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

FOR REVIEW/DISCUSSION: Updated table of TMCH Charter Questions
by Mary Wong Dec. 15, 2016

Dec. 15, 2016

Dear all, Please find attached an updated version of the TMCH Charter Questions table, which staff has prepared based on the Working Group discussion during the Working Group call this past Wednesday. In addition to the updates made to Category 1 Question 4 (on design marks), Category 2 Questions 1 and 2 (rejection of TMCH submissions and handling of cancelled trademarks), and Category 3 Questions 1, 2 and 3 (balancing of rights, the generic/scope issue, and TM+50), we have retained in this version the changes made last week to Category 1 Questions 1-3 so that you can review all the agreed changes to date. Please note that a few Working Group member comments remain to be either considered or responses finalized – we have retained these in the document as well for your easy reference. We have yet to discuss and finalize the following remaining questions: Category 3 Question 4, and the questions in Category 4 and Category 5. 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 From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, December 14, 2016 at 01:31 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for RPM Working Group call on 14 December Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. 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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Proposed agenda and documents for RPM Working Group call on 14 December
by Mary Wong Dec. 15, 2016

Dec. 15, 2016

Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. 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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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Dec. 14, 2016

Dec. 14, 2016

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, 14 December 2016 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/_ZzDAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-14dec16-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/rhiOAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 14 December 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 14 December 2016 at 17:00 UTC for 60 minutes. Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Philip Corwin:Good day all Paul Tattersfield:Hi Everyone George Kirikos:Welcome Phil & Paul. Maxim Alzoba (FAITID):Hello all Elizabeth Featherman:Hello everyone! Sorry I have a client call within this hour and may have to bow out early. I apologize for the interruption. George Kirikos:That's the bottom of page 2. Mary Wong:Yes, document is unsync'ed Mary Wong:Oh dear, yes, sorry for poor spelling :( Will fix in the next version. George Kirikos:'Exclusively' makes more sense. Massimo Vittori:I ma trying to take the floor :-) Beth Allegretti:Sorry I'm late George Kirikos:You can raise your hand using the button at the top, Massimo. George Kirikos:(that gets the attention of the co-chair) George Kirikos:*6 to unmute George Kirikos:(if you're on the phone) David McAuley (RySG):very feint Terri Agnew:@Massimo, I sent you a private AC chat, check tab below this chat Mary Wong:@Kathy, just a note from staff that the first 3 questions Massimo asked are actually questions that our Data Gathering Sub Team have asked of Deloitte. Terri Agnew:Massimo has activatetd mic Vaibhav Aggarwal:Hi TEam Vaibhav Aggarwal:Sorry was late Kristine Dorrain - Amazon Registry Services:@Mary, thanks. I thought so, but I wasn't sure. Vaibhav Aggarwal:+1 Massimo Paul Tattersfield:Can we widen the questions gernerally to include marks such as GI and other treaty and statutes etc. by changing In Q3.2 'within a trademark' to "within a mark' and In Q4.1 'trademark owners' to 'rights holders' George Kirikos:(one can click the button at the top to lower one's hand, or clear status) Mary Wong:Just a note that the Data Gathering Sub Team did not specifically ask Deloitte about GIs or AoOs, but presumably this can be an easy follow up by the Sub Team. Kristine Dorrain - Amazon Registry Services:Ah, ok, rusty memory. Mary Wong:On this question, the Data Gathering Sub Team asked the following of Deloitte: "Can you tell us who is using the TMDB and under what circumstances (other than for providing the Sunrise and Claims Notice services required by ICANN)? How many "blocking"-type services are you supporting (e.g. protected marks lists), and with/for whom? Are you aware of other services that may be provided by registry operators using the TMDB other than via contract with you?" Marie Pattullo:Agree with Kathy - can we specify that this is as rejected for recordal in the TMCH? George Kirikos:That's more precise, and good, Marie. David McAuley (RySG):it is a good show Beth Allegretti:I have the same question Kristine Mary Wong:The Sub Team's question to Deloitte on cancelled TMs: "How are marks cancelled within national/regional registries handled at the TMCH level, if validation is only done annually? In other words, what is the TMCH process (if any) relating to marks that are cancelled or expire: reactive (e.g. TM owner/agent obligations) or proactive?" George Kirikos:I think it's the chilling effect for prospective registrants of having received a TMCH notice. George Kirikos:Which might cause the prospective registrant to abandon their shopping cart, and thus "losing" a potential customer. Vinzenz Heussler:by potential registrants? Kurt Pritz:The second part of the question: "Is this satisfactory?" is not necessary as it is clearly implied in the first question. Mary Wong:Note: This question is the same as what was in the Charter (i.e. not changed by the Sub Team). It was suggested in a comment to the Preliminary Issue Report. George Kirikos:Really only the first part of the question is needed, i.e. "How quickly can a cancelled TM be removed from the TMCH?" (i.e. the "should" is obviously "immediately", as we'd want to have an accurate database). Kristine Dorrain - Amazon Registry Services:It really reads like it was the type of comment that states a point then merely restates it... but am I wrong? Kurt Pritz:The Charter question (first part) could be more generic, i.e., "to avoid delteterious effects" or "to avoid negative impacts on prospective registrants." Mary Wong:I can hunt for and pull up the public comment in question if need be George Kirikos:(and the rest of the question is just providing a justification for the first part of the question, so that 2nd part isn't necessarily needed to pose the question itself) Phil Marano (Mayer Brown):The question appears to assume that TMCH records discourage registrations. Is this an assumption that everyone accepts and wishes to endorse in a Charter question? Shortening may be necessary. Vinzenz Heussler:"should" could be become ambigious without the end of the sentence? Greg Shatan:TMCH records themselves don't discourage registrations.... Kristine Dorrain - Amazon Registry Services:Correct. Shortening doesn't presume the problems or the solutions. Kristine Dorrain - Amazon Registry Services:Phil, the URS *relies* on an SMD file. The UDPR is independent of the TMCH. Kristine Dorrain - Amazon Registry Services:I suggest staff log the second part of this for the disucssion when we get there. George