- GNSO-RPM-WG - lists.icann.org

Agenda and documents for RPM Working Group call this Wednesday
by Mary Wong May 30, 2017

May 30, 2017

Dear all, The proposed agenda, and relevant accompanying documents, for the next Working Group call, scheduled for this coming Wednesday 31 May, is as follows: 1. Roll call/updates to Statements of Interest 2. Review/discussion of proposed refined Charter questions from Trademark Claims Sub Team (see attached document) 3. Review/discussion of proposed Private Protections questions from the WG co-chairs (see attached document) 4. Agree on next steps for open TMCH questions (design marks, GIs, expanding the identical match standard) – e.g. an online survey to poll WG members on the level of support for the various proposals put forward to date or other mechanism to gauge support? 5. Next steps/next meeting Thanks and cheers Mary

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Re: [gnso-rpm-wg] Data on non exact matches
by Winterfeldt, Brian J. May 23, 2017

May 23, 2017

Dear all: Here are a couple of important points to consider regarding false positives, which are largely a red herring in my opinion. First, any brand owner or representative that uses commercial watch services will tell you that false positives will always be present, no matter how good the algorithm used to flag matters of potential concern. Predicates for enforcement measures, including likelihood of confusion for infringement and bad faith for cybersquatting, are analyses that are necessarily made by trained professionals. Second, as was pointed out on our last call, expanded TMCH matches need not wildcard, or be compared against, the entire universe of possible terms (though that approach would certainly make sense for fanciful marks). For example, relevant terms could be taken from the goods and services listed in the TMCH record, or from a predetermined list of commonly abused terms like CAREERS, JOBS, and HOME etc. Thus, the system could be designed in a way such that there would be no false positives. Thank you, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP -----Original Message----- 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 icannlists Sent: Thursday, May 18, 2017 2:46 PM To: Rebecca Tushnet Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Data on non exact matches Rebecca, Apologies for copying the wrong list before. I've corrected it here. I agree wholeheartedly that we need to minimize false positives. I'm looking forward to rolling up our collective sleeves to find the right balance! Best, Paul Sent from my iPhone > On May 17, 2017, at 7:10 PM, Rebecca Tushnet <rlt26(a)georgetown.edu<mailto:rlt26@georgetown.edu>> wrote: > > My point was instead that even if the best data weren't collected there are proxies. And I wasn't talking about chilling effects, though those are relevant, but about false positives, which are detrimental to the system as a whole, including to legitimately sent notices. > > Sent from my phone. Apologies for terseness/typos. > >> On May 17, 2017, at 7:13 PM, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: >> >> Understood Rebecca, but we also can't just shrug off demonstrable harm to brands and their consumers just because we are data poor on the drive to identify a chilled would-be registrant. >> >> Even so, hopefully, Staff will respond soon so we can know for sure whether or not the data you are seeking was collected. >> >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >> Sent: Wednesday, May 17, 2017 5:13 PM >> To: icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> >> Subject: Re: [gnso-rpm-wg] Data on non exact matches >> >> As George has been saying, there are ways to estimate false positives using various datasets. We shouldn't go ahead considering only claims about benefits and just shrugging about costs and promising to look into them later; that seems contrary to the reasons exact match was adopted as the consensus at the outset. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >>> On Wed, May 17, 2017 at 6:09 PM, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: >>> Thanks Rebecca, >>> >>> The point I was trying to get at is that even if we are dataless on the false positives from Round 1 (harm to potentially chilled registrants) we aren't dataless on the harm to trademark owners and the consumers they protect. Say we pick a mark and add to it the product terms contained in its statement of services, we can then check that against the URS and UDRP records for new gTLDs to see if they would have triggered a claims notice. So that part, at least, is knowable (although quite the job for anyone trying to dig into the data). >>> >>> I'm looking forward to Staff's reply on whether or not there is a list of domain names abandoned after claims notice. I'm pretty sure the answer is "no" but let's be safe. If no, then we have to ask should we continue to allow the harms evidence by UDRP & URS decisions just because we forgot to collect data on abandonments following claims, or so we rely on the UDRP & URS analysis to say we need to enhance claims (and then collect the data in the second round to see if the enhanced claims need further tweaking either up or down). >>> >>> Hopefully, we will hear from Staff soon. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >>> Sent: Wednesday, May 17, 2017 5:01 PM >>> To: icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> >>> Subject: Re: [gnso-rpm-wg] Data on non exact matches >>> >>> Paul, I don't think that the idea that UDRP/URS decisions are relevant evidence is true across the board; even after excluding those with common-law rights only, we'd still have to look at which ones would have gotten a notice if the match process had been in place. >>> >>> Also, consumers have interests in the websites of legitimate registrants; consumer interests do not line up exactly with trademark owners' interests. >>> >>> Separately, the percentage of false positives is important to trademark owners too; if 80% of attempts trigger a match notice, that is likely to diminish the deterrent effect--the way we click through a number of other warnings that don't seem particularly targeted to our activity. >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>>> On Wed, May 17, 2017 at 5:48 PM, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: >>>> Thanks Rebecca. >>>> >>>> Staff, does the information that Rebecca is seeking in existence? I thought that there was no record of the specific domain names which were non-registered after receiving a notice of claim. >>>> >>>> Rebecca, I think your question has more to do with harm to potentially chilled registrants rather than harm to trademark owners/consumers, correct? Harm to trademark owners/consumers can be evidenced by UDRP/URS decisions for domain names that would fall into the next expanded category. Thanks in advance for your thoughts on that. >>>> >>>> Best, >>>> Paul >>>> >>>> >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet >>>> Sent: Wednesday, May 17, 2017 1:36 PM >>>> To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: [gnso-rpm-wg] Data on non exact matches >>>> >>>> Reposting per J. Scott's request on the call: >>>> >>>> In order to fully evaluate the proposal to extend the match criteria, we really need information on the harm it is supposed to address, including (1) the number of registration attempts that included but were not limited to the text of an entry in the TMCH and (2) the number of such registrations that led to a trademark owner challenge after the fact (therefore excluding URS actions against, for example, typosquatting). >>>> To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. >>>> >>>> >>>> >>>> >>>> Rebecca Tushnet >>>> Georgetown Law >>>> 703 593 6759 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o… >>>> >>>> ________________________________ >>>> The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o… __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.

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Information on GI protections
by Mary Wong May 22, 2017

