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

Data on non exact matches
by Rebecca Tushnet May 17, 2017

May 17, 2017

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

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Deadline for proposals and agenda for the next Working Group call
by Mary Wong May 17, 2017

May 17, 2017

Dear all, On behalf of the Working Group co-chairs, this note is being sent to inform you that the co-chairs would like to bring the discussions on the various open questions relating to the TMCH to a close within a reasonable period of time. This will allow us to move on to the next part of Phase One of our work, which will be to review the Sunrise and Trademark Claims RPMs. As such, please note that the co-chairs are asking that any proposal you may wish to submit on the TMCH review – including any refinement of a previously-submitted proposal and especially relating to the ongoing discussion on design marks, GIs and expanding the “identical match” test – should be sent to this mailing list no later than Wednesday 24 February 2017. For the next Working Group meeting, scheduled for Wednesday 17 May, here is the proposed agenda: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Progress reports from the chairs of the Sunrise and Trademark Claims Sub Teams 3. Continue discussion of open TMCH questions: · Geographical Indications (with the opportunity for Jonathan Agmon or his designee to present his proposal, being the only proposal that has not yet been presented to the group at a meeting) · Expanding the “identical match” test · [if time permits Design marks 4. Next steps/next meeting Please note also that there will not be a Working Group meeting the following Wednesday, 24 May, since many Working Group members will be at the International Trademark Association Annual Meeting. Thanks and cheers Mary

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Visual Spectrum: Standard Character to Design Marks
by Winterfeldt, Brian J. May 10, 2017

May 10, 2017

Hi all: For folks who are visual learners, we thought it might help to put together an infographic to supplement Mary's glossary and help the WG conceptualize any consensus on the line drawn for entry into the TMCH. [cid:image002.png@01D2C810.98461F50] It is meant to be an iterative infographic, so feel free to propose clarifications or changes. As we have stated in the past, we believe that all text marks should clearly be eligible for recordation within the TMCH, regardless of any stylization, font or figurative or design elements (so textual elements from the entire spectrum depicted above would be eligible); importantly, we also agree that any textual elements that have been disclaimed (specifically in stylized, composite / special form, or design marks) should not be eligible for recordation. Incidentally, you will not find specific definitions for "design mark" within the TMEP, instead the terms "composite" and "special form" are used depending on the circumstance. Thank you, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt(a)mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial __________________________________________________________________________ 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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Message from the Co-Chairs Regarding Email List Management
by Mary Wong May 5, 2017

May 5, 2017

Dear all, Please see the message below from all the three Co-Chairs of this Working Group. ___________________ Last week we learned that the Co-Chair of another PDP Working Group had placed a temporary halt on ongoing discussions because the volume of emails had grown so large, and the discussion so diffuse, that no one could any longer keep up with the dialogue or identify the main focus of discussion. While your Co-Chairs have not yet felt the need to impose a similar moratorium, we are aware that certain discussion strings have of late totaled dozens of emails, and have occasionally wandered significantly afield from the main topic. We are also concerned that several WG members recently changed to observer status, citing an inability to keep up with the volume of emails as well as, in some cases, concerns about the caustic tone of some communications. In regard to the tone of our online discussions, the Co-Chairs have noted a recent decline in personal remarks and more serious and well-reasoned debate on the issues before us. Let’s keep it up. In order to assure that we all make the most efficient use of our limited time, and increase the quality while decreasing the quantity of this WG’s email traffic, we propose the following for your consideration: 1. Please refrain from sending an email that lacks any new content and/or simply repeats positions heard from other WG members. In particular, if you feel compelled to send a “+1” or “Agree” message please just hit “Reply” and not “Reply All”. That way the sender of the original message will know of your support without the other 150-plus members of the WG having to take time away from their other work. Of course, if you want to add additional facts and arguments concerning why you agree or disagree with another member’s statement please go ahead as we welcome such substantive contributions. 2. Please be civil to your fellow members and try to focus any criticisms on the substance of a proposal or assertion and not on the person who made it. Reasonable people can disagree, and none of us have a monopoly on the truth. Remarks that question a person’s intelligence or motives, or that are caustic in tone, tend to polarize ongoing discussions and impede our work. As the PDP process requires significant consensus to advance change, pleased focus on identifying common ground and widening it. Those are our thoughts, and we share them with you not because we think this WG is going off the rails but because we believe it would be advantageous to consider how we can best use our email list to advance our work in the most efficient way, especially as the volume and importance of our work increases. We welcome your responses, and in particular your suggestions for how we can narrow our discussion points at any given time and encourage members to stay focused on the main point under discussion -- while also accommodating the fact that there is some substantial interdependency between the issues we are grappling with. Thank you and best regards, Philip J Scott Kathy