Kirikos:*6 to unmute, Lori. Maxim Alzoba (FAITID):who is responcible of notifiyng TMCH about a cancellation? (no one?) Maxim Alzoba (FAITID):*for George Kirikos:@Maxim: I think that's why the TMCH database should be public, so that the public can issue challenges to its accuracy, etc. Philip Corwin:@Kristine--what if a URS is brought on behalf of a mark that has not been registered in the TMCH? URS is available for any mark, not just TMCH marks. Mary Wong:@Maxim, I believe rights holders have to inform the TMCH of updates and changes within a reasonable time (happy to be corrected by others who have direct experience with this). George Kirikos:Question 3.1 is describing, in broad terms, our entire charter. :-) Kurt Pritz:"which" should be "that" (sorry) Bradley Silver:What does the reference to "legitimate" mean in reference to non-trademark registrants? Kristine Dorrain - Amazon Registry Services:@ Phil, then the complainant needs to independently establish use. It's not that you can't use the URS, but the Charter question seemed to me to be focusing on the link. the only link between URS and TMCH is that SMD file to establish use. But clearly, I was also confused as to how "losing" could happen. Maxim Alzoba (FAITID):it sounds like an attempt to undermine one of the generic fruit marks :) Phil Marano (Mayer Brown):With respect to Q 3.1, can anyone please explain what is meant by "legitimate rights of non-trademark registrants?" What specific rights are envisaged? Mary Wong:@Phil, @Bradley - that was the wording in the question that was suggested via public comment. Beth Allegretti:Who is going to make the judgement that the goods and services are "related"? Greg Shatan:We're not beholden to the original wording of any of these questions. Bradley Silver:Thanks @Mary, I think it raises questions though, about what "legitimate" rights means, as opposed to mere "rights". Paul Tattersfield:'dictionary term' should be changed to 'words' as 'dictionary' is a varying subset of words George Kirikos:@PhilM: It could be rights to use a term for goods/services unrelated to the TM, or might be for criticism of the TM holder, or any other non-TM infringing use (including non-commercial uses). George Kirikos:"terms" should include non-words, like commonly-used acronyms that might not appear in a dictionary. John McElwaine (Nelson Mullins):+1 Phil - that is what I've been saying all along Kristine Dorrain - Amazon Registry Services:@Phil and Bradley: perhaps not "legitimate" but absence of bad faith. We keep coming back to terms used in the UDRP.... :) Bradley Silver:@George - not sure all those things are "rights". Phil Marano (Mayer Brown):Are any particular legal rights envisaged? If so, it may be helpful to state them specifically. George Kirikos:@PhilM: perhaps it's the right to "life, liberty, and the pursuit of happiness"??!!?? :-) Greg Shatan:"word" could end up encompassing every "word mark" - a proper noun is still a word. So that's too broad. George Kirikos:Oops, I meant @Bradley. Vaibhav Aggarwal:@Greg Agree Kristine Dorrain - Amazon Registry Services:@Beth: Phil made a good observation on the email string. We can't let the possible outcome that there is no viable solution stop the question. We can say, there is a problem, here is a solution; there is a problem, there is no solution; or there is no problem (among other answers). George Kirikos:https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.o… (unalienable rights!) Vaibhav Aggarwal:Silence May be Disagreement and Blankness too - There could be a few who just did not have time enough to take a deeper look at it Maxim Alzoba (FAITID):or in .eco for proper eco apples Paul Tattersfield:Phil's rewording is a fudge and it loses what the original question was driving at whether or whether not the original question was correct or realistic George Kirikos:3.2 is somewhat related to 3.1, though. So the information we're asking about could easily be submitted via the answers to 3.1, instead of 3.2. David McAuley (RySG):Phil makes a fair point Vaibhav Aggarwal:Only NGTLD Only @Phi Vaibhav Aggarwal:@Phil Vaibhav Aggarwal:That can still be done Marie Pattullo:Q: Lotus (car), Lotus (paper tissues), lotus (flower). If you limit a TMCH record to cars, the result is still tissues can get an identical DN, just not in Sunrise. No? Mary Wong:Yes Marie Pattullo:What category of goods & services is dot shop related to; anything ever that could be sold via a shop? George Kirikos:You'd need to assign (possibly multiple) TM classes to each TLD. George Kirikos:https://urldefense.proofpoint.com/v2/url?u=http-3A__www.oppedahl.co… John McElwaine (Nelson Mullins):@Marie - good point. As Phil was saying there's no way to implement the concept Greg Shatan:There's no rational correlation between TLDs and trademark classes. Kurt Pritz:On question cat 3 Q 1: It might be better to say the "legitimate interests of non-trademark registrants." Marie Pattullo:+1 to Greg. Kurt Pritz:On Cat 3, Q2: I thought Marie's question is good. Can that be discussed? Maxim Alzoba (FAITID):@Greg , at least there hard to find objective method to find it Philip Corwin:I agree, Greg, and you can say that in your answer. But can we please get the text of 3.2 agreed to? And then we can discuss whether it belongs in Balance or another category of questions. Beth Allegretti:+1 to Bradley George Kirikos:I wouldn't use the term "non-trademark registrants" --- there might also be folks who hold TMs, but are not recorded in the TMCH databases. Philip Corwin:Agree with Bradley. Besides, what are illegitimate rights? George Kirikos:(i.e. not all TM holders feel the need to spend $$$$ to record their rights in the TMCH database) Greg Shatan:I think Phil's wording of 3.2 is no longer a TMCH question. Maxim Alzoba (FAITID):+1 @George Edward Morris:Agree with deletion of 'legitimate'. Kiran Malancharuvil:I agree with that Beth Allegretti:Agree Paul Tattersfield:agree Phil Marano (Mayer Brown):+1 John McElwaine (Nelson Mullins):+1 Paul Tattersfield:@Greg exactly! Kurt Pritz:"Should the TM+50 be retained as is, amended, or removed?" Maxim Alzoba (FAITID):how many marks used this right? George Kirikos:There's more than one "Phil", so folks might want to specify last names for the transcript. Kurt Pritz:@ Phil: I don't think that is a Charter question. I think your question flows from it Kristine Dorrain - Amazon Registry Services:@Phil C I think we asked for that. Kristine Dorrain - Amazon Registry Services:Accepted as amended or as is. George Kirikos:Kurt's language seems fine. Mary Wong:Data Gathering Sub Team question to Deloitte on TM+50: "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?" Philip Corwin:Thanks Kristine. Just wanted to make sure. Beth Allegretti:+ 1 to Kurt's suggestion Maxim Alzoba (FAITID):bye all George Kirikos:Bye folks! Have a great day. Kiran Malancharuvil:Thanks Terri Agnew:Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 21 December 2016 at 22:00 UTC for 60 minutes. Thomas Brackey:Hasta Luego... Paul Tattersfield:bye all Steve Levy:Thanks for your time. Ciao all! Marie Pattullo:As the chances of me making a 23:00 meeting next week are minimal, happy holidays!! Vaibhav Aggarwal:Ciao Monica Mitchell:tchau:) Terri Agnew:@Marie, will not your apology for meeting next week

