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Agenda for WG meeting of 28 September 2016
by Mary Wong Sept. 28, 2016

Sept. 28, 2016

Dear WG members, The proposed agenda for the next WG meeting, scheduled for 28 September at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to SOIs 2. Overview presentation of the Trademark Claims Service 3. Discussion of Charter questions relating to the Trademark Claims Service 4. [if time permits Continuation of discussions over the TMCH and Sunrise (based on the last two WG calls and subsequent mailing list discussion) 5. Next steps/next meeting To assist with the WG’s review of all the Charter questions relating to TMCH and Sunrise (see agenda item #4), please find attached a document containing all the Charter questions this WG has been tasked to look at, together with additional questions that have since been suggested by either WG members or by other members of the community at ICANN56 in Helsinki. In relation to the TMCH and Sunrise, all the questions had already been listed in the respective slide decks for both those presentations. The document separates out all the questions into categories corresponding to each RPM in Phase One, and also includes a General section. Please note also that the Charter questions merely replicate all the previous questions the community had raised with ICANN on the issue of RPM protection, and these have not been edited or otherwise reviewed by either the staff’s or the co-chairs. 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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Further information on registry and registrar requirements and obligations (Re: TMCH review objectives)
by Mary Wong Sept. 27, 2016

Sept. 27, 2016

Dear all, Further to Paul’s request (below) and my earlier note, staff hopes that the following additional information is also helpful. Under Specification 7 of the base New gTLD Registry Agreement, all New gTLD registry operators are obliged to implement the TMCH Requirements referenced previously. These Requirements incorporate the two provisions I mentioned in my note, and set out further criteria, processes and other terms relating to the provision of Sunrise and Claims Services. A copy of the base New gTLD Registry Agreement (as of January 2014) can be found here: http://newgtlds.icann.org/sites/default/files/agreements/agreement-approved…; and individually-executed Registry Agreements are listed here: https://www.icann.org/resources/pages/registries/registries-agreements-en. In addition, all New gTLD registry operators and registrars wishing to sell domains under the 2012 New gTLD Program are required to agree to the Terms of Service for Registries and Registrars prior to offering any Sunrise or Claims Services: https://marksdb.org/tmdb/public/tandc (note that these registries and registrars also have to complete testing with, and be certified by, IBM in order to use the TMCH). In relation to the discussion about registrar (rather than registry) obligations, the TMCH Requirements state the nature and limit of registrar obligations in relation to the provision of Claims Notices to potential registrants (e.g. they must be clear and conspicuous, be in the prescribed form, and provided in English and preferably also the language of the registration agreement). The TMCH Requirements also provide that registrars may query the Claims Notice Information Service only in relation to domain names actually applied for by a potential registrant, and not for any other purpose. Finally, under the Terms of Service for Registries and Registrars referenced above, WG members may be interested to review the following provision (quoted here in relevant part only): “You agree that you will not use the Trademark Clearinghouse or the Services in a manner (as determined by us in our sole discretion) that: 7.1.1 Is illegal, or promotes or encourages illegal activity; 7.1.2 Infringes on the intellectual property rights of any other person or entity; 7.1.3 Interferes with the operation of the Trademark Clearinghouse or the Services; 7.1.4 Modifies or alters any part of the Clearinghouse Content or the Services; 7.1.5 Results in the distribution of Clearinghouse Content in a manner not authorized or contemplated by the Functional Specifications or TMCH Requirements …. “ We realize that these are fairly voluminous additional documents for which we are providing the links here and in my last message; however, we hope that in combination they provide a useful summary of the various obligations of and restrictions on both registries and registrars in relation to the provision of Sunrise and Claims Services under the 2012 New gTLD Program. 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: Paul Keating <paul(a)law.es> Date: Tuesday, September 27, 2016 at 08:40 To: Greg Shatan <gregshatanipc(a)gmail.com>, Mary Wong <mary.wong(a)icann.org> Cc: "J. Scott Evans" <jsevans(a)adobe.com>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives Greg, A few comments: 1. Publicly Available Data. I did not say that the TMCH database was publicly available. However, the TMCH database is nothing but a collection of public trademark registrations and evidence of actual use. As such, the original trademark registrations are publicly available. Thus, the registries could simply use other public sources and be able to price “trademark-related” domain names as they wish. 2. Restrictions on use. Your reference to limited purpose use does not appear in Mary’s underlying email. To obtain any use restrictions we would have to review any relevant agreements between TMCH and the registries (or ICANN if TMCH has an agreement with ICANN which is somehow incorporated within the Registry agreement). In the absence of any restrictions in the agreement, I see no basis for a subjective description indicating that use is somehow improper. The same goes for any access provided to registrars. @Mary, can you supply such agreements? 3. Legal Restrictions. Antitrust laws would not seem to apply unless the affected “market” were limited to a specific extension. I cannot recall how that issue was addressed in the litigation against Verisign/ICANN over pricing but reference to that case might give further information. Even if antitrust (or other) laws applied such would be factually specific and best addressed via a post occurrence curative rights process such as the UDRP/URS (in the case of cybersquatting) or litigation (in the case the claim was based upon the pricing in the absence of subsequent cybersquatting). @Phil do you remember how the court addressed the market in that case? 4. RPM – I think you are mixing things up a bit. The SunRise was a RPM (allowing trademark holders to pre-emotively register domain names based solely upon a trademark registration and evidence of use). It did not extend to protect non-trademark holders in situations where in the asserted mark was in fact descriptive/generic and thus available for non-cybersquatting use. TMCH was NOT a RPM. It was a means to make the Sunrise process more efficient (by creating a uniform process) and less costly for the trademark holders (by permitting them to merely reference their TNCH record instead of producing evidence each time). The additional RPM you are not considering are the curative rights processes found in the UDRP and URS which protect the trademark holder IF (a) they did not register during Sunrise AND (b) the domain was later registered illegitimately and registered and used in bad faith. As far as I can see none of these policy tools were intended to address pricing – an issue intentionally left to the market. 5. Future use prohibitions. I may be mistaken but I believe that TMCH already has an agreement with ICANN and/or the Registries. If so, any proposal you are suggesting would require a specific amendment (requiring consent of all parties). And, of course, such a restriction would do little good given that the same exact data can be collected from any number of publicly available sources. I remain unconvinced there is an actual issue here (my view being that pricing includes a value that cannot be said to be entirely unreasonable). And, I am not at all convinced that this is an appropriate area for the WG given our charter. Sincerely, Paul Raynor Keating, Esq. Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFAw&c=FmY1…> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul(a)law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>> Date: Tuesday, September 27, 2016 at 5:18 PM To: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Cc: Paul Keating <paul(a)law.es<mailto:paul@law.es>>, "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I take from this the following: * The TMCH database is NOT publicly available, in spite of claims to the contrary. A policy decision was made NOT to make the TMCH database publicly available, to avoid gaming and targeting of trademark owners. If it is "publicly available" through some channels, these are not authorized sources. It's reasonable to assume that these are either leaked or reverse engineered. I'm not sure what the "evil source" is -- there may be multiple evil sources. * The DNL List, containing only the DNL field of the the TMCH database, is made available to New gTLD Registries, who are required to have it and update it daily. * The sole purpose the DNL List is given to Registries is so they can check whether a requested domain name matches a domain name label of a pre-registered mark during the Trademark Claims Period. Any other use would be an unauthorized use. * Neither the TMCH database or the DNL List is made available to Registrars. If a Registrar has either one of these, it has come from a source not authorized to share it (either a Registry which received it legally, or a third party who reverse engineered it) or the Registrar reverse engineered it. In either case, a Registrar is not authorized to either to have or to use the TMCH database or the DNL List. * A Registry using the DNL list in order to set differentiated wholesale prices for particular domains and target particular trademark owners during the Sunrise Period (or for that matter during GA or any other period) is making an unauthorized and unintended use of the DNL list. J Scott has called this a "bad faith" use and I am inclined to agree, especially since it begins with "unclean hands." (Note: this is a different issue from a Registry setting a single high price for all trademark owners during Sunrise (or GA, etc.) This is also a problematic practice but not the one being