May 22, 2017

In addition to the forthcoming work from OriGIn, and while the information below may now need to be updated, here are some compilations that may be of interest as well: · A 2007 survey done by the European Communities Trade Mark Association (ECTMA) of how geographic designations may be protected (including via trademark laws) in the various EU member states: · http://www.ecta.org/IMG/pdf/Annex_E_-_Survey_on_Trade_Mark_Issues_related_t… · A list of the treaties that the European Union has entered into with a number of individual countries covering geographical indications: · https://ec.europa.eu/agriculture/gi-international_en Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Massimo Vittori <Massimo(a)origin-gi.com> Date: Monday, May 22, 2017 at 10:36 To: Greg Shatan <gregshatanipc(a)gmail.com>, "J. Scott Evans" <jsevans(a)adobe.com>, Jonathan Agmon <jonathan.agmon(a)ip-law.legal> Cc: "Dorrain, Kristine via gnso-rpm-wg" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Greg, oriGIn worldwide compilations of all GIs recognised in the world will be finalized and available in October. I will see if I can give access to the compilation to the WG before its publication. I can already tell you that a majority of GIs recognised (at least 7.000 out of a total of 8.000) are registered under independent systems, often managed by the same authorities in charge of trademarks in their country. I hope this will help. But, as you said, we await the co-chairs to tell us how the Charter question on GIs will be handled. Best, Massimo From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: 20 May 2017 22:08 To: J. Scott Evans <jsevans(a)adobe.com>; Jonathan Agmon <jonathan.agmon(a)ip-law.legal> Cc: Dorrain, Kristine via gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 I agree with the clarification -- we're talking about registered GIs, but excluding trademarks. Unregistered GIs are not part of this discussion and neither are trademarks. In other words, we are discussing GIs that are registered in sui generis protection systems. I think we need to deal with GIs as a unique category of Intellectual Property and discuss protection of GIs on their own merits. (We can put aside registered trademarks that function as GIs, since those are already part of the TMCH, Sunrise and Claims.). We would need a greater depth of knowledge about how GIs are protected in those countries that protect GIs under a registration scheme (other than through the trademark laws). If anyone has a worldwide survey of protection of GIs on a national and multinational basis, that would be very helpful. My general understanding is that various jurisdictions protect GIs in widely differing ways -- some have GI registries (with differing criteria and differeng protections), some have statutes that protect specified GIs, some protect GIs through regulatory/administrative/trade-related means, some protect GIs only through "curative" means using litigation (which further breaks down to whether they use unfair competition or passing off theories or both), and some may not protect them at all. I'll let J. Scott speak for himself, but I think his point was that a significant level of international parity is a necessary foundation for us to create "ICANN-style" RPMs -- and the vastly differing variety of approaches to GI protections evidences a notable lack of international parity and consistency, which in turn raises concerns about the prudence of this WG creating RPMs for GIs. This does not need to be the last word on the subject, but it is a subject that will require truly significant debate and exploration. I think these are the reasons why J Scott suggested the approach summarized by Mary Wong in her recent email -- not to quash debate but to find the right forum for it. On a related note, when I think about what we would need to accomplish to do justice to the issues involving GIs, I do share Paul McGrady's concern that such an exploration would add a year to our work. My concern is that a subteam would have an extensive course of work, and that finding time in the work plan to do it would be extremely challenging. I don't think the subteam needs to exist now, since its scope does not overlap with the TMCH questions. The TMCH question that's relevant here is what is meant by "mark protected by statute or treaty" and that is one we should focus on now, through Paul and Kathy's proposals Now we do have a Charter question that touches on GIs, and we need to look at that Charter question in due course and decide how to respond to it. How and when we'll do that, I'll leave to the Co-Chairs. Greg On Fri, May 19, 2017 at 9:03 AM Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: I agree with your statement in general. I am not sure when it comes to protection of IP protected strings in the domain name system, international parity would provide a balance at the end of the day. This, because various countries have different forms of protection and would not necessarily agree with each other on how to protect some strings, even if they agree such forms of strings should be protected. Moreover, some in this space may abuse such lack of parity. I hope that the development of Policy in this WG would overcome such international lack of parity by agreeing on what should go in, even if some countries have disagreement about how to protect these strings. I hope we can agree that applying the above to GIs, the lack of international parity should not prevent the WG from agreeing that some strings should be recorded for sunrise claims purposes. If the first stage is passed, then we should look into the minimum requirements to allow them into a TMCH/Ancillary database which would allow owners to enjoy sunrise claims. Such requirements should in my view mandate registration in a national law provided for registry. I think Claudio’s proposal to have a sub-team review the various forms of registration/protection for GIs and recommend which ones should go into a database was proper to try and reach a clear and balanced solution for this type of strings. [id:image001.png@01D2D2E6.E81A6280] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal[ip-law.legal]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.ip-2Dlaw.legal&d=Dw…> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: J. Scott Evans [mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>] Sent: Friday, May 19, 2017 12:05 PM To: Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>>; Dorrain, Kristine <dorraink(a)amazon.com<mailto:dorraink@amazon.com>>; Dorrain, Kristine via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Mechanisms with international effect need international parity of rights to be balanced. There are many types of IP that are jurisdiction specific that are not included for that very reason. Sent from my iPhone On May 19, 2017, at 4:36 AM, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: To add to Claudio’s response as to Kristine’s question: “Is there a particular harm that you think companies with unregistered GIs face that other companies with other sorts of unregistered (or common law) marks aren’t facing?“ I agree and support that not everyone should get in and the idea is not to get everyone in, but to accommodate foreign (non-US in this case) registration systems. When it comes to GIs the US uses the trademark system to register GIs. In Europe, soon, you will not be able to register GIs as a trademark (Massimo can provide more details). In some countries, to register a GI you are required to use a special registry (see Brazil, India, Russia for example). Therefore, we should accommodate registered GIs, if they are registered eithet as trademarks or under ancillary or sui generis registries. There are other forms of non-registration schemes for GI protection, which I didn't address and would personally think they should be excluded. We can and should allow such strings protection when they are registered under national laws and according to the various systems available. I hope this answers the question more fully. Thanks, 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 claudio di gangi Sent: Thursday, May 18, 2017 11:20 PM To: Dorrain, Kristine <dorraink(a)amazon.com<mailto:dorraink@amazon.com>> Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Kristine, Thank you, I think these are great questions. I provided a response below for your consideration. Also, Jonathan and Massimo are extremely well-versed in GIs, and they may be able to address any gaps in my analysis. According to the TMCH Guidelines, http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/…<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> the following types of marks are eligible: (see p.7 of the TMCH Guidelines). "The following are not considered registered trademarks but might be eligible for inclusion in the Clearinghouse under another type of trademark: * Well-known or famous trademarks, unless they are also registered; * Unregistered (including common law) trademark; * Court-validated marks; * Marks protected under statute or treaty; * Other marks that constitute intellectual property" In the United States, GIs are protected as a type of trademark. Specifically, they are afforded protection as a "certification mark". Since the GI is registered as a "certification mark" in the U.S., the owner of the mark is not allowed to use it in commerce, but licenses the mark for use by producers and distributors. As a GI, the sign is used in commerce to certify that the goods associated with the mark originate in a particular location, and because of the characteristics of that location, the goods have a certain reputation for quality. As a certification mark, the mark can be recorded in the TMCH and is eligible for protection in both Sunrise and Claims. In other countries, GIs are protected based on national (or multi-national) laws that create a 'sui generis' system of protection for these types of signs. This is a special form of protection; "sui genris" from Latin, means "of its own kind". In these countries, GIs are registered on a separate registry within the trademark office. The fundamental issue is the following: What is the rationale for protecting GIs in new gTLDs, when the GI is registered as a "certification mark" in the United States, but it is denied protection when the GI is registered in another country under a national law specifically for these types of signs? The GI is serving the same commercial function (as described above) within the country, whether it is registered as a certification mark or registered on the GI registry. I hope you find this explanation helpful. Please let me know of any questions/comments. Best regards, Claudio <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On Thu, May 18, 2017 at 11:06 AM, Dorrain, Kristine <dorraink(a)amazon.com<mailto:dorraink@amazon.com>> wrote: Claudio, There are several types of rights not recorded in the TMCH. This was part of the balance that was stuck when the TMCH/Sunrise/Claims was formed. We don’t let in: common law marks, purely figurative marks, and non-registered GIs. The DB is for *registered* marks. Is there a particular harm that you think companies with unregistered GIs face that other companies with other sorts of unregistered (or common law) marks aren’t facing? Not everyone gets in. We know this. Anyone with an unregistered mark (GI or otherwise) can get in the TMCH by registering their mark. Can you help me understand why we need special rules for this particular class of mark? Thanks, Kristine Kristine Dorrain Corp Counsel – IP | Amazon | 206.740.9339 dorraink(a)amazon.com<mailto:dorraink@amazon.com> From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Wednesday, May 17, 2017 7:55 PM To: Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>>; Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Mary, Yes, this is very helpful. For clarification, an important element of the proposal was not to have GIs recorded in the TMCH per se. Rather, the proposal was to have a subteam consider whether the RPMs, as currently designed, afford protection to all GIs (as some GIs are not registered as TMs in certain jurisdictions), and if not, to consider changes to the RPMs to ensure protection for this type of IP. If the outcome of that analysis is yes - GIs as a form of IP should be protected in new gTLDs, then a subsequent issue to be determined is whether GIs should be recorded in the TMCH, or an ancillary database maintained by the operator of the TMCH, which is currently Deloitte. Deloitte is permitted to maintain an ancillary database under the current rules. So the issue is really about the RPMs and the protection of GIs (namely, those GIs that are not registered as trademarks, but are protected under national laws that do not require their registration on the trademark register). I hope this helps clarify. Please let me know if you have any questions. Thank you for your help. Best regards, Claudio On Wed, May 17, 2017 at 7:12 PM Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> wrote: Hello Claudio and everyone, In the case of this particular Action Item, the staff understanding is that we will ask the full Working Group (especially those members who could not attend the call held earlier today) if they agree that the Working Group will not be considering the question of whether GIs should be included in the TMCH. If that is the general view of the Working Group, then the next step can be for those in favor of including GIs in the TMCH to work on a proposal that can be sent to the GNSO Council in respect of source identifiers (such as GIs and other than as registered trademarks) that may be protectable but not necessarily intended to be covered by the current scope of the TMCH. This may take the form of a new PDP or possibly be a separate matter to be discussed at the appropriate time by this group. I hope this is helpful. Once the recording and transcript of the call today are available, staff will follow up with the Working Group to find out what the general view of the group is on this GI questions. Cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 18, 2017 at 00:38 To: Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Amr, all, I would like to request guidance on the last action item, #5... I'm confused why the Council would consider a PDP on the TMCH and a certain form of IP, when those issues are supposed to be addressed by this Working Group? Or was this action item intended to convey something different? Best regards, Claudio On Wed, May 17, 2017 at 4:25 PM Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>> wrote: Dear Working Group Members, Below are the action items from today’s Working Group call. They are also posted along with the notes, meeting documents/materials, attendance, recordings and transcripts on the meeting’s wiki page here: https://community.icann.org/x/egffAw[community.icann.org][na01.safelinks.pr…<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> Thanks. Amr Action Items: 1. Staff to circulate a call for consensus on the Working Group mailing list regarding the Working Group consideration of proposals to include Geographical Indications in the TMCH 2. Staff to consolidate resources of data/work available on consideration of non-exact matches generating Claims Notices, and share with the Working Group 3. Michael Graham to repost his proposal on trademark non-exact matches generating Claims Notices, with refinements based on discussions held to-date 4. Rebecca Tushnet to repost suggestions on data required to evaluate the proposal to extend the match criteria of permissible records in the TMCH (DONE) 5. Claudio Di Gangi, Jonathan Agmon and Massimo Vittori to consider drafting a proposal for the GNSO Council to consider a PDP on inclusion of Geographical Indications in the TMCH _______________________________________________ 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[na01.safelinks.protection…<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> _______________________________________________ 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 -- Greg Shatan C: 917-816-6428 S: gsshatan gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>