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FOR DISCUSSION: Updated TMCH Charter Questions table - 6 December 2016
by Mary Wong Dec. 13, 2016

Dec. 13, 2016

Dear all, In response to Phil’s request, staff has updated the previously-circulated table of suggested TMCH Charter Questions with additional suggestions and comments received from Working Group members up to 1800 UTC today (6 December), which is 24 hours before the Working Group call. The updated document is attached, and we will plan on using it as the basis for discussion on the Working Group call tomorrow. Please feel free to send any additional thoughts and comments you may have to the Working Group mailing list – while they may not all be captured in the document, staff will do our best to ensure they are covered during the Working Group’s discussion. As we move into discussion and finalization of the proposed TMCH Charter Questions, Working Group members may wish to note that the TMCH Data Gathering Sub Team had agreed on a list of questions that were sent to the TMCH Providers as well as others that were sent to the Registries and Registrars Stakeholder Groups. In line with their mandate, the Sub Team’s questions are all directed toward obtaining relevant data on the workings of the TMCH – for purposes of the current discussion, the questions that were directed to the TMCH Providers include questions on design marks and their verification, the handling of cancelled or expired trademarks by the TMCH, and the various outreach efforts that were undertaken (among others). If you are interested, the final sets of questions that were sent by the TMCH Data Gathering Sub Team to Registries, Registrars and the TMCH Providers can be viewed here: https://community.icann.org/x/VAmsAw. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Tuesday, December 6, 2016 at 23:49 To: John McElwaine <john.mcelwaine(a)nelsonmullins.com>, David Tait <david.tait(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Thanks for the feedback, John. Perhaps it would be best if at this point in the discussion staff would post the current language of the question, so that we can review any specific suggestions for alteration of its wording. Best to all. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil(a)markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne(a)valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris(a)alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul(a)law.es<mailto:paul@law.es>>, "kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>" <kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va(a)bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactS…<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkB…> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. ________________________________ No virus found in this message. Checked by AVG - www.avg.com[avg.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com&d=DgMGaQ&c=…> Version: 2016.0.7924 / Virus Database: 4664/13516 - Release Date: 12/01/16

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Multistakeholder Ethos Award 2017: Nominations
by Nathalie Peregrine Dec. 12, 2016

