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REMINDER/INVITATION TO OBSERVERS: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 13 December 2017 at 18:00 UTC
by Mary Wong Dec. 13, 2017

Dec. 13, 2017

Hello all, Just a reminder that for the Working Group call today, Working Group Observers are welcome to attend. The call will focus on the URS Rules that apply to every URS proceeding, and we will be joined by guest speakers Doug Isenberg and John Berryhill, who will share their experiences with URS proceedings with the group. Here again is the link to the ICANN60 session where an overview of the URS Procedure was presented and discussed: https://schedule.icann.org/event/CbIa/gnso-review-of-all-rights-protection-…. The URS overview slides as well as a recording and transcript of the session can be found on the page. For those who are not familiar with the URS, the ICANN60 slides should be seen as a framework for the presentation and discussion today, since the URS Procedure sets out the substantive rules and the URS Rules that will be presented today describe the specific procedural rules to be followed for each URS case. Thanks and cheers Mary, Julie, Ariel and Berry From: ntfy-gnso-rpm-wg <ntfy-gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Bisland <julie.bisland(a)icann.org> Date: Tuesday, December 12, 2017 at 08:10 To: "ntfy-gnso-rpm-wg(a)icann.org" <ntfy-gnso-rpm-wg(a)icann.org> Cc: "gnso-secs(a)icann.org" <gnso-secs(a)icann.org> Subject: [ntfy-gnso-rpm-wg] **REMINDER*** Meeting Invitation: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 13 December 2017 at 18:00 UTC Dear All, The call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 13 December 2017 at 18:00 UTC for 90 minutes. 10:00 PST, 13:00 EST, 18:00 London GMT, Paris 19:00 CET For other times: https://tinyurl.com/y7xsz4we[tinyurl.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__tinyurl.com_y7xsz4we&d…> Please confirm your apology or dial-out requests to GNSO Secretariats gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> Adobe Connect LINK WITH AUDIO enabled: https://participate.icann.org/gnso-rpm For those of you using the Adobe Connect audio, you may do so by activating your computer microphone via the Adobe room (Using a headset is preferable here). Make sure your speakers and microphone are not on mute. - Select the TELEPHONE ICON at the top of the AC toolbar and choose CONNECT MY AUDIO (only option). - Select USING COMPUTER twice - Select ALLOW access to the ICANN Adobe room - the TELEPHONE ICON at the top of the toolbar should then have changed into a MICROPHONE ICON - You may click on this MICROPHONE ICON to mute yourself (Icon will then have a line through it) and to unmute yourself (Line disappears) Participants must ALWAYS have their microphone or telephone on MUTE as default setting. You are requested to RAISE YOUR HAND if you wish to participate to avoid disruption. Dial-in details are below. Participant passcode: RPM MEMBER For security reasons, the passcode will be required to join the conference. Dial in numbers: Country Toll Numbers Freephone/ Toll Free Number ARGENTINA 0800-777-0519 AUSTRALIA ADELAIDE: 61-8-8121-4842 1-800-657-260 AUSTRALIA BRISBANE: 61-7-3102-0944 1-800-657-260 AUSTRALIA CANBERRA: 61-2-6100-1944 1-800-657-260 AUSTRALIA MELBOURNE: 61-3-9010-7713 1-800-657-260 AUSTRALIA PERTH: 61-8-9467-5223 1-800-657-260 AUSTRALIA SYDNEY: 61-2-8205-8129 1-800-657-260 AUSTRIA 43-1-92-81-113 0800-005-259 BELGIUM 32-2-400-9861 0800-3-8795 BRAZIL RIO DE JANEIRO: 55-21-40421490 0800-7610651 BRAZIL SAO PAULO: 55-11-3958-0779 0800-7610651 CHILE 1230-020-2863 CHINA CHINA A: 86-400-810-4789 10800-712-1670 CHINA CHINA B: 86-400-810-4789 10800-120-1670 COLOMBIA 01800-9-156474 CROATIA 080-08-06-309 CZECH REPUBLIC 420-2-25-98-56-64 800-700-177 DENMARK 45-7014-0284 8088-8324 EGYPT 0800000-9029 ESTONIA 800-011-1093 FINLAND 358-9-5424-7162 0-800-9-14610 FRANCE LYON: 33-4-26-69-12-85 080-511-1496 FRANCE MARSEILLE: 33-4-86-06-00-85 080-511-1496 FRANCE PARIS: 33-1-70-70-60-72 080-511-1496 GERMANY 49-69-2222-20362 0800-664-4247 GREECE 30-80-1-100-0687 00800-12-7312 HONG KONG 852-3001-3863 800-962-856 HUNGARY 36-1-700-8856 06-800-12755 INDIA INDIA A: 000-800-852-1268 INDIA INDIA B: 000-800-001-6305 INDIA INDIA C: 1800-300-00491 INDONESIA 001-803-011-3982 IRELAND 353-1-246-7646 1800-992-368 ISRAEL 1-80-9216162 ITALY MILAN: 39-02-3600-6007 800-986-383 ITALY ROME: 39-06-8751-6018 800-986-383 ITALY TORINO: 39-011-510-0118 800-986-383 JAPAN OSAKA: 81-6-7878-2631 0066-33-132439 JAPAN TOKYO: 81-3-6868-2631 0066-33-132439 LATVIA 8000-3185 LUXEMBOURG 352-27-000-1364 8002-9246 MALAYSIA 1-800-81-3065 MEXICO GUADALAJARA (JAL): 52-33-3208-7310 001-866-376-9696 MEXICO MEXICO CITY: 52-55-5062-9110 001-866-376-9696 MEXICO MONTERREY: 52-81-2482-0610 001-866-376-9696 NETHERLANDS 31-20-718-8588 0800-023-4378 NEW ZEALAND 64-9-970-4771 0800-447-722 NORWAY 47-21-590-062 800-15157 PANAMA 011-001-800-5072065 PERU 0800-53713 PHILIPPINES 63-2-858-3716 1800-111-42453 POLAND 00-800-1212572 PORTUGAL 351-2-10054705 8008-14052 ROMANIA 40-31-630-01-79 RUSSIA 8-10-8002-0144011 SAUDI ARABIA 800-8-110087 SINGAPORE 65-6883-9230 800-120-4663 SLOVAK REPUBLIC 421-2-322-422-25 0800-002066 SOUTH AFRICA 080-09-80414 SOUTH KOREA 82-2-6744-1083 00798-14800-7352 SPAIN 34-91-414-25-33 800-300-053 SWEDEN 46-8-566-19-348 0200-884-622 SWITZERLAND 41-44-580-6398 0800-120-032 TAIWAN 886-2-2795-7379 00801-137-797 THAILAND 001-800-1206-66056 TURKEY 00-800-151-0516 UNITED ARAB EMIRATES 8000-35702370 UNITED KINGDOM BIRMINGHAM: 44-121-210-9025 0808-238-6029 UNITED KINGDOM GLASGOW: 44-141-202-3225 0808-238-6029 UNITED KINGDOM LEEDS: 44-113-301-2125 0808-238-6029 UNITED KINGDOM LONDON: 44-20-7108-6370 0808-238-6029 UNITED KINGDOM MANCHESTER: 44-161-601-1425 0808-238-6029 URUGUAY 000-413-598-3421 USA 1-517-345-9004 866-692-5726 VENEZUELA 0800-1-00-3702 VIETNAM 120-11751 Thank you. Kind regards, Julie

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Recordings, Attendance, & AC Chat for Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Wednesday, 6 December 2017 18:00 UTC
by Julie Bisland Dec. 6, 2017

Dec. 6, 2017

Dear all, Please find the attendance and AC Chat transcript of the call attached to this email. The MP3 and Adobe Connect recording are below for the Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call held Wednesday, 6 December 2017 at 18:00 UTC. Attendance and recordings of the call is posted on agenda wiki page: https://community.icann.org/x/pAxyB MP3: https://audio.icann.org/gnso/gnso-rpm-review-06dec17-en.mp3 Adobe Connect recording: https://participate.icann.org/p9242srluu6/<https://participate.icann.org/p9242srluu6/?OWASP_CSRFTOKEN=c5dc117acd7d7b4d…> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: https://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Main wiki page for the working group: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Julie Julie Bisland GNSO SO/AC Support coordinator Internet Corporation for Assigned Names and Numbers (ICANN) Email: julie.bisland(a)icann.org<mailto:julie.bisland@icann.org> Skype ID: 79613b691cb8a6c1 Find out more about the GNSO by taking our interactive courses</learn.icann.org/courses/gnso> and visiting the GNSO Newcomer pages<https://gnso.icann.org/sites/gnso.icann.org/files/gnso/presentations/policy…>

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Re: [gnso-rpm-wg] [Ext] RE: Action Items from 30 November Working Group Call
by Julie Hedlund Dec. 6, 2017

Dec. 6, 2017

Hi Susan, Thanks so much for catching that! I tried saving it again as a PDF, but it still comes out truncated; I’m not sure why. In any case, I’ve uploaded it as a Word document and it looks fine that way. I’ve also attached the file. Kind regards, Julie From: Susan Payne <susan.payne(a)valideus.com> Date: Friday, December 1, 2017 at 1:35 PM To: Julie Hedlund <julie.hedlund(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: Action Items from 30 November Working Group Call Hi Julie, thanks for these notes from the call. Regarding the revised table – there is a link here (https://community.icann.org/pages/viewpage.action?pageId=58729948) to a version of the table of 30 November, however only part of the table is displaying (I tried downloading too and it made no difference). Would you mind re-uploading please – assuming this is the revised table? Thanks Susan Susan Payne Head of Legal Policy | Valideus Ltd E: susan.payne(a)valideus.com D: +44 20 7421 8255 T: +44 20 7421 8299 M: +44 7971 661175 From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Julie Hedlund Sent: 30 November 2017 16:51 To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] Action Items from 30 November Working Group Call Dear all, The action items noted by staff from the Working Group call held on 30 November are as follows: Suggested Approach from the WG members on the call: To identify topics addressed by the Charter questions and capture high-level questions/data points for each topic. Suggested questions are: 1) Has it been used? 2) What was the original purpose and is it being fulfilled? 3) Bearing in mind the original purpose, have there been any unintended consequences? 4) What changes could better align the mechanism with the original purpose/facilitate it to carry out its purpose? 5) How many managed to prevail? Action Items: Develop a strawman of high-level questions and Charter question topics. (forthcoming) WG to provide comments/thoughts about the proposed approach. If the approach is agreed to, WG to analyze the topics addressed by the Charter questions against the high-level questions. Question 1: Should the ability for defaulting respondents in URS cases to file a reply for an extended period (e.g. up to one year) after the default notice, or even after a default determination is issued (in which case the complaint could be reviewed anew) be changed? Action Item: Staff to look up where the 1-year period for Question 1 originated. Question 2: Should the Response Fee applicable to complainants listing 15 or more disputed domain names by the same registrant be eliminated? Action Item: Staff to look up the origin of the response fee for 15 (and more) domains, and why 15 was chosen as a number. Revised Table: Action Item: Staff will post to the wiki space a revised version of the table with excerpts from the notes. Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best regards, Julie Julie Hedlund, Policy Director

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Proposed agenda for RPM Review Working Group call this week
by Mary Wong Dec. 5, 2017

Dec. 5, 2017

Dear all, The proposed agenda for our call this Wednesday, 6 December 2017, at 1800 UTC is below. Please note that the co-chairs have agreed that this is planned as a short call, and so we are not likely to need more than 60 minutes (if that). Proposed agenda: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Co-Chairs’ outline of proposed next steps and approach to URS review 3. Status update on data gathering refinement exercise from Data Sub Team and the procurement process from staff 4. Next steps/next meeting Thanks and cheers Mary

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FOR DISCUSSION: Co-Chairs' Statement & Suggestions on URS Review
by Mary Wong Dec. 4, 2017

Dec. 4, 2017

Dear all, Staff is sending this note on behalf of all three co-chairs of this Working Group. Please find attached, for Working Group discussion, a document from the co-chairs on particular aspects of the URS review that we are currently undertaking. As noted in the Action Items circulated earlier today, staff is preparing a document outlining a possible alternative approach to the URS review based on the proposal discussed on the Working Group call yesterday. It may be, therefore, that the specific questions outlined in the co-chairs’ document may need to be considered and approached differently. Nevertheless, the co-chairs wish to circulate the attached document so that the Working Group may review and discuss it. Thanks and cheers Mary, Julie, Ariel and Berry

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Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?
by George Kirikos Dec. 4, 2017

Dec. 4, 2017

Hi folks, There was a very interesting academic article mentioned last week on The TTABlog: http://thettablog.blogspot.ca/2017/11/profs-beebe-and-hemphill-scope-of.html from the New York University Law Review by Professors Beebe and Hemphill, "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017) [PDF with the full paper is linked to on the blog] which challenges conventional wisdom that underlies some of our own work. In their view, the scope of protection for the superstrong marks (e.g. the most famous ones, which tend to be the greatest beneficiaries of the RPMs created by ICANN, e.g. TMHC, URS, UDRP, etc.) should be **lower***, not higher. "n this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions." These fresh insights should be kept in mind as we do our work, particularly as they draw from cutting edge research and cases from outside the USA. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [gnso-rpm-wg] [Ext] RE: Draft suggested list of URS topics (re: Action Items from 30 November Working Group Call)
by Mary Wong Dec. 4, 2017

Dec. 4, 2017

Hello Susan and everyone, The staff understanding is what you described below - i.e. that specific issues and problems be identified as objectively as possible (hence the list of suggested topics), and a set of standard high-level questions be applied to each topic - however, we invite Heather (who suggested Q1-4), J. Scott (who chaired the call) and others who were on the call to clarify and/or amplify, as appropriate. For Q5, our recollection is that this was suggested during the call when the specific Charter question regarding the possibility of responding after the default period was being discussed. More specifically, the suggestion was about how many respondents managed to prevail after providing responses following the default period. We can amend Q5 to make it clearer – noting that for some of the identified topics, not all five questions will necessarily be applicable (at least, not in their original phrasing). I hope this is helpful. Cheers Mary From: Susan Payne <susan.payne(a)valideus.com> Date: Monday, December 4, 2017 at 12:48 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org>, Mary Wong <mary.wong(a)icann.org> Subject: [Ext] RE: Draft suggested list of URS topics (re: Action Items from 30 November Working Group Call) Thanks to Mary for circulating the strawman and detailed cross-referencing paper. I have reviewed the documents and the transcript from the 30 November call, but I want to be sure I understand what the intention is. Would you mind clarifying that my understanding of what is being proposed is correct? The strawman says “a majority of attendees supported the idea that, instead of a detailed list of refined Charter questions, a shorter list of specific topics (based on the existing Charter questions and any new suggestions adopted) should be developed”. Am I right in thinking, therefore, that: * The existing charter questions have been reviewed to identify the range of topics that they identify as needing review: Complaint, Response, Standard of Proof, etc * Each of these topics will then be addressed by considering the five high level questions “has it been used”, “what was the original purpose, have there been unintended consequences”, etc * Using this approach we will not need to go through each charter question and revise it for sense and neutrality; rather that by conducting the exercise set out in bullets 1 and 2 our consideration will effectively ensure that we address the charter question and other issues on that topic from a neutral standpoint. Is that correct? Regardless of the answer above, I am unclear what is intended by Q5 “How many managed to prevail”? Could you please clarify. Many thanks Susan Payne Head of Legal Policy | Valideus Ltd E: susan.payne(a)valideus.com<mailto:susan.payne@valideus.com> D: +44 20 7421 8255 T: +44 20 7421 8299 M: +44 7971 661175 From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 01 December 2017 18:47 To: gnso-rpm-wg(a)icann.org Subject: [gnso-rpm-wg] Draft suggested list of URS topics (re: Action Items from 30 November Working Group Call) Dear all, Please find attached: (1) a draft “strawman” list of topics for reviewing the URS, based on the first action item captured by staff from the last Working Group call (see below); and (2) an accompanying, more detailed table cross-referencing the list of suggested topics with their respective Charter questions and additional suggestions received to date. In accordance with the remainder of the action items from the call (see below), Working Group members are kindly invited to provide their feedback on the proposed approach to develop a list of URS review topics (action item #2), and review the draft list of suggested topics (action item #3). Staff would like to thank Heather Forrest, Council liaison from this Working Group, for her prompt review of an earlier version of the draft documents. Thanks and cheers Mary, Julie, Ariel and Berry From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund(a)icann.org<mailto:julie.hedlund@icann.org>> Date: Thursday, November 30, 2017 at 11:51 To: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [gnso-rpm-wg] Action Items from 30 November Working Group Call Dear all, The action items noted by staff from the Working Group call held on 30 November are as follows: Suggested Approach from the WG members on the call: To identify topics addressed by the Charter questions and capture high-level questions/data points for each topic. Suggested questions are: 1) Has it been used? 2) What was the original purpose and is it being fulfilled? 3) Bearing in mind the original purpose, have there been any unintended consequences? 4) What changes could better align the mechanism with the original purpose/facilitate it to carry out its purpose? 5) How many managed to prevail? Action Items: 1. Develop a strawman of high-level questions and Charter question topics. (forthcoming) 2. WG to provide comments/thoughts about the proposed approach. 3. If the approach is agreed to, WG to analyze the topics addressed by the Charter questions against the high-level questions. Question 1: Should the ability for defaulting respondents in URS cases to file a reply for an extended period (e.g. up to one year) after the default notice, or even after a default determination is issued (in which case the complaint could be reviewed anew) be changed? Action Item: Staff to look up where the 1-year period for Question 1 originated. Question 2: Should the Response Fee applicable to complainants listing 15 or more disputed domain names by the same registrant be eliminated? Action Item: Staff to look up the origin of the response fee for 15 (and more) domains, and why 15 was chosen as a number. Revised Table: Action Item: Staff will post to the wiki space a revised version of the table with excerpts from the notes. Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best regards, Julie Julie Hedlund, Policy Director

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Draft suggested list of URS topics (re: Action Items from 30 November Working Group Call)
by Mary Wong Dec. 4, 2017

Dec. 4, 2017

Dear all, Please find attached: (1) a draft “strawman” list of topics for reviewing the URS, based on the first action item captured by staff from the last Working Group call (see below); and (2) an accompanying, more detailed table cross-referencing the list of suggested topics with their respective Charter questions and additional suggestions received to date. In accordance with the remainder of the action items from the call (see below), Working Group members are kindly invited to provide their feedback on the proposed approach to develop a list of URS review topics (action item #2), and review the draft list of suggested topics (action item #3). Staff would like to thank Heather Forrest, Council liaison from this Working Group, for her prompt review of an earlier version of the draft documents. Thanks and cheers Mary, Julie, Ariel and Berry From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund <julie.hedlund(a)icann.org> Date: Thursday, November 30, 2017 at 11:51 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Action Items from 30 November Working Group Call Dear all, The action items noted by staff from the Working Group call held on 30 November are as follows: Suggested Approach from the WG members on the call: To identify topics addressed by the Charter questions and capture high-level questions/data points for each topic. Suggested questions are: 1) Has it been used? 2) What was the original purpose and is it being fulfilled? 3) Bearing in mind the original purpose, have there been any unintended consequences? 4) What changes could better align the mechanism with the original purpose/facilitate it to carry out its purpose? 5) How many managed to prevail? Action Items: 1. Develop a strawman of high-level questions and Charter question topics. (forthcoming) 2. WG to provide comments/thoughts about the proposed approach. 3. If the approach is agreed to, WG to analyze the topics addressed by the Charter questions against the high-level questions. Question 1: Should the ability for defaulting respondents in URS cases to file a reply for an extended period (e.g. up to one year) after the default notice, or even after a default determination is issued (in which case the complaint could be reviewed anew) be changed? Action Item: Staff to look up where the 1-year period for Question 1 originated. Question 2: Should the Response Fee applicable to complainants listing 15 or more disputed domain names by the same registrant be eliminated? Action Item: Staff to look up the origin of the response fee for 15 (and more) domains, and why 15 was chosen as a number. Revised Table: Action Item: Staff will post to the wiki space a revised version of the table with excerpts from the notes. Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best regards, Julie Julie Hedlund, Policy Director

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Action Items from 30 November Working Group Call
by Julie Hedlund Dec. 1, 2017

Dec. 1, 2017

Dear all, The action items noted by staff from the Working Group call held on 30 November are as follows: Suggested Approach from the WG members on the call: To identify topics addressed by the Charter questions and capture high-level questions/data points for each topic. Suggested questions are: 1) Has it been used? 2) What was the original purpose and is it being fulfilled? 3) Bearing in mind the original purpose, have there been any unintended consequences? 4) What changes could better align the mechanism with the original purpose/facilitate it to carry out its purpose? 5) How many managed to prevail? Action Items: Develop a strawman of high-level questions and Charter question topics. (forthcoming) WG to provide comments/thoughts about the proposed approach. If the approach is agreed to, WG to analyze the topics addressed by the Charter questions against the high-level questions. Question 1: Should the ability for defaulting respondents in URS cases to file a reply for an extended period (e.g. up to one year) after the default notice, or even after a default determination is issued (in which case the complaint could be reviewed anew) be changed? Action Item: Staff to look up where the 1-year period for Question 1 originated. Question 2: Should the Response Fee applicable to complainants listing 15 or more disputed domain names by the same registrant be eliminated? Action Item: Staff to look up the origin of the response fee for 15 (and more) domains, and why 15 was chosen as a number. Revised Table: Action Item: Staff will post to the wiki space a revised version of the table with excerpts from the notes. Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best regards, Julie Julie Hedlund, Policy Director

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Re: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?
by Cyntia King Nov. 30, 2017

Nov. 30, 2017

Hi George, Cool article!I don't believe it applies to the RPM WG, tho.The article is about confusion between similar, but REGISTERED (ie legal) trademarks.The RPMs focus on bad faith actors. The article supports TM owners acting legally, not bad actors.While interesting, this isn't really pertinent to us. Cyntia King -------- Original message -------- From: George Kirikos <icann(a)leap.com> Date: 11/30/17 10:03 (GMT-06:00) To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong? Hi folks, There was a very interesting academic article mentioned last week on The TTABlog: http://thettablog.blogspot.ca/2017/11/profs-beebe-and-hemphill-scope-of.html from the New York University Law Review by Professors Beebe and Hemphill, "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017) [PDF with the full paper is linked to on the blog] which challenges conventional wisdom that underlies some of our own work. In their view, the scope of protection for the superstrong marks (e.g. the most famous ones, which tend to be the greatest beneficiaries of the RPMs created by ICANN, e.g. TMHC, URS, UDRP, etc.) should be **lower***, not higher. "n this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions." These fresh insights should be kept in mind as we do our work, particularly as they draw from cutting edge research and cases from outside the USA. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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