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Action Items from GNSO Review of all Rights Protection Mechanisms in all gTLDs PDP WG Call - 3 May 2017
by Amr Elsadr May 5, 2017

May 5, 2017

Hi, Below are the action items from the GNSO Review of all Rights Protection Mechanisms in all gTLDs PDP Working Group call held this week on 3 May 2017. These action items are also posted on the meeting’s wiki page (https://community.icann.org/x/YQTfAw) along with the meeting notes, documents, recordings and transcripts. Please note that there will be no Working Group call next week. The next call is scheduled to take place on 17 May 2017 at 17:00 UTC. Action Items: 1. Staff to circulate draft questions for Private Protections Sub Team following co-chairs’ sign-off; aim is to have the Sub Team begin meeting shortly (possibly next week) 2. Working Group members to review the 2 proposals on Design Marks with a view toward possible amalgamation. If specific/additional instructions to Deloitte are viewed as needed, Working Group to consider what those are to be. Thanks. Amr

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Scope of the PDP
by Mary Wong May 5, 2017

May 5, 2017

Dear all, Staff was asked about the scope of the Charter for this PDP. It may be helpful to review the Charter in full, available at: https://community.icann.org/x/2CWAAw. Essentially, the Charter provides in relevant part that: “At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness …. following its preliminary assessment of the effectiveness of the relevant RPM(s) in each phase of its work, the Working Group should consider the suggestions that have been made to date by the community regarding improvements or modifications to the RPM(s) in question. … the Working Group should, at the conclusion of Phase One of its work, assess the need for modification to this Charter and, if appropriate, submit a request to the GNSO Council accordingly for the subsequent phase(s) of its work … In addition to an assessment of the effectiveness of each RPM, the PDP Working Group is expected to consider, at the appropriate stage of its work, the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified. The Working Group is also directed to bear in mind that a fundamental underlying intention of conducting a review of all RPMs in all gTLDs is to create a framework for consistent and uniform reviews of these mechanisms in the future.” If there is any question at any time about the scope of the Charter, the Working Group may agree to request clarification from the GNSO Council as its Chartering Organization, through the Council liaison to the Working Group. We hope this is helpful. Cheers Mary

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Agenda and documents for Working Group call this week
by Mary Wong May 5, 2017

May 5, 2017

Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group
by Julie Bisland May 3, 2017

