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Actions & Notes: RPM PDP WG Meeting 18 September 2019
by Julie Hedlund Sept. 18, 2019

Sept. 18, 2019

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 18 September 2019 at 17:00 UTC. Staff have posted these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-18+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Staff to circulate the glossary of terms developed in 2017 – DONE: See the attached document: “List of Terms and Descriptions Relating to Design Marks and GIs.” Notes: 1. Updates to Statements of Interest: No updates provided 2. Finalize Discussion of Open Charter Questions and Proposals: Charter Question 7: Kleiman/Muscovitch Proposal -- See: https://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20190918/e9fbcd9d/Kl… -- Compromise proposal was withdrawn. -- Trying to clearly define what can and cannot go into the TMCH, what can get Sunrise and Notice. -- Continue the dialog to see if further compromise can be found. -- Question: on suggest number 2 re: “national registry about its classifications” – meaning? -- Agree WIPO 3.0 at Section 1.10 states is that the consensus is that design marks can be the basis of a UDRP. https://www.wipo.int/amc/en/domains/search/overview3.0/#item110 -- Our (ICANN Org) understanding is that, for the UDRP, it’s very much a case by case analysis. So, not excluded in principle, but fact-dependent. -- Over states to the extent to which the rights of design marks are limited to those elements taken together. -- Defined best by the negative of the word mark. -- Reminder/placeholder: the question does seem to be what exactly does the WG believe is in the scope of the term “word mark”. There is not internationally understood definition of “word mark”. TMCH was meant to be a repository of verified marks. This WG should not require the provide to conduct an examination, as that changes the purpose of the TMCH. The TMCH rules have to be such that all marks from all jurisdictions can be included. -- We need rules for the TMCH that is effectively lowest-common-denominator for text marks Becuase of all the varying definitions and jurisdictional practices -- If there is no way to tell whether a registration is a "word mark" how does Deloitte implement this proposal? To this question - Deloitte’s implementation can be found in Sections 5.2.1 and 5.2.2 of the TMCH Guidelines. -- From the TMCH Guidelines: “For those marks that to do not exclusively consist of letters, words, numerals or special characters, the verification agents will verify the trademark name based upon the image on the trademark certificate. In the event that there is any doubt about the order in which the characters appear, the description provided by the Trademark Office will prevail. In the event no description is provided, such trademark records will be allocated to a Deloitte internal team of specialists with thorough knowledge of both national and regional trademark law who will conduct independent research on how the trademark is used, e.g. check website, or they may request that the trademark holder or agent provide additional documentary evidence on how the trademark is used.” -- There are basic disagreements about how trademark law protects textual elements of marks that also have stylization/design elements. -- I think that has been the issue in moving toward further compromise, although I note that the IPC did provide responses to the iteration of the Muscovitch propopsal that was subsequently withdrawn. -- Hence the need for this WG to decide what it means by “word marks” and how that can be implemented within the framework of the TMCH as a repository and that accepts all verified marks from all jurisdictions. -- No reason Deloitte cannot try to match the mark to the string. -- The matching of the mark to string is entirely technical, not something that Deloitte evaluate. -- It's not purely technical because the mark transmitted to them can be a visual symbol, under their standards, and they look to see if they can get text out -- According to Deloitte's answers to our questions, they do look to see if there's anything they can extract. -- Seems that there is no agreement on what the problem is. -- If I was not clear, the staff intention was to remind everyone of what the TMCH is supposed to be - a repository that does not engage in substantive examination of what is/is not a TM; and a repository that is capable of accepting verified marks from all jurisdictions. - Staff also reminded the WG that there is no universally-accepted, single definition of what is a “word mark”. Even if multiple jurisdictions end up in the same place about specific words as TMs, the specific tests, definitions and approach may well be different. -- That’s one of the things I disagree with. You have not identified any area in which those differently worded definitions disagree on the result. -- How can you say they do not? You would just be guessing as well.  -- Although Deloitte do make this assessment based on what is in the certificate. -- Thought we had previously identified that under some definitions of "word mark" this would include marks that contain words and also design elements?  -- Decide to draw a line under the discussion that there are two proposals for inclusion in the Initial Report for public comment. Question 8: Updated open TMCH questions doc that contains the new proposals from Kathy and Claudio for Q8: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit Compromise proposal from Claudio: 1) Going forward, GI may be accepted in the Clearinghouse (and recorded separately as such within the database to distinguish them from TM records) under "3.2.4 - other marks that constitute intellectual property" OR shall be permitted to be recorded in one ancillary GI database, e.g. "the unitary, ancillary GI Database", that all registries/registrars may voluntarily connect with; 2) GIs shall NOT be protected during the Sunrise or TM Claims period, unless they are also registered as trademarks and otherwise meet the qualifying criteria for such trademarks; 3) the protection of GIs (those that are not also registered as trademarks) shall NOT be considered