCH informational page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… (IAG report is the final entry under Operational Requirements) Kristine Dorrain - Amazon Registry Services:What was the result of the straw poll staff sent around? George Kirikos:I'd vote to skip it....maybe have a vote? Susan Payne:unless we have no chairs I think we should proceed Griffin Barnett:@Maxim, I thought that Claims notices must be presented in English as well as the language of the domain name registration agreement but staff or others may be able to confirm this George Kirikos:Skip = Agree, Don't skip = disagree. Kristine Dorrain - Amazon Registry Services:Nevermind. the straw poll was for a differnt group Mary Wong:@Griffin, correct Beth Allegretti:I'd also vote to skip it because of NamesCon Lori Schulman:George is multitasking... Maxim Alzoba (FAITID):if the first part in English - most do not scroll Susan Payne:why would we skip? routinely some people cannot make calls but we don't cancel Kristine Dorrain - Amazon Registry Services:Agree to proceed George Kirikos:I can make it....won't affect me. Maxim Alzoba (FAITID):and the wording in rpm requirement - in English and in other language Paul Tattersfield:Agreee proceed Mary Wong:0400 UTC George Kirikos:Tuesday night eastern time (0400 UTC Wednesday) Maxim Alzoba (FAITID):bit early for EU Mary Wong:Evening/night for North America, daytime for APAC Terri Agnew 2:20:00 PST (Tuesday), 23:00 EST (Tuesday), 04:00 London,05:00 CET Kathy Kleiman:Our first meeting at the AP-friendly time. David McAuley (RySG):Thanks Phil, staff, all Jonathan Matkowsky - RiskIQ:Have a great day everyone! Kristine Dorrain - Amazon Registry Services:thanks all1 George Kirikos:We should monitor the AP attendance next week, to see if folks from that region show up en masse. George Kirikos:(if not, perhaps rethink the time)

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Proposed agenda and materials for Working Group call on Wednesday 1 February 2017
by Mary Wong Feb. 1, 2017

Feb. 1, 2017

Dear all, The proposed agenda for our next Working Group meeting, scheduled for 1 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Summary of TMCH Category 1 discussion, including from the Working Group meeting last week (see further below) 3. Introductory discussion of TMCH Category 2 (see https://community.icann.org/download/attachments/58729944/Clean%20-%20TMCH%…) 4. Commence review of Deloitte’s response to the TMCH Data Gathering Sub Team’s questions, with a view toward additional follow up if needed (document circulated via email on 30 January, also available on the Working Group wiki at https://community.icann.org/x/_pHRAw) 5. Next steps/next meeting For Agenda Item #2, the following points and questions were highlighted in the discussion last week, for further discussion by the Working Group in relation to TMCH Charter Question 2 from Category 1 (Education): “Should the TMCH be responsible for educating rights-holders, domain name registrants and potential registrants about the services it provides? If so, how? If the TMCH is not to be responsible, who should be?” · Is it ICANN's responsibility rather than the TMCH's? Who else should be educated besides rights-holders? · TMCH has incentive and opportunity and has already reached out to its direct customers; but would mandating education raise fees? Not necessarily since they already have the materials · Should it be a community effort? How is this to be mandated (if at all)? · There is a limit on the extent of education a TMCH can provide on Sunrise, given the different types of Sunrise and the choices that a registry have on how to operate them. · Registries also have the option to extend the Claims Period, so they can do the education; maybe with ICANN as a "backup" if the registries and registrars do not. Note, however, that it is registrars who have the customer relationships. · How would it work (if the TMCH is to be responsible for education) if there are multiple TMCH providers in the future? · Look at how TMCH has done education in the past; ask if these communications were effective SUMMARY OF OPTIONS DISCUSSED: (1) ICANN to be neutral educator (at the very least, prepare materials?) (2) TMCH (and to extend beyond rights-holders) (3) Community efforts (4) A “hybrid model” of TMCH + ICANN (e.g. TMCH can post official materials on their site, created by ICANN. Note, however, that TMCH has no way of telling customers of any registry or registrar what their experience will be) 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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FOR REVIEW & DISCUSSION: Response from Deloitte to TMCH Data Gathering Sub Team questions
by Mary Wong Jan. 31, 2017

Jan. 31, 2017

Dear all, Please find attached the response that Deloitte sent to ICANN staff, in reply to the list of questions developed by our TMCH Data Gathering Sub Team that was sent to Deloitte in December 2016. Please note that the Working Group co-chairs have not yet considered this document, which is being circulated to everyone to allow for review at your earliest convenience. You may wish to note also that the questions that Deloitte noted as being more pertinent to IBM (who is responsible for the TMCH Database) have been forwarded to IBM for its response. We will circulate that response when we receive it. In addition, please note that the monthly reports that Deloitte refers to as being sent to ICANN are published on this page: https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-regi…. As it is likely that the Working Group will wish to meet with Deloitte to follow up on this document as well as on other matters, staff has taken the liberty of enquiring if Deloitte representatives will be in Copenhagen for the ICANN58 meeting and available to meet with the Working Group. In the meantime, staff will assist the co-chairs in developing meeting agendas (including for those meetings leading up to ICANN58 in March) to take into account this latest document as well as the other documents for review (e.g. the responses received from various registry operators that was circulated previously). 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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