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Announcement: Pre-ICANN59 Policy Update Webinar Thursday, 15 June 2017 at 10:00 UTC and 19:00 UTC
by Terri Agnew May 22, 2017

May 22, 2017

https://www.icann.org/news/announcement-2017-05-22-en Please RSVP via <https://goo.gl/forms/LTVbnZ8zXIBp5fFm1> this form by 13 June 2017. You will receive remote participation details the week of 12 June 2017. The ICANN Policy Development Support Team will host a Policy Update Webinar on Thursday, 15 June 2017 at 10:00 and 19:00 Coordinated Universal Time (UTC), in preparation for the upcoming ICANN59 Policy Forum in Johannesburg, South Africa. The purpose of the webinar is to summarize policy activities across the ICANN policy development community and to brief the community on the Empowered Community consultation and cross-community sessions taking place in Johannesburg. Briefings on the Empowered Community Consultation and Cross-Community Sessions: * Special session on the Proposed Fundamental Bylaws Amendments * Next-Generation Generic Top-Level Domain (gTLD) Registration Directory Services (RDS) policy requirements * General Data Protection Regulation (GDPR) * Geographic names * Operational side of ICANN's Operating Plan and Budget * Who sets ICANN's priorities? Updates on Supporting Organizations and Advisory Committees: * Address Supporting Organization (ASO) and regional Internet registries (RIR) policy development * Country Code Names Supporting Organization (ccNSO) * Generic Names Supporting Organization (GNSO) * At-Large Advisory Committee (ALAC) and At-Large Community * Governmental Advisory Committee (GAC) * Root Server System Advisory Committee (RSSAC) * Security and Stability Advisory Committee (SSAC) The two sessions are duplicates, scheduled to accommodate different time zones. Each session runs in English for 90 minutes. The webinar will be conducted via Adobe Connect along with a dial-in conference bridge for audio. Participants will have the opportunity to ask questions at the end of each session. During the course of the webinar, participants may submit questions using the chat function in Adobe Connect. Recordings of the webinars will be made available <https://www.icann.org/resources/pages/presentations-2012-08-27-en> here. The Policy Development Support Team is always available to answer any questions via email at <mailto:policyinfo@icann.org> policyinfo(a)icann.org. Please RSVP via <https://goo.gl/forms/LTVbnZ8zXIBp5fFm1> this form by 13 June 2017. You will receive remote participation details the week of 12 June 2017. Ozan Sahin Community Engagement Support Coordinator Internet Corporation for Assigned Names and Numbers (ICANN) Direct Line: +90.212.999.6218 Mobile: +90.533.641.0007 Email: ozan.sahin(a)icann.org <mailto:ozan.sahin@icann.org> Skype: ozan.sahin.icann www.icann.org

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Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017
by Jonathan Agmon May 22, 2017