a mandatory RPM for any new gTLD registry; 4) for new gTLD registries that desire or choose to protect GIs (as permitted by the current rules) based on local laws and/or for other consumer protection reasons, GIs may be protected and registered as domain names during the Limited Registration Period, and/or by the issuance of a GI Claims Notice, and which shall be supported by the unitary, ancillary GI database. -- Why put these in the TMCH if they won’t get Sunrise or Claims RPMs? -- Don’t think we should try to define GIs. It is out of scope. Ancillary databases can use whatever definition that they want. -- The closest internationally-accepted definition of GI may be that of the WTO: ““Indications which identify a good as originating in the territory of a [WTO] Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. (Article 22, TRIPs.) -- Key difference from Kathy and Paul’s proposals is that it doesn’t address the issue of Deloitte including marks based on statue or treaty. -- Point of this proposal is to have a unified ancillary database under the TMCH, as opposed to each Registry having separate ancillary databases. -- Unless I'm mistaken, no ICANN rule or part of the contract prohibits that--so why would we need to intervene and wouldn't we need to change the contract to *mandate* it be done? -- So basically Claudio is saying: have a single centralized database specifically for GIs, but separate from the TMCH, where GIs accepted into that separate centralized ancillary database could be integrated voluntarily by registries who wish to provide a special registration period specifically for GIs, which would be subsidiary to Sunrise. -- Either there's a market for it and Deloitte can develop it (and others can compete with Deloitte to provide it) or there's not and we would have to mandate it. -- If these are not marks that get access to Sunrise and Claims, then what criteria would Deloitte utilize to determine if they should be accepted for limited registration purposes? Kathy’s suggested language: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) -- FYI, ancillary services offered by Deloitte have to be approved by ICANN Org. Currently, these are the extended claims service and the T-Rex service. I believe these services are available to TMCH-verified marks that are contained in an ancillary database.  -- 89 class registrations are not marks at all. They are there to let TM examiners know that they can’t -- US class 89: nonregistration data entered into b/c of statute, treaty, or other obligations. -- QUESTION: Who will determine whether the word is protected by a ;articular treaty “as a trademark”?  (thinking of Red Cross, for instance - it’s protected by the Conventions but none of them say it’s a trademark specifically) -- The problem seems to be that Deloitte simply looks at the statute/treaty - doesn’t take the additional step of analyzing whether that statute/treaty considers the entry a “trademark”. -- Concern about including the language in 3.2.3 “as trademarks” since they would be then included in 3.2.1 if they are trademarks. -- Agree, 3.2.3 already states "word marks" seems redundant/duplicative and potentially confusing to then add "as trademarks" and then add the further proposed definition of this. -- It doesn't have to be what the treaty says; it's eligible because of the statute. -- Who will make that conclusion?  -- Point was that the amendment causes uncertainty for the treaty/statute marks that we all agree this provision is intended to cover. -- We have a couple of possibilities on the table: (1) right now Deloitte takes everything, including GIs. (2) We can specify what trademarks are. (3) We can tell Deloitte to figure it out, which probably gets us back to (1). -- We don't all agree on GIs. -- Happy to have a group set up to take on the task of considering whether and how GIs are protected in gTLDs. But that’s a significant task.  -- GIs are not marks, and therefore cannot come in under 3.2.4. GIs are only marks when recognized as such. -- But right now Deloitte also offers Claims/Notice for 3.2.4 and does not put other IP into an ancillary database, according to its own representations. -- For Q8: is there any coalescence over its scope being limited to marks (not otherwise eligible under 3.2.1) that are nevertheless protected under a statute or treaty as a sign that functions as a trademark/source identifier? -- 3.2.4 is strictly applicable to those marks for which ROs have requirements and requested service from Deloitte. As staff mentioned last week, the language of this section may need to be tightened to reflect this. -- Propose a recommendation that the WG recommends that a Working Group be initiated to examine the issue of potential protections for GIs in gTLDs. -- Given the rather broad agreement that Deloitte's current practice goes beyond AGB rules, can we get agreement on a proposal to put out for comment? We can adjust it down the road based upon public comment. -- staff tried to summarize in a comment upthread - is there any coalescence over its scope being limited to marks (not otherwise eligible under 3.2.1) that are nevertheless protected under a statute or treaty as a sign that functions as a trademark/source identifier? -- Does the WG believe there are any other marks/signs/emblems that function as TMs, and hence should be included, but that are NOT covered by 3.2.1 or 3.2.2? -- Don’t support eliminating 3.2.4. Probably need to expand the footnote in the current proposal from Kathy. -- From Griffin: So in terms of a policy fix to achieve that, it seems it would require a clarification to the interpretation of TMCH guidelines about accepting marks protected by statute or treaty to exclude GIs, but state that GIs could be submitted and accepted into the separate centralized ancillary database. Maybe 3.2.3 should be revised to: Any designations specified in and protected by statute or treaty in effect at the time the designation is submitted to the Clearinghouse for inclusion, where such designation is also the subject of a trademark registration. For any such designations not the subject of a trademark registration, such designations could be recorded.