May 3, 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, 03 May 2017 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/YQTfAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-03may17-en.mp3 Adobe Connect recording: https://participate.icann.org/p2alb0v4h8n/<https://participate.icann.org/p2alb0v4h8n/?OWASP_CSRFTOKEN=db441a9fc3f1dbab…> 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/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Julie Adobe Connect chat transcript for 03 May 2017: Julie Bisland:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 03 May 2017 at 16:00 UTC for 90 minute duration. Julie Bisland:Agenda Wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Petter Rindforth:Hi there! George Kirikos:Hey Petter. How are you? Petter Rindforth:Happy - the first day of spring here in Stockholm! George Kirikos:That's great. Petter Rindforth:@Mary: Do we have an updated time schedule somewhere, or are we still working on the "old one" when it comes to next steps (like the URS, etc)? Mary Wong:@Petter, we've (staff) been working on one but it doesn't change the URS portion. It mostly tries to accommodate what the Sunrise and Claims Sub Teams are proposing. Petter Rindforth:Ok, thanks Mary Wong:We anticipate more changes after Joburg as well, where the Working Group will have a 3 hour meeting :) George Kirikos:I hope that one is in the afternoon local time, to make it more convenient for those in North America. Steve Levy:Hi all. FYI, I'll need to leave my office and jump to the audio bridge at some point in today's meeting. Mary Wong:@George, it's Joburg time from 9 a.m. to noon (or thereabouts) George Kirikos:Looks like that'll be around 3 am NYC time. Ouch. Paul Keating:Hcellow all Mary Wong:@George, sorry :( FYI that most of the Working Group sessions are in the morning Joburg time, to accommodate cross community sessions in the afternoon. One consequence of the 4-day Policy Forum meeting format, I'm afraid David McAuley:Hello all Maxim Alzoba (FAITID):Hello ll Michael R Graham:Morning all -- on audio bridge as well. Lori Schulman:is there a tentative Jo'Burg schedule posted yet? Lori Schulman:for the whole meeting Mary Wong:@Lori, I think there is an overall block schedule that either was just published or is just about to be. Let me check. Lori Schulman:I saw the RPM time in the chat Mary Wong:@Lori, all - here is the latest draft of the block schedule for the overall ICANN59 meeting in Joburg: https://meetings.icann.org/sites/default/files/icann59_block_schedule_v3.3_… Mary Wong:We are hoping to finalize the GNSO schedule soon. Lori Schulman:You do a fine job. Paul Tattersfield:Sorry I'm late Lori Schulman:Thanks. Paul Keating:I remain very interested Paul Keating::-) Paul McGrady:Still waiting for someone to pick up the dial in line... Kristine Dorrain - Amazon Registry Services:Mary sent a fabulous tutorial about SMD files around last week to the main list. Kristine Dorrain - Amazon Registry Services:To echo Lori, we may want to still schedule something though Mary Wong:@Paul M, we're checking Kristine Dorrain - Amazon Registry Services:But if the broader WG doesnt understand the TMCH/SMD file process, please take advantage of that amazing resource Paul McGrady:I'm in! Paul McGrady:@Mary - thanks! David McAuley:+1 @Paul - thanks Mary Lori Schulman:Mary: thank you for the note regarding where we may need more data for sunrise questions. Mary Wong:@Lori, credit goes to Kristine D for those! Lori Schulman:then thanks to Kristine D. Paul McGrady:@Phil - any word on Private Protections Subgroup? Mary Wong:Will do, Phil. Maxim Alzoba (FAITID):question: does the same level of protection exist in the real world - inclusion of the word in other word marks? Maxim Alzoba (FAITID):current inclusion of "the" will lead to lots of claim messages which will freak out lots of registrants George Kirikos:Indeed, Maxim. Too many false positives. J. Scott Evans:I am in the Adobe Connect room now. Maxim Alzoba (FAITID):is there a right which prohibits others from inclusion of the words? John McElwaine:@Maxim the same service does exist in the real world. All trademark watch services offer similar matching rules George Kirikos:"RED" (for AIDS fundraising), for example, would have numerous matches, including "BARED", "SCARRED", "WATERED", etc. Maxim Alzoba (FAITID):I think it is an additional service and not rights protection Maxim Alzoba (FAITID):the reson for issuing lots of claims needs to be well justified Maxim Alzoba (FAITID):*reason Mary Wong:@Michael, so we are talking about adding plurals plus "contains" George Kirikos:These can already be monitoRED, using tools like DomainTools, etc. Rebecca L Tushnet:George :) Mary Wong:@Michael, are you also talking about both types of notices (Claims Notice plus Notice of Registered Name)? Maxim Alzoba (FAITID):we should not give more rights than already granted in real world George Kirikos:For fanciful marks like