May 22, 2017

To add to Claudio’s response as to Kristine’s question: “Is there a particular harm that you think companies with unregistered GIs face that other companies with other sorts of unregistered (or common law) marks aren’t facing?“ I agree and support that not everyone should get in and the idea is not to get everyone in, but to accommodate foreign (non-US in this case) registration systems. When it comes to GIs the US uses the trademark system to register GIs. In Europe, soon, you will not be able to register GIs as a trademark (Massimo can provide more details). In some countries, to register a GI you are required to use a special registry (see Brazil, India, Russia for example). Therefore, we should accommodate registered GIs, if they are registered eithet as trademarks or under ancillary or sui generis registries. There are other forms of non-registration schemes for GI protection, which I didn't address and would personally think they should be excluded. We can and should allow such strings protection when they are registered under national laws and according to the various systems available. I hope this answers the question more fully. Thanks, From: gnso-rpm-wg-bounces(a)icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Thursday, May 18, 2017 11:20 PM To: Dorrain, Kristine <dorraink(a)amazon.com> Cc: gnso-rpm-wg(a)icann.org Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Kristine, Thank you, I think these are great questions. I provided a response below for your consideration. Also, Jonathan and Massimo are extremely well-versed in GIs, and they may be able to address any gaps in my analysis. According to the TMCH Guidelines, http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/… the following types of marks are eligible: (see p.7 of the TMCH Guidelines). "The following are not considered registered trademarks but might be eligible for inclusion in the Clearinghouse under another type of trademark: * Well-known or famous trademarks, unless they are also registered; * Unregistered (including common law) trademark; * Court-validated marks; * Marks protected under statute or treaty; * Other marks that constitute intellectual property" In the United States, GIs are protected as a type of trademark. Specifically, they are afforded protection as a "certification mark". Since the GI is registered as a "certification mark" in the U.S., the owner of the mark is not allowed to use it in commerce, but licenses the mark for use by producers and distributors. As a GI, the sign is used in commerce to certify that the goods associated with the mark originate in a particular location, and because of the characteristics of that location, the goods have a certain reputation for quality. As a certification mark, the mark can be recorded in the TMCH and is eligible for protection in both Sunrise and Claims. In other countries, GIs are protected based on national (or multi-national) laws that create a 'sui generis' system of protection for these types of signs. This is a special form of protection; "sui genris" from Latin, means "of its own kind". In these countries, GIs are registered on a separate registry within the trademark office. The fundamental issue is the following: What is the rationale for protecting GIs in new gTLDs, when the GI is registered as a "certification mark" in the United States, but it is denied protection when the GI is registered in another country under a national law specifically for these types of signs? The GI is serving the same commercial function (as described above) within the country, whether it is registered as a certification mark or registered on the GI registry. I hope you find this explanation helpful. Please let me know of any questions/comments. Best regards, Claudio [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On Thu, May 18, 2017 at 11:06 AM, Dorrain, Kristine <dorraink(a)amazon.com<mailto:dorraink@amazon.com>> wrote: Claudio, There are several types of rights not recorded in the TMCH. This was part of the balance that was stuck when the TMCH/Sunrise/Claims was formed. We don’t let in: common law marks, purely figurative marks, and non-registered GIs. The DB is for *registered* marks. Is there a particular harm that you think companies with unregistered GIs face that other companies with other sorts of unregistered (or common law) marks aren’t facing? Not everyone gets in. We know this. Anyone with an unregistered mark (GI or otherwise) can get in the TMCH by registering their mark. Can you help me understand why we need special rules for this particular class of mark? Thanks, Kristine Kristine Dorrain Corp Counsel – IP | Amazon | 206.740.9339 dorraink(a)amazon.com<mailto:dorraink@amazon.com> From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Wednesday, May 17, 2017 7:55 PM To: Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>>; Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Mary, Yes, this is very helpful. For clarification, an important element of the proposal was not to have GIs recorded in the TMCH per se. Rather, the proposal was to have a subteam consider whether the RPMs, as currently designed, afford protection to all GIs (as some GIs are not registered as TMs in certain jurisdictions), and if not, to consider changes to the RPMs to ensure protection for this type of IP. If the outcome of that analysis is yes - GIs as a form of IP should be protected in new gTLDs, then a subsequent issue to be determined is whether GIs should be recorded in the TMCH, or an ancillary database maintained by the operator of the TMCH, which is currently Deloitte. Deloitte is permitted to maintain an ancillary database under the current rules. So the issue is really about the RPMs and the protection of GIs (namely, those GIs that are not registered as trademarks, but are protected under national laws that do not require their registration on the trademark register). I hope this helps clarify. Please let me know if you have any questions. Thank you for your help. Best regards, Claudio On Wed, May 17, 2017 at 7:12 PM Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> wrote: Hello Claudio and everyone, In the case of this particular Action Item, the staff understanding is that we will ask the full Working Group (especially those members who could not attend the call held earlier today) if they agree that the Working Group will not be considering the question of whether GIs should be included in the TMCH. If that is the general view of the Working Group, then the next step can be for those in favor of including GIs in the TMCH to work on a proposal that can be sent to the GNSO Council in respect of source identifiers (such as GIs and other than as registered trademarks) that may be protectable but not necessarily intended to be covered by the current scope of the TMCH. This may take the form of a new PDP or possibly be a separate matter to be discussed at the appropriate time by this group. I hope this is helpful. Once the recording and transcript of the call today are available, staff will follow up with the Working Group to find out what the general view of the group is on this GI questions. Cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 18, 2017 at 00:38 To: Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>>, "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017 Amr, all, I would like to request guidance on the last action item, #5... I'm confused why the Council would consider a PDP on the TMCH and a certain form of IP, when those issues are supposed to be addressed by this Working Group? Or was this action item intended to convey something different? Best regards, Claudio On Wed, May 17, 2017 at 4:25 PM Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>> wrote: Dear Working Group Members, Below are the action items from today’s Working Group call. They are also posted along with the notes, meeting documents/materials, attendance, recordings and transcripts on the meeting’s wiki page here: https://community.icann.org/x/egffAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> Thanks. Amr Action Items: 1. Staff to circulate a call for consensus on the Working Group mailing list regarding the Working Group consideration of proposals to include Geographical Indications in the TMCH 2. Staff to consolidate resources of data/work available on consideration of non-exact matches generating Claims Notices, and share with the Working Group 3. Michael Graham to repost his proposal on trademark non-exact matches generating Claims Notices, with refinements based on discussions held to-date 4. Rebecca Tushnet to repost suggestions on data required to evaluate the proposal to extend the match criteria of permissible records in the TMCH (DONE) 5. Claudio Di Gangi, Jonathan Agmon and Massimo Vittori to consider drafting a proposal for the GNSO Council to consider a PDP on inclusion of Geographical Indications in the TMCH _______________________________________________ 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 ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************

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Re: [gnso-rpm-wg] Data on non exact matches
by icannlists May 20, 2017

May 20, 2017

Thanks Rebecca, The point I was trying to get at is that even if we are dataless on the false positives from Round 1 (harm to potentially chilled registrants) we aren't dataless on the harm to trademark owners and the consumers they protect. Say we pick a mark and add to it the product terms contained in its statement of services, we can then check that against the URS and UDRP records for new gTLDs to see if they would have triggered a claims notice. So that part, at least, is knowable (although quite the job for anyone trying to dig into the data). I'm looking forward to Staff's reply on whether or not there is a list of domain names abandoned after claims notice. I'm pretty sure the answer is "no" but let's be safe. If no, then we have to ask should we continue to allow the harms evidence by UDRP & URS decisions just because we forgot to collect data on abandonments following claims, or so we rely on the UDRP & URS analysis to say we need to enhance claims (and then collect the data in the second round to see if the enhanced claims need further tweaking either up or down). Hopefully, we will hear from Staff soon. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, May 17, 2017 5:01 PM To: icannlists <icannlists(a)winston.com> Subject: Re: [gnso-rpm-wg] Data on non exact matches Paul, I don't think that the idea that UDRP/URS decisions are relevant evidence is true across the board; even after excluding those with common-law rights only, we'd still have to look at which ones would have gotten a notice if the match process had been in place. Also, consumers have interests in the websites of legitimate registrants; consumer interests do not line up exactly with trademark owners' interests. Separately, the percentage of false positives is important to trademark owners too; if 80% of attempts trigger a match notice, that is likely to diminish the deterrent effect--the way we click through a number of other warnings that don't seem particularly targeted to our activity. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, May 17, 2017 at 5:48 PM, icannlists <icannlists(a)winston.com> wrote: > Thanks Rebecca. > > Staff, does the information that Rebecca is seeking in existence? I thought that there was no record of the specific domain names which were non-registered after receiving a notice of claim. > > Rebecca, I think your question has more to do with harm to potentially chilled registrants rather than harm to trademark owners/consumers, correct? Harm to trademark owners/consumers can be evidenced by UDRP/URS decisions for domain names that would fall into the next expanded category. Thanks in advance for your thoughts on that. > > Best, > Paul > > > > -----Original Message----- > From: gnso-rpm-wg-bounces(a)icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet > Sent: Wednesday, May 17, 2017 1:36 PM > To: gnso-rpm-wg(a)icann.org > Subject: [gnso-rpm-wg] Data on non exact matches > > Reposting per J. Scott's request on the call: > > In order to fully evaluate the proposal to extend the match criteria, we really need information on the harm it is supposed to address, including (1) the number of registration attempts that included but were not limited to the text of an entry in the TMCH and (2) the number of such registrations that led to a trademark owner challenge after the fact (therefore excluding URS actions against, for example, typosquatting). > To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. > > > > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ________________________________ > The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

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Re: [gnso-rpm-wg] [Ext] Re: Data on non exact matches
by Amr Elsadr May 19, 2017