Dec. 12, 2016

https://www.icann.org/news/announcement-2016-12-12-en Submit Nominations Via the Ethos Award Nomination Form<https://goo.gl/forms/sKJcUjdA5gT50Dl72> ICANN is pleased to announce the opening of the nomination period for ICANN's Multistakeholder Ethos Award. Launched in 2014 at ICANN50 in London, the Multistakeholder Ethos Award recognizes ICANNparticipants who have deeply invested in consensus-based solutions, acknowledging the importance of ICANN's multistakeholder model of Internet governance, and contributed in a substantive way to the higher interests of ICANN's organization and its community. The ideal recipient(s) will have served in roles in multiple ICANN working groups or committees and collaborated with more than one Supporting Organization and/or Advisory Committee in a significant capacity. Candidates for the award will demonstrate at least five years of participation in the ICANN Community. Candidates will be evaluated by a panel of community members appointed by the Chairs of each Supporting Organizations and Advisory Committees using a merit-based point system evaluated against three criteria: 1. Demonstrated ability to work across community lines with both familiar and unfamiliar ICANNStakeholders with the aim of consensus building and collaboration that substantiate ICANN's multistakeholder model; 2. Facilitator of dialogue and open discussion in a fair and collegial manner, through the spirit of collaboration as shown through empathy and demonstrating a sincere desire to engage with people from other backgrounds, cultures, and interests; and 3. Demonstrated additional devotional factors exhibited by time spent supporting ICANN's multistakeholder model and its overall effectiveness through volunteer service via working groups or committees. Please submit your nominations via this Nomination Form<https://goo.gl/forms/sKJcUjdA5gT50Dl72> including detailed information outlining why the nominee meets the award criteria. Any additional information in support of nominations and/or questions about the award process may be submitted via email at ethosaward2017(a)icann.org<mailto:ethosaward2017@icann.org>. Award recipient(s) will be announced in June 2017 at ICANN59 Johannesburg.For more insights on the award program, please consult the ICANN Community Wiki<https://community.icann.org/x/YyOAAw>. Submit Nominations Via the Ethos Award Nomination Form<https://goo.gl/forms/sKJcUjdA5gT50Dl72> ###

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PLEASE PROVIDE FEEDBACK: Latest TMCH Charter questions and updated Work Plan
by Mary Wong Dec. 8, 2016

Dec. 8, 2016

Dear all, As agreed on the Working Group call that just ended, staff is recirculating the latest draft of the TMCH Charter Questions, which indicates which questions have been refined and clarified by the TMCH Charter Questions Sub Team. We are also attaching the slides that were used for our Working Group session at ICANN57, where you can see at a glance the refined Charter questions that had been agreed on by the Sub Team as of end-October. As mentioned on the call, these are all the suggested questions under the Guidance and Verification categories, plus the first question in the Balance category. Since Hyderabad, the Sub Team has made progress on additional questions in the Balance category, which you will see highlighted in green on the Tabulated Categories document. Please provide your comments and feedback, if any, on all these Charter questions that have been refined and agreed by the Sub Team, who will hopefully be in a position to present the remaining Charter questions at the Working Group call next week. We are also attaching the updated Work Plan that was displayed during the call. As with the Sub Team-agreed TMCH Charter questions, please provide your comments and feedback, if any, on the Work Plan as soon as possible. For the information of Working Group members who were not on the call, we hope to receive input shortly from Registries and Registrars on a set of specific questions that had been developed by the TMCH Data Gathering Sub Team – however, we have been informed that, given the workload and amount of requests that these two Stakeholder Groups have been receiving, the input may not be as timely or as comprehensive as we may have hoped. The TMCH Data Gathering Sub Team also developed a set of questions to be sent to the TMCH Providers – following some clarifications based on feedback received from ICANN GDD (who have been working with the TMCH Providers), those questions should be sent to the Providers by the end of this week. 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 From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, November 30, 2016 at 02:45 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for Working Group call this Wednesday Dear Working Group Members, The proposed agenda for our next Working Group meeting this Wednesday is as follows (please note that this is subject to changes that may be made by the WG co-chairs): 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Continue review of suggested questions for the review of the Trademark Clearinghouse (TMCH) from the TMCH Charter Questions Sub Team (latest version attached) 3. Review updated Work Plan (attached) 4. Any other business 5. Next steps / next meeting For #2, you may recall that several clarified/refined questions (as agreed by the Sub Team up to that point in time) were presented to the community at ICANN57, although there was not a lot of time for a full discussion. These questions are those in the Guidance and Verification & Data categories, and the first question from the Balance category. For #3, please note that the co-chairs have not yet had a chance to comment on the attached document. 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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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Dec. 7, 2016