EXPEDIA, etc., it might make sense. George Kirikos:If there was a way to draw some objective metric for reducing false positives, it could be workable. George Kirikos:e.g. check the term against the 100 million+ domains in the .com zone file, and see how many matches there are. "RED" would fail, but "EXXON" or "EXPEDIA" might pass. Lori Schulman:RED would not be confused with Scared but could be confused with REDdonations.whatever Maxim Alzoba (FAITID):what do we do with a single letter inclusions into TMCH? George Kirikos:Right, Lori. Just a matter of how you make it so that the TM Claims notice only appears for REDDomains.junk, vs. something else that is clearly a false positive. Paul McGrady:+1 Michael on this proposal. Thanks for putting it together. Mary Wong:Jonathan's proposal is at the bottom of Page 5. Paul Tattersfield:Good question Maxim George Kirikos:*RedDonations.junk, even Michael R Graham:@Paul -- Thanks. George Kirikos:TM Claims notice would need to no longer be finite, then, implicitly, in Michael's proposal. Paul McGrady:@Phil - what does holding the already late additional GI proposal do to our ability to discuss the 2 that are currently on the floor? I don't want to waste time talking today to indecision... Maxim Alzoba (FAITID):Legacy TLDs have special rights - their RAs are quite different Scott Austin:That was my question as well thanks Brian. George Kirikos:Since Legacy TLDs are long past their launch. Maxim Alzoba (FAITID):and all Sunrises are long in the past, thus ... 90 days are long over Mary Wong:@George, I suppose that's true for pre-launch mechanisms. George Kirikos:@Mary: also for post launch, since the TM Claims only last for 90 days. Mary Wong:True - since that is not a continuing mechanism (at the moment George Kirikos:Plus, we've already heard from registry operators that some registrars are not participating in new gTLD launches, because of the costs of implementing TM claims notices, etc. George Kirikos:So, this could have a detrimental effect on existing registrars. George Kirikos:(as well as registrants) George Kirikos:Page 6, top left. Paul McGrady:@Phil - thanks. George Kirikos:As an aside, does anyone know how many unique GIs exist worldwide? (we know there are millions (tens of millions?) of registered TMs) Paul McGrady:@Phil - agree. We want to give everyone a chance to present ideas, but they do need to get around to doing so in a timely manner. Mary Wong:Q7 - proposals received from Kathy and Greg Lori Schulman:I believe that WIPO keeps GI data Paul McGrady:@George - likely none. For example, some governments make GI claims to "champaign" but it is also a city in Illinois... John McElwaine:We coivered these proposals last week. Why are we re-covering this? Mary Wong:@John, I think the idea is to have a really quick summary (2 minutes) to refresh memories and for those who weren't on the call. George Kirikos:@Paul: sorry, poorly phrased. I meant "unique" as to total number, not "unique" in the sense of non-colliding. George Kirikos:(e.g. a GI might exist in both Japan and Germany, don't want to double-count them. Ivett Paulovics:EUIPO has a list of GIs in the 28 Member States of the EU J. Scott Evans:I object to use of the words "rules". The IRT and the STI provided recommendations. George Kirikos:i.e. are we up to 1000+ GIs yet? or still in the hundreds? Or into the 10,000+ range? George Kirikos:lol Kathy J. Scott Evans:That said, the GAC also provided GAC advice that impacted how the RPMs weree actually implemented. Hector Ariel Manoff:I practice in Argentina and we do not have this kind of mark as descdribed J. Scott Evans:What Kathy is reading is NOT the law. It is misleading. Words that are dominant portion of a design mark or a stylized word mark are always protected b/c the reality is that consumer use words to communitcate. Lori Schulman:Agree with J Scott. Mary Wong:The AGB just says "word mark" - will this exclude marks comprised entirely of stylized text? Steve Levy:I'm jumping to the audio bridge J. Scott Evans:A will clarify my earlier posting. Are always protectable when they can be protected as a tradeamark. J. Scott Evans:@Mary. I would argue not. Hector Ariel Manoff:The Argentina system of trademark law is very simmilar that US system in this respect Jeff Neuman:I think we should refrain from saying whether one entity or another did not follow the guidebook. We should only be focusing on future recommendations in my point of view George Kirikos:Page 10 of https://urldefense.proofpoint.com/v2/url?u=https-3A__euipo.europa.eu_tunnel… mentions there are 4,800 protected GIs in the EUIPO database. George Kirikos:(more than I expected) J. Scott Evans:I agree with Jeff Neuman J. Scott Evans:We need to decide what is the best practice and make sure the TMCH is following that best practice George Kirikos:@Jeff: it could be an indication that the policy is too vague, if it left too much open to interpretation by the TMCH provider. Paul