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Q#8
by Kathy Kleiman Sept. 18, 2019

Sept. 18, 2019

All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty /as trademarks /[1]//in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property.[see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] /By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." / For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. //(Appropriate corresponding changes will be percolated across the /Trademark Clearinghouse/ Applicant Guidebook) ----------------- Best, Kathy

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Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
by Julie Hedlund Sept. 18, 2019

Sept. 18, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+R…. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel

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ICANN66 Prep Week Announcement
by Julie Hedlund Sept. 16, 2019

Sept. 16, 2019

Dear RPM PDP WG members, The following announcement may be of interest. Best regards, Julie Julie Hedlund, Policy Director Register for ICANN66 Prep Week Webinars LOS ANGELES – 16 September 2019 – Today, the Internet Corporation for Assigned Names and Numbers (ICANN) released the schedule for ICANN66 Prep Week, which features a series of seven webinars to prepare the community ahead of its Annual General Meeting in November. To attend any of the below webinars, please register here<http://go.icann.org/prepweeksignup> by 11 October to receive joining instructions. You may also submit questions during the registration process. All registered attendees will receive participation details days before the webinar dates. ICANN66 Prep Week Webinars Schedule Monday, 14 October 2019 16:00 UTC | Global Stakeholder Engagement (GSE) Update: What to Expect at ICANN66 Tuesday, 15 October 2019 16:00 UTC | ICANN66 Plenary Session: DNS Abuse 23:00 UTC | Pre-ICANN66 Contractual Compliance Update Wednesday, 16 October 2019 16:00 UTC | ICANN66 Plenary Session: Evolution of ICANN's Multistakeholder Model 23:00 UTC | Multistakeholder Strategy and Strategic Initiatives (MSSI) Update Thursday, 17 October 2019 12:00 UTC | Generic Names Supporting Organization (GNSO) Policy Update 16:00 UTC | Pre-ICANN66 Policy Update All webinars be in English. Materials from the Pre-ICANN66 Policy Update will also be available in French. Recordings and materials will be posted here<https://meetings.icann.org/en/montreal66-prep-week>. Prep Week was established to help streamline the pre-meeting experience, as well as increase awareness of plenary topics, foster deeper conversations and enhance briefings and readout sessions.

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Re; Updated Proposal re TMCH/Design Marks
by Zak Muscovitch Sept. 12, 2019

