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Further Note on Sunrise Periods
by Mary Wong Sept. 21, 2016

Sept. 21, 2016

Dear all, you may also wish to note the following page, maintained by ICANN, that lists the respective Sunrise Periods for each New gTLD registry operator, along with any additional voluntary mechanisms (such as Limited Registration Periods) offered by each registry: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, September 22, 2016 at 06:53 To: David Tait <david.tait(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: RPM Working Group call 21/09/2016: Notes and Actions Further to the notes sent by David (below), please note that staff has updated the slide deck from today with the suggested additional questions, and posted it to the Working Group wiki space here: https://community.icann.org/x/sAO4Aw. Please review the added slides to make sure that we have accurately captured your suggestions, and let us know if we inadvertently missed a suggestion you made on the call that was just held. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: David Tait <david.tait(a)icann.org> Date: Thursday, September 22, 2016 at 06:09 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Cc: Mary Wong <mary.wong(a)icann.org> Subject: RPM Working Group call 21/09/2016: Notes and Actions 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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Agenda for RPM Review Working Group call on 21 September
by Mary Wong Sept. 21, 2016

Sept. 21, 2016

Dear all, As with the presentation and discussion last week on the TMCH, the proposed agenda for the Working Group call scheduled for this week is as follows: 1. Roll call (via Adobe Connect and phone bridge) and updates to Statements of Interest 2. Overview and discussion of Sunrise Periods 3. Overview and discussion of the associated Working Group Charter questions 4. Next steps/next meeting Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: David Tait <david.tait(a)icann.org> Date: Wednesday, September 14, 2016 at 22:32 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Cc: Mary Wong <mary.wong(a)icann.org> Subject: Agenda for RPMs Dear All The co-chairs have formed the view that the next three weeks will be an important planning time as we review the TMCH, Sunrise Period and TM Claims and their Charter questions -- and plan a path together forward. In light of this today’s meeting will adopt the following format: (1) Overview and discussion of the TMCH; and (2) Overview and discussion of the associated Charter questions. 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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Notes and Outcomes from Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group meeting 14 Sep 2016
by David Tait Sept. 15, 2016

Sept. 15, 2016

Dear All Please find below the notes and actions arising from today’s meeting. The Working Group (WG) was provided with an extensive overview of the TMCH and its functioning. ACTION: (i) WG participants are strongly encourage to provide information on their experiences and any particularly cases they can provide information on to assist the WG's deliberations, and (ii)Additional possible questions to be shared on mailing list for consideration. The WG then undertook a ‘deep dive' on the TMCH related Charter questions proposing the following additional questions: · TMCH goes into the legality of a trademark too much, this is the responsibility of the trademark owners and their attorneys. · TMCH should act as a nodal agency only without rendering any determination on the legal validity of marks. It should have no discretion. · Questions have been raised about costs beyond those advertised upfront on the TMCH page e.g. renewals through agents and deposits, the WG should work on the true cost of registration. · Has there been 'gaming' or abuse observed in relation to the TMCH? · How are marks which have and have not undergone substantive review been differentiated in the TMCH? · From those jurisdictions which do not provide for substantive review of the mark are any further procedures or analysis undertaken by the TMCH? The next WG meeting will take place on Wednesday, 21 September 2016 at 21:00 UTC and will focus on the Sunrise period. 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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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 14 September 2016
by Terri Agnew Sept. 14, 2016

Sept. 14, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 14 September 2016 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/jBysAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-14sep16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> 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 14 September 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 14 September 2016 at 17:00 Terri Agnew:wiki agenda page: https://community.icann.org/x/jBysAw George Kirikos:Hi folks. George Kirikos:This might be the first time I logged in before Petter. :-) Petter Rindforth:Congratulations! George Kirikos:lol It's hard to beat your record of early arrivals. ;-) George Kirikos:Can we unlock the slides, so that we can browse them ourselves? susan payne:sorry, I think that was me George Kirikos:*6 to mute/unmute susan payne:oh, maybe not just me Martin Silva Valent:Hi all Steve Levy:Hello all! Elizabeth Featherman:Hi everyone! susan payne:I hardly know where to start :) David Tait:Can do kathy David Tait:Will do Kurt Pritz:Did we / Should we ask Deloitte to present? Vaibhav Aggarwal:this should b skipped as this is legal in nature George Kirikos:The "use" here can easily be gamed, i.e. "token use" or "de minimus" use that wouldn't actually rise to the level to grant trademark rights, see: http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-use… Vaibhav Aggarwal:this is not unquestionably different so lure George Kirikos:(I made this point on the mailing list a couple of weeks ago) David Tait:I dont think so Kathy Vaibhav Aggarwal:plural nature if diff should b allowed Vaibhav Aggarwal:problem is that the TMCH should I n,y a repository and be an agency nodal to check validity of trade mark Vaibhav Aggarwal:not become a statutory agency Greg Shatan:Sorry to join late; was watching the IANA Transition Senate hearings. Vaibhav Aggarwal:the senate intelligence committee. is also interested in the process :-) though IANa is irrelevant to this group George Kirikos:Can we unlock the slides, so we can scroll back? George Kirikos:Thank you. David Tait:I've unlocked them unless kathy has an objection Kathy Kleiman:great George Kirikos:The reason those "validations" exist are due to the gaming issue, i.e. where folks use TMCH to claim domains in sunrises. If that benefit of TMCH registration was removed, it would simplify things immensely, and eliminate the incentives for that gaming. Kristine Dorrain - Amazon Registry:Vaibhav, the TMCH is only a repository. Kristine Dorrain - Amazon Registry:It does only check validity... Kristine Dorrain - Amazon Registry:George contends that validity check can be gamed, which is a different issue, but the TMCH does not grant anyone rights. George Kirikos:That's false, Kristine. You get sunrise access, being in the TMCH, see #2 of http://www.trademark-clearinghouse.com/content/reasons-record-your-marks-tr… Kristine Dorrain - Amazon Registry:Yes, that's the reason you put your marks in. But you don't get a TM because you put a mark in. George Kirikos:Eliminate #2, and a lot of problems disappear. Steve Levy:Sunrise access does not grant any TM rights. Even a domain acquired through gaming sunrise is subject to UDRP George Kirikos:For a generic domain name, you defend it without having to point to a de minimis TM. George Kirikos:The key is to get to it first. Jeff Neuman:I am confused by Kathy's intervention. You can have multiple entries for any mark in the TMCH Greg Shatan:There's no such thing as a "generic domain name." George Kirikos:And so, if you can get priority access via a piece of paper, folks will game the system to get that piece of paper. George Kirikos:Greg: I meant, for valuable strings, like common dictionary words, short acronyms, etc. Jeff Neuman:As you can see, it is very difficult to separate the TMCH as a database from the Sunrise and TMCH susan payne:@George, there is a sunrise dispute process in addition to the UDRP Dominic DeLuca(FORUM):If a Registry is allowing this "gaming" to take place, would that be a possible use for the PDDRP? Greg Shatan:Those may be "generic" in the hands of one registrant and valuable trademarks in the hands of another registrant. George Kirikos:e.g. "ASK" in the class of "Plectrums" for the .EU sunrise: https://eu.adr.eu/adr/decisions/decision.php?dispute_id=2438 Vaibhav Aggarwal:we can make more relevant use of the "repository" if v reduce the cost and encourage the TM owners just deposit the TM claims irrespective of the d Omani name activity - that will take care of the long term use of the repository and cut on the time and energy of the right parties or serious applicants John:If we are talking about issues relating to becoming a TMCH agent, we should also look at the terms of the contract to be an Agent which are prohibitive (in addition to the cost) Vaibhav Aggarwal:+1 John susan payne:John, don't disagree with you but would you mind identifying yourself Kathy Kleiman:Vaibhav is that a new or old hand? Vaibhav Aggarwal:old Vaibhav Aggarwal:sorry Greg Shatan:There's no reason ASK cannot be a valid trademark if it meets the appropriate criteria. The DRP panel you link to found that it was, and that respondent violated complainant's rights (and a bad actor generally) and duly transferred the domain name. Vaibhav Aggarwal:in the car chauffeur is a little rough John:@Susan - McElwaine: I entered just my first name once and Adobe is not automatically using that :) susan payne:hello Jeff Neuman:I dont believe allocation of names outside the Sunrise Process is in the scope of this PDP (except to the extent that those allocation mechanisms are inconsistent with the RPMS) Dominic DeLuca(FORUM):Thanks, Jeff. Vaibhav Aggarwal::-) George Kirikos:Obviously fanciful marks like "EXXON" or "VERIZON" are considered the strongest. Vaibhav Aggarwal:so for the business of registrations ncrease, TMCH could act as a way to promote business and also assist the applicants George Kirikos:We need to get raw access to the TMCH database, and can see how many of them are of the strongest type, compared to those that are questionable (like the "ASK" example in the .EU sunrise). Terri Agnew:@Greg, check your mute Vaibhav Aggarwal:@George how will TMCH act in reference to TM by common law Vaibhav Aggarwal:is TMCH responsible for the decision in sunrise? Vaibhav Aggarwal:if not then who is ? Petter Rindforth:I have seen more URS cases where the complainant referred to their TM rights and use in a traditional way, rather than a registration at TMCH Josh Partington:George, is this issue really strength of the marks in the TMCH or is it the "legitimacy" for lack of a better word? Vaibhav Aggarwal:+1 JEFF Kristine Dorrain - Amazon Registry:+1 Jeff Vaibhav Aggarwal:emerging markets Josh Partington:In the ASK case, my quick read is that the conclusion was the Benelux registration was obtained for the purpose of using the sunrise period as opposed to a legitimate trademark right Vaibhav Aggarwal:and developing countries / jurisdictions George Kirikos:Josh: well, if we're talking about sunrise, then I think only fanciful marks should have protection. Of course, illegitimate 'marks' should never be in the repository to begin with. George Kirikos:But, that requires stronger validation. Vaibhav Aggarwal:+1 JEFF Renee Reuter:Although a term can be used as a generic term, if it is registered as a trademark,it should be given the same protection as any other registration in the TMCH Rebecca Tushnet:That's not really true re: infringement--Apple has a narrower scope than Xerox even though they are quite strong. Vaibhav Aggarwal:not just in the US but in all Viena Agreement countries Phil Marano (Mayer Brown):It would be helpful to understand how the charter question re "losing legitimate opportunities", which appears twice in the slides incidentally, relates to the TMCH itself, as opposed to Sunrise versus Claims. Much of the discussion today seems to conflate these three separate concepts. Kristine Dorrain - Amazon Registry:But all brands are subject to being the victims of cybersquatting....we do not get to decide if a mark is strong. In the US that requires a stringent legal test. Greg Shatan:We have no business selecting among valid registered trademarks . George Kirikos:If we're not a "legal authority", then why are we granting these TMs special rights here to begin with? :-) i.e. leave it to the courts. Vaibhav Aggarwal:book Silk Route by Anupam Chander by UCDavis will answer that Rebecca Tushnet:Just note that "treat everything alike" means that, functionally, Apple has more rights over unrelated uses than Xerox does. Renee Reuter:Many jurisdictions, not just the US, have stringent legal tests before a registration is granted. Vaibhav Aggarwal:if staff can share the abstract from it Kathy Kleiman:Jeff, is your hand still up? Kristine Dorrain - Amazon Registry:Yes, Renee, I only wanted to speak to my personal knowledge... :) susan payne:taken my hand down. it's been said Jeff Neuman:@Greg - I agree we should not distinguish between registered trademarks in general. Marie Pattullo:The TMCH does not have the legal authority to question national TM registration and grant procedures, and neither should it have. That's why we have courts. George Kirikos:The test is whether all marks (regardless of strength) should be granted equal access to the sunrise period (i.e. the main benefit of TMCH registration). In my view, no. Marie Pattullo:Disagree, George. A TM is a TM. George Kirikos:I disagree, Jeff. If we're going to give certain companies first dibs on certain domains, we should weigh the costs/benefits of that decision for each type of domain/mark. Jeff Neuman:Only whether the decision to accept trademarks from jurisdictions that do not perform substantive review was the right choice. And we would need data to prove or disprove Jeff Neuman:Only whether the decision to accept trademarks from jurisdictions that do not perform substantive review was the right choice. And we would need data to prove or disprove\ Phil Marano (Mayer Brown):@Greg, well said re arbitrary marks. susan payne:agree it is not our job to re-write TM law Vaibhav Aggarwal:@jeff that s unfair to the authority granting the mark George Kirikos:e.g. the "cost/benefits" of granting "EXXON" first dibs are much different than the cost/benefits of giving "ASK" (for Plectrums) first dibs. susan payne:no George they are not Terri Agnew:next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 21 September 2016 at 21:00 UTC for 60 minutes. George Kirikos:For arbitrary marks, there are many non-infringing users of that word. So, the "costs" of granting a markholder first dibs is high. Vaibhav Aggarwal:thanks Kathy lovely Martin Silva Valent:Great meeting!!!! I learned a lot! George Kirikos:Bye folks. Greg Shatan:I don't think that should be called a "cost." Martin Silva Valent:Thanks to everyone George Kirikos:It's an opportunity cost, Greg. Phil Marano (Mayer Brown):Goodbye all. George Kirikos:A narrow benefit to one firm, vs. costs that are incurred by othes, who don't get that access. David Tait:Just as a reminder that the GNSO RPMs survey closes on 15 September please complete it https://s.zoomerang.com/r/CL3MJLL Josh Partington:So the owner of a registration for an arbitrary mark should be on the same footing as anyone else? Greg Shatan:I recommend reading McCarthy on Trademarks. Vaibhav Aggarwal:thanks George Kirikos:Although, registry operators are capturing that value, simply by calling those domains "premium" -- they don't care if a markholder gets it, or a non-markholder, as long as they get paid. Greg Shatan:It's a little long.... :-) David Tait:Thanks all! Steve Levy:Thanks all George Kirikos:Bye folks. Salvador Camacho Hernandez:Thanks to everybody

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Agenda for RPMs
by David Tait Sept. 14, 2016

Sept. 14, 2016

Dear All The co-chairs have formed the view that the next three weeks will be an important planning time as we review the TMCH, Sunrise Period and TM Claims and their Charter questions -- and plan a path together forward. In light of this today’s meeting will adopt the following format: (1) Overview and discussion of the TMCH; and (2) Overview and discussion of the associated Charter questions. 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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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 31 August 2016
by Terri Agnew Aug. 31, 2016

Aug. 31, 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, 31 August 2016 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/GBSsAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-31aug16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> 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 31 August 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group held on Wednesday, 31 August 2016 at 16:00 UTC Terri Agnew:wiki agenda page: https://community.icann.org/x/GBSsAw Terri Agnew:member page: https://community.icann.org/x/3iWAAw George Kirikos:Hi folks. Jay Chapman:Hi everyone. Hey George Vaibhav Aggarwal:Hey Everyone Greetings from New Delhi George Kirikos:Hey Jay. How's it going? George Kirikos:Welcome, Vaibhav. Vaibhav Aggarwal:Hey George Vaibhav Aggarwal:thnks Paul Tattersfield:Hi All Paul Tattersfield:Is Delhi hot? George Kirikos:Hi Paul. Maxim Alzoba (FAITID):Hi All Vaibhav Aggarwal:Nope Paul Infact Vaibhav Aggarwal:I have a Jeep here and went for a Drive in 50% visibility Vaibhav Aggarwal:it rained today Philip Corwin:Hello all Vaibhav Aggarwal:whole day and its like Air conditioned with Mellowed Humidity Vaibhav Aggarwal:You guys will love it Paul Tattersfield:One day haoepfully Vaibhav Paul Tattersfield:hopefully Vaibhav Aggarwal:I'll be the host Vaibhav Aggarwal::-) Vaibhav Aggarwal:promise George Kirikos:Echo. George Kirikos:Under the "broken" rule, Apple would never release an iPhone 7, as the iPhone 6 is 'good enough'. Maxim Alzoba (FAITID):4 was enough George Kirikos::-) Petter Rindforth:Just a note that I thank the Co-Chairs for their Memo, and fully agree. Jeff Neuman:For the record I disagree, but I will explain Jeff Neuman:I think the wrong question was looked at George Kirikos:If it wasn't obvious by my earlier metaphor, I agree with the memo. Darcy Southwell:My apologies for being late. George Kirikos:The "rule of law" is the PDP Charter. Caroline Chicoine:Agree with Petter, and think the PDDRP is a bit unique since we have not yet figured out why no one has used it and think it is wise to not necessarily assume that lack of complaints means no issues/problems. George Kirikos:(which was broad in scope) Lori Schulman:Sorry I am late. David Maher:@jeff +1 Kristin:Agree with Jeff. How will we know if mediation in the PDDRP is a good solution if we haven't identified a problem. Kristin:We need to start with looking for a problem. Perhaps the subteam can start on that? Petter Rindforth:the problem is that this system is not used. Would initial mediation solve this, and make it more useful? Paul Tattersfield:Couldn't we aim to develop a generalized process for topics like mediation that will work across all RPMs? Jeff Neuman:Petter - Why is that a problem? Jeff Neuman:If we foud evidence that there were a lot of bad actor registries and abuse is rampant AND the PPDRP was not being used...that could be a problem Caroline Chicoine:Also, I apologize but cannot always keep track of this stuff, but didn't the survey we are sending out have questions that might shed light on what potential problems there might be with PDDRP? If so, when are those results expected? Kristin:The hypothesis is: unused PDDRP is a problem. Ok, let's investigate that. How can we learn more. Is the unused PDDRP a problem? Data? Anecdotes? Statton Hammock:Lack of use of the PDDRP does not suggest a problem with this RPM. George Kirikos:I think the 'problem' was already identified earlier, as J. Scott pointed out last time, i.e. costs (overall costs, not just fees) being a consideration for why the PDDRP might not have been used. And mediation is one way to reduce costs, for all sides. Jeff Neuman:but stating alone that the PDDRP is ot being used...that is not a problem Georges Nahitchevansky:The problem is that the PDDRP has not been used. there are reasons that have been discussed about this and perhaps mediation would make the procedure more useful Kristin:Also, sorry, some sort of glitch: I'm Kristine Dorrain - Amazon Registry, for the record. Kristine Dorrain:George: hypothesis: The cost of the PDDRP is a problem. Investigation question: Is the potential cost of a PDDRP (range from $1,500 to $$$$$) a problem? Data? Anecdotes? Maxim Alzoba (FAITID):@Georges why do we need to make it used? Do we have any solid evidence that it needed? Georges Nahitchevansky:That is the problem. Why have a procedure that no one uses. Perhaps the procedure is useless. So why not look at the underlying reasons and options such as mediation Kurt Pritz:I would phrase the rule more positively. RPM modification requires (and this is really rough and needs work): (1) Full understanding of why the existing method is in place (e.g., why wasn't mediation included in the earlier round) (2) Evidence that the existing RPM requires improvement in some way (e.g., evidence of bad behavior that the introduction of mediation would cure a problem) (3) Consideration of negative impacts (e.g., costs of mediation and mediation requests) Petter Rindforth:@Jeff: The question is if we shall keep the PDDRP. Is it necessary? Is it useful? Initial mediation can be one solution, or we come to a conclusion that there is no need (for that specifically, and/or for PDDRP as such...) Too early form my point of view to draw any conclusions. Statton Hammock:+1 Jeff. Let's identify what abuse might be occurring and see if there is truely a failure. Statton Hammock:The PPDRP may not be being used because Registries are toeing the line on their contractual requirements. Jeff Neuman:And some people would have chosen to change their answer to that question Susan Kawaguchi:@ Statton not all of them! Jeff Neuman:I would like to see that surbey question redone Brian Cimbolic:I can tell you I would answer it differently today Denise Michel:I agree with the Co-Chairs position as articulated in this memo George Kirikos:It's not clear to me how optional mediation is so controversial. A party vehemently opposed to it could simply decline to mediate, and go on with the usual procedure. It's just like no one is compelled to settle a case -- they can let the panel (or judge in a court) decide. Statton Hammock:@susan - then you can lame names and explain the violations. Statton Hammock:"name names" Susan Kawaguchi:.xyz, .top and more I am pretty vocal about these Susan Kawaguchi:no problems with your company Jeff Neuman:Lets look at the issues that susan is talking about....not online mediation ?? Statton Hammock:@ susan :-) Thank you! Susan Kawaguchi:.xyz should implement your AUP George Kirikos:@Susan: how do you feel about the latest fee reductions by Donuts, though, where older registrants pay their higher original fees, forever? (i.e. it penalizes rightsholders who 'bought in' early on) Statton Hammock:I am fine with having Susan and others explain what .XYZ and .TOP did that would arguable be a contractual violation subject to PDDRP Kristine Dorrain:How do we know brand owners would use mediation against...let's say .xyz since it's named....if there was mediation? Does it solve the problem of why no one has filed a PDDRP against them. If not, we're chasing mediation as a solution that doesn't even fit the identified problem. Jeff Neuman:+1 Kristine George Kirikos:(see the 2nd last paragraph of http://domainnamewire.com/2016/08/31/donuts-lowering-prices-business-compan… although it was discussed on DomainIncite.com a little while ago too). Brian Cimbolic:@George - isn't that the benefit of the bargain - if they had raised prices, wouldn't the registrants similarly benefited by having lower prices for the duration Susan Kawaguchi:.xyz cramming domain names into registrant's acccounts with no fees but placing our company's information without consent into the Whois Susan Kawaguchi:then overwhelming push and notices to renew the domain names after a year Susan Kawaguchi:it felt like harrassment Kristine Dorrain:We want to solve the problems, if there are any. Let's get behind that. Find the problems, root them out. Investigate them. No one here hates mediation. We just want to find the right solution to whatever problems we find. Jeff Neuman:this is setting a really bad precedent for this group moving forward....it sets the precedent that everything is open for discussion for all RPMs regardless of whether there is an issue. I will state that for the record and still have my objections George Kirikos:@Brian: In my view, there shouldn't be any discrimination at all by creation date. The language of the Registry Agreement with ICANN is unclear if this is even allowed, or was contemplated. I think it was contemplated that prices would be uniform, except for "premiums" who explicitly agreed to a separate pricing schedule. Caroline Chicoine:We are still finalizing follow up questions to Compliance and one of them is what action other than a formal PDDRP complaint can be taken if anyone/working group discover activities by registered parties which are perceived as abusive or beyond the scope of the contract by the community. Terri Agnew:finding the line Susan Kawaguchi:.top increasing the sunrise fee for Facebook.top because we are a famous trademark Darcy Southwell:@Susan, is the XYZ example you give - is that even something that is subject to PDDRP? George Kirikos:lol J. Scott. Susan Kawaguchi:@Darcy at this point I cannot weigh in on that Statton Hammock:@ susan - Is .XYZ's cramming domains something that the PDDRP aimed to cover? PDDRP has to deal with trademarks - not registration tactics Maxim Alzoba (FAITID):@Susan , is .top doing TMCH sunrise and flat prices? George Kirikos:@Statton: there's probably a high correlation amongst the tactics, though. Susan Kawaguchi:@ Statton it appears that .xyz has targeted famous trademarks for abuse Jeff Neuman:I do believe we should resend the question with the note specifying it is with the PDDRP. George Kirikos:It's like if I target a certain price to "those wearing makeup" -- am I really targeting "make up wearers", or am I really targeting women? George Kirikos:(since most makeup wearers are female) Jeff Neuman:In the future more care needs to be taken with drafting doodle polls as to know what the ramifications would be of answering in the affirmative (or negative) Laurie Anderson:+1 on repeating the doodle poll Brian Cimbolic:@JScott I think that's a good approach Mary Wong:@Jeff, the poll specified the TM-PDDRP and was sent out as follow up to a WG discussion on this topic. Kristine Dorrain:Agree J Scott. I think we need to set up a protocol for how we work. I think we're really excited to get moving, but we're getting ahead of ourselves. Let's set up a checklist. 1. problem list 2. solution set 3. vet problem/solution dynamic. susan payne:@JScott i think the "what problem" approach would be very helpful for the future Jeff Neuman:@Mary - with all due respect the question was very short and no one knew the ramifications of answering the question (namely setting up a group to talk about devising a process) George Kirikos:"Flaw" can be interpreted broadly, though. e.g. policies that omit "modern standards" (of which mediation might be considered a "modern standard") could be considered 'flawed'. Maxim Alzoba (FAITID):Could we clarify which kind of problem is that ? Mary Wong:@Jeff, understood - but the group idea was based on subsequent WG discussions following the support demonstrated by the poll. Darcy Southwell:@JScott - agree with idenitfy problem(s) and come to consensus on the problem(s) and agree with Kristine we need a standard mechanism to collect data, evaluate, recommend solution(s). Because that will the be case with all RPMs.. Not just this first one. Jeff Neuman:@Mary - not exactly. I missed one call....that was the one that said there should be a doodle poll. George Kirikos:I think "lack of use" wasn't the "problem" -- it was symptomatic of a problem, and "cost" was raised as one of the potential problems. Lori Schulman:Perhaps I am "mis-recalling" but I thought that cost of PDDRP was identified as a problem. George Kirikos:+1 Lori Edward Morris:Lori, I share the same "mis-recalling" Lori Schulman:So offering an alternative lower cost option would be a remedy to problem. Darcy Southwell:Is there data to indicate that the cost of PDDRP is a problem, or is that a perception or guess? Statton Hammock:That would be an extremely helpful list as a starting point, Jeff. Lori Schulman:My members have told me anecdotally that PDDRP costs are potentially prohibitive. Outside counsel don't recommend it. Inside counsel don't use it. Vaibhav Aggarwal:I agree Paul McGrady:Depends on the reason for the predatory pricing. Could be in PDDRP scope, Vaibhav Aggarwal:to that Mary Wong:@Darcy, all - that is something staff is wondering ie how we'd begin to get that sort of data. We can collate WG members' views of the activitiy that is happening (e.g. Susan K's examples) but other than that I'm not sure what else can be gathered as data. Vaibhav Aggarwal:That i not a Allegation Vaibhav Aggarwal:I know of it Kurt Pritz:In order to identify cost as a problem, we need at lease one party to say, "I would have filed a PDDRP except the costs were too high," + evidence that the party had a viable claim and did not just want to use low cost PDDRP as a harrassment tool. Vaibhav Aggarwal:++Jeff Kristine Dorrain:A few people here have a "feeling" that a non-used PDDRP is a problem. A few people here have an equally strong "feeling" that the PDDRP has been a great deterrent. Whose "feeling" wins? Absent data we're just twisting in the wind. George Kirikos:I disagree with Kurt. We should also be looking prospectively, into the future, to look at future prospective complainants. Looking only at past potential complainants is too limiting. Jeff Neuman:Susan/Denise - Can you please send the list of issues to this working group George Kirikos:And for those future complainants, certainly overall cost is always going to be a factor. Paul McGrady:Great question J. Scott. Jeff Neuman:I believe the creation of new RPMs is within the scope Jeff Neuman:J scott - An example...this group can recommend an overall blocking service or protectled marks list Susan Kawaguchi:We are replying to the survey Mary Wong:Basic WG task, per the Charter: "by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals." Mary Wong:Oops, sorry for awful formatting Mary Wong:And " If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified. The Working Group is also directed to bear in mind that a fundamental underlying intention of conducting a review of all RPMs in all gTLDs is to create a framework for consistent and uniform reviews of these mechanisms in the future." Kurt Pritz:@George: that sort of prospective thinking is good but it occurred in the original development of the RPMs. To use prospective thinking across the Board would mean essentially starting over with the entire program. George Kirikos:An online tool for Mary, to remove extra spaces: http://textmechanic.com/text-tools/basic-text-tools/remove-extra-spaces/ :-) Mary Wong:Sorry, Phil - document is back Mary Wong:Thanks, George :) Mary Wong:It normally doesn't happen so I blame occasional gremlins :) Jeff Neuman:And if we agreed that mediation was good...then you dont necessarily need a subgroup...you could just make the recommendation Jeff Neuman:Agree with Phil that asking whether something is a good idea vs. asking whether we should create a subteam to look at an issue are two very different questions Mary Wong:Just a note from staff - we are not sure what kind of data we can get on this regarding a procedure that has never been used. As noted previously, we can document activity and abuses identified by WG members, but maybe not much else. Jeff Neuman:@Mary - Here is the data I want? What are the preceived abuses that we see are beig engaged in by registry operators that involve intellectual property rights Kristine Dorrain:Agree, the providers have very little insight into how to fix an unused rpm. They can talk all day about problems with used rpms, however. Philip Corwin:In regard to providers' views, they do not carry more wight than that of WG members. We are waiting to hear what providers believe is the import of language in the PDDRP that refers to combined actions. Paul McGrady:at what: reducing consumer confusion and keeping prices low for consumers. Every dollar spent chasing squatters or overspending on second levels because their association with trademarks make the price go up, is a wasted dollar. Lori Schulman:+1 to Paul. Marie Pattullo:Another +1 to Paul. Jeff Neuman:@Susan - Yes! +1 George Kirikos:+1 for Susan's phrasing. Caroline Chicoine:Not sure how it will be finally worded, but I am inclined to be in favor to wait to make any decision until we get more data and then revisit mediation issue at that time. Darcy Southwell:@JScott - thanks for the clarification about the Doodle poll to this group. Should we wait until the survey results come back and then share that input from SO/AC members? Philip Corwin:I would suggest that the co-chairs, informed by this discussion, frame some proposed Doodle questions regarding the PDDRP, run them past the WG to get feedback on wehther they are balanced and comprehensive, and then hold the poll within this group. That will give us a sound basis for acting on whatever the results may be. Mary Wong:We've asked for survey responses by mid-Sept, though depending on number of responses by then the deadline may need to be extended Jeff Neuman:And there is nothing wrong with this group working on a list of "abuses" while we wait for the surveys to come back. We can then update that list to incorporate the list of abuses. Darcy Southwell:Agree we wait. This also goes to prior points that were made to base our decisions on actual data. Philip Corwin:I could support deferring any new poll on PDDRP until we get more data and views back. Meantime we can start gettiing into the TMCH Jeff Neuman:I would love to work on a group to document and coordinate the list of abuses Mary Wong:@Jeff, staff will create a wiki page where members can upload directly OR they can send to staff and we will add. Paul McGrady:Happy to lead a small doodle poll team in the future if/when it comes to this. Jeff Neuman:@Mary - Can I suggest a Google Doc Mary Wong:Sure Lori Schulman:Love the idea of a Google doc. I could examples that I have from my members. Lori Schulman:I meant I could add examples taken from members. Mary Wong:Do we have volunteers for the Google doc? :) Lori Schulman:I volunteer for the Google Doc. George Kirikos:We have a Wiki -- should use that, rather than separate Google Docs. Darcy Southwell:I'm happy to volunteer as well. Lori Schulman:Or the Wiki...whatever... Mary Wong:Thanks, Jeff, Darcy! George Kirikos:(Wikis can be edited by Workgroup members) Paul McGrady:Happy to volunteer for that goup as well. Vaibhav Aggarwal:yes Me Vaibhav Aggarwal::-) Jeff Neuman:Denise? Susan K? Wouuld be great to have you on that group Mary Wong:We'll add a call for volunteers to the Action Items from today's call. Susan Payne:there are pricing abuses. I know is is a challenging issue but there is a point at which pricing potentially circumvents the RPMs Jeff Neuman:All - I know I have been a real pain on this issue, but this is where I had hoped we would be at months ago with this group :) Susan Payne:I can't do tick mark on iPad Justine Chew:I agree too. Vaibhav Aggarwal::-) Terri Agnew:next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Groupis scheduled for Wednesday, 07 September 2016 at 17:00 UTC for 60 minutes. George Kirikos:As an aside, can we do something about getting the Agenda for meetings out in a more timely manner? (i.e. more than 8 hours before the call) e.g. a goal of late Mondays, for a meeting on Wednesday? Mary Wong:@George, we're all trying, but yeah, sometimes it's difficult to be more timely. Susan Kawaguchi:@Jeff leaving on a sabbatical tomorrow so not volunteering at this time George Kirikos:Thanks Mary. Caroline Chicoine:Very helpful discussion! Jeff Neuman:@Susan - Understood. hopefully Denise can then. Enjoy the Sabbatical :) Susan Kawaguchi:Thanks! George Kirikos:Bye everyone. Have a nice long weekend! Denise Michel:thanks Justine Chew:WG +1 Steve Levy:Thanks all Mary Wong:Thanks everyone! Georges Nahitchevansky:Bye everyone Paul Tattersfield:thanks, bye all Paul McGrady:Thanks! Great call. Maxim Alzoba (FAITID):bye all Darcy Southwell:Good bye. Thanks, all! Lori Schulman:Thanking for leading an excellent meeting. Laurie Anderson:bye ! Jeff Neuman:On the process point, I just want to make sure that the "broken" memo is not considered final at this point Phil Marano (Mayer Brown):Bye all J. Scott Evans:ciao Vaibhav Aggarwal:Have a Good One Team Vaibhav Aggarwal:ciao

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Action Items from Working Group members' call of 31 August
by Mary Wong Aug. 31, 2016

Aug. 31, 2016

Dear all, The following Action Items were noted by staff from the Working Group members’ call held earlier today. On exploring a voluntary mediation option for the TM-PDDRP: · In general, there was broad agreement that there first needs to be a clearly defined problem(s) that needs to be addressed, before beginning to discuss possible solutions. This could be through the creation of a problem statement or other documented ways where specific questions can be asked about the existence and nature of the problem(s). Action Items: 1) An updated Doodle poll will be circulated to WG members only, after Community Survey responses are received (Paul McGrady volunteered to lead this effort) NOTE - Possible questions for the poll (to be further discussed by the co-chairs with staff and subject to further input from WG members): (1) Do you think either non-use or cost of the TM-PDDRP is a problem? (2) If so, do you believe a voluntary mediation option is an appropriate solution or response to the problem? (3) For TM owners, if a mediation option had been developed for the existing TM-PDDRP, would it have assisted you in deciding whether or not to initiate a TM-PDDRP complaint? 2) WG to document all perceived abuses that WG members are aware of, for which registry operators are engaging in, and that involve intellectual property rights. Staff to create Google Document to enable WG members to share information, starting with examples provided by Susan Kawaguchi on the call. A group of volunteers will work on the document: so far, Jeff Neuman, Darcy Southwell, Paul McGrady, and Vaibhav Aggarwal have volunteered. Please send further information of such perceived abusive activity by registry operators either to staff or this mailing list for addition to the document. Please also let staff know if you would like to volunteer to join the group working on the document. For next week: · WG will begin its review of the Analysis Group’s Draft Report of the TMCH: https://newgtlds.icann.org/en/reviews/tmch/draft-services-review-25jul16-en… (staff note - as more public comments are submitted, we will inform the WG: https://forum.icann.org/lists/comments-tmch-review-25jul16/) 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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Agenda and Document for RPMs Working Group meeting Wednesday, 31 August 2016 at 16:00
by David Tait Aug. 31, 2016

Aug. 31, 2016

Dear All Staff are pleased to enclose the agenda for today’s meeting of the RPMs WG: 1. Roll call (via Adobe Connect/phone bridge only) and updates to SOIs 2. Discuss co-chairs’ proposal and agree on way forward with respect to further exploratory work on a voluntary online mediation option 3. Commence discussion of the Analysis Group’s Draft Report on the TMCH 4. Next steps / next meeting Additionally, I attach a memo prepared by the WG Co-Chairs in relation to #2 of the above agenda and for discussion. 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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Questionable UDRPs & TM applications
by George Kirikos Aug. 25, 2016

Aug. 25, 2016

Hi folks, We're not yet on the UDRP topic, but I thought this story should be bookmarked for our future policy work, as an example of how the UDRP policy can be misused to engage in reverse domain name hijacking: http://domainnamewire.com/2016/08/19/new-trademark-king-domainers-need-watc… which was also covered by two other blogs: http://onlinedomain.com/2016/08/17/domain-name-news/company-filed-udrp-goog… http://domaingang.com/domain-law/trademark-applications-for-tokyo-com-and-r… It is important, in my opinion, to close the loopholes that are driving this kind of behaviour that targets domain name registrants. When very valuable domain names are coveted, but the costs of creating shell companies is low --- in the UK, merely £12: https://www.gov.uk/limited-company-formation/register-your-company and/or the costs of filing TM applications are low (under USD $10 for the Pakistan TM fees), the scale of the problem can be even greater. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Notes and Actions from the Rights Protection Mechanisms Working Group on 24 August 2016
by David Tait Aug. 25, 2016

Aug. 25, 2016

Dear all, Here are the staff notes and action items from the Working Group (WG) call held yesterday. For your convenience, we have categorized them into three main issues, as you’ll see below, these are: (1) Report from Compliance Dashboard Review Sub Team, (2) WG discussion of the timeliness and scope of a Voluntary Online Mediation Sub Team in relation to TM-PDDRP review and (3) Overview of TMCH Sub Team discussion with the Analysis Group. Compliance Dashboard Review Sub Team Data contained within the sub team report relating to complaints regarding cybersquatting may be pertinent but staff and co-chairs will investigate this further to understand. Lack of detail from compliance so not entirely clear if RRDRP statistics relate to actual complaints filed and what type of complaints fall under "Other". ACTION: Staff and sub-team to explore further with ICANN Compliance Voluntary Mediation Sub Team Sub-team looking into how voluntary mediation might be structured, but this investigation of practical structuring does not prejudice a decision to recommend in favour of mediation but rather to create a structure to assist the discussions of the full Working Group which would reach a final determination on this. There was an extended discussion as to whether a basic question should be answered before establishing the sub team, namely: Has there been a demonstrated need to add a mediation component to the PDDRP? ACTION: Co-Chairs to discuss feedback from the WG and determine a route forward on this issue TMCH Sub Team The TMCH sub team has considered further data to be sought from both the analysis group and alternative sources including registrars and registries. Reminder: The next meeting of the WG will take place on 31 August 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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