McGrady:Agree with Jeff and J Scott. We don't need to blame anyone to determine what the future should look like. Mary Wong:May staff suggest the following questions for discussion: (1) are marks comprised entirely stylized text included or not; (2) are marks that comprise text plus design (where it can be shown that the text portion is predominant and not disclaimed) included or not; and (3) clarify that marks comprised entirely of design (i.e. figurative marks without letters, wholly device marks) are excluded? Maxim Alzoba (FAITID):word 'best' surrounded by 7 pineapple images ... gives quite nice TMCH inclusion Rebecca L Tushnet:Mary, (3) could never get in anyway, could it? Rebecca L Tushnet:The distinctions must be between (1) and (2) Lori Schulman:Agree with Mary's questions Mary Wong:@Rebecca, yes, so that question is probably unnecessary as a question (unless it needs to be reconfirmed :)) Lori Schulman:Rebecca is correct about 3 but maybe we state the obvious anyway just to clarify the other questions Mary Wong:That's why it's asked as a "clarify that they are excluded" :) David McAuley:That's how I read Mary's #3 - as a point of confirmation Rebecca L Tushnet:I'm worried about "predominant" and "can be shown"--who does the showing? What is the standard? Jeff Neuman:As much as I like challenge processes, I am not sure that would work in this case since the information behind the Sunrise registration is not publicly known until much later if at all. Mary Wong:@Rebecca, yes that's difficult - which is why we're raising it as a possible question for discussion (rather than just say throw out all marks with some design element even if there is potentially protectable text in them)) Lori Schulman:There is always an element of subjectivity to trademark issues. Not sure how that is eliminated 100% as mechanical rules can yield bizarre results as evidenced in matching rules used by INGO IRT. Jeff Neuman:In other words, a third party has no information by which to base its challenge of a registration. It could only get this information in a "claims period". But if the registration was taken during Sunrise, there would be no ability to get a claims notice since the domain is "not available". Michael R Graham:@George -- Sorry, just coming back to chat. What do you mean "would need to no longer be finite"? J. Scott Evans:I am fine with text only marks. That is, marks whether portrayed in block letter type or stylized fonts. Jeff Neuman:I am not advocating that the information should be made public at all. Just saying that a post-facto challenge is not really a viable remedy J. Scott Evans:In the later (styized) color claims should not prevent the mark from registration in the TMCH George Kirikos:The challenges could be gamed, if they lead to the domains being transferred. e.g. Team Member #1 uses a bogus TM to obtain a domain. Team Member #2 "challenges" team member #1. Team Member #1 defaults, thereby passing domain name "cleanly" to Team Member #2. Michael R Graham:@George -- I see now -- you mean they would not be subject to 90 day or other limit if applied to Legacy TLDs. I see point. Thanks. George Kirikos:(kind of how fraud bidding can occur in domain auctions, where a fraudulent top bidder is associated with an underbidder) J. Scott Evans:@George. I have been working on ICANN DNS policy since 1998. ALL systems can be gamed. If gaming is found, we need to address the specific gaming not refuse to offer a solution because bad actor abuse the system. Paul Keating:I Prefer Ms. Kleiman's proposal. It strikes a proper balance. Paul McGrady: I Prefer Mr. Shatan's proposal. It strikes a proper balance. Jeff Neuman:In a challenge George, Team Member #2 would have to show that they have legitimate rights to the name under a challenge process. That would be by showing a valid mark, which Team Member #2 in your example would not be able to show Paul Keating:limiting acceptance to purely text-based marks is also simpler and avoids any subjective issues relative to acceptalnce. Greg Shatan:George, team member 2 would have to have a bona fide registration, so I think your scenario doesn't work. Lori Schulman:Agree with Shatan proposal. Scott Austin:+1 J. Scott Also I thought I heard Kathy say she would allow a device mark in this context? The TMCH guide treats that as the equivalent of a design mark. John McElwaine:I support Mr. Shatan's proposal. George Kirikos:@JScott: a system that eliminates the TMCH and/or sunrise is much harder to game (i.e. there'd be most post-registration UDRPs, but that's a small price to pay overall). Scott Austin:Agree with Shatan proposal. J. Scott Evans:Rebecca's point is not exact. Maxim Alzoba (FAITID):I wonder what happens with emojis ... now in IDN TLDs ... those which allow that Maxim Alzoba (FAITID):sorry - currently in cctlds , but who knows J. Scott Evans:@Rebecca. That point can be made of ALL trademarks. Mary Wong:@Rebecca, what about stylized