Dec. 7, 2016

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, 07 December 2016 at 18:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/IpnDAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-07dec16-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/rhiOAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 07 December 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 07 December 2016 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_… yuri chumak:greetings from Toronto Maxim Alzoba (FAITID):Hello All Monica Mitchell:hi everybody George Kirikos:Hi folks. Steve Levy:Hi folks. Sorry but I may need to leave early Kristine Dorrain - Amazon Registry:Hi all. Housekeepking question. Are we sticking with 1800 UTC going forward? Kristine Dorrain - Amazon Registry:I seem to receive the calendar entries intermittently and thought I'd just update my own calendar... Paul Tattersfield:Hi everyone George Kirikos:I think it rotates, Kristine. Mary Wong:@Kristine, we are sticking with the rotation we used before Hyderabad - 1700 UTC, 1800 UTC, 1700 UTC, 2200 UTC (allowing for daylight savings) until further notice Monica Mitchell 2:sorry my first connection dropped so you see me twice :-( George Kirikos:Is there a way to make the top middle pod take up the entire width of that area? Kristine Dorrain - Amazon Registry:OK, thanks. I'll keep watching for the reminder then. :) George Kirikos:(I have "Fit Width" for the top middle pod, but there's extra gray space on the left and right. Terri Agnew:@George, sync is on, you can make it full screen if you wish. The four arrows top tool bar George Kirikos:With full screen, the chat isn't visible, though. If the pod had no gray space on the left and right, the text in that pod could be larger. George Kirikos:(i.e. try making your browser width larger, and you'll see the wasted gray space) Susan Payne:hi all, I don't have any audio.is it just me? Susan Payne:ah - I now do :) Kiran Malancharuvil:There's a bad echo Kiran Malancharuvil:Oh it's gone, it might have been my bad George Kirikos:If only we had an insider at Adobe to help us.... ;-) Vinzenz Heussler:I've been thinking about this too, George. Would be great if this could be adaptable Mary Wong:@George, @Vincenz, apparently it has to do with the original document as uploaded - we are trying to see what we can do to change things. George Kirikos:Thanks Mary. Paul Tattersfield:j scott is very quiet here Vinzenz Heussler:Thank you! David McAuley (RySG):somewhat feint Kiran Malancharuvil:I can hear you fine. Greg Shatan:I hear you fine. John McElwaine (Nelson Mullins):sound fine here Kristine Dorrain - Amazon Registry:I can hear you. Mary Wong:Document is unsync'ed Rebecca Tushnet:I'm not sure my audio is working. Rebecca Tushnet:I'd love to hear other perspectives on the meaning of this question though. George Kirikos:She's typing. Terri Agnew:increasing audio for J Scotts line, let us know if further adjustments are needed Terri Agnew:@Rebecca, I see your mic is active and unmuted. If needed let me know if dial out on the telephone is needed Griffin Barnett:I am hearing some background noise (music?) from an open line Terri Agnew:finding line George Kirikos:Q1 will be important if there are multiple providers, as there could be a "race to the bottom" and forum shopping if the criteria are too lax or contain gray areas. Rebecca Tushnet:If you didn't hear me I may need to use my phone to dial in. Vinzenz Heussler:yes, classical music in the background somewhere Mary Wong:Thanks, J. Scott - Greg made my point (origin and reason for the second column) Greg Shatan:Someone's mic was open (if you look at the phone abouve Terri Agnew's name, you can often see who has open mics. Vaibhav Aggarwal:Hi Guys Greg Shatan:You literally can't answer this question if you don't know with certainty what the verification criteria are. If you do answer it and you don't know, then you're blowing smoke... Terri Agnew:@Rebecca, we did not hear you. Mary Wong:Yup Susan Payne:J Scott, yes agree Philip Corwin:Finally in! George Kirikos:Welcome, Phil. Mary Wong:Oops, sorry for typo Maxim Alzoba (FAITID):I hope nobody registers WHOIS mark in TMCH Vinzenz Heussler:there should be a difference between verification criteria (probably relates to eligibility) and administrative challenges during the verification process Kathy Kleiman:That's a good point - perhaps Staff can go back and look at the versions of the subteam Griffin Barnett:The word "different" appeared in the original formulation of the question from the Charter: "Should further guidance on the TMCH verification guidelines for different categories of marks be considered?" Susan Payne:Yes, makes sense Griffin Barnett:I'm guessing that is the genesis? Mary Wong:Sorry, where is the "different" to be deleted? Kiran Malancharuvil:I don't see different either? Kathy Kleiman:good suggession Kathy Kleiman:suggestion Susan Payne:no, that was the original question David McAuley (RySG):Q1, middle column, near bottom Kiran Malancharuvil:Those are notes, not the forumulation of the question,, right? Greg Shatan:There was no suggestion to delete anything from the question. Rather to delete everything after the hyphen in column 2. Georges Nahitchevansky:I agree on getting the verification info. In particular, it would also be useful to have easy access as to the criteria for how the TMCH evaluates an applied for mark. Seeing the criteria would be helpful for discussions about problems that have been encountered in verifications of marks applied for. Susan Payne:We need to know what the verification criteria are before we answer the question. we don't need to know what they are before we agree that the question is one that is to be answered George Kirikos:Is is when already registered TMCH registrations are challenged, or refused registrations get appealed?? George Kirikos:(or both, in #2) Dominic DeLuca:As it currentlly stands, there is not a landing page that has the requirements for TMCH validation - is that correct? Greg Shatan:"Vye-bav" is close, I think. Mary Wong:@Dominic, we will check with Deloitte and try to figure out how to get it George Kirikos:Because of past gaming, e.g. the "Plectrum" marks in the EU sunrise, etc. George Kirikos:There's no law that required a TMCH in the first place. Greg Shatan:Vaibhav, your mic is onh. Vaibhav Aggarwal::) Vaibhav Aggarwal:Done Kathy Kleiman:@Mary, could you kindly include within the Notes (on the right) that we have agreed to review the sentence fragment "though one noted the need to define what "different means" (in the clarifying paragraph). Further, from the original charter questions, including the one that follows, have the issues and concerns be included in the question and clarification ( "Should further guidance on the TMCH verification guidelines for different categories of marks be considered?") Kathy Kleiman:Question 1 Vinzenz Heussler:@Vaibhav: it is easy to validate a registered trademark but what about court validated marks or marks protected by statute or treaty? Kristine Dorrain - Amazon Registry:Agree Susan. The point is to make the charter questions less conclusory/leading. It's not to presume any conclusions or assert any positions. We can assert our positions after we finalize the questions. Mary Wong:@Kathy, can you rephrase the latter part of your request? I'm not sure I understand. Thanks! Vaibhav Aggarwal:@Vinzenz Excelletn - So Lets Make the Criteria Specific to the Situation Vaibhav Aggarwal:I am finding it overreaching Vaibhav Aggarwal:for the TMCH to Draw up a Specific Creteria for All Vaibhav Aggarwal:Not Blanket J. Scott Evans:Vaibav: TMCH as well as the entire ICANN relationship is a matter of contract. Griffin Barnett:Perhaps clarification is needed: is "registration" as used in Q2 sub-part (ii) referring to challenges to the underlying TM registration (in the national/regional TM office that issued the registration) or a challenge to a mark that has been recorded in the TMCH? Vaibhav Aggarwal:YEs I understand That - But There is Legislation involved now bacause this is drawing up a creterion for Trademarks for the Laws Vaibhav Aggarwal:@Jeff Vaibhav Aggarwal:@J Scott *Sorry Marie Pattullo:Thanks for that Griffin; fully agree as I'm confused to hear registration used in (to my mind) the "wrong" way. George Kirikos:I think we'd want to cover both scenarios. Mary Wong:@Kathy, did you mean whether the issues and concerns noted by the comments are adequately covered by the suggested Charter question? Edward Morris:Support Phil's suggestion. J. Scott Evans:Vaibhav. There is no legislation involved.You present your certificate and it must fit certain criteria. It is no different than when you list a registraiton in an M&A schedule Vaibhav Aggarwal:right which is more or less common globally Marie Pattullo:Agree with Phil; a registered TM is a registered TM until the day it is cancelled, or not renewed. Kristine Dorrain - Amazon Registry:I think Question 2 is trying to ask both: what are the criteria for initial entry or refusal in the TMCH and what are the criteria used to challenge a TMCH entry. Griffin Barnett:Need to be careful when referring to "registration" vs. "recordal" - registration, to me, means the underlying TM registration, while "recordal" would refer to the record of the mark in the TMCH Kristine Dorrain - Amazon Registry:Agree that multiple viewpoints point to an ambiguity that need to be resolved. Vaibhav Aggarwal:So @JScott, how can it be setting a Criterion ? At All ? The Certificate is either Yes or No. Cant Reviwe it ! Vinzenz Heussler:+Griffin Susan Payne:J Scott, that is correct. It should be recordals rather than registrations Mary Wong:Noted Griffin Barnett:perhaps (ii) could read: "what to do when a mark is rejected by the TMCH?" Greg Shatan:the passive voice should not be used in the second part of this question. Can't tell who is the person who would be "doing" something. George Kirikos:So, changing the word to "recordal" would then allow for both scenarios to be covered, great. Greg Shatan:What WHO should do? Marie Pattullo:Do we need a legend at the bottom - registration = TM registration, recordal = a record of the TM in the TMCH etc.? Susan Payne:Kathy - recall that we have a whole host of other questions about cancelled registrations later on Mary Wong:@Marie, staff will review the document to make sure that the right terms are used consistently George Kirikos:That's why this group review is good, as we can clear up all these ambiguities. Steve Levy:Sorry but I need to drop off. Speak with you all again soon Kristine Dorrain - Amazon Registry:And this question category is about Guidance...meaning how well is the TMCH communicating procedures and criteria, right? So this question is specific communication. Vaibhav Aggarwal:+1 Greg Marie Pattullo:Thanks Mary; I was think more of the people to whom we ask the questions, who may have the same confusion. Just to head off questions at the pass if we can. Mary Wong:It has to mean TMCH rejection, right? Why would the TMCH communicate challenges brought before national TM offices of a registration of a TM? Griffin Barnett:Agree Mary Beth Allegretti:Hi - I need to drop off. Talk to you all soon. Griffin Barnett:My understanding is the Q is directed at how the TMCH communicates to TM owners about (i) criteria for accepting or rejecting a mark into the TMCH, and (ii) what to do when the TMCH rejects a mark from being added to the TMCH George Kirikos:Perhaps since column #3 is blank, we can add those clarifications in that box for Q2. Mary Wong:@Griffin, that was staff's understanding too, so we will make the suggested clarifications George Kirikos:(i.e. the two scenarios) Griffin Barnett:(i) seems to be directed to TM owners as guidance before a TM owner applies to record a mark in the TMCH, while (ii) is directed at next steps for TM owner in the event the TM is rejected from the TMCH Griffin Barnett:THanks Mary Kristine Dorrain - Amazon Registry:+1 Griffin Kiran Malancharuvil:+1 Griffin Kathy Kleiman:I liked J.Scott's rephrasing with three parts (paraphased as): is the TMCH clearly communicating its criteria for registration/recording; letting TM Owners know what to do when TM rejected; and letting others know what to do if as 3d parties they have challenges or questions. Griffin Barnett:Not sure about the suggested 3rd part of the formulation Kathy states above -- if a mark is accepted by the TMCH, this is not generally known by the public at large (I believe there are other questions going to whether this data should be public) Georges Nahitchevansky:I read 2 as simply saying what does TMCH communicate as to the criteria for accepting a mark and what it communicates when it rejects a mark. and how the applicant can challenge that determination The issue of third party attacks on marks registered in the TMCH is a separate issue Griffin Barnett:I should say, not known unless or until it triggers a TM Claims notice George Kirikos:It's another side of the coin of the same issue, Georges (i.e. appeals of the TMCH decisions). Kathy Kleiman:This discussion suggests that further reordering of the questions might be useful... George Kirikos:"potential domain registrants" would be more precise. :-) Greg Shatan:I think we should ask both. But we need to think about how the fact and opinion questiions relate to each other, and how they're presented. 2 and 3 are kind of aligned and kind of different. If they were more similar we might have more fruitful results. George Kirikos:(i.e. add the word domain before the 2nd "registrants") Paul Tattersfield:Please can we change 'trademark owners' to 'rights holders'? Griffin Barnett:AGree it needs to be clear what the scope of the "education" is: about TMCH services? Susan Payne:@Kathy - I think we should consider what order we work on them - ie we don't have to start with the first one. But I don't believe we need to spend time in this context worrying too much about what order they are in on the document George Kirikos:It might also include education when a domain name registrant does research after receiving a notice at their registrar. Griffin Barnett:Perhaps to resolve the scope of "education" issue: Should the TMCH be resonsible for educating trademark owners, domain name registrants, and potential domain name registrants about the TMCH and the services it provides? If so, how? If not, who should be responsible? Susan Payne:Can we just put both terms in both questions and have done with it? Marie Pattullo:Surely there can be a landing page and link from the obvious sites, Griffin? Greg Shatan:But why is question 2 so narrowly focused? Greg Shatan:+1 Susan regarding using "communication and education" in both 2 and 3. George Kirikos:+1 Phil Kathy Kleiman:I like Phil's note about what is missing on Q3 Paul Tattersfield:Can we change 'trademark owners' to 'rights holders'? Because it's important to provide guidance for marks protected by statue and treaty as well as trademarks. Vinzenz Heussler:Potential distinction: Q3 is more about "TMCH and RPM literacy" and Q2 is helping in concrete situations Kiran Malancharuvil:I need to jump off the call a few minutes early. I support keeping this as simple and straightforward as possible. Kiran Malancharuvil:+1 J Scott Kathy Kleiman:+2 J Scott Susan Payne:+1 re keeping it simple Kiran Malancharuvil:Agreed. These are simple concepts. We are spending WAY too much time on this. Greg Shatan:Do we know what TMCH currently does with regard to "education"? Are we saying that they're not doing it and should be? Or that they are doing it but shouldn't? Edward Morris:+1 Phil Maxim Alzoba (FAITID):rising awareness? Greg Shatan:Phil, I think that's good enough to get the information we need. Support your last formulation. Kiran Malancharuvil:Awareness is impossible to measure. Greg Shatan:Awareness is different from education. Kristine Dorrain - Amazon Registry:you can't evaluate awareness. Kristine Dorrain - Amazon Registry:Education is the provision of actual information. Greg Shatan:Awareness is binary -- I know about it vs. WTF. Kiran Malancharuvil:Education is something that is concrete Kristine Dorrain - Amazon Registry:I support Phil's last iteration. Kathy Kleiman:"education services" was in the original charter question - so "education" is fine. Other words may offer confusion. George Kirikos:lol Greg Greg Shatan:I also think that education embraces awareness. Assuming that is not a violation of ICANNs new anti-harassment policy. David McAuley (RySG):Greg, you are on a roll. Your comment yesterday about my age, 4154, is however a violation. George Kirikos:#4 should be quick. Griffin Barnett:No problem with the formulation of Q4 George Kirikos:Figurative marks. George Kirikos:Figurative marks with text. Susan Payne:@John - yes Griffin Barnett:Agree with John MacElwaine -- TMCH uses some alternative terminology for design marks (device etc.) John McElwaine (Nelson Mullins):Instead of "design mark" - either "device/image marks" or "Marks that do not exclusively consist of letters, words, numerals, special characters". Trademark Clearinghouse Guidelines p. 20 George Kirikos:https://urldefense.proofpoint.com/v2/url?u=https-3A__euipo.europa.e… George Kirikos:It'd be interesting to know how they handle sound and colour marks. :-) George Kirikos:I trademark a certain Pantone colour close to "red" --- give me Red.TLD :-) Griffin Barnett:FYI, I believe what John was referencing, at least in part, is here: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Greg Shatan:Can I ask who were asking these questions to? That governs how accessible these questions need to be. Maxim Alzoba (FAITID):bye all , have to drop the call J. Scott Evans:ciao, ciao Terri Agnew:Next call: 14 December 17:00 UTC Kathy Kleiman:Bye All Vaibhav Aggarwal:ciao Kathy Kleiman:Great thanks to David Tait! Greg Shatan:Thank you, David! David Tait:Thanks Mary et al! Vaibhav Aggarwal:Thanks to David it was fun meeting you in Hyderabad Greg Shatan:Will miss you and your scarves. David Tait:Thanks greg! Mary Wong:Will do, Phil Vaibhav Aggarwal:India ill have a role in Brexit - Let m eknow If I can assist. Marie Pattullo:Blimey. You poor thing. Good luck with that David... George Kirikos:We can try to work through Q1-Q4 on the mailing list. John McElwaine (Nelson Mullins):@Griffin that is correct. We might be able to deep link to the TMCH Guidelines PDF Greg Shatan:Scotch Egg-sit? Paul Tattersfield:Bye everyone Vinzenz Heussler:bye everyone Griffin Barnett:Thanks all, bye George Kirikos:Bye folks. Marie Pattullo:Don't make me cry, Greg. Bye all. David McAuley (RySG):thanks, bye all Greg Shatan:Bye all. Darcy Southwell:Thank you. John McElwaine (Nelson Mullins):Notes q1.4 excessively should be exclusively

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Agenda for RPM Review Working Group call today
by Mary Wong Dec. 7, 2016

Dec. 7, 2016

Dear all, With apologies, it appears that I omitted to send the proposed agenda for the call taking place today along with the updated table of TMCH Charter questions. The proposed agenda is: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Review and discuss Charter questions (as edited by the Charter Questions Sub Team) 3. Co-Chairs’ introduction of Statement concerning Additional RPMs/Private Uses of the TMCH 4. Next steps/next meeting Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, December 7, 2016 at 02:33 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: FOR DISCUSSION: Updated TMCH Charter Questions table - 6 December 2016 Dear all, In response to Phil’s request, staff has updated the previously-circulated table of suggested TMCH Charter Questions with additional suggestions and comments received from Working Group members up to 1800 UTC today (6 December), which is 24 hours before the Working Group call. The updated document is attached, and we will plan on using it as the basis for discussion on the Working Group call tomorrow. Please feel free to send any additional thoughts and comments you may have to the Working Group mailing list – while they may not all be captured in the document, staff will do our best to ensure they are covered during the Working Group’s discussion. As we move into discussion and finalization of the proposed TMCH Charter Questions, Working Group members may wish to note that the TMCH Data Gathering Sub Team had agreed on a list of questions that were sent to the TMCH Providers as well as others that were sent to the Registries and Registrars Stakeholder Groups. In line with their mandate, the Sub Team’s questions are all directed toward obtaining relevant data on the workings of the TMCH – for purposes of the current discussion, the questions that were directed to the TMCH Providers include questions on design marks and their verification, the handling of cancelled or expired trademarks by the TMCH, and the various outreach efforts that were undertaken (among others). If you are interested, the final sets of questions that were sent by the TMCH Data Gathering Sub Team to Registries, Registrars and the TMCH Providers can be viewed here: https://community.icann.org/x/VAmsAw. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Tuesday, December 6, 2016 at 23:49 To: John McElwaine <john.mcelwaine(a)nelsonmullins.com>, David Tait <david.tait(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Thanks for the feedback, John. Perhaps it would be best if at this point in the discussion staff would post the current language of the question, so that we can review any specific suggestions for alteration of its wording. Best to all. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy(a)kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil(a)markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne(a)valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris(a)alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul(a)law.es<mailto:paul@law.es>>, "kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>" <kurt(a)kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va(a)bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec(a)gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactS…<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkB…> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&…> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. ________________________________ No virus found in this message. Checked by AVG - www.avg.com[avg.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com&d=DgMGaQ&c=…> Version: 2016.0.7924 / Virus Database: 4664/13516 - Release Date: 12/01/16

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Follow up from RPM Working Group meeting in Hyderabad
by David Tait Dec. 7, 2016

Dec. 7, 2016

Dear Working Group participants At the Face-to-Face Meeting of the Working Group (WG) in Hyderabad (9 November 2016), it was determined that a small sub-team of WG members should take a quick look at the TM-PDDRP procedures particularly as they pertain to complaints filed by multiple trademark owners against a single registry. Beth Allegretti and Brian Beckham have agreed to undertake this work, however, they would like to extend an invitation to any other WG members to join them. Staff would therefore ask you to reply to this email if you are interested in participating in this work and we make any necessary arrangements. Kind regards, Davi

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FOR REVIEW/DISCUSSION - NEW co-chairs' statement on additional RPMs, and UPDATED table of TMCH Charter questions
by Mary Wong Dec. 7, 2016

Dec. 7, 2016

Dear all, In advance of the Working Group call this week, and pending circulation of the finalized agenda, please find attached the following documents for your review and further discussions: (1) A draft statement from our Working Group co-chairs regarding the provision of additional rights protection mechanisms by the TMCH and registry operators (i.e. in addition to the minimum mandatory RPMs prescribed by ICANN and which form the basis of our current Policy Development Process); and (2) A table of all the TMCH-related Charter questions, as refined and suggested by the Sub Team and including notes and questions from several Working Group members as of 4 December. This document essentially replicates the Proposed Edited Questions that were circulated in the form of the more comprehensive table that was discussed by the Sub Team, but hopefully aids your deliberations as it sets out all the proposed questions in one spot. Thanks and cheers Mary On 12/5/16, 07:52, "gnso-rpm-wg-bounces(a)icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces(a)icann.org on behalf of icann(a)leap.com> wrote: I think the 2nd formulation of Question #15 is better, as it's more open-ended, yet also asks for specifics on how concerns can be addressed. As an aside, the "Original Question" of #15 suggested "of course with a central database" --- there's no technical reason why a central database would be required. There could instead be multiple independent databases, which registrars and/or registries could query in parallel via a standardized API. There'd only need to be a central *list* of which TMCH providers needed to be queried. From a coding perspective, the registrar/registry could simply query the entire list of providers, and collate the results. Most registrars already have this technology/capability, as they often query multiple registries (and secondary marketplaces) in parallel when customers attempt a new domain name registration (e.g. customer searches for EXAMPLE.COM, but they'll query not only the Verisign-operated .com registry, but also .net/org/biz/info/us and hundreds of other TLDs, marketplaces like Sedo/Afternic, and they'll even generate and query variations of "EXAMPLE.TLD" for availability, presenting the customer with a list of hundreds of alternatives). Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DgICAg&… On Sun, Dec 4, 2016 at 12:25 PM, David Tait <david.tait(a)icann.org> wrote: > Dear All > > > > In advance of the meeting of the Rights Protection Mechanisms Working Group > on Wednesday at 1800 UTC, I am pleased to enclose the updated review of the > TMCH Charter questions which has been prepared by the Sub-Team tasked to > conduct an initial review of these questions. > > > > Staff have been expressly asked to draw your attention to Question 15. Two > possible formulations of this question have been prepared and the Sub-Team > is seeking the view of the Working Group as to which of these should be > adopted. > > > > Kind regards, > > > > David Tait > > > > David A. Tait > > Policy Specialist (Solicitor qualified in Scotland, non-practicing) > > Internet Corporation for Assigned Names and Numbers (ICANN) > > > > Mobile: + 44-7864-793776 > > Email: david.tait(a)icann.org > > www.icann.org > > > _______________________________________________ > 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

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