May 19, 2017

Hi Paul, If you’re enquiring on access to the raw data that the AG used in its analysis, I’m afraid we do not have access to that right now. What we do have regarding Claims Notices is what is in the AG revised report; number of trademark records in the TMCH (total and verified) as of November 2016, and number of Claims Service data downloads (total and unique) between October 2013 and February 2016. The Trademark Claims Sub Team is now reviewing the data currently available, which may be relevant to answering each of the Charter questions it is looking at. Following this, the Sub Team will also identify what data is missing that may be helpful, and subsequently share its findings and recommendations with the broader Working Group for its own consideration. We will note both your question, as well as Paul McGrady’s, so that the Sub Team will consider these during the course of its work. I hope that helps. Thanks. Amr From: Paul Keating <paul(a)law.es> Date: Friday, May 19, 2017 at 12:04 AM To: Amr Elsadr <amr.elsadr(a)icann.org> Cc: icannlists <icannlists(a)winston.com>, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] Re: [gnso-rpm-wg] Data on non exact matches Thanks, Amr, Is it possible to see the data and/or contact the tmdb? Sent from my iPad On 18 May 2017, at 21:13, Amr Elsadr <amr.elsadr(a)icann.org<mailto:amr.elsadr@icann.org>> wrote: Hi Paul and all, For now, as far as the Analysis Group (AG) revised report is concerned, I do not believe that there is a list of domain names abandoned after triggering a Claims Notice. The AG revised report indicated a 94% abandonment rate following Claims Notices, however, this finding was based on an analysis of Claims Service data obtained from the TMDB (IBM), which did not result in a completed domain name registration. The Claims Service data consisted of which trademarks were downloaded, when the downloads occurred, which registrars downloaded the data, when registrations were completed and the registered domain names for those registrations that were completed (not those that were abandoned). What the AG also had to do was assume that each trademark downloaded was in fact associated with a domain name registration attempt, although they acknowledged that there was no way for them to be certain of this. If their assumption was incorrect, then the 94% abandonment rate would be exaggerated, and again, there was no way for them to determine the extent to which this might be true. Furthermore, there was no practical way for the AG to be certain that domain name registration attempts that were indeed abandoned following a Claims Notice being triggered, were abandoned because of the Claims Notice. There could have potentially been other reasons why the registration attempts were abandoned (reasons that were unrelated to the Claims Notice). Apologies if this is not helpful, but it is what we seem to have at this point. Thanks. Amr From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> Date: Thursday, May 18, 2017 at 12:09 AM To: Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>>, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> Cc: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Data on non exact matches Thanks Rebecca, The point I was trying to get at is that even if we are dataless on the false positives from Round 1 (harm to potentially chilled registrants) we aren't dataless on the harm to trademark owners and the consumers they protect. Say we pick a mark and add to it the product terms contained in its statement of services, we can then check that against the URS and UDRP records for new gTLDs to see if they would have triggered a claims notice. So that part, at least, is knowable (although quite the job for anyone trying to dig into the data). I'm looking forward to Staff's reply on whether or not there is a list of domain names abandoned after claims notice. I'm pretty sure the answer is "no" but let's be safe. If no, then we have to ask should we continue to allow the harms evidence by UDRP & URS decisions just because we forgot to collect data on abandonments following claims, or so we rely on the UDRP & URS analysis to say we need to enhance claims (and then collect the data in the second round to see if the enhanced claims need further tweaking either up or down). Hopefully, we will hear from Staff soon. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, May 17, 2017 5:01 PM To: icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Data on non exact matches Paul, I don't think that the idea that UDRP/URS decisions are relevant evidence is true across the board; even after excluding those with common-law rights only, we'd still have to look at which ones would have gotten a notice if the match process had been in place. Also, consumers have interests in the websites of legitimate registrants; consumer interests do not line up exactly with trademark owners' interests. Separately, the percentage of false positives is important to trademark owners too; if 80% of attempts trigger a match notice, that is likely to diminish the deterrent effect--the way we click through a number of other warnings that don't seem particularly targeted to our activity. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, May 17, 2017 at 5:48 PM, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: Thanks Rebecca. Staff, does the information that Rebecca is seeking in existence? I thought that there was no record of the specific domain names which were non-registered after receiving a notice of claim. Rebecca, I think your question has more to do with harm to potentially chilled registrants rather than harm to trademark owners/consumers, correct? Harm to trademark owners/consumers can be evidenced by UDRP/URS decisions for domain names that would fall into the next expanded category. Thanks in advance for your thoughts on that. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, May 17, 2017 1:36 PM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Data on non exact matches Reposting per J. Scott's request on the call: In order to fully evaluate the proposal to extend the match criteria, we really need information on the harm it is supposed to address, including (1) the number of registration attempts that included but were not limited to the text of an entry in the TMCH and (2) the number of such registrations that led to a trademark owner challenge after the fact (therefore excluding URS actions against, for example, typosquatting). To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ 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 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. _______________________________________________ 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 _______________________________________________ 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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Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017
by Amr Elsadr May 18, 2017

May 18, 2017

Dear Working Group Members, Below are the action items from today’s Working Group call. They are also posted along with the notes, meeting documents/materials, attendance, recordings and transcripts on the meeting’s wiki page here: https://community.icann.org/x/egffAw Thanks. Amr Action Items: 1. Staff to circulate a call for consensus on the Working Group mailing list regarding the Working Group consideration of proposals to include Geographical Indications in the TMCH 2. Staff to consolidate resources of data/work available on consideration of non-exact matches generating Claims Notices, and share with the Working Group 3. Michael Graham to repost his proposal on trademark non-exact matches generating Claims Notices, with refinements based on discussions held to-date 4. Rebecca Tushnet to repost suggestions on data required to evaluate the proposal to extend the match criteria of permissible records in the TMCH (DONE) 5. Claudio Di Gangi, Jonathan Agmon and Massimo Vittori to consider drafting a proposal for the GNSO Council to consider a PDP on inclusion of Geographical Indications in the TMCH

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Re: [gnso-rpm-wg] Data on non exact matches
by icannlists May 18, 2017

May 18, 2017

Rebecca, Apologies for copying the wrong list before. I've corrected it here. I agree wholeheartedly that we need to minimize false positives. I'm looking forward to rolling up our collective sleeves to find the right balance! Best, Paul Sent from my iPhone > On May 17, 2017, at 7:10 PM, Rebecca Tushnet <rlt26(a)georgetown.edu> wrote: > > My point was instead that even if the best data weren't collected there are proxies. And I wasn't talking about chilling effects, though those are relevant, but about false positives, which are detrimental to the system as a whole, including to legitimately sent notices. > > Sent from my phone. Apologies for terseness/typos. > >> On May 17, 2017, at 7:13 PM, icannlists <icannlists(a)winston.com> wrote: >> >> Understood Rebecca, but we also can't just shrug off demonstrable harm to brands and their consumers just because we are data poor on the drive to identify a chilled would-be registrant. >> >> Even so, hopefully, Staff will respond soon so we can know for sure whether or not the data you are seeking was collected. >> >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >> Sent: Wednesday, May 17, 2017 5:13 PM >> To: icannlists <icannlists(a)winston.com> >> Subject: Re: [gnso-rpm-wg] Data on non exact matches >> >> As George has been saying, there are ways to estimate false positives using various datasets. We shouldn't go ahead considering only claims about benefits and just shrugging about costs and promising to look into them later; that seems contrary to the reasons exact match was adopted as the consensus at the outset. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >>> On Wed, May 17, 2017 at 6:09 PM, icannlists <icannlists(a)winston.com> wrote: >>> Thanks Rebecca, >>> >>> The point I was trying to get at is that even if we are dataless on the false positives from Round 1 (harm to potentially chilled registrants) we aren't dataless on the harm to trademark owners and the consumers they protect. Say we pick a mark and add to it the product terms contained in its statement of services, we can then check that against the URS and UDRP records for new gTLDs to see if they would have triggered a claims notice. So that part, at least, is knowable (although quite the job for anyone trying to dig into the data). >>> >>> I'm looking forward to Staff's reply on whether or not there is a list of domain names abandoned after claims notice. I'm pretty sure the answer is "no" but let's be safe. If no, then we have to ask should we continue to allow the harms evidence by UDRP & URS decisions just because we forgot to collect data on abandonments following claims, or so we rely on the UDRP & URS analysis to say we need to enhance claims (and then collect the data in the second round to see if the enhanced claims need further tweaking either up or down). >>> >>> Hopefully, we will hear from Staff soon. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >>> Sent: Wednesday, May 17, 2017 5:01 PM >>> To: icannlists <icannlists(a)winston.com> >>> Subject: Re: [gnso-rpm-wg] Data on non exact matches >>> >>> Paul, I don't think that the idea that UDRP/URS decisions are relevant evidence is true across the board; even after excluding those with common-law rights only, we'd still have to look at which ones would have gotten a notice if the match process had been in place. >>> >>> Also, consumers have interests in the websites of legitimate registrants; consumer interests do not line up exactly with trademark owners' interests. >>> >>> Separately, the percentage of false positives is important to trademark owners too; if 80% of attempts trigger a match notice, that is likely to diminish the deterrent effect--the way we click through a number of other warnings that don't seem particularly targeted to our activity. >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>>> On Wed, May 17, 2017 at 5:48 PM, icannlists <icannlists(a)winston.com> wrote: >>>> Thanks Rebecca. >>>> >>>> Staff, does the information that Rebecca is seeking in existence? I thought that there was no record of the specific domain names which were non-registered after receiving a notice of claim. >>>> >>>> Rebecca, I think your question has more to do with harm to potentially chilled registrants rather than harm to trademark owners/consumers, correct? Harm to trademark owners/consumers can be evidenced by UDRP/URS decisions for domain names that would fall into the next expanded category. Thanks in advance for your thoughts on that. >>>> >>>> Best, >>>> Paul >>>> >>>> >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces(a)icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet >>>> Sent: Wednesday, May 17, 2017 1:36 PM >>>> To: gnso-rpm-wg(a)icann.org >>>> Subject: [gnso-rpm-wg] Data on non exact matches >>>> >>>> Reposting per J. Scott's request on the call: >>>> >>>> In order to fully evaluate the proposal to extend the match criteria, we really need information on the harm it is supposed to address, including (1) the number of registration attempts that included but were not limited to the text of an entry in the TMCH and (2) the number of such registrations that led to a trademark owner challenge after the fact (therefore excluding URS actions against, for example, typosquatting). >>>> To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. >>>> >>>> >>>> >>>> >>>> Rebecca Tushnet >>>> Georgetown Law >>>> 703 593 6759 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>> >>>> ________________________________ >>>> The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group
by Terri Agnew May 18, 2017

May 18, 2017

Dear All, Please find the attendance of the call attached to this email. The MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call held Wednesday, 17 May 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/egffAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-17may17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p8iyz8fxy8y/?OWASP_CSRFTOKEN=1d0b66cd3929354d 21560731d101913a0a7092f23edd328723cd77441b3653ca> https://participate.icann.org/p8iyz8fxy8y/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://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/> http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri Adobe Connect chat transcript for 17 May 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call on Wednesday, 17 May 2017 at 17:00 UTC for 90 minute duration. Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_e gffAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ egffAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=HWgHSNEJt1PkvYpbOiotU1s7tBBtS4_E8oEw6B3t1v A&s=NvNx-GpuyfrJ7OwymSWZbpAKJAYVO7Jno27A_dSmEuc&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=HWgHSNEJt1PkvYpbOiotU1s7tBBtS4_E8oEw6B3t1vA&s=Nv Nx-GpuyfrJ7OwymSWZbpAKJAYVO7Jno27A_dSmEuc&e= George Kirikos:Hi folks. Philip Corwin:Hello all. Waiting on operator J. Scott Evans:I dialing. George Kirikos:It took several minutes for an operator to answer, and I called around 12:45 pm. George Kirikos:(15 minutes early) Terri Agnew:alerted op Maxim Alzoba (FAITID):Hello All Steve Levy:G'day all Philip Corwin:Safe travel to all those WG members heading to INTA Annual in Bacelona. I arrive Friday and look forward to seeing some of you there. Maxim Alzoba (FAITID):is it still cold there? Philip Corwin:I don't want to hog the spotlight. All the co-chairs should have their 90 minutes of fame, or infamy, whatever the case may be ;-) Philip Corwin:@Maxim--weather forecast for BCN quite nice George Kirikos:Are some of the past data requests forthcoming? (e.g. top 500 matching terms in the TMCH, via The Analysis Group, etc.) George Kirikos:*6 to mute/unmute Mary Wong:@George, I think the Analysis Group is working on these requests Amr Elsadr:Apologies. Trying to fix my audio. Maxim Alzoba (FAITID)::( last meeting it was a flight day for me Mary Wong:Claudio is on Mary Wong:The table being displayed is an update from the one last discussed. The only updates made were to include Claudio's proposal and rationale. George Kirikos:Country names? George Kirikos:(did I hear that correctly?) Philip Corwin:Claudio did mention country names Mary Wong:However, his proposal is limited to GIs only, I believe George Kirikos:Which country names collide with GIs? Kristine Dorrain - Amazon Registry Services:Claudio, if a GI is a registered TM, it can enter the TMCH...are you proposing some ADDITIONAL protection for GIs? Mary Wong:@Kristine, isn't the challenge here that we have GIs currently in the TMCH, not under the "registered TM" category but under the "mark protected by statute or treaty" category (for which the TMCH does not investigate whether there is a corresponding trademark)> Greg Shatan:The Comite Interprofessionel du vin de Champagne controls the GI. George Kirikos:(GIs that aren't registered TMs, presumably) George Kirikos:Champagne is a brand (registered TM) of mangos, by the way, in the USA. :-) https://urldefense.proofpoint.com/v2/url?u=http-3A__tsdr.uspto.gov_-23caseNu mber-3D75479467-26caseType-3DSERIAL-5FNO-26searchType-3DstatusSearch <https://urldefense.proofpoint.com/v2/url?u=http-3A__tsdr.uspto.gov_-23caseN umber-3D75479467-26caseType-3DSERIAL-5FNO-26searchType-3DstatusSearch&d=DwIF aQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9 Qfqa0AIgn-H4xR2EBk&m=HWgHSNEJt1PkvYpbOiotU1s7tBBtS4_E8oEw6B3t1vA&s=p1umEES54 5fBwWGJZntNjdOk1qFmD5kYBfGfJQ59rbM&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=HWgHSNEJt1PkvYpbOiotU1s7tBBtS4_E8oEw6B3t1vA&s=p1 umEES545fBwWGJZntNjdOk1qFmD5kYBfGfJQ59rbM&e= Mary Wong:Claudio's proposal means that sui generis protection would be fine, right? Kristine Dorrain - Amazon Registry Services:@Mary, that seems like a slipperly slope. Kristine Dorrain - Amazon Registry Services:or slippery Kristine Dorrain - Amazon Registry Services:I Maxim Alzoba (FAITID):@Greg, do you suggest meeting of two sub groups : claims + sunrise? Susan Payne:@Greg - I think your comments about wghere this is discussed go to the heart of how the work will be carried out going forward. I'm certainly unclear whether the Claims and Sunrise Subs have a future role once they have finished their current task of reviewing charter Qs, identifying data needs and proposing work flow. George Kirikos:Lots of audio noise. Mary Wong:Should the first question be whether GIs should be included in a RPM, and, if so, whether that should be Sunrise, Claims or both? Greg Shatan:FIAT is a registered trademark.... George Kirikos:Could ACPA actions for cybersquatting be brought on the basis of a GI that is not a registered TM? (methinks not, but curious if anyone knows of a case....) Mary Wong:@George, I don't know of a case but ACPA is US law so presumably it would only apply to those GIs (if any) that are protected under US law Greg Shatan:It is in our charter, as Claudio points out.... George Kirikos:+1 Jeremy Mark Massey:+1 Jeremy Susan Payne:I don't agree with the Jeremy that it is out of scope. I'm not arguing in support of GI protection George Kirikos:X if we disagree? George Kirikos:And X if we disagree, to vote? George Kirikos:Examined, (but ultimately rejected).....could still show we considered/reviewed GIs (i.e. shows up as "PDP decided not to expand protection to GIs"....) Kristine Dorrain - Amazon Registry Services:Claudio, how is the proposal to add non-registered GIs different from expanding the TMCH to common law marks? George Kirikos:(which might be useful, to ensure that no future PDP needs to review the issue) Paul McGrady\:@Claudio - kicking the can on an issue that has already been talked to death is not a good use of resources. Kathy Kleiman:Claudio: could you summarize your revised proposal in a quick sentence? George Kirikos:Very low volume. Philip Corwin:While I am somewhat agnostic on GIs, I am adamantly against creation of a database separate from the TMCH Claudio:@Kathy, for the WG to consider how GIs should be protected in new gTLD RPMs Mary Wong:Although this may be jumping the gun - staff feels oblged to note that it is open to this WG to recommend that GIs (and possibly other source identifers that are not also registered TMs) - be considered for rights protection, possibly via a different mechanism TBD. Claudio:consistent with the Charter provision "Examine the protection of country names and geographical indications, and generally of indications of source, within the RPMs." Paul McGrady\:@Mary - it is also open to interested individuals to start a PDP in the ordinary course Claudio:@Paul, this is the RPM working group - why isn't this the right group to consider this topic? Mark Massey:Kathy +1 Marie Pattullo:GIs are a form of IPR in the EU, so not akin to other source identifiers. Paul McGrady\:@Claudio - because it will slow this process down to a crawl. It took 4 weeks just to get your proposal. Jon Nevett:thinking about the .wine experience and the European governments, some group needs to deal with this at some point in detail George Kirikos:As Claudio mentions, it's in the charter, but ultimately it's going to go nowhere, so......it should probably be reflected in our report somewhere. Claudio:Paul, so we don't have enough time to consider it is your reason? Paul McGrady\:@Claudio, my reasons have been spoken and written repeatedly on these calls and on the various lists. Kathy Kleiman:@Claudio: there are provisions for other databases to be kept and maintained separately by the Trademark Clearinghosue Phil Marano:Won't this topic just come up again anyway in connection with the Draft Report and public comments on it? Claudio:@Kathy, I agree Lori Schulman:agree. we need a GI WG to look at the panoply of GI issues in the DNS George Kirikos:@Phil: right, I raised my hand to say the exact same thing. George Kirikos:We don't want it to be raised elsewhere, otherwise it'll keep coming up, and volunteer fatigue sets in, and opponents won't always show up. Claudio:This is the RPM WG, so this is the right group to consider whether a type of IP should be protected Mary Wong:All, from the staff perspective - it may be helpful to note in our Initial Report that the question of GIs (and potentially other types of source identifiers) was raised but no recommendation was developed. Mary Wong:Public comments (as Phil M noted) may then provide us and the GNSO Council with feedback on how that might best be tackled. J. Scott Evans:can everyone clear the votes Lori Schulman:agree with Mary. we need to note that GI issue raised and outcome of proposal. George Kirikos:Far too many false positives, though, especially for short marks. Louise Marie Hurel:+1 Rebecca Mark Massey:+1 Rebecca Vinzenz Heussler:+ 1 Rebecca Maxim Alzoba (FAITID):Also Registries ...are they to pay to ICANN as for claim registrations in those numerous occasions? Maxim Alzoba (FAITID):I do not think we need to create rights which do not exist in real world George Kirikos:Also, from an implementation basis, beyond my prior comments, one might need to give a *different* TM Claims notice wording for these non-identical matches. Maxim Alzoba (FAITID):single letter TMCH entries ... do they have rights for almost all symbols? Maxim Alzoba (FAITID):two chars George Kirikos:e.g. someone wants to register "CARS", and gets a notice "Your domain might be infringing on the Computer Associates TM for "CA"...... George Kirikos:(claims notice might be different than if someone wanted to register "CA.TLD" Maxim Alzoba (FAITID):or the infamous "the" TMCH entry ... will it lead to the* wildcard situation? Susan Payne:yes, that was my intention Phil George Kirikos:At least with the TM+50, there have been cases of actual cybersquatting with those variations. George Kirikos:If it applied to Legacy, that implies that Claims Notices would be perpetual, instead of 90 days. Kathy Kleiman:Enom -> Venom (discussed extensively in the STI) Philip Corwin:@George--agree that applying Claims Notices to legacy would imply perpetual notices Maxim Alzoba (FAITID):creating wildcard like trigger needs an answer - do those TM owners have the right for the same in Real World? Philip Corwin:Based on Deloitte data there has been very little use of TM+50 Rebecca L Tushnet:Before we talk about matching rules shouldn't we establish the existence of a problem to be solved? Philip Corwin:GM/froGMan - I think the "dumb matches" will be endless Amr Elsadr:Non-exact matches were considered in the AG revised report regarding omitting ampersands, replacing ampersands with "and", replacing @ with "at", removing all spaces and other non-allowed characters, replacing all spaces and other non-allowed characters with hyphens Philip Corwin:Not arguing for TM+goods/service, but at least that relates to the TM. But TM anywhere in the string gets wildly afield of the scope of TM rights Maxim Alzoba (FAITID):or 'est' with west, rest, best Greg Shatan:I suggest looking at UDRP and trademark infringement litigation, also typosquatting, etc. if you want to establish the issue. I think the issue is clear enough we can take "judicial notice" of it. Mary Wong:One more document I forgot to mention - ICANN Explanatory Memorandum from Sept 2012 on this question, noting that it will be important that the TMCH not be asked to exercise subjective judgment (e.g. for the so-called "dumb matches" and false positives Greg, Phil and others mentioned) Steve Levy:Need to jump to the audio-only line... Greg Shatan:I'm not suggesting subjective judgment, only more carefully crafted "rules." Mary Wong:@Greg, yes - just noting some rationale that was provided for the current rule. Rebecca L Tushnet:Greg, there's certainly cybersquatting--but I would like to see what indication we have that expanding the match criteria would matter because many marks are not in the TMCH. Mark Massey:This degenerates to a problem in semantic analysis. There is ALOT of technology that could be potentially employed here. But doing this right would require a deep beifing of this technology. Jeremy Malcolm:Agree with Kathy Mark Massey:Agree with Kathy khouloud Dawahi:i agree with kathy as well. Greg Shatan:Rebecca, there will always be those who don't take advantage of the TMCH. I don't think that should have an effect on policy relating to those who do. Jon Nevett:Practical question -- do we think that we would get sufficient consensus of the community on extending past exact match? If not, let's not kick the can down ther road on this issue either for all the reasons Paul McGrady argued on the GI issue. Greg Shatan:That's already the case even with exact match. Jeremy Malcolm:+1 Jon Mark Massey:+1 on public database Greg Marie Pattullo:Disagree on public DB as discussed at length on the lists. Kristine Dorrain - Amazon Registry Services:+ 1 Jon Mark Massey:Just kill the idea of expanded matching - it is a complexity reltive to the basic purpose of the TMCH Maxim Alzoba (FAITID):ending up with 100% of registrations causing notices ... is not better than having zero number of notices Kathy Kleiman:@Phil: who matches, who monitors? George Kirikos:If the TMCH is public, good faith purchasers could check themselves. Kristine Dorrain - Amazon Registry Services:+1 Maxim Marie Pattullo:Was never the purpose of the DB, George, as again already discussed. Kristine Dorrain - Amazon Registry Services:@George most people who just want to buy a domain name for their lawn mowing service are not going to search a db any more than the USPTO George Kirikos:Gentleman.tld === likely matches "GE", "NTL", "MAN", and other TMCH claims, just for 1 domain. Kathy Kleiman:Agree with Phil re: the matches problem Mark Massey:Agree with Phil and Kathy Marie Pattullo:+1 Kristine Jon Nevett:@Phil -- same issues for mark + keyword -- ING -- walking, talking, drinking Mary Wong:Would it be worth distingushing between plurals, typos, mark+keyword and "mark contains"? George Kirikos:I think expanded matches should only be triggered for some of the most famous marks, e.g. Verizon, Google, Yahoo, Lego, i.e. ones that get lots and lots of UDRPs/cybersquatting. Philip Corwin:@Jon-exactly Kristine Dorrain - Amazon Registry Services:@ George, now we're back to the fight over whose mark is famous enough George Kirikos:i.e. instead of allowing ALL TMCH marks to trigger it, auction 50 or 100 slots, and those top 50 or 100 brands get the right to the expanded notices. George Kirikos:@Kristine: correct. And some TM folks want to avoid that discussion. Griffin Barnett:+1Greg George Kirikos:But, in reality, some marks are more famous than others. George Kirikos:Or get more cybersquatting, or more damage (e.g. banks). George Kirikos:So, limit it to 50 or 100 "critical" cases (e.g Paypal). Susan Payne:@Jon, good point, that is another dumb match, but I think you can find a way to identify keywords that have a direct relevance to the TM registration G&Ss Louise Marie Hurel:I don't agree we that should go for famous as criteria Marie Pattullo:Damage is relative, and consumer damage/confusion should not be forgotten. Susan Payne:+1 Michael Amr Elsadr:@Michael: I need to double check, but I believe that finding in the AG revised report might have been specific to effectiveness of the Claims Notice in deterring bad-faith registration attempts. Philip Corwin:As I understand it, 'mark contained' generation of claims notice would be an automated process. Only way to avoid dumb/crazy/irrelevant matches would be to develop software that would pare the matches only to words (containing the mark) that related to the goods & services associated with the trademark. Who would develop that, and would it be feasible? Amr Elsadr:And abandoment rate. George Kirikos:It has to be "exact match+", if you already registered every exact mark yourself. :-) khouloud Dawahi:yes I agree with georges !+1 Grace M:True @ Luoise Marie, famous is relative to many factors George Kirikos:e.g. if Google registered every Google.TLD, of course all their cases will be Google+something. Rebecca L Tushnet:"Get the geeks on it" is not a compelling plan--that's very different from "it's a covered good or service," which at least has a limit we can understand. Susan Payne:Analysis Group also did not actually conduct any cost analysis at all, so had no data on which to base their cost-based conclusion. Nor did AG consider mark + indistry keyword such as the apple-computer example despite acknowledging that it was a very relevant assessment for them to do George Kirikos:You still get matches for long domains, e.g. someone registers "GeorgeCloud.xyz", gets a TM notice for (1) GE, (2) George AND (3) Cloud. George Kirikos:(and probably other TM terms, too) Greg Shatan:All still dumb matches. Cyntia King:I suggest that the TMCH charteer should be limitd & that the TMCH should provide the full range of potential matches. Other entities (or the TMCH administrator) could elect to provide services to manipulate the results (likely for a fee) based on a TM ownrs needs (e.g. how many TMs do they own, known confilcts, regional application of marks, etc.) George Kirikos:@Greg: how about MicrosoftGoogle.xyz -- you'd still get 2 notices. Greg Shatan:@Susan, should it be called "Speculation and Conjecture Group" then? George Kirikos:Or, MicrosoftCloud.xyz (since "CLOUD" is in the TMCH). George Kirikos:If you want to "enhance notice", make the TMCH public. Philip Corwin:Noting that if GM is in the TMCH and therefore generates a claims notioce for frogman, or if GE is registered and registers a notice for pageant, neither frogman or pageant would be considered identical or confusingly similar for UDRP/URS purposes. Mark Massey:If the CLearing House was open this would be a non-issue. A reasonable human correlates this kind of info very quickly. George Kirikos:@Kathy: there were multiple points in the proposal (scroll to the bottom of page 7 on the screen). Philip Corwin:So what I am saying is that these preventative RPMs should bear some relationship to the curative rights protections available if the domain registration proceeds khouloud Dawahi:yes the very famous criterion is very subjective and discretionary (inspired from the usa trademark law) however without it we will be in a swamp Marie Pattullo:Restricting to so-called "famous" marks would serve no purpose except to discriminate against owners of perfectly legitimate, yet smaller (again, a subjective term) TM, for no reason. George Kirikos:@Khouloud: yes, that's why an auction approach, limiting to 50 or 100 critical brands, would be more defensible (e.g. PayPal, American Express, other payment services, Google, Microsoft, and a few others who spend a lot on UDRPs). Maxim Alzoba (FAITID):I wonder what happens to googlemicrosoftapplecarefour.TLD ? Rebecca L Tushnet:On mushing together: consider the unfortunate URL of this Chinese restaurant: handynasty.com Michael Graham:@Jeremy: I'm not proposing allowing Deloitte discretion -- but a defined rule. Paul McGrady\:Can think of all kinds of good reasons to register apple.farms, but very few for applycomputer.farms... George Kirikos:@Rebecca: Indeed, and with IDNs, where the term is XN--somethingorother, there can be a LOT of false positives. Greg Shatan:Not suggesting discretion. Han Dynasty's domain would not come up in a rules-based matching system. George Kirikos:(since the something ot other after XN-- in an IDN can be relatively "random" ASCII) Greg Shatan:NB: They deliver to my apartment, but I prefer some of the other Chinese restaurants in the area..... Mark Massey:disagree with Susan Mark Massey:What about other nations etc. Paul McGrady\:Good point Brian George Kirikos:GM, "MAGMA.TLD" too. Susan Payne:thanks Brian, really good point Greg Shatan:frogman/GM = dumb match. Mark Massey:+1 Greg khouloud Dawahi:@george yes I totally agree with you an auction approach limitin g to 50or 100would be better George Kirikos:@Greg: but, how do you define what is a "smart" match? Mary Wong:Note - the Claims Service has two parts: pre-registration notice to the potential registrant, and post-registration notice to the rights-holder. In reviiewing this proposal, the WG may wish to consider if it is concerned with both aspects, or just with the Notice of Registered Name to the rights-holder. Greg Shatan:A limited list of rules. George Kirikos:i.e. a mechanical rule that only increased the TM claims notices from 30% of the time to 31% might be OK. One that takes it from 30% to 90% -- not ok. Paul McGrady\:@Phil - nor can I imagine a potential registration of FROGMAN being deterred by a notice about the GM's mark Rebecca L Tushnet:+1 George K Kathy Kleiman:Right, this is exactly what the URS was intended for - George Kirikos:Only a simulation would reveal what would happen. Cyntia King:Generating data set - TMCH job. Sorting data set - TM owner job (which could be accomplished in-house or by outside, paid service). Marie Pattullo:+ 1 Paul Griffin Barnett:+1 Paul....the language of the notice should be sufficient to explain this Kathy Kleiman:those cases that are "slam dunk abuse" George Kirikos:(and one can simulate it, by getting a list of all registration attempts) George Kirikos:Simulate it against the .com zone file, too. George Kirikos:I imagine that would be fun. Kathy Kleiman:Agree w/ Phil re: concerns he raised. Kathy Kleiman:Well reasoned Michael Graham:@J Scott -- Could I propose that I revise language in proposal to address some of the issues raised? George Kirikos: Silicon Valley joke there. ;-) via HBO George Kirikos:https://www.theverge.com/tldr/2017/5/14/15639784/hbo-silicon-valley- not-hotdog-app-download if you've not seen the show. Michael Graham:@Greg -- Too much Silicon Valley!!!! George Kirikos:It actually *is* rocket science. Kathy Kleiman:this is exactly what the URS was created for. George Kirikos:To limit false posititves is hard. Mark Carvell UK GAC rep:GM is the two letter country code for The Gambia - thought I'd just mention that....! Relates to a different dialogue.... Greg Shatan:GE is Georgia.... George Kirikos:Consider how often false positives happen with automated censoring of comments on WordPress blogs, or YouTube, Facebook, etc. Philip Corwin:@Mark -- NO ;-) Michael Graham:Also UDRP incorporates a Bad Faith Use requirement that further hinders applicants. Mary Wong:No Terri Agnew:Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 31 May 2017 at 16:00 UTC for 90 minute duration. Amr Elsadr:No, J. Scott. George Kirikos:2 weeks. Greg Shatan:I'd like to suggest a refined version of Claudio's proposal as well. Philip Corwin:No call next week due to INTA Paul McGrady\:Yay! Greg Shatan:Agreement on one call??!! Michael Graham:I will work on a draft for Monday after INTA. George Kirikos:Productive call. Kudos, folks! George Kirikos:Bye everyone. Paul McGrady\:See many of you in Barcelona! Michael Graham:Thanks all! Jay Chapman:thanks all Mark Massey:Bye all! Mary Wong:Thanks everyone, and J. Scott! Philip Corwin:Ciao khouloud Dawahi:thank you all Amr Elsadr:Thanks all. Bye. Susan Payne:thanks J Scott David McAuley:thanks all, bye J. Scott Evans:ciao Monica Mitchell:thank you all Greg Shatan:Bye all!

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