text without device/design elements? Maxim Alzoba (FAITID):and legacy TLD ... for example https://urldefense.proofpoint.com/v2/url?u=http-3A__xn-2D-2Dn3h.com_&d=DwIC… Lori Schulman:Or text inside an oval or square? J. Scott Evans:All infringement is a multifactor test. No one (registrars expecially) don't want to have to deal with it. Soooo, we have to deal with a system in the most efficient way possible. Kathy Kleiman:Here is a clarifying response to Phil's question about actual steps : "Where the national authority has distinguished between standard character marks, stylized marks and design marks, no stylized marks or design marks may be registered in the TMCH database. In addition, where the only text that would be entered into the TMCH has been disclaimed, either as a phrase or as separate words or any combination thereof, the text may not be registered in the TMCH database." Rebecca L Tushnet:@Mary as I posted to the list the same is true with stylized text. Lori Schulman:Claims are warnings not decisions. J. Scott Evans:How about all marks can be registered and use the TM Claims and only text (both block letter and stylized) can use Sunrise? Lori Schulman:The national authorities make those designations for purposes of coding. George Kirikos:@Kathy: but then that encourages forum shopping, implicitly "endorsing" jurisdictions where the national authority makes no such distinction. Phil Marano (Mayer Brown):Isn't the stylized A example somewhat irrelevant in practice given that one character domains are almost always reserved, and to the extent they are released they are released after Sunrise as premium names? Mary Wong:@Kathy, what will be the scope/definition of "stylized mark" and "design mark"? John McElwaine:I do not suuport Kathy typed response Lori Schulman:Particularly in jurisdictions where design elements are coded and text are not. It's not 'legal protection" issue its a coding issue. Maxim Alzoba (FAITID):due to poor education of registrants - they freak out after getting a claim notice sent to them Lori Schulman:Do we have evidence of "freaking out"? Even anecdotal" Michael R Graham:@J Scott -- I was just thinking the same thing: Text + trademarks are only registered for TM Claims, and do not give Sunrise registration rights. George Kirikos:@Lori: yes, if you do a search. Lori Schulman:Where is "freaking out" evidence? Lori Schulman:Again, differentiating between text, stylized, etc. has a lot to do with coding for searches rather than actual issues of what may or not be protected. George Kirikos:https://www.reddit.com/r/Bitcoin/duplicates/65o867/trademark_for_bl… Michael R Graham:@Paul -- Agree with dual purpose of TM Claims Notice Paul Keating:@Paul, if notice is teh main issue then limit the sunrise application and limit the TMCH to a notice provider Maxim Alzoba (FAITID):+1 @Greg Lori Schulman:Just looked at that. Not sufficient for me to understand the response of a set of end users. Mary Wong:@Lori, that's why distinguishing between a "purely standard word/character mark" and a "stylized text only" mark is difficult. it's different from distinguishing between these two types of mark and a mark that includes both text and design elements. Jeff Neuman:Paul and Kathy are the original parents? I have already been forgotten..................... Lori Schulman:Mary, we agree on that. Maxim Alzoba (FAITID):so the Claim notice is more informative and in the end has - did you understand it? Lori Schulman:So I err on side of inclusion not exclusion. Lori Schulman:Agree, exclusion is too great with Kathy's proposal. David McAuley:Jeff, you have a right to be forgotten, no? Colin O'Brien:I agree with Lori inclusion not exclusion Paul McGrady:@Paul K - I have no problem bifurcating this topic along Claims and Sunrise lines - similar to what Michael G did in his plurals/goods&services proposal. Can't know for sure if we can reach agreement on the outcomes, but by all means, let's talk through it. Jeff Neuman:I am only forgotten when I dont want to be :) Lori Schulman:Good point, Paul Mc. David McAuley:LOL Scott Austin:There is a convention used in the TMCH derived from TM practice in multiple jurisdictions which the TMCH refers to as the "name" of the trademark. Is that a translation? It is a convention based on the literal element of the mark that assists in searching. Would be allowing domainers to search for stylized word rademarks named in the database to purchase as domains but deny those same mark owners protection of those same words by notice of such purchase. If the words of a registered mark can be purchased as a domain name why deny its owner protection against abuse by mere notice? Jeff Neuman:Like Rodney Dangerfield....I get "no respect" George Kirikos:Here's one where a person was scared to register NYC.beer: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.reddit.com_r_legal… Paul Tattersfield:Thanks George Jeff Neuman:@George .... That is a