discussed.) * Registrars probably don't need the DNL List, since they can key retail prices off the wholesale prices (and each Registrar is free to decide their markup over the wholesale price) and can use "premium" lists set by the registries. However, if a Registrar has the DNL list (which they shouldn't) and uses it to set further differentiated prices for particular domains, that would be an unauthorized use of the DNL list. That would also be a "bad faith" use of the data, especially since the Registrar isn't even supposed to have the data. These practices may violate both the law and ICANN policy. On the legal front, these may be violations of antitrust/competition laws, either under a price discrimination theory or under a wrongful exercise of monopoly power theory. Anti-price-gouging laws could also be implicated here. I have not conducted an analysis of these points, but it would be good to do so. (Similar issues may arise with across-the-board exorbitant prices in Sunrise Periods.) The possession and use of the DNL List for anything other than its intended purpose by its intended recipient could also violate data protection laws, and could be violations of the terms under which the DNL List is distributed. On the policy front, these activities could be violations of the ICANN policies relating to the creation and purpose of the TMCH database and the Sunrise Periods. These could be more granular violations of particular policy points and/or a violation of the entire purpose of these policies. On the latter point, these polices are Rights Protection Mechanisms. They were set up to protect the rights of trademark holders. They were certainly not set up to use those rights to victimize trademark owners, by singling them out and targeting them with exorbitant pricing schemes. These pricing schemes (whether differentiated or across-the-board) make a mockery of these rights protection mechanisms. Instead, they become "rights detection mechanisms," allowing those unfortunately detected to be charged extra-high prices solely based on their identity. On a going-forward basis, we should make absolutely certain that (1) any use of the DNL List (or the TMCH database) by a Registry for any other purpose than sending Claims Notices is strictly prohibited and a violation of applicable terms and contracts; (2) any use or possession of the DNL List (or the TMCH database) by anyone other than a Registry is strictly prohibited and a violation of applicable terms and contracts (if these parties are subject to terms and/or contracts with ICANN). Greg On Tue, Sep 27, 2016 at 1:12 AM, Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, in response to Paul’s request, here is some information that we hope is helpful. First, the TMCH Technical Requirements and Functional Specifications have certain criteria and requirements for Registries in terms of the data they can fetch from the TMCH (the Technical Requirements can be found at https://newgtlds.icann.org/en/about/trademark-clearinghouse/rpm-requirement…<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_…> and the Functional Specifications at http://tools.ietf.org/html/draft-lozano-tmch-func-spec)[tools.ietf.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__tools.ietf.org_html_dra…>. For example: · REQUIREMENT - Registries must refresh the latest version of the SMD Revocation List at least once every 24 hours. NOTES: - The SMD (Signed Mark Data) Revocation List is the list of SMDs that have been revoked, maintained by the TMCH database. It contains all the revoked SMDs present in the TMCH database at the date and time it is generated. The SMD Revocation List is used during the Sunrise Period to validate SMDs received. During the Sunrise Period the Registry fetches the most recent SMD Revocation List from the TMCH database at regular intervals. - As noted during the Sunrise Overview WG discussion a couple of weeks ago, after a successful registration of a mark, the TMCH validator returns an SMD File to the TM holder. A SMD is a cryptographically signed token issued by the TMCH validator to the TM holder, to be used in the Sunrise Period to apply for a domain name matching a domain name label of a mark that has been pre-registered with the TMCH. · REQUIREMENT - Registries must download and refresh the latest version of the DNL List at least once every 24 hours. NOTES: - The DNL List contains every Domain Name Label (DNL) that matches a pre-registered mark present in the TMCH database at the date and time it is generated. The list is maintained by the TMCH database. Registries use the DNL List during the Trademark Claims Period to check whether a requested domain name matches a domain name label of a pre-registered mark. Secondly, the TMCH provides public monthly reports on TMCH trademark validation and dispute resolution activity, which are posted by ICANN here: https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-regi…<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_…>. Thirdly, the TMCH publishes regularly on its own website statistics about TMCH records, including number of marks submitted and number of Claims Notices issued; for example: http://www.trademark-clearinghouse.com/content/tmch-stats-april-20th[tradem…<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin…>. Finally, ICANN maintains a page containing the dates of all the Sunrise, Claims and related pre-launch RPMs offered by each New gTLD registry operator: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods[newgtld…<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_…>. 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<tel:%2B1-603-5744889> From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Paul(a)law.es<mailto:Paul@law.es> ZIMBRA" <paul(a)law.es<mailto:paul@law.es>> Date: Monday, September 26, 2016 at 16:39 To: "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> Cc: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I apologize for the name error. As for use of data, I believe the same data is publicly available from any number of non-TMCH data. In that regard can staff please publish the data points that TMCH does publish to registries? Paul Keating On 26 Sep 2016, at 11:54 PM, J. Scott Evans <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: First, we can agree to disagree. Also, my name is “J. Scott” (kind of my trademark) :-). Second, I am not talking about regulating a price. However, I do think pricing is relevant if the “data” is being used for a purpose (targeting trademarks for increased pricing) for which it was not intended and that is against the interest of the parties who the TMCH was designed to assist in handling the explosion of new gTLDs. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.c[adobe.c]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=…>om From: "Paul(a)law.es<mailto:Paul@law.es> ZIMBRA" <paul(a)law.es<mailto:paul@law.es>> Date: Monday, September 26, 2016 at 1:22 PM To: "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> Cc: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Scott, I strongly disagree. First I don't think it is bad faith and certainly not per se so as to warrant a global pricing restriction. The fact that there are potential buyers who may value a domain at a higher price is nothing but applying traditional market principles applied in virtually every other form of business. Domains are not utilities to be regulated in such manner. Nor do I see any basis to guaranty pricing for the benefit of trademark holders. Second, given that the same "TMCH data" is publicly available I don't understand the basis for focusing on TMCH as the evil source. Paul Keating On 26 Sep 2016, at 9:26 PM, J. Scott Evans <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: Respectfully, I think you are missing some of the point here. I agree the market should operate as a free market. However, using the data in the TMCH to create lists of “premium” domains in the hope of having trademark owners pay exorbitant prices to acquire their marks is a bad faith practice that should be halted. J Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.c[adobe.c]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=…>om From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <Paul(a)law.es<mailto:Paul@law.es>> Date: Friday, September 23, 2016 at 9:04 AM To: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>>, Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Phil, In furtherance to my last email responding to Mr. Levy, even an unreasonably priced domain is not infringing. It is important that we not mix up the concepts at issue. We are discussing both “preventative rights: and “curative rights”. The preventative rights mechanism should be severely limited because it acts as a restraint of market tendencies in the absence of actual infringement. Imposing preventative measures is akin to imposing a “prior restraint” which (certainly in the area of speech) is disfavored as a matter of public policy. The curative rights mechanism is the 2nd tool which permits rights holders to rectify an infringement that has actually occurred. Rights holders already have the ability to pursue legal claims against a registry who is intentionally targeting them by restricting access to domains other than by way of exorbitant pricing. The hurdles that the rights holders must overcome to succeed on such claims are understandably high – just as they are with any other claimant faced with a similar situation in a non-domain-related situation. However, such is life. It is not our place to alter the legal environment and create contractually-based claims that do not already exist in the law. I believe this was the import of the comment made during the last call asking to differentiate economic costs from “rights”. Sincerely, Paul Raynor Keating, Esq. Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFaQ&c=FmY1…> Tel. +34 93 368 0247<tel:%2B34%2093%20368%200247> (Spain) Tel. +44.7531.400.177<tel:%2B44.7531.400.177> (UK) Tel. +1.415.937.0846<tel:%2B1.415.937.0846> (US) Fax. (Europe) +34 93 396 0810<tel:%2B34%2093%20396%200810> Fax. (US)(415) 358.4450<tel:%28415%29%20358.4450> Skype: Prk-Spain email: Paul(a)law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 5:39 PM To: Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000<tel:212.484.6000> or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ 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=DQMFaQ&c=…> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ <ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

1 0

Re: [gnso-rpm-wg] TMCH review objectives
by Paul Keating Sept. 27, 2016

Sept. 27, 2016

Phil, In furtherance to my last email responding to Mr. Levy, even an unreasonably priced domain is not infringing. It is important that we not mix up the concepts at issue. We are discussing both ³preventative rights: and ³curative rights². The preventative rights mechanism should be severely limited because it acts as a restraint of market tendencies in the absence of actual infringement. Imposing preventative measures is akin to imposing a ³prior restraint² which (certainly in the area of speech) is disfavored as a matter of public policy. The curative rights mechanism is the 2nd tool which permits rights holders to rectify an infringement that has actually occurred. Rights holders already have the ability to pursue legal claims against a registry who is intentionally targeting them by restricting access to domains other than by way of exorbitant pricing. The hurdles that the rights holders must overcome to succeed on such claims are understandably high just as they are with any other claimant faced with a similar situation in a non-domain-related situation. However, such is life. It is not our place to alter the legal environment and create contractually-based claims that do not already exist in the law. I believe this was the import of the comment made during the last call asking to differentiate economic costs from ³rights². Sincerely, Paul Raynor Keating, Esq. Law.es <http://law.es/> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul(a)law.es THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Friday, September 23, 2016 at 5:39 PM To: Rebecca Tushnet <rlt26(a)law.georgetown.edu>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives > I believe I just addressed that question in the email I posted if > unreasonably high sunrise pricing deters a rights holder from registering a > domain corresponding to a verified TM registered in the TMCH then it may be > registered in the general availability period by an infringer, which in turn > imposes a variety of costs on the TM owner (including those of bringing a > subsequent URS, UDRP, or judicial action) and also creates the possibility of > confusion and harm for the general public. > > This is not to say that all Premium pricing is unreasonable, as it is > generally recognized that certain words and terms have inherent additional > value in the DNS context it really requires a case by case analysis. > > > 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 Rebecca Tushnet > Sent: Friday, September 23, 2016 11:10 AM > To: Silver, Bradley; gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] TMCH review objectives > > TMCH¹s goal of ³protection² against what, though? How does high pricing > contribute to trademark infringement? High pricing may deter purchases of > domain names, no doubt, but with what result for the system overall? > > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] > Sent: Friday, September 23, 2016 11:00 AM > To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org > Subject: RE: TMCH review objectives > > I would add that the question of pricing feeds into the concept of > effectiveness, because if the TMCH is serving as a database for registries to > target brand owners for higher pricing based on the value of their brands, > then this is antithetical to the TMCH¹s primary goal to provide protection for > verified right holders. > > > From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On > Behalf Of Rebecca Tushnet > Sent: Friday, September 23, 2016 10:26 AM > To: gnso-rpm-wg(a)icann.org > Subject: [gnso-rpm-wg] TMCH review objectives > > Hello, all. On the last WG call, concerns about pricing of domain names > during the Sunrise Period arose. This led to a question of whether pricing is > within the remit of this WG and the broader question of what the purpose of > our TMCH review is. There seemed to be a desire to focus on the TMCH¹s > effectiveness. The predicate question, then, is: effectiveness at what? Here > are some suggestions for discussion: (1) minimizing the cost of operating the > system for all concerned; (2) minimizing the number of actions that ultimately > need to be brought against infringing registrants; (3) minimizing the number > of noninfringing registrants whose legitimate uses are blocked or deterred. > If the system is reasonably balancing those objectives, I suggest, then it is > effective; potential changes should be directly related to improving > performance on one or more of these metrics without unduly hampering the > others. > > Yours, > Rebecca Tushnet > > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > ================================================================= > Reminder: Any email that requests your login credentials or that asks you to > click on a link could be a phishing attack. If you have any questions > regarding the authenticity of this email or its sender, please contact the IT > Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com > > > ================================================================= > > ================================================================= > This message is the property of Time Warner Inc. and is intended only for the > use of the > addressee(s) and may be legally privileged and/or confidential. If the reader > of this message > is not the intended recipient, or the employee or agent responsible to deliver > it to the intended > recipient, he or she is hereby notified that any dissemination, distribution, > printing, forwarding, > or any method of copying of this information, and/or the taking of any action > in reliance on > the information herein is strictly prohibited except by the intended recipient > or those to whom > he or she intentionally distributes this message. If you have received this > communication in > error, please immediately notify the sender, and delete the original message > and any copies > from your computer or storage system. Thank you. > ================================================================= > > > No virus found in this message. > Checked by AVG - www.avg.com <http://www.avg.com> > Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

13 23

TMCH review objectives
by Rebecca Tushnet Sept. 26, 2016

Sept. 26, 2016

Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG - and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH's effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759

15 34

Re: [gnso-rpm-wg] TMCH review objectives
by Steve Levy Sept. 26, 2016

Sept. 26, 2016

I’d also like to add my view that “protection” can take a number of different forms. Stopping someone from infringing upon one’s trademark is the most obvious one but protecting brand owners from having their trademarks held for ransom at an unreasonably high premium price is another. If, for example, [brand].TLD is priced at US$50000 as a premium domain it effectively prevents the brand owner from purchasing that domain and the website remains either non-resolved or perhaps as a registry advertisement. The public may then see this site and mistakenly believe that the brand owner has either gone out of business or is not devoting sufficient resources to promoting its brand online. Preventing this type of negative impact on the brand is another form of “protection”. Regards, Steve [cid:14EF9B53-43F8-43BA-A891-429046E0AED9] Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy(a)AccentLawGroup.com<mailto:slevy@accentlawgroup.com> Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/> <http://www.accentlawgroup.com/>LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/> ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). If the reader or recipient of this communication is not the intended recipient, an employee or agent of the intended recipient who is responsible for delivering it to the intended recipient, or you believe that you have received this communication in error, please notify the sender immediately by return e-mail and promptly delete this e-mail, including attachments without reading or saving them in any manner. The unauthorized use, dissemination, distribution, or reproduction of this e-mail, including attachments, is prohibited and may be unlawful. Receipt by anyone other than the intended recipient(s) is not a waiver of any attorney/client or other privilege. From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 11:39 AM To: Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759 From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759 ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16

6 11

Re: [gnso-rpm-wg] TMCH review objectives
by J. Scott Evans Sept. 26, 2016

Sept. 26, 2016

Clearly, even in the age of search engines, domains have value (real or perceived). If they did not, we wouldn’t have needed a DNS expansion and there would not be any such thing as a “premium” domain name. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>> Date: Friday, September 23, 2016 at 9:15 AM To: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Cc: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives And is the additional system cost (one component of effectiveness) of individualized review of pricing worth this hypothetical increased risk of later infringement? If post-Sunrise registrations of expensive domain names have led to infringement, I hope we will be able to collect evidence of that. Likewise with the hypothetical effect of encountering an unregistered domain in a new gTLD. In an age of search engines, I thought we had gotten past the idea that a consumer would type in a domain name and then give up if no website, or a nonconfusing but non-trademark owner website, resolves. I also highly doubt there's evidence that consumers think less of a trademark owner for not registering every variation. Rebecca Tushnet Georgetown Law Sent from my phone. Apologies for terseness/typos. On Sep 23, 2016, at 11:39 AM, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759 From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759 ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 ________________________________ <ACL>

2 1

Re: [gnso-rpm-wg] TMCH review objectives
by J. Scott Evans Sept. 26, 2016

Sept. 26, 2016

Well said Phil. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 8:33 AM To: "Silver, Bradley" <Bradley.Silver(a)timewarner.com<mailto:Bradley.Silver@timewarner.com>>, Rebecca Tushnet <rlt26(a)law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Thanks for your input, Bradley and Rebecca. Here is my personal view at this time, subject to further discussion with the other Co-Chairs and the WG members— The TMCH is a means to an end. It is a database of trademarks meeting certain minimum levels of verified quality. While the TMCH is regarded as a RPM it provides no protection in and of itself – the protections come from two related RPMs, Sunrise Registrations and the TM Claims Notice (recognizing that certain other private protection measures, such as Donuts’ DPML, are also tied to TMCH registration). The protection offered by Sunrise Registration is to give rights holders’ the ability to secure a domain in a new gTLD that is an exact match of their TM prior to general availability of registrations, and thereby eliminate the ability of a third party with no legitimate rights or interest to secure the same domain for infringing purposes. If that domain name has been designated as a Premium one by the registry operator then pricing can clearly have some practical impact on the availability of the protection, with the degree of impact varying with the price point. Taking an extreme hypothetical, if initial registration of a particular Premium domain were set by the RO at $50,000 then the rights holder might naturally feel that the protection held out by the availability of Sunrise registration has been substantially diluted by the pricing, and decide that it would be prudent to wait for general availability and try to secure the domain then, or decline to register at all and simply file a URS or UDRP action if another party secures the domain and uses it for infringing purposes. And, as we know, the feeling among rights holders that Sunrise Registrations are being used to unreasonably exploit them increases when there is a very wide difference between the price set for the Sunrise period versus that in general availability, or if the Premium domain is a unique non-dictionary term associated with a company or brand. But is pricing within the remit of our WG, and if not is it within the remit of the parallel Subsequent Procedures WG? I will not answer the latter question because we have members and Co-Chairs of that WG participating in this one and they are quite capable of sharing their views. My own view is that it is probably not within the remit of this WG to analyze or change the “hands off” pricing policy established for the new gTLD program, which has led to a very broad spectrum of registry pricing and business models (it seems to be more of a subsequent procedures program and applicant guidebook matter, rather than a direct RPM concern) . However, I think it may well be within the remit of this WG to analyze and comment upon the impact of certain registry’s Sunrise pricing models on the effectiveness of Sunrise Registrations as an RPM, and it may also be within the remit of this WG to recommend a system through which rights holders can register concerns about certain registry pricing practices that dilute the RPM’s effectiveness (how the RO or ICANN should respond to such concerns is a separate issue). I hope those remarks spur some further discussion within this WG. Best to all, Philip 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Silver, Bradley Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759 ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com<mailto:ITServices@timewarner.com> ================================================================= ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 ________________________________ <ACL>

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Re: [gnso-rpm-wg] TMCH review objectives
by Paul Keating Sept. 23, 2016

Sept. 23, 2016

Jeff, While certainly unseemly, is this really something we need to deal with ? After all, the trademark holder could easily have anyone buy the domain and subsequently transfer it to the company. Again, we need to refocus at the 50,000 foot level. PRK From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Jeff Neuman <jeff.neuman(a)comlaude.com> Date: Friday, September 23, 2016 at 6:37 PM To: Phil Corwin <psc(a)vlaw-dc.com>, Rebecca Tushnet <rlt26(a)law.georgetown.edu> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives > We also need to look at examples out there where it is not just premium > pricing of domains, but there was at least one case (.feedback) that said if > you are a trademark owner (whether or not purchased in the Sunrise or after), > the price is $X, but if you are not the trademark owner, then your price is > $Y, where $Y was thousands of dollars less. > > See: > http://domainincite.com/19560-forget-sucks-feedback-will-drive-trademark-ow… > s-nuts-all-over-again and > http://domainincite.com/19615-feedback-regs-fox-trademark-to-itself-during-… > rise > > I believe the policies of .sucks and .feedback need to be discussed. It is > one thing to have premium pricing on a name whereby any purchaser of the name > would have to pay the same price (even if high); but, it is another thing to > have different prices for a name depending on who the purchaser is > (discrimination amongst purchasers). That I do believe is in our scope. > > > Jeffrey J. Neuman > Senior Vice President |Valideus USA| Com Laude USA > 1751 Pinnacle Drive, Suite 600 > Mclean, VA 22102, United States > E: jeff.neuman(a)valideus.com <mailto:jeff.neuman@valideus.com> or > jeff.neuman(a)comlaude.com <mailto:jeff.neuman@comlaude.com> > T: +1.703.635.7514 > M: +1.202.549.5079 > @Jintlaw > > > > From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On > Behalf Of Phil Corwin > Sent: Friday, September 23, 2016 12:20 PM > To: Rebecca Tushnet <rlt26(a)law.georgetown.edu> > Cc: gnso-rpm-wg(a)icann.org > Subject: Re: [gnso-rpm-wg] TMCH review objectives > > ³If post-Sunrise registrations of expensive domain names have led to > infringement, I hope we will be able to collect evidence of that.² > > Agreed that we should seek this type of data, certainly anecdotal and more > comprehensive if available. > > > 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: Rebecca Tushnet [mailto:rlt26@law.georgetown.edu] > Sent: Friday, September 23, 2016 12:16 PM > To: Phil Corwin > Cc: Silver, Bradley; gnso-rpm-wg(a)icann.org > Subject: Re: TMCH review objectives > > > And is the additional system cost (one component of effectiveness) of > individualized review of pricing worth this hypothetical increased risk of > later infringement? If post-Sunrise registrations of expensive domain names > have led to infringement, I hope we will be able to collect evidence of that. > Likewise with the hypothetical effect of encountering an unregistered domain > in a new gTLD. In an age of search engines, I thought we had gotten past the > idea that a consumer would type in a domain name and then give up if no > website, or a nonconfusing but non-trademark owner website, resolves. I also > highly doubt there's evidence that consumers think less of a trademark owner > for not registering every variation. > > Rebecca Tushnet > > Georgetown Law > > > > Sent from my phone. Apologies for terseness/typos. > > > On Sep 23, 2016, at 11:39 AM, Phil Corwin <psc(a)vlaw-dc.com> wrote: >> >> I believe I just addressed that question in the email I posted if >> unreasonably high sunrise pricing deters a rights holder from registering a >> domain corresponding to a verified TM registered in the TMCH then it may be >> registered in the general availability period by an infringer, which in turn >> imposes a variety of costs on the TM owner (including those of bringing a >> subsequent URS, UDRP, or judicial action) and also creates the possibility of >> confusion and harm for the general public. >> >> This is not to say that all Premium pricing is unreasonable, as it is >> generally recognized that certain words and terms have inherent additional >> value in the DNS context it really requires a case by case analysis. >> >> >> 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@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On >> Behalf Of Rebecca Tushnet >> Sent: Friday, September 23, 2016 11:10 AM >> To: Silver, Bradley; gnso-rpm-wg(a)icann.org >> Subject: Re: [gnso-rpm-wg] TMCH review objectives >> >> TMCH¹s goal of ³protection² against what, though? How does high pricing >> contribute to trademark infringement? High pricing may deter purchases of >> domain names, no doubt, but with what result for the system overall? >> >> >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] >> Sent: Friday, September 23, 2016 11:00 AM >> To: Rebecca Tushnet; gnso-rpm-wg(a)icann.org >> Subject: RE: TMCH review objectives >> >> I would add that the question of pricing feeds into the concept of >> effectiveness, because if the TMCH is serving as a database for registries to >> target brand owners for higher pricing based on the value of their brands, >> then this is antithetical to the TMCH¹s primary goal to provide protection >> for verified right holders. >> >> >> From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On >> Behalf Of Rebecca Tushnet >> Sent: Friday, September 23, 2016 10:26 AM >> To: gnso-rpm-wg(a)icann.org >> Subject: [gnso-rpm-wg] TMCH review objectives >> >> Hello, all. On the last WG call, concerns about pricing of domain names >> during the Sunrise Period arose. This led to a question of whether pricing is >> within the remit of this WG and the broader question of what the purpose of >> our TMCH review is. There seemed to be a desire to focus on the TMCH¹s >> effectiveness. The predicate question, then, is: effectiveness at what? Here >> are some suggestions for discussion: (1) minimizing the cost of operating the >> system for all concerned; (2) minimizing the number of actions that >> ultimately need to be brought against infringing registrants; (3) minimizing >> the number of noninfringing registrants whose legitimate uses are blocked or >> deterred. If the system is reasonably balancing those objectives, I suggest, >> then it is effective; potential changes should be directly related to >> improving performance on one or more of these metrics without unduly >> hampering the others. >> >> Yours, >> Rebecca Tushnet >> >> >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> ================================================================= >> Reminder: Any email that requests your login credentials or that asks you to >> click on a link could be a phishing attack. If you have any questions >> regarding the authenticity of this email or its sender, please contact the IT >> Service Desk at 212.484.6000 or via email at ITServices(a)timewarner.com >> >> >> ================================================================= >> >> ================================================================= >> This message is the property of Time Warner Inc. and is intended only for the >> use of the >> addressee(s) and may be legally privileged and/or confidential. If the reader >> of this message >> is not the intended recipient, or the employee or agent responsible to >> deliver it to the intended >> recipient, he or she is hereby notified that any dissemination, distribution, >> printing, forwarding, >> or any method of copying of this information, and/or the taking of any action >> in reliance on >> the information herein is strictly prohibited except by the intended >> recipient or those to whom >> he or she intentionally distributes this message. If you have received this >> communication in >> error, please immediately notify the sender, and delete the original message >> and any copies >> from your computer or storage system. Thank you. >> ================================================================= >> >> >> No virus found in this message. >> Checked by AVG - www.avg.com <http://www.avg.com> >> Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 > > > No virus found in this message. > Checked by AVG - www.avg.com <http://www.avg.com> > Version: 2016.0.7797 / Virus Database: 4656/13069 - Release Date: 09/23/16 > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 21 September 2016
by Terri Agnew Sept. 22, 2016

Sept. 22, 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, 21 September 2016 at 21:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/sAO4Aw MP3: http://audio.icann.org/gnso/gnso-rpm-review-21sep16-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<http://gnso.icann.org/en/group-activities/calendar#nov> ** 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 21 September 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group held on Wednesday, 21 September 2016 at 21:00 UTC Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Maxim Alzoba (FAITID):Hello All Philip Corwin:Hello. I'm dialing in Vaibhav Aggarwal:'Morning folks Kathy:Hi All! Paul McGrady:Good M/A/E! Kristine Dorrain - Amazon Registry:Greeting all, apologies for being late. Phil Marano (Mayer Brown):Indeed, it is sixty days notice either way. Marina Lewis:Hi all...sorry to be joining late. George Kirikos:Not sixty days notice, but 60 days minimum total period. Kurt Pritz:@ George: Did I say "60 days notice"? George Kirikos:@Kurt: I was responding to Phil Marano's statement in the chat. Paul Tattersfield:Are registry reserved names excluded from a sunrise period? And if so do the reserved names have to be related to purposes or running a registry (other than ICANN mandated reserved names?) Kurt Pritz:ok - whew Maxim Alzoba (FAITID):what was intended for protection of local small TMs who were not included into TMCH? Phil Marano (Mayer Brown):Put another way, either way, folks are aware of the sunrise period for sixty days. Maxim Alzoba (FAITID):@Paul, for GEOs we had to reserve things like POLICE for local police depts George Kirikos:I think the Calzone.org had a calendar of new gTLD program "events" --- one can probably go back and create the data (or just ask the registries directly) re: ALP / QLP. Maxim Alzoba (FAITID):QLP of 100 names for cities of few K of street names was not enough Maxim Alzoba (FAITID):ALP did not work at all ... remember .madrid Kathy:For these slides, can Staff take control of slides? David Tait:Kathy, Phil asked for them to be scrollable Paul Tattersfield:thanks Maxim Kathy:David, I thought it might help us read the slide... Maxim Alzoba (FAITID):PPT needs to be reformatted (smaller fonts?) David Tait:"Identical matches" means a domain name label is an identical match to the trademark, meaning that the label must consist of the complete and identical textual elements of the trademark in accordance with section 4.2.1 of the Clearinghouse Guidelines. For example, if the Trademark Holder's trademark is AB, then the domain name label that is applicable must be AB for it to be deemed an Identical Match. If the Trademark Holder's Trademark label is èé, than the identical label is èé and not ee."Premium names" - a registry operator may reserve certain premium names for later release (after the Sunrise Period) at its sole discretion. Registry operators may classify generic terms as premium names, and, in that event, such names are not available for registration during the Sunrise period even if they are the subject of a trademark record."Reserved names" - a registry operator may reserve a domain name from registration as allowed by Specification 9, Registry Operator Code of Conduct, Section 1 David Tait:1(b), of the New gTLD Registry Agreement."Landrush"- Land Rush is the commencement of the "go live" period of a new TLD launch where the registry begins accepting live domain registrations from registrants through registrars. Paul Tattersfield:text is now cut off here as well was ok before David Tait:"Trademark Clearing House-verified trademarks" means all marks accepted and verified by the TMCH. These will be accepted from (i) nationally or regionally or registered trademarks; (ii) court-validated marks; and (iii) marks protected by statute or treaty. The verified trademark data will support both trademark claims and sunrise services required for all new gTLDs. In addition, the Clearinghouse may accept and verify other types of marks upon the request of registries. Mary Wong:Sorry for the formatting/display issues David Maher:APOlogies for being late David Tait:"Sunrise Period" - a pre-launch phase providing trademark holders the opportunity to register domain names in a gTLD before registration is made generally available to the public. David Tait:"Sunrise pricing practices" - the current TMCH fee structure includes Sunrise services for all new gTLD Sunrise periods, not just one. David Tait:"Sunrise process" - A process in which owners of Legal Rights have the opportunity to register domain names before the Landrush process open to the public. Registries that used a Sunrise Process identified the Legal Rights on which a Sunrise Process registration could be based. Greg Shatan:Which brings up back to do, do, do, do. Greg Shatan:up = us. Maxim Alzoba (FAITID):QUESTION: Please add questions of ALP, QLP where these periods in need of review? Rebecca Tushnet:Are we going to address TMCH eligibility for marks separately? Josh Partington:Hi all, sorry to join late Kristine Dorrain - Amazon Registry:Rebecca, this slide show is just about sunrise (we discussed the TMCH as an entity last week). We have a whole list of charter questions regarding the TMCH apart from sunrise. :) David Tait:We're trying to put up a better version George Kirikos:It seems that most of the sunrise periods are producing fewer than 1000 registrations. Is it really "working" as intended? Rebecca Tushnet:Thanks, Kristine--I must have missed the separate questions there. Paul Keating:Sorry for being late. Maxim Alzoba (FAITID):why the rights are to be extended beyond what is protected by law? George Kirikos:If "variants" were allowed, someone with a low value mark of "Appl" might try to register the superior domain "variant" of "Apple". George Kirikos:Flickr ---> Flicker Greg Shatan:You can't register a domain for a TM=50 string in Sunrise. Maxim Alzoba (FAITID):no it is too easy to be gamed George Kirikos:Agreed, too easy to be gamed. Paul Keating:yes, they sh ould NOT. The tm registration during sunrise is registration. The notice is corrective/preventative. Edward Morris:(on adobe only). Is it possible to expand the charter questions to include some of the underlying TMCH questions concerning TM scope in the sunrise period? Two I have in mind: 1. When the TM registered in the TMCH database is a generic or descriptive word, and sunrise is used for registering that mark as a domain name completely unrelated to the goods and service category of TM protection, is that fair for other/future/potential DN registrants. 2. (and related) should Sunrise rights be limited to the categories of goods and services of the TM? (still trying to get on audio - apologies) Maxim Alzoba (FAITID):@Edward, nodoby reads the chat Greg Shatan:How would you game that? You need to win a domain name dispute in order to get a TM+50 TMCH regn. Marina Lewis:I don't think TM owners should be the ones to register multiple variations of their marks - I think the TMCH should expand the claims service to include near-identical domains. George Kirikos:Are we seeing more UDRP/URS filings from companies that didn't register in sunrise periods? Or are they from companies that did register in sunrise, but then the variants got registered? (we'd need to compile data, and cross-reference their registrations) Maxim Alzoba (FAITID):it is possible to grab mark via affiliated company and to go to the local court Kristine Dorrain - Amazon Registry:Maxim, we do!!! Maxim Alzoba (FAITID):hmm ... my question on QLPs ALPs was not read :) Mary Wong:@Ed, that's one thing the co-chairs are asking that WG members do (review the Charter questions). Your suggestions - like the last bullet point on the next-to-last slide (which was a suggestion from the co-chairs) - can be added to the list for consideration by the WG. Edward Morris:@Maxim. As our wonderful audio service is not working here in northern England at the moment I hope that is not true! Greg Shatan:Maxim, you have a rich and vivid imagination. Kathy:@David and Mary: we are seeing an array of questions in the chat room - can you add them to our Notes and Actions? David Tait:Ed, can we do a dial out to you? George Kirikos:Raise your hand, to join the queue. Maxim Alzoba (FAITID):not able to speak (1am) Marina Lewis:In my experience, most TM owners aren't interested in acquiring domains during sunrise for their own use. It's usually a cost-benefit issue: is it cheaper to register this domain or fight to wrestle it out of the hands of a cyberaquatter? If the answer is yes, then it make sense to register the domain defensively. Edward Morris:@Phil. Technical problems here: If you could consider my question as well I'd be greatful. Maxim Alzoba (FAITID):yes bradley silver:+1 to Marina's response Mary Wong:Yes we are noting the additional suggested questions Maxim Alzoba (FAITID):@Greg , cost of litigation in some countries is lower than UDRP Edward Morris:@ Mary. Thank you! Mary Wong:We have information on which registries offer a QLP but don't have data on how much they are used - for this we will have to approach each individual registry operator. Kristine Dorrain - Amazon Registry:I note that ALP and QLP are not really RPMs. They offer the registry a chance to promote the TLD. Not to counter Maxim's question, but just a thought... Maxim Alzoba (FAITID):QLP is an addendum to RPMs George Kirikos:@Marina: plus, a markholder will also need to assess whether the damage from the cybersquatting is too minor to litigate or defensively register. Given the lack of traffic most of those domains receive, it's likely not worth pursuing most of them (i.e. minor irritants). Paul Keating:Phil, I t hink he is referencing post registration use. Maxim Alzoba (FAITID):ALP was intended to be a way for GEOs and alike to have special rules (for example for protection of small local business too in addition of TMCH) George Kirikos:If it's a US TM holder, it'd be smarter to use the ACPA and seek $100K in statutory damages, rather than waste time on URS/UDRP. Do it a few times, and that'll deter cybersquatting. Kristine Dorrain - Amazon Registry:Maxim, I don't disagree. I just note that neither one is there to protect brands. Maxim Alzoba (FAITID):@Kristine , the point is , we review things relevant to RPMs Marina Lewis:@George - agreed, with the additional comment that this is often an unknown at the time of registration. The TM owner has no way of knowing whether the domain will be used for a pay-per-click site or (God forbid) a child porn site. Sometimes it's safer to just cough up the money for the registration fee. Scott R. Austin:Is there an equivalent of a "legislative history" of the concerns or business goals for registries that the LRP, ALP and QLP were created to address? George Kirikos:Right, Marina. I think that's why some markholders see the potential scaremongering as a "protection racket", i.e. "if you don't register, then ......." Edward Morris:Thanks Kathy. George Kirikos:Do we have anyone here from CSC or MarkMonitor? It seems they drive a lot of the sunrise registrations, so might have insights to share. Marina Lewis:@George +1 Maxim Alzoba (FAITID):do we see situations with TMCH entries for companies who made only one shipment to be acredited as gaming?(proof of use) Paul McGrady:@Kathy, what if it were for a site for presidential vehicles? I was just at the Henry Ford Museum and there is a huge display. :) George Kirikos:(there are a few other "corporate" registrars, but those 2 are the largest I think) Netnames, and a few others also might have insights. Kathy:Henry Ford - that's a good example too! Phil Marano (Mayer Brown):@Paul or for a president's day sale :) Kathy:@Paul: I think this is a very important area for discussion. Paul Keating:@Phil. I think that a "use" requirement should be incorporated to preserve a sunrise registration. Paul Keating:ALSO, what eveidenc eof "actual use" does the TMCH require? Edward Morris:Thnks Phil. Kathy:@Paul, is this a question you would like to add to our questions list? Mary Wong:@PaulK - thisis what the TMCH says about proof of use: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin… Paul McGrady:@Kathy - interesting for sure. would be more straighforward if there was a GPML (since we are looking at flaws in the current system). :) George Kirikos:It shouldn't apply to "all gTLDs", given there's no notion of "premium names" in com/net/org, etc. Paul Keating:I am fine with it being a question to be considered Paul Keating:I do not however feel it should be chainged Paul Keating:VERY good quesetion Edward Morris:Agree with Rebecca. Marina Lewis:Re Rebecca's question, I think "rights" as used in RPM does specifically refer to IP rights, yes? Mary Wong:@Paul K - can you restate the question? Is it whether the use requirement should be reviewed? Kathy:@Mary, can we add PaulK's question regarding exploration into use and Rebecca's question on pricing and what rights it protects to our Notes and Actions for future evaluation? George Kirikos:If "Verizon.TLD" or "EXXON.TLD" were listed as premium domains, i.e. fanciful marks, then it's more likely to be abusive. Paul Tattersfield:depends on the strength of the business rather than the strength of the mark sometimes Paul Keating:@Paul, is that not the result of the trademark being a "generic" term? Maxim Alzoba (FAITID):Are we into requlation of pricing? I thought it is not regulated , at least ICANN says they are not into this business Mary Wong:@Kathy,@Paul K - can one of you restate Paul's question? Is it to review the use requirement, or something more specific about what is required to show proof of use Maxim Alzoba (FAITID):or apple? George Kirikos:Perhaps placing a cap on how many domains can be declared "premium" would reduce the potential for that abuse. Vaibhav Aggarwal:@Jeff Your voice is not clear Scott R. Austin:@Paul M +1 Mary Wong:@Paul M - short of searching a number of trademark databases and comparing them to each registry's list of premium names, how would we get the data? Kathy:@Mary: how about a general question asking the WG to further explore "use" and the types of proof used by the TMCH/Deloitted Vaibhav Aggarwal:As per Key Terms & Definitions - the price needs to be Defined too Vaibhav Aggarwal:@Rebeca Your example is not the right Comparison Vaibhav Aggarwal:Unresonable Pricing is definitly an Abuse of the System and poisiton. Infact it can be classified in Monopolistic Business Practices Vaibhav Aggarwal:+1 Phil George Kirikos:To the extent that a registry operator raises the registration price, it reduces the odds that anyone will register the domains (which means a cybersquatter won't grab them). Paul KEATING:gouged is not prevented. Vaibhav Aggarwal:As a TM owner I am authorised to get a Normal Domain Name Pricing George Kirikos:Although, in some sense the markholder might claim that it's now the registry itself that is being the "cybersquatter". Paul KEATING:so if a trademark registration with the PTO cost 10,000 it would be unfair?. Scott Harlan:Agree that it is relevant. There is also the issue of timing of the notification that a name is premium, which often occcured after a Sunrise order was placed and was close to the end of the relevant Sunrise Period. This either foreclosed the Sunrise period for those names or made it less effective. Paul KEATING:this issue is NOT resolved. Vaibhav Aggarwal:Yes they are Infriginng at least w.r.t. the to teh registered TMs Paul Tattersfield:Couldn't we just say that all sunrise names can not cost more than general release prices? George Kirikos:Some domains like Cars.blog are 6-figures per year, I believe. Vaibhav Aggarwal:+1 Marina Paul KEATING:no Paul, we cannot limit pricing. Terri Agnew:next call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Groupis scheduled for Wednesday, 28 September 2016 at 16:00 UTC for 60 minutes. George Kirikos:But, that's likely due to the inherent value of the term "cars", not some markholder for 'cars'. Phil Marano (Mayer Brown):Pricing aside, premium names tend to be registry reserved names, which are generally exempt from sunrise and claims services, depending on when it is released for registration per RPM Requirements Section 2.4.3. David Tait:That is correct David Tait:1600 UTC Vaibhav Aggarwal:Thanks Guys khouloud Dawahi:16utc George Kirikos:Bye everyone. Maxim Alzoba (FAITID):bye all Scott Harlan:By "it" was referring to the issue of "premium names" Kathy:And TM Claims Overview next week Steve Levy:Thanks all! Vaibhav Aggarwal:How is the Asia Pacific Participants Getting Accomodated ? Its 0330 AM in New Delhi Marina Lewis:thanks all!! Vaibhav Aggarwal:Ciao Guys Paul KEATING:thanks all. good night khouloud Dawahi:thank you all . Vaibhav Aggarwal:Night

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RPM Working Group call 21/09/2016: Notes and Actions
by David Tait Sept. 21, 2016

Sept. 21, 2016

Dear All Please find attached the notes and action’s from today’s Working Group (WG) call. The notes and actions are as follows: There was an extensive walk through of Sunrise Registrations through the TMCH. Thereafter the following additional possible questions were raised for discussion by WG participants: · How often are SMD files compromised and have to be revoked? How prevalent is this as a problem? · Does this mean we have no idea how many LRP registrations were made available and in which registries? · Is there really no data on additional voluntary mechanisms? e.g. ALP · Please add questions of ALP, QLP where these periods in need of review? · Is it possible to expand the charter questions to include some of the underlying TMCH questions concerning TM scope in the sunrise period? (1) When the TM registered in the TMCH database is a generic or descriptive word, and sunrise is used for registering that mark as a domain name completely unrelated to the goods and service category of TM protection, is that fair for other/future/potential DN registrants? and (2) (related) Should Sunrise rights be limited to the categories of goods and services of the TM? · Is there any evidence of 'gaming' e.g. of registering a number of valuable trade mark names under the sunrise period of marks to which they do not have a traditional legal claim? · What is the relationship between premium pricing and trademark rights? To what extent do premium names correspond to registered trademarks? · Further explore "use" and the types of proof required by the TMCH The next working group meeting with take place next Wednesday 28 September 2016 at 1600 UTC. Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait(a)icann.org www.icann.org

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