Sept. 12, 2019

Dear Co-chairs, Staff and WG members, please see below a revised proposal regarding Question #7 (TMCH/Design Marks): 1. As per Greg's proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. 1. As per Greg's proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH. 1. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. 1. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. 1. Design marks consisting of a single letter, e.g. a stylized or graphical "i", whether disclaimed or not, do not go into the TMCH. This proposal has been circulated amongst some stakeholders for feedback (with mixed results), however I am now sharing it with the entire Working Group. Zak Muscovitch General Counsel, ICA Muscovitch Law P.C. zak(a)muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of Zak Muscovitch Sent: September-04-19 1:07 PM To: Lori Schulman <lschulman(a)inta.org>; Corwin, Philip <pcorwin(a)verisign.com>; julie.hedlund(a)icann.org; gnso-rpm-wg(a)icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Attached is the redline version. Apologies for only sending it now. Zak Muscovitch Law P.C. zak(a)muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: Lori Schulman <lschulman(a)inta.org<mailto:lschulman@inta.org>> Sent: September-04-19 12:48 PM To: Corwin, Philip <pcorwin(a)verisign.com<mailto:pcorwin@verisign.com>>; Zak Muscovitch <zak(a)muscovitch.com<mailto:zak@muscovitch.com>>; julie.hedlund(a)icann.org<mailto:julie.hedlund@icann.org>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Hi, Support Phil's suggestion and a post call redline per my earlier message. Thank you. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: Corwin, Philip <pcorwin(a)verisign.com<mailto:pcorwin@verisign.com>> Sent: Wednesday, September 04, 2019 12:39 PM To: zak(a)muscovitch.com<mailto:zak@muscovitch.com>; Lori Schulman <lschulman(a)inta.org<mailto:lschulman@inta.org>>; julie.hedlund(a)icann.org<mailto:julie.hedlund@icann.org>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Zak: As we reviewed all the proposals last week, I would suggest that you focus in your presentation on what changes you and Kathy have made to the original and the rationale for doing so. Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org><mailto:gnso-rpm-wg-bounces@icann.org%3e> On Behalf Of Zak Muscovitch Sent: Wednesday, September 04, 2019 12:36 PM To: Lori Schulman <lschulman(a)inta.org><mailto:lschulman@inta.org%3e>; Julie Hedlund <julie.hedlund(a)icann.org><mailto:julie.hedlund@icann.org%3e>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Lori, I'm trying to get one together, not sure I will be able to unfortunately. Muscovitch Law P.C. zak(a)muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: Lori Schulman <lschulman(a)inta.org><mailto:lschulman@inta.org%3e> Sent: September-04-19 12:08 PM To: Zak Muscovitch <zak(a)muscovitch.com><mailto:zak@muscovitch.com%3e>; Julie Hedlund <julie.hedlund(a)icann.org><mailto:julie.hedlund@icann.org%3e>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Hi, Thank you for this. As this is so close to the call, do you have a redline so we can compare the changes quickly? It would be most helpful to be prepared on a quick notice. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org><mailto:gnso-rpm-wg-bounces@icann.org%3e> On Behalf Of Zak Muscovitch Sent: Wednesday, September 04, 2019 11:45 AM To: Julie Hedlund <julie.hedlund(a)icann.org><mailto:julie.hedlund@icann.org%3e>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Dear Co-Chairs, Working Group Members, and Staff, Further to the call last week and further to the below Agenda for today's call, please see the attached updated proposal re: Question #7, from Kathy Kleiman and myself. You will note therein, that the revised proposal contains some revised language, some revised rationale, and a potential alternative to the existing rule for discussion purposes. Zak Muscovitch General Counsel, ICA Muscovitch Law P.C. zak(a)muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org><mailto:gnso-rpm-wg-bounces@icann.org%3e> On Behalf Of Julie Hedlund Sent: September-03-19 1:02 PM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Dear RPM WG members, Please find the agenda and materials for the WG meeting tomorrow, Wednesday, 04 September at 17:00-18:30 UTC. Please note the following actions captured from last week's meeting and sent to the list last week: Actions: 1. Revision of Existing Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members who had previously submitted proposals relating to the Open TMCH Questions (see attached) may offer revised proposals that take into consideration the work completed by the WG since the proposals were originally submitted. 2. New Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members may submit new proposals relating to Charter questions 7, 8, and 10. Please send suggested revisions or new proposals by COB today, 03 September, if at all possible. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 - Proposals from Kathy Kleiman and Greg Shatan * Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi * If Time Permits: Question 10 - Proposal from Michael Graham 3. AOB Best Regards, Mary, Julie, Ariel

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Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Wednesday, 11 September 2019 at 17:00 UTC
by Julie Bisland Sept. 11, 2019

Sept. 11, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Wednesday, 11 September 2019 at 17:00 UTC can be found on the agenda wiki page<https://community.icann.org/x/KoICBw> (attendance included) and the GNSO Master calendar <https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> . These include: * Attendance (please let me know if your name has been left off the attendance list) * Audio recording * Zoom chat archive * Zoom recording (including audio, visual, rough transcript) * Transcript As a reminder only members can join the call, observers can listen to the recordings and read the transcript afterwards. Please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> if you would like to change your status from observer to member. For additional information, you may consult the mailing list archives <http://mm.icann.org/pipermail/gnso-rpm-wg/> and the main wiki page<https://community.icann.org/x/wCWAAw>. Thank you. With kind regards, Julie