proper trademark owned by the City of New York as they should have been warned George Kirikos:Far too many "weak" marks like "NYC" scarring registrants. Rebecca L Tushnet:But a bad bright line is not good for registrants when they apply for domain names. Lori Schulman:I see that. Then I would argue that the prospective purchase of nyc.beer has the responsibility to learn where his rights might lay. George Kirikos:*scaring, even George Kirikos:Although, some registrants who are scared, might also be scarred. :-) Greg Shatan:I would not characterize the implicit message of the claims notice somewhat differently -- not quite so scary, especially if you have your own rights to rely on or you can see from the TMCH notice that the claimed mark is used very differently from that of the applicant. Kiran Malancharuvil 2:+1 Michael Lori Schulman:We all enter this sphere at our own risk and yes, many are scarred after years of this debate. George Kirikos:hehe Lori Rebecca L Tushnet:I agree scope isn't for the TMCH; the question is whether the national authority registered the thing that is to be entered into the TMCH (or a court case recognized it) Lori Schulman:We are not creating trademark rights. Lori Schulman:No we are not. George Kirikos:For NYC.beer, I actually looked into the WHOIS history this past weekend, and it doesn't appear that the Reddit poster followed through with the registration (someone in Cleveland ended up buying it instead). Maxim Alzoba (FAITID):we should not Lori Schulman:We are verifying TM rights. Greg Shatan:I believe my proposal carries out what's set forth in the AGB. George Kirikos:(via DomainTools WHOIS history) Michael R Graham:@Rebecca: Exactly -- and we should not ask or require TMCH to analyze. Mary Wong:Some distinctions to consider: (1) pure word/character marks vs stylized text marks; (2) stylized text comprising descriptive words vs stylized text not containing descriptive words; (3) word marks (with or without stylization) vs word+design mark Lori Schulman:Text marks offer the greatest protection -- you can impute any style. Lori Schulman:Stylization narrows for side by side comparisons on product packaging not domains Paul Tattersfield:that's right George it pushes registrations to professional (bulk holder) registrants rather than people looking to set up a new business George Kirikos:+1 Kathy. We shouldn't "solve" a problem created by those TM applicants who created a problem for themselves. Kathy Kleiman:The choice is totally that of the Trademark Owner Kathy Kleiman:What they choose to register and how they choose to register it is their option. George Kirikos:Exactly, Kathy. Greg Shatan:This is a problem we are creating for them, by limiting protection of stylized and composite marks beyond that of the trademark laws. Lori Schulman:Choice is not always the choice of TM owner where certain jurisdictions require registration based on how mark appears on packaging...a brick and mortar issue not a domain issue Lori Schulman:words are words George Kirikos:@Greg: We're not creating any "problem" for them. The TMCH complements existing law, doesn't replace all other enforcement mechanisms. Paul McGrady:@Kathy - who does it being written in cursive change the nature of the mark? Do we really draw the line because the DNS doesn't offer cursive fonts? Greg Shatan:TM owners should be entitled to rely on stylized and composite registrations for entry into the TMCH as they do in using and enforcing their marks. Paul McGrady:+1 Greg John McElwaine:Can anyone provide the reference to the 90% refusal to continue with registration stat? Michael R Graham:@Lori -- +1 Mary Wong:Isn't there a distinction to be made between excluding a stylized text mark where the text itself would have been distinctive (it's just that the TM owner chose to register a stylized text version), and excluding a stylized text mark where the text is descriptive? George Kirikos:Refusing to give someone an "advantage" doesn't equate with "creating a problem". Mary Wong:@John, it's in the Analysis group report. Michael R Graham:@Lori -- Would you please comment on the "as appears on packaging" requirement and consequences? George Kirikos:We should reserve the "advantages" to strictly defined criteria. John McElwaine:@ Mary Thanks Greg Shatan:If we limit the TMCH to text-only standard character marks is creating a problem. Kristine Dorrain - Amazon Registry Services:Kathy, penalizing the owner of a single mark that happens to be a stylized font likely will have a disproportionate impact on SMEs. Big corporations have deeper pockets to get an array of rights. I think it's potentially dangerous to assume that all brand owners are Fortune 100 companies with trademark portfolios. Paul McGrady:@Paul k. - too bad no data along those lines was collected at the time. Scott Austin:+1 Kristine Paul McGrady:+1 Kristine - the SMEs always get ignored in ICANNland. Agree we should not do that here. Salvador