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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 24 August 2016
by Terri Agnew Aug. 25, 2016

Aug. 25, 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, 24 August 2016 at 21:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/HQ6sAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-24aug16-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 24 August 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group held on Wednesday, 24 August 2016 at 21:00 UTC for 60 minutes. Terri Agnew:wiki agenda page: https://community.icann.org/x/HQ6sAw George Kirikos:Hi folks. Dominic DeLuca(FORUM):Just a general question. Were the finalized questions for the PDDRP providers going to be sent out this week? Mary Wong:@Dominic, yes, we are plannning to do that Dominic DeLuca(FORUM):Thanks, Mary. VaibhavAggarwal:Evening team Steve Levy:Hello all! Philip Corwin:Hi, Awaiting operator Marina Lewis:Hi everyone Philip Corwin:in now Maxim Alzoba (FAITID):Hello All Paul Tattersfield:Hi All Brian Cimbolic:Hi all Terri Agnew:everyone has scroll Terri Agnew:finding the line George Kirikos:*6 to mute/unmute Maxim Alzoba (FAITID):any kind of proof that registries done that? Jeff Neuman:The RRDRP is for the Subsequent Procedures PDP, correct? Mary Wong:@Jeff, I believe so Jeff Neuman:I thought this PDP agreed to forward all RRDRP stuff to the Sub Pro Working group Mary Wong:@Maxim, can you clarify your question? Maxim Alzoba (FAITID):We have seen some investigations from Compliance which were not in scope of legal framework, do we know numbers of cases which were not dismissed? Mary Wong:@Jeff, yes - so this isnt about revieiwng the RR-DRP, it's just a note that there were complaints that were about the RR-DRP but none about the TM-PDDRP (illustrative comparison). Maxim Alzoba (FAITID):lack of grounds e.t.c. George Kirikos:Not very granular. Jeff Neuman:ok - IF this Subteam can forward these to the Sub Pro PDP Work Track 2 team, that would be great Maxim Alzoba (FAITID):Compliance tend to create self generated cases Kristine Dorrain - Amazon Registry:RRDRP complaints require a filing with ICANN first: Complainants must have filed a claim through the Registry Restriction Problem ReportSystem (RRPRS) to have standing to file an RRDRP. George Kirikos:Yes, we can hear you. Susan Payne:thanks Caroline Maxim Alzoba (FAITID):QUESTION: Could we clarify with the ICANN Compliance - how many cases survived grounds check? Are these numbers reflect all opened cases? Mary Wong:@Jeff, per Caroline, we just have no additional info about the actual complaints to Compliance on RR-DRP, just the number of complaints. J. Scott Evans:sorry to be late. George Kirikos:Usually "other" should be a small proportion of cases (i.e. say under 25%). When "Other" is 3/4 of the cases, there's likely a problem with the categorization. Maxim Alzoba (FAITID):then these numbers are not solid, so we can not use it as basis for work Denise Michel:+1 Paul Tattersfield:and the Other Mary Wong:SUGGESTION - We will circulate the updated list of Questions for Compliance (updated based on last week's call), as well as the new suggestions from this report, to everyone for review. The Sub Team can then follow up with Compliance on all the questions at the same time. Mary Wong:@Paul T, are you asking that we also ask for more details about what types of complaints comprise the "Other" category? We can add that to the list if so, unless other WG members object. Susan Payne:Caroline - I think "other" will turn out to be operational issues for registries such as timing of dealing with CZDS requests, data escrow delays, and that sort of thing Maxim Alzoba (FAITID):@Mary, numbers without clarification of real cases vs. self created/dismissed are misleading in this approach Paul Tattersfield:Yes thank you Mary I think that may be helpful Mary Wong:@Paul T, ok, thanks Maxim Alzoba (FAITID):Do we recommend to add clountary mediation to all kind of DRPs? or only to this one? Maxim Alzoba (FAITID):*voluntary Mary Wong:Only this one - and that decision hasn't been made yet, it's simply exploratory at this point (or so it was intended) Maxim Alzoba (FAITID):Why do we need to add additional layer of complexity to something never used? Maxim Alzoba (FAITID):+1 @Jeff on no mediation addition George Kirikos:If we go to our Charter, mediation was expressly mentioned: https://gnso.icann.org/en/drafts/rpm-charter-09feb16-en.pdf Statton Hammock:Also agree with Jeff and those iin support. George Kirikos:(albeit in the context of the UDRP; but, same logic would apply) Caroline Chicoine:Would the consumer survey we sent out help enlighten what if any need there is so can we postpone until we get results? Statton Hammock:No mediation is needed. Parties can always enter into mediation on their own if they choose. Beth Bacon:+1 Kristine Dorrain - Amazon Registry:+1 Jeff, et. al. Mary Wong:@Reg, all - how we got here is that in early discussions about this, quite a few WG members seemed to think it would be a good idea to add/explore this. This was also indicated by the Doodle poll. That's probably how we got here, though of course it doesn't mean we shouldn't be hearing from those who don't support futher work on this topic right now. Griffin Barnett:@George, not sure the same logic would necessary apply given the difference in use between UDRP vs. PDDRP Kristine Dorrain - Amazon Registry:Agree, Griffin Brian Cimbolic:Agreed Susan George Kirikos:I didn't say "thou shalt go and create a mediation program" -- just pointing out that this PDP had a broad scope. Kristine Dorrain - Amazon Registry:Mary, I don't think anyone has said mediation is a bad idea. I think the problem is, we don't know yet what problem mediation is supposed to solve? Jeff Neuman:Yes Phil there was an objection from me Jeff Neuman:I thought the Doodle Poll was not well drafted on the issue Jeff Neuman:and was biased George Kirikos:@Kristine: isn't the "problem" self-evident? i.e. high litigation costs can be reduced by encouraging settlement discussions. Mediation helps get the parties talking. Kristine Dorrain - Amazon Registry:No. What high litigation costs? Who said the PDDRP was expensive? No one has used it. Jeff Neuman:thanks J Scott :) Susan Payne:@George - I think you keep conflating the UDRP with the PDDRP. They are not the same thing Kristine Dorrain - Amazon Registry:If there was evidence about the high cost of the PDDRP being a barrier to entry, then I would support discussing mediation. Maxim Alzoba (FAITID):when party is not brave enough to go into the litigation ... most probably mediation is useless George Kirikos:Your confusing PDDRP fees (by the ADR provider) with litigation fees (which are much higher, i.e. costs of discovery, costs of lawyers, time of managers, etc.) George Kirikos:*You're, even Statton Hammock:That was helpful J Scott. Kristine Dorrain - Amazon Registry:We can't control litigation costs, we're talking only about PDDRP thought. Kristine Dorrain - Amazon Registry:*though Mary Wong:@J SCott, yes, that is our recollection as well. George Kirikos:By the logic of "no one has used it", why not go further and ask "We should eliminate the PDDRP entirely?" :-) If it's just there as a deterrent, is there a more effective means of deterrent? Statton Hammock:Move that we adopt the "Neuman Rule" going forward, namely, we should put forward no recommended change in processes, procedures, or mechanisms unless and until we have identified or gathered proof that a problem is evident. Reg Levy - MMX:I agree, that comports with the way that I voted on the Doodle poll. Brian Cimbolic:agreed @Reg and @Jeff Kristine Dorrain - Amazon Registry:Agree Jeff Brian Cimbolic:err @Statton, rather Laurie Anderson:+1 Jeff Mary Wong:@Jeff, the Doodle poll was formulated that way based on the general sense following discussions on that basic question in Helsinki and within the WG up to that point in time, so, yes, it's not the same question but the idea was to base it on discussions that had taken place. Jeff Neuman:LOL: As I told Phil this would be Neuman Rule #2; Neuman Rule #1 is never call a meeting during lunch unless you are serving food. Beth Bacon:+1 Reg and Statton- let's not try to fix problems that don't exist Kristine Dorrain - Amazon Registry:@George: If we have data that supports elimination of the PDDRP then I think it's in our scope to discuss it. We first need data. Mediation is a fantastic solution. But we have no data indicating a problem. Paul McGrady:Does "Review" mean improve without a problem or does it mean "identify and fix" problems. Improve with no known problems sounds like we will finish in 2032... Brian Cimbolic:+1 David J. Scott Evans:well, the one problem we identified is that no one used this policy. Some felt cost was a problem and mediation might be a solution. Laurie Anderson:Agree, Kristine. Unless we have valid data, there's no way to make an informed decision. George Kirikos:Right, J. Scott. I think if you go back to the early calls, that was how things originated. Kristine Dorrain - Amazon Registry:@ J Scott, is non-use a problem? OR a sign that registries are on the up and up? I thought we were starting to try to answer that question... George Kirikos:So, if costs are an issue (and they ALWAYS are an issue), then things that reduce overall costs (and mediation is one such thing) *is* in scope. Maxim Alzoba (FAITID):+1 @Kristine George Kirikos:Costs are not the same as "fees", as pointed out above. Beth Bacon:+1 Kristine Jeff Neuman:@George - Mediation does not always lower the costs Kristine Dorrain - Amazon Registry:Correct, JEff. Mediation can be very expensive Maxim Alzoba (FAITID):@George, costs of establishing a registry are way higher , so there should be some barrier to prevent blackmailing George Kirikos:@Maxim: I hope you feel that 'logic' about barriers to blackmailing also applies to other DRPs, such as the URS and UDRP. Maxim Alzoba (FAITID):@George URS is almost useless, so it could be the reason for low numbers even with 375USD price for up to 14 domains Maxim Alzoba (FAITID):@Geroge, this particular DRP kills business, unlike URS or UDRP George Kirikos:URS and UDRPs also take businesses offline. Registrants are businesses too. Paul Tattersfield:Generally if both sides would voluntarily seek and agree to mediation then it is difficult to see how it can be bad option for any framework to offer. George Kirikos:(that should be an ICANN T-shirt, "Registrants are businesses too!") i.e. registries aren't the only 'business' out there.... Maxim Alzoba (FAITID):@George, please compare digits and you will see millions vs. thouthands George Kirikos:@Maxim: many domain names are worth more than the $185K ICANN costs of a TLD. Kathy Kleiman:Tx you, Susan! Maxim Alzoba (FAITID):@George, 185k is peanuts to real costs ... multiply by 10 Kathy Kleiman:Others from the TMCH Subgroup should feel free to add to the discussion... George Kirikos:I noticed that in the report, a very high proportion of TMCH applications got "verified", however, as I pointed out over the weekend, in reality there's a big "proof of use" problem. http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html George Kirikos:If the USPTO's own audit showed that more than 1/2 the proof of uses were deficient, can we trust that the TMCH applied an equally high standard to their own reviews, where they approved close to 90%? Maxim Alzoba (FAITID):@Geroge +1, we can not :) Lori Schulman:I am not so sure that PTO data is comparable since it is evaluated by International Classificiation under the Paris Convention. A very different standard. George Kirikos:Right, there needs to be an audit of the TMCH "proof of use". The USPTO study was relatively recent (i.e. well after the TMCH was setup). So, it's not a problem policymakers were aware of when it was setup. Jeff Neuman:@George - Have you noticed a problem? Have trademark owners gotten domain name registrations which you believe they should not have gotten because of an insufficient demonstration of use? Kristine Dorrain - Amazon Registry:We would love more active participants!!! Jeff Neuman:@Kristine +1 : I am on that small group and we need help ;) George Kirikos:@Jeff: that's something we should survey. Of course, I don't personally register new gTLD domain names. :-) George Kirikos:(plus, it's not just gaining domains; it's also creating claims notifications, which might cause prospective registrants to not register a certain domain) Kathy Kleiman:The TMCH Subgroup meets on Fridays @11am Eastern for an hour. If you would like to join us, feel free to let Mary Wong or David Tait know, or just post in this chat room. Jeff Neuman:@George, you are not required to demonstrate use to be enrolled in the claims service J. Scott Evans:next week Susan Payne:deadline is 3 Sept Marina Lewis:Re USPTO vs TMCH, I think we're talking apples and oranges here. The problem with the USPTO is not that the proof of use itself is deficient, but that many registrants would be unable to prove use for EVERY item in the registration (as required under US law), should they be compelled to do so. TMCH only requires that brand owners submit proof of use for one item of goods/services, and it appears many TMCH users are properly able to do so. Lori Schulman:Marina is exactly right. George Kirikos:Marina: 16% of marks were entirely removed from the USPTO. Maxim Alzoba (FAITID):we have seen situations where TMCH was gamed to obtain generic words Mary Wong:Analysis Group will take on board public comments received, update the report if appropriate, and then publish a Final Report. George Kirikos:It wasn't just proving all categories of use. i.e. 16% were so bad, they had to be eliminated. Lori Schulman:There may be use but not the use in the original registration either of exact goods or in the same class, it is a nuanced evaluation. Kristine Dorrain - Amazon Registry:Maxim, that would be helpful information to submit to the subteam. Terri Agnew:Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Groupis scheduled for Wednesday, 31 August 2016 at 16:00 UTC for 60 minutes. Mary Wong:The Final Report will be sent to the GAC, who requested the review in the first place, and be available to the community (including our WG) to inform the community work (including our PDP) Paul McGrady:Good call Phil! Mary Wong:Yes Jeff Neuman:@George - I do not believe that our role is to try to change National Trademark laws George Kirikos:Bye folks. Lori Schulman:Bye George. Laurie Anderson:bye all Monica Mitchell:Thank you Jay Chapman:thanks, all Paul Tattersfield:Thanks, bye All. Susan Payne:thanks all Maxim Alzoba (FAITID):good night Greg Shatan:bye all! Marina Lewis:bye all! Steve Levy:Bye for now Lori Schulman:ciao

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Agenda and documents for Working Group meeting on 24 August
by Mary Wong Aug. 24, 2016

Aug. 24, 2016

Dear Working Group members, The proposed agenda for the next Working Group call, scheduled for Wednesday 24 August at 2100 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only)/Update to SOIs 2. Update from staff on follow up with TM-PDDRP Providers and the Community Survey 3. Report from Compliance Dashboard Review Sub Team (see attached document) 4. WG discussion of the timeliness and scope of a Voluntary Online Mediation Sub Team in relation to TM-PDDRP review 5. Overview of TMCH Sub Team discussion with the Analysis Group (see updated TMCH Sub Team Initial Report from 9 August, circulated previously and available on the Working Group wiki at https://community.icann.org/x/VAmsAw) 6. [if time permits] WG identification of specific issues or concerns arising from WG members’ review of the Analysis Group’s Draft Report on the TMCH (published on 25 July and available at https://newgtlds.icann.org/en/reviews/tmch/draft-services-review-25jul16-en…) 7. Next steps/next meeting Thanks and cheers Mary gnsoMary 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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Call for volunteers - RPMs Working Group, Mediation sub-team
by David Tait Aug. 23, 2016

Aug. 23, 2016

Dear Working Group members At its meeting on 17 August 2016 the Working Group concluded that there was a need to convene a sub-team to review the issue of Optional mediation and put forward an outline proposal for consideration by WG. Staff would therefore invite those who would be interested in participating in this sub-team to respond to this email and we will begin the process of establishing the sub-team. We would kindly request that you send us any responses by 0900 UTC 24 August 2016 Please note that Petter Rindforth has already kindly volunteered for this sub-team. Kind regards, David Tait 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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Re: [gnso-rpm-wg] Notes and Actions from the Rights Protection Mechanisms Working Group on 17 August 2016
by David Tait Aug. 23, 2016

Aug. 23, 2016

Dear Dawahi Staff’s understanding is that both preexistent decisions and hypotheticals could be useful in this case. It would then before the Working Group to consider all of these for whether or not they should be included in the final version sent to compliance. Kind regards, David From: Dawahi Khouloud <khoulouddaouahi(a)gmail.com> Date: Sunday, 21 August 2016 at 01:02 To: David Tait <david.tait(a)icann.org> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Notes and Actions from the Rights Protection Mechanisms Working Group on 17 August 2016 A question @David when it comes to action '' i. WG members to provide scenarios to illustrate bad faith/abusive conduct in question to ICANN Compliance by next week's call" I think it is very important indeed .So should we look for ambigious situation regarding this matter in some preexistant arbitration decisions or conceive a situation ? On Aug 17, 2016 7:55 PM, "David Tait" <david.tait(a)icann.org> wrote: Dear all, Here are the staff notes and action items from the Working Group (WG) call held earlier today. For your convenience, we have categorized them into four main issues, as you’ll see below: these are (1) TMCH provider questions and proposed community survey, (2) Questions for ICANN Compliance, (3) Issues/Concerns/Suggestions regarding the TM-PDDRP and (4) the next meeting. 1) TMCH Provider questions and community survey ACTION: WG members to review document of provider questions and community Survey previously circulated by MW by CoB Friday; 2) Questions for ICANN Compliance The WG considered questions to be submitted to ICANN Compliance. ACTION: i. WG members to provide scenarios to illustrate bad faith/abusive conduct in question to ICANN Compliance by next week's call; ii. Staff to prepare revised questions for compliance in relation to the handling of complaints from third-parties regarding abusive conduct; iii. WG Volunteers to review existing, publicly available metrics published by ICANN Compliance. 3) Consideration of Issues/Concerns/Suggestions regarding the TM-PDDRP Doodle poll shows no support for continuing discussion regarding burden of proof at this point, however, in the event of new concerns emerging or a demand to revisit the topic arising it would be possible to revisit this topic; Remedies – Consideration of this issue is to be paused until more input has been received from the Community survey i. ACTION: Staff to prepare a specific question to the registries regarding vagueness of remedies to be sent alongside other requests for information for consideration by WG Optional Mediation- The WG considered that there was a need to convene a sub-team to review the issue of Optional mediation and put forward an outline proposal for consideration by WG. ii. ACTION: (Staff to issue call for volunteers on the list before next meeting) 4) Next meeting The next meeting of the WG to take place at 2100 UTC Wednesday 24 August ACTION: WG members to be prepared to discuss Analysis Group report. Kind regards, 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 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey
by Paul McGrady Aug. 23, 2016

Aug. 23, 2016

Thanks Thomas. I agree that similarity is only one factor in the normal U.S. based infringement analysis, as is scienter. There are a raft of other factors as well. However, I still ask whether or not “infringement” is defined anywhere in this ICANN policy or if we are all just assuming into it a U.S. understanding of what that word means. Do we also mean to include dilution and other brand abuses in “infringement”? Is the Indian definition different in any meaningful way and, if so, what ways? Russian, EU? Of course, applying infringement theory in the domain name context is a bit of a misfit, since infringement requires use on similar goods and services, which is why the US Congress brought the US the ACPA which has its own elements and factors. Let’s us a hypothetical example. Let’s assume the existence of a hypothetical registry for .Mark. If .Mark charged $10 for Kratos.Mark but $10,000 for Nike.Mark, it would seem that the value being extracted was tied to the trademark nature of “nike” rather than to any reference to Greek mythology (or else we would see a similar price for Kratos.Mark). But a second level domain name is not shoes, so would “infringement” ever apply? So, I think we should examine on an upcoming call what “infringement” is meant to mean in this context. It could be that it is meant to mean a US based notion of “infringement” (marks applied to goods and services) – in which case we may have diagnosed why there haven’t been any PDDRP filings to date. Best, Paul From: Thomas Brackey II [mailto:tbrackey@freundandbrackey.com] Sent: Tuesday, August 23, 2016 10:32 AM To: Paul McGrady <policy(a)paulmcgrady.com> Cc: Phil Corwin <psc(a)vlaw-dc.com>; Mary Wong <mary.wong(a)icann.org>; Jeff Neuman <jeff.neuman(a)comlaude.com>; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey A letter string, or word, by itself is not “infringing” even if it is identical to a famous mark. Only a tribunal of competent jurisdiction can determine whether, under the particular circumstances of each case, a second level domain is infringing. It seems to me the way to frame the issue is to determine whether a Registry has engaged in a pattern or practice of selling domain names that are later judged to be infringing in an adversarial proceeding. Liability under the PDDRP would then turn on the Registry’s knowledge, scienter and/or reaction once it has been determined that the names in question have been used in a manner giving rise to a finding of infringement. Of course once a TLD reaches a certain scale, there are bound to be instances of second level domains used in an infringing manner. One need look no further than .com. Thomas A. Brackey II FREUND & BRACKEY LLP 427 North Camden Drive Beverly Hills, CA 90210 USA tel: 310-247-2165, ext. 26 fax: 310-247-2190 tbrackey(a)freundandbrackey.com <mailto:tbrackey@freundandbrackey.com> On Aug 23, 2016, at 8:11 AM, Paul McGrady <policy(a)paulmcgrady.com <mailto:policy@paulmcgrady.com> > wrote: Is “infringement” defined anywhere? Would it include dilution and other acts of using brands to obtain payments for second levels that otherwise would have very little value but for their identicalness or confusing similarity to brands? Best, Paul Paul D. McGrady, Jr. <mailto:policy@paulmcgrady.com> policy(a)paulmcgrady.com 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 Phil Corwin Sent: Tuesday, August 23, 2016 9:40 AM To: Mary Wong <mary.wong(a)icann.org <mailto:mary.wong@icann.org> >; Jeff Neuman <jeff.neuman(a)comlaude.com <mailto:jeff.neuman@comlaude.com> > Cc: gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Thank you Mary. Clearly, profiting from the sale of second level domains is not and should not be a cause of action for any RPMs, Our concern is intentional TM infringement. 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: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces(a)icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, August 22, 2016 9:44 PM To: Jeff Neuman Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Thank you, Jeff - our apologies to all for the inadvertent omission. We will fix it as soon as we can and resend the link to all community group chairs with a short explanatory note. Cheers Mary Sent from my iPhone On Aug 23, 2016, at 09:36, Jeff Neuman < <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com> wrote: All, A Registry just pointed out to me that we have an error in question 7 of the PDDRP Survey that just went out which we can easily fix, but definitely need to fix. Question 7 currently states: “7. Has there been any conduct by new gTLD registry operators that you believe constitutes a “substantial pattern or practice of specific bad faith intent to profit” from the sale of domain names at the second level?” However, the PDDRP only applies where it constitutes a “substantial pattern or practice of specific bad faith intent to profit” from the sale of trademark infringing domain names at the second level. [The Underlined portion was left out]. The portion that was left out is KEY to the cause of action. As he jokingly put it, some believe that the sale of all second level domains constitute a bad faith intent to profit :) However, at this point the PDDRP does not apply in any situations other than selling trademark infringing domain names. Can we please fix and reissue the survey? Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman(a)valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ No virus found in this message. Checked by AVG - <http://www.avg.com/> www.avg.com Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16 Internal Virus Database is out of date. _______________________________________________ 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

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Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey
by Paul McGrady Aug. 23, 2016

Aug. 23, 2016

Thanks Thomas. While I think you may be relying on the examples of 6.2 in your response to my hypothetical, rather than the text of 6.2, your comments on pricing as a deterrent to squatting is an interesting one, worthy of further thought. I’m a little afraid that we may be boring the other members of the listserv with our microscope session. I’d enjoy continuing this discussion sometime though – perhaps in Hyderabad. Thanks again for your comments on this today. Lot’s to think about. Best, Paul From: Thomas Brackey II [mailto:tbrackey@freundandbrackey.com] Sent: Tuesday, August 23, 2016 11:10 AM To: Paul McGrady <policy(a)paulmcgrady.com> Cc: Phil Corwin <psc(a)vlaw-dc.com>; Mary Wong <mary.wong(a)icann.org>; Jeff Neuman <jeff.neuman(a)comlaude.com>; gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Hello Paul, It is indeed a tangled web. I suppose PDDRP 6.1 is the analog to infringement analysis that will be conducted by the PDDRP tribunal. Though not a definition per se, it nonetheless provides a familiar framework. Your hypothetical is interesting, while Registry pricing may be an indication of bad faith, it is not necessarily determinative. For example, some Registry Operators may place famous names in a high pricing tier precisely to deter cybersquatters. In any event, a Registry Operator would not be liable under the PDDRP for any second level registrations by unaffiliated third parties per 6.2. I believe the RO would have to be either the registrant, or the beneficial owner of the infringing second level domain name in order to face liability. All the best, TAB Thomas A. Brackey II FREUND & BRACKEY LLP 427 North Camden Drive Beverly Hills, CA 90210 USA tel: 310-247-2165, ext. 26 fax: 310-247-2190 tbrackey(a)freundandbrackey.com <mailto:tbrackey@freundandbrackey.com> On Aug 23, 2016, at 8:48 AM, Paul McGrady <policy(a)paulmcgrady.com <mailto:policy@paulmcgrady.com> > wrote: Thanks Thomas. I agree that similarity is only one factor in the normal U.S. based infringement analysis, as is scienter. There are a raft of other factors as well. However, I still ask whether or not “infringement” is defined anywhere in this ICANN policy or if we are all just assuming into it a U.S. understanding of what that word means. Do we also mean to include dilution and other brand abuses in “infringement”? Is the Indian definition different in any meaningful way and, if so, what ways? Russian, EU? Of course, applying infringement theory in the domain name context is a bit of a misfit, since infringement requires use on similar goods and services, which is why the US Congress brought the US the ACPA which has its own elements and factors. Let’s us a hypothetical example. Let’s assume the existence of a hypothetical registry for .Mark. If .Mark charged $10 for Kratos.Mark but $10,000 for Nike.Mark, it would seem that the value being extracted was tied to the trademark nature of “nike” rather than to any reference to Greek mythology (or else we would see a similar price for Kratos.Mark). But a second level domain name is not shoes, so would “infringement” ever apply? So, I think we should examine on an upcoming call what “infringement” is meant to mean in this context. It could be that it is meant to mean a US based notion of “infringement” (marks applied to goods and services) – in which case we may have diagnosed why there haven’t been any PDDRP filings to date. Best, Paul From: Thomas Brackey II [mailto:tbrackey@freundandbrackey.com] Sent: Tuesday, August 23, 2016 10:32 AM To: Paul McGrady <policy(a)paulmcgrady.com <mailto:policy@paulmcgrady.com> > Cc: Phil Corwin <psc(a)vlaw-dc.com <mailto:psc@vlaw-dc.com> >; Mary Wong <mary.wong(a)icann.org <mailto:mary.wong@icann.org> >; Jeff Neuman <jeff.neuman(a)comlaude.com <mailto:jeff.neuman@comlaude.com> >; gnso-rpm-wg(a)icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey A letter string, or word, by itself is not “infringing” even if it is identical to a famous mark. Only a tribunal of competent jurisdiction can determine whether, under the particular circumstances of each case, a second level domain is infringing. It seems to me the way to frame the issue is to determine whether a Registry has engaged in a pattern or practice of selling domain names that are later judged to be infringing in an adversarial proceeding. Liability under the PDDRP would then turn on the Registry’s knowledge, scienter and/or reaction once it has been determined that the names in question have been used in a manner giving rise to a finding of infringement. Of course once a TLD reaches a certain scale, there are bound to be instances of second level domains used in an infringing manner. One need look no further than .com. Thomas A. Brackey II FREUND & BRACKEY LLP 427 North Camden Drive Beverly Hills, CA 90210 USA tel: 310-247-2165, ext. 26 fax: 310-247-2190 <mailto:tbrackey@freundandbrackey.com> tbrackey(a)freundandbrackey.com On Aug 23, 2016, at 8:11 AM, Paul McGrady < <mailto:policy@paulmcgrady.com> policy(a)paulmcgrady.com> wrote: Is “infringement” defined anywhere? Would it include dilution and other acts of using brands to obtain payments for second levels that otherwise would have very little value but for their identicalness or confusing similarity to brands? Best, Paul Paul D. McGrady, Jr. <mailto:policy@paulmcgrady.com> policy(a)paulmcgrady.com From: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces(a)icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, August 23, 2016 9:40 AM To: Mary Wong < <mailto:mary.wong@icann.org> mary.wong(a)icann.org>; Jeff Neuman < <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com> Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Thank you Mary. Clearly, profiting from the sale of second level domains is not and should not be a cause of action for any RPMs, Our concern is intentional TM infringement. 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: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces(a)icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, August 22, 2016 9:44 PM To: Jeff Neuman Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey Thank you, Jeff - our apologies to all for the inadvertent omission. We will fix it as soon as we can and resend the link to all community group chairs with a short explanatory note. Cheers Mary Sent from my iPhone On Aug 23, 2016, at 09:36, Jeff Neuman < <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com> wrote: All, A Registry just pointed out to me that we have an error in question 7 of the PDDRP Survey that just went out which we can easily fix, but definitely need to fix. Question 7 currently states: “7. Has there been any conduct by new gTLD registry operators that you believe constitutes a “substantial pattern or practice of specific bad faith intent to profit” from the sale of domain names at the second level?” However, the PDDRP only applies where it constitutes a “substantial pattern or practice of specific bad faith intent to profit” from the sale of trademark infringing domain names at the second level. [The Underlined portion was left out]. The portion that was left out is KEY to the cause of action. As he jokingly put it, some believe that the sale of all second level domains constitute a bad faith intent to profit :) However, at this point the PDDRP does not apply in any situations other than selling trademark infringing domain names. Can we please fix and reissue the survey? Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman(a)valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman(a)comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ No virus found in this message. Checked by AVG - <http://www.avg.com/> www.avg.com Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16 Internal Virus Database is out of date. _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg(a)icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Inadvertent Error on PDDRP Survey
by Jeff Neuman Aug. 23, 2016

Aug. 23, 2016

All, A Registry just pointed out to me that we have an error in question 7 of the PDDRP Survey that just went out which we can easily fix, but definitely need to fix. Question 7 currently states: "7. Has there been any conduct by new gTLD registry operators that you believe constitutes a "substantial pattern or practice of specific bad faith intent to profit" from the sale of domain names at the second level?" However, the PDDRP only applies where it constitutes a "substantial pattern or practice of specific bad faith intent to profit" from the sale of trademark infringing domain names at the second level. [The Underlined portion was left out]. The portion that was left out is KEY to the cause of action. As he jokingly put it, some believe that the sale of all second level domains constitute a bad faith intent to profit :) However, at this point the PDDRP does not apply in any situations other than selling trademark infringing domain names. Can we please fix and reissue the survey? Thanks. 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

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CCT-RT meeting in Vienna on 29-30 August
by Emily Barabas Aug. 22, 2016

Aug. 22, 2016

Dear All, FYI for those of you in the Vienna area -- The Competition, Consumer Trust, and Consumer Choice Team will be holding a face-to-face meeting in Vienna on 29-30 August. Observers are welcome to attend. There will also be a cocktail hour for all stakeholders on 28 August. Additional information is available at https://www.icann.org/news/blog/join-the-competition-consumer-trust-and-con…. Kind regards, Emily Emily Barabas | Policy Specialist ICANN | Internet Corporation for Assigned Names and Numbers Email: emily.barabas(a)icann.org | Phone: +31 (0)6 84507976

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TMCH -- false declarations of use, statistics from the USPTO
by George Kirikos Aug. 21, 2016

Aug. 21, 2016

Hi folks, I was doing some research on false declarations of trademark "use", and came upon some startling statistics that are relevant to our TMCH discussions. The following link summarizes some of the important research conducted by the USPTO: http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=05be481… "The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States." The same study was discussed in the following blog: http://www.thebrandprotectionblog.com/uspto-announces-new-trademark-use-aud… "...USPTO randomly audited 500 registrations with recently filed affidavits averring use. In addition to the usual specimen submitted for each class of goods or services, the USPTO asked registration owners to submit proof of use of their marks for two additional goods or services per class selected at random by the USPTO. During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration." The final report by the USPTO can be read in its entirety at: https://www.uspto.gov/sites/default/files/documents/Post_Registration_Proof… (sorry it's not a PDF) This huge amount of fraudulently registered marks has caused them to make some proposals a couple of months ago, see: https://www.federalregister.gov/articles/2016/06/22/2016-14791/changes-in-r… "A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public." "The public relies on the register to determine whether a chosen mark is available for use or registration. Where a party's search of the register discloses a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, proceedings to cancel the registration or oppose the application of the disclosed mark, civil litigation to resolve a dispute over the mark, or changing plans to avoid use of the party's chosen mark. If a registered mark is not actually in use in the United States, or is not in use in connection with all the goods/services identified in the registration, these costs and burdens may be incurred unnecessarily. An accurate and reliable trademark register helps avoid such needless costs and burdens." Obviously, the exact same reasoning applies to the TMCH itself. In light of these truly startling statistics, I think we need to have much greater scrutiny of what marks get placed into the TMCH, despite claims of "use". Even specimens of use can be "gamed", as discussed at length in an article at: http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-use… which had numerous examples of "sham" transactions, sporadic, casual, or de minimis uses. e.g.: "- a single shipment of one jar of salt from one corporate officer to another for no charge; - sale for $2.50 of 12 bank book holders, followed by instructions not to offer them to prospective customers; - sale of a few dollars’ worth of women’s sportswear to a cooperating company which immediately returned the goods to the seller;" The TMCH needs to be aware of how the system can be gamed, given the financial incentives to do so, as do we as this policy is reviewed. Perhaps a random audit of TMCH registered marks should be done. Perhaps they should all be in a public database, so that there can be greater scrutiny by the public compared to a private/secret database. If it turns out that 51% or 65% or 73% don't pass muster, it would have great implications for our work. 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 17 August 2016
by David Tait Aug. 21, 2016

Aug. 21, 2016

Dear all, Here are the staff notes and action items from the Working Group (WG) call held earlier today. For your convenience, we have categorized them into four main issues, as you’ll see below: these are (1) TMCH provider questions and proposed community survey, (2) Questions for ICANN Compliance, (3) Issues/Concerns/Suggestions regarding the TM-PDDRP and (4) the next meeting. 1) TMCH Provider questions and community survey ACTION: WG members to review document of provider questions and community Survey previously circulated by MW by CoB Friday; 2) Questions for ICANN Compliance The WG considered questions to be submitted to ICANN Compliance. ACTION: i. WG members to provide scenarios to illustrate bad faith/abusive conduct in question to ICANN Compliance by next week's call; ii. Staff to prepare revised questions for compliance in relation to the handling of complaints from third-parties regarding abusive conduct; iii. WG Volunteers to review existing, publicly available metrics published by ICANN Compliance. 3) Consideration of Issues/Concerns/Suggestions regarding the TM-PDDRP Doodle poll shows no support for continuing discussion regarding burden of proof at this point, however, in the event of new concerns emerging or a demand to revisit the topic arising it would be possible to revisit this topic; Remedies – Consideration of this issue is to be paused until more input has been received from the Community survey i. ACTION: Staff to prepare a specific question to the registries regarding vagueness of remedies to be sent alongside other requests for information for consideration by WG Optional Mediation- The WG considered that there was a need to convene a sub-team to review the issue of Optional mediation and put forward an outline proposal for consideration by WG. ii. ACTION: (Staff to issue call for volunteers on the list before next meeting) 4) Next meeting The next meeting of the WG to take place at 2100 UTC Wednesday 24 August ACTION: WG members to be prepared to discuss Analysis Group report. Kind regards, 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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