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Actions & Notes: RPM PDP WG Meeting 11 September 2019
by Julie Hedlund Sept. 11, 2019

Sept. 11, 2019

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 11 September 2019 at 17:00 UTC. Staff have posted these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached document and proposals on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki link above). Notes: Open Charter Question 8: -- Clarify what is meant by TMs protected by statutes or treaties – not meant to include non-TMs. -- 3.2.3: Any word mark [specified as protected]... -- 3.2.4: Other marks that constituted intellectual property. -- See proposal from Rebecca Tushnet: The Trademark Clearinghouse is for trademarks. The current categories in the AGB of "Marks protected by statute or treaty" and "other IP" (3.2.3 and 3.2.4) should both be replaced by the single concept of "word marks protected as trademarks by statute or treaty specifying the marks at issue." The three categories of eligible trademarks for the TMCH would then be marks protected by a national registration, marks confirmed by a court decision, and marks recognized as trademarks by statute or treaty (e.g., the Olympic marks, 36 U.S.C. §380, Use of Olympic symbols, emblems, trademarks and names). -- If a Registry Operator wants to protect intellectual property it can do so under 3.2.4, but if not how else? -- Amend to “Any word mark set forth in a statute or treaty and protected as a mark, trademark, service mark...by a statute or treaty...” and delete 3.2.4. -- QUESTION from staff: it likely makes a difference in scope whether the WG agrees to use “mark” or “trademark” for what is within scope of 3.2.3., i.e. all “trademarks” are likely “marks”, but not all marks are trademarks. -- If the statute treats you as a trademark you should be in the TMCH, if not then not. -- Could change 3.2.4 to reference “trademark” instead of “marks”. -- On 3.2.4 - it is supposed to cover other intellectual property protected by arrangement with a registry, under that registry’s rules and requirements. -- “mark” was used in 3.2.4 was used to avoid confusion. The intention in the practice in AGB and implemented by Deloitte, are marks protected by a Registry for its rules, but only pertain to that Registry. It is not meant to be a broad category of anything that could be a mark. -- It seems to staff that basically the WG is converging on the concept that “word marks protected by statute or treaty” should be limited to those marks that are protected as the functional & substantive equivalent of trademarks. -- But staff are concerned about specifying that the actual statute/treaty must either name the mark(s) and/or contain an actual list of the marks, as that may exclude a lot of “marks” that have that function and protection. -- Concern that the staff comment above would put statute or treaty marks on parallel with trademarks. -- Could say “trademark” “service marks” “certification marks” and “collective marks”. -- Listing or specifying marks will likely exclude Paul Tattersfield’s suggestion of Article 6ter, some Red Cross names, etc. -- As follow up, the staff comments above really went to our earlier point about “mark” vs “trademark”. The examples we gave could arguably be “marks” but perhaps not “trademarks”. -- Registry uses of ancillary databases – such as book titles – what a Registry is allowed to do under its contract. Allow them to protect different forms of source identifiers. Don’t agree on how that should happen. The ancillary database would be a way to do it, with the limited registration period after the Sunrise period. -- Ancillary databases are not in the TMCH, but are services provided by the TMCH. -- Everything in the TMCH gets Sunrise and notices, so we should separate out those that shouldn’t – such as 3.2.4. -- Look at AGB in 7.0, 7.1, and 7.2 – everyone is maybe talking about best practices. Maybe a good idea that ancillary marks should be in a separate database. Open Charter Question 7: We have had some side line conversations regarding the proposal below. I informed Zak separately and wish to convey that this is where the IPC currently stands: 1. As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. – IPC agrees. 2. As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH. – IPC agrees. 3. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. – The IPC disagrees as this would undermine the purpose of registering with the TMCH to begin with. 4. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. – The IPC is willing to discuss this proposal. We agree in principle that language that is not well understood or could frighten an unsophisticated applicant should be revised. However, the notice should not be providing legal advice or any advice about effects of certain types of trademark registrations. 5. Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. – The IPC does not agree as this outcome is contrary to trademark law. In general, it appears that Greg’s proposal addresses 3 and 5. To what degree to people object? We see the proposal as creating a solution for a small problem with significant, unintended consequences. There are objections procedures for domains registered during Sunrise period and we believe that these procedures should be highlighted as remedy for the concerns that registrant’s have regarding this issue. Discussion: -- Could include Greg’s proposal of eliminating design marks that have disclaimers and include those that have partial disclaimers. -- With respect to #3 – it is interesting if there was some clearer names that could give a right to claims but not to Sunrise, but IPC membership is concerned about how you draw that line. Comes back to what is or isn’t a design mark. -- In terms of #4 we were thinking that there could be compromise language, but not provide legal advice in a notice. -- In terms of #5, many IPC members agreed that these are TM registrations and should be in the TMCH. -- Design Mark/Word Mark is a false binary. -- Could have a compromise if we can figure out how to split Sunrise and Claims. Sunrise can do some additional examination, we should leverage that. -- If it is a clear situation – talking about predominantly the mark is a word, then we are closer to compromise. The concern is not to expand rights beyond what they are given under the law. -- Be aware of the practical impact of a registrant getting a notice and the possible chilling effect. -- On Sunrise, getting that pre-emptive right that is expansive if you don’t have that clear right – such as in a heavy design mark, although unclear who would make that determination.

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Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks
by Paul Keating Sept. 11, 2019

Sept. 11, 2019

Comments in line below. From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> on behalf of Lori Schulman <lschulman(a)inta.org> Date: Wednesday, September 11, 2019 at 6:07 PM To: Zak Muscovitch <zak(a)muscovitch.com>, "julie.hedlund(a)icann.org" <julie.hedlund(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks Dear All, We have had some side line conversations regarding the proposal below. I informed Zak separately and wish to conveny that this is where the IPC currently stands: 1. As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. – IPC agrees. 2. As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH. – IPC agrees. 3. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. – The IPC disagrees as this would undermine the purpose of registering with the TMCH to begin with. PRK: This appears to have been suggested as a compromise as I understand that the current rules prohibit the registration of such marks. As such, and if my understanding is correct as noted, then absent the compromise I would seek to support the current rules and remove any improperly included marks. 4. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. – The IPC is willing to discuss this proposal. We agree in principle that language that is not well understood or could frighten an unsophisticated applicant should be revised. However, the notice should not be providing legal advice or any advice about effects of certain types of trademark registrations. PRK: I agree that the notice should not provide legal advice. To that end, it is consistent that it not be read to over legitimize the validity of the asserted trademark. It should only state it has been registered and state the jurisdiction of registration. 5. Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. – The IPC does not agree as this outcome is contrary to trademark law. In general, it appears that Greg’s proposal addresses 3 and 5. To what degree to people object? We see the proposal as creating a solution for a small problem with significant, unintended consequences. There are objections procedures for domains registered during Sunrise period and we believe that these procedures should be highlighted as remedy for the concerns that registrant’s have regarding this issue. Thank you for opening the dialog and we look forward to more discussion where we can find compromise. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 10, 2019 1:36 PM To: Zak Muscovitch <zak(a)muscovitch.com>; julie.hedlund(a)icann.org; gnso-rpm-wg(a)icann.org Subject: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks Dear Co-chairs, Staff and WG members, please see below a revised proposal regarding Question #7 (TMCH/Design Marks): 1. As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. 2. As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH. 3. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. 4. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. 5. Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. This proposal has been circulated amongst some stakeholders for feedback (with mixed results), however I am now sharing it with the entire Working Group. Zak Muscovitch General Counsel, ICA Muscovitch Law P.C. zak(a)muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of Zak Muscovitch Sent: September-04-19 1:07 PM To: Lori Schulman <lschulman(a)inta.org>; Corwin, Philip <pcorwin(a)verisign.com>; julie.hedlund(a)icann.org; gnso-rpm-wg(a)icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Attached is the redline version. Apologies for only sending it now. Zak Muscovitch Law P.C. zak(a)muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: Lori Schulman <lschulman(a)inta.org> Sent: September-04-19 12:48 PM To: Corwin, Philip <pcorwin(a)verisign.com>; Zak Muscovitch <zak(a)muscovitch.com>; julie.hedlund(a)icann.org; gnso-rpm-wg(a)icann.org Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Hi, Support Phil’s suggestion and a post call redline per my earlier message. Thank you. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: Corwin, Philip <pcorwin(a)verisign.com> Sent: Wednesday, September 04, 2019 12:39 PM To: zak(a)muscovitch.com; Lori Schulman <lschulman(a)inta.org>; julie.hedlund(a)icann.org; gnso-rpm-wg(a)icann.org Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Zak: As we reviewed all the proposals last week, I would suggest that you focus in your presentation on what changes you and Kathy have made to the original and the rationale for doing so. Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of Zak Muscovitch Sent: Wednesday, September 04, 2019 12:36 PM To: Lori Schulman <lschulman(a)inta.org>; Julie Hedlund <julie.hedlund(a)icann.org>; gnso-rpm-wg(a)icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Lori, I'm trying to get one together, not sure I will be able to unfortunately. Muscovitch Law P.C. zak(a)muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: Lori Schulman <lschulman(a)inta.org> Sent: September-04-19 12:08 PM To: Zak Muscovitch <zak(a)muscovitch.com>; Julie Hedlund <julie.hedlund(a)icann.org>; gnso-rpm-wg(a)icann.org Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Hi, Thank you for this. As this is so close to the call, do you have a redline so we can compare the changes quickly? It would be most helpful to be prepared on a quick notice. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of Zak Muscovitch Sent: Wednesday, September 04, 2019 11:45 AM To: Julie Hedlund <julie.hedlund(a)icann.org>; gnso-rpm-wg(a)icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Dear Co-Chairs, Working Group Members, and Staff, Further to the call last week and further to the below Agenda for today's call, please see the attached updated proposal re: Question #7, from Kathy Kleiman and myself. You will note therein, that the revised proposal contains some revised language, some revised rationale, and a potential alternative to the existing rule for discussion purposes. Zak Muscovitch General Counsel, ICA Muscovitch Law P.C. zak(a)muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of Julie Hedlund Sent: September-03-19 1:02 PM To: gnso-rpm-wg(a)icann.org Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Dear RPM WG members, Please find the agenda and materials for the WG meeting tomorrow, Wednesday, 04 September at 17:00-18:30 UTC. Please note the following actions captured from last week's meeting and sent to the list last week: Actions: 1. Revision of Existing Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members who had previously submitted proposals relating to the Open TMCH Questions (see attached) may offer revised proposals that take into consideration the work completed by the WG since the proposals were originally submitted. 2. New Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members may submit new proposals relating to Charter questions 7, 8, and 10. Please send suggested revisions or new proposals by COB today, 03 September, if at all possible. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 - Proposals from Kathy Kleiman and Greg Shatan * Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi * If Time Permits: Question 10 - Proposal from Michael Graham 3. AOB Best Regards, Mary, Julie, Ariel _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos) You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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Proposed Agenda for RPM Meeting on 11 September 17:00-18:30 UTC
by Julie Hedlund Sept. 6, 2019

Sept. 6, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 11 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 04 September: Actions: Revision of Existing Proposals for Question 7: For consideration at the meeting on Wednesday, 11 September -- Kathy Kleiman, Zak Muscovitch, and Greg Shatan will consider whether to produce a combined revised version of their respective proposals (see attached revised proposal provided by Kathy and Zak, and the original proposals provided by Kathy and Greg). Proponents are requested to provide any revised proposals, either for Question 7 or Question 8, not later than end of the day on Monday, 09 September. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Possible Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel

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AGB TRADEMARK CLEARINGHOUSE 3.2 v 7.0
by Paul Tattersfield Sept. 4, 2019

Sept. 4, 2019

Isn’t it simply parts of 3.2 are poorly drafted and only for the “inclusion” of marks into the TMCH whereas the actual RPMs to be afforded are more precisely* drafted in 7? * 7.* *PROTECTION FOR MARKS IN CLEARINGHOUSE *The scope of registered marks that must be honored by registries in providing Trademarks Claims services is broader than those that must be honored by registries in Sunrise services. 7.1 For Trademark Claims services - Registries must recognize and honor all word marks that have been or are: (i) nationally or regionally registered; (ii) court-validated; or (iii) specifically protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. No demonstration of use is required. 7.2 For Sunrise services - Registries must recognize and honor all word marks: (i) nationally or regionally registered and for which proof of use – which can be a declaration and a single specimen of current use – was submitted to, and validated by, the Trademark Clearinghouse; or (ii) that have been court-validated; or (iii) that are specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008. [AGB Version 2012-06-04] *Though it would seem the word “registered” should be omitted from the first sentence in 7 unless it means registered with the TMCH

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