Camacho:Sorry, I have to leave for another meeting but I will check the further emails. Have a great day! Terri Agnew:finding the line Paul McGrady:Is anyone else hearing that beeping? Michael R Graham:@Kristine -- My concern as well. Paul Keating:Im sorry but I must leave the call for other matters. Terri Agnew:we are trying to find the line Greg Shatan:With regard to abandonment rate, we have 0% idea why these were abandoned or who (or what) abandoned the application. George Kirikos:Might be Scott Austin? (note the icon next to his name?) Kathy Kleiman:Sorry Scott George Kirikos:Oops, I guess he's speaking. Greg Shatan:Mary, agree with that distinction. George Kirikos:Domainers don't equate with "bad faith users". George Kirikos:Stop lumping them in together, please. Michael R Graham:As to 94% figure -- without context or comparison the figure really has no significance. Paul McGrady:+1 Scott - cybersquatters (not legit domainers) will have a playbook about what to squat on Paul McGrady:+1 Phil - not the same folks. Rebecca L Tushnet:What's the playbook? Are TMCH refusals public? Kristine Dorrain - Amazon Registry Services:Scott, if a domain name registrant did purposely target a logo for cybersquatting, how would putting that logo in the TMCH assist the brand owner. That person is clearly hell-bent on cybersquatting and is highly unlikely to be deterred by a claims notice....I'm not following your suggestion, I'm afraid. Paul McGrady:@Rebecca - no, but trademark records are Kathy Kleiman:From my experience, it is the SMEs who will be using the same words for their names, goods and services. Paul McGrady:@Phil - we have to be careful. We don't actually know that., John McElwaine:on 0.3% claims notices were ever challenged. So you could say that a vast majority of the abandonments were legitimate George Kirikos:We know from the top 10 of The Analysis Group that folks are attempting to register common dictionary words. Hopefully we'll see the top 500 soon. Michael R Graham:@John -- Correct! Scott Austin:@Kristine They can search the database based on the literal element of a words plus design mark then purchase the domain name for the literal elements befoer the TM owner does. Greg Shatan:Any conclusions about abandonment are idle speculation. We don't know if the rate should be 96%. Even calling it "high" is assuming facts not in evidence. Michael R Graham:@George -- and are these "common dictionary words" registered as trademarks? If so, I do not see your point. George Kirikos:@Michael: yes, they are, because they match somethign in the TMCH. George Kirikos:e.g. ONE, HOTEL, LUXURY, etc. Kristine Dorrain - Amazon Registry Services:@ Scott, so your comment was towards Sunrise, not Claims. Ok, thanks for clarifying. Paul McGrady:@Greg - +1. beyond idle at this point since we have addressed that issue so many times already. Not just idle - wasteful. Michael R Graham:@Steve Levy -- +1 Maxim Alzoba (FAITID):THE ? Scott Austin:@Kristine the literal element of the logo (stylized text or words plus design) would be used to identify the "name" of the registered mark in the (e.g.) USPTO TESS database. Mary Wong:Note that we don't know whether the "dictionary words" were registered as word marks somewhere, or as stylized text marks, or as text+design marks (without disclaimer). Michael R Graham:@Mary -- Understood. I think the disclaimer exception would help here. Applicants ALWAYS have the option of declaring there's no likelihood of confusion and proceeding with application. Jeff Neuman:How many marks in the TMCH were based on design or stylized marks? Paul McGrady:+1 Lori. Kathy Kleiman:@Jeff: that would be great to know! Mary Wong:@jeff, taht's what staff is noting - we don't. The question is, whether excluding all forms of stylization and marks that are word+design is the right solution. Maxim Alzoba (FAITID):+1 Lori Schulman:I would not say "too far". Jeff Neuman:I do not agree with saying that they have a bit too far a field Jeff Neuman:I thought we agreed on focusing on the the future Jeff Neuman:not the oast Greg Shatan:@Mary, the other question is whether including all forms of stylization and marks that are word+design is the right solution. Jeff Neuman:past Lori Schulman:INTA is reviewing the glosssary and will provide input based on established TM Paul McGrady:@Mary & Phil - INTA is looking over the draft glossary and will comment Rebecca L Tushnet:There's no way to evaluate the current operations without looking at the current rules & examples given by Deloitte Lori Schulman:Agree with Rebecca that we should look at rules and examples but not assume "too far" or expanding right. Lori Schulman:+1 Michael Kathy Kleiman:Both proposals before us to note that Deloitte has gone too far... Mary Wong:We know what Deloitte is doing, generally - that's in the TMCH Guidelines. Not sure that we can evaluate whether they are applying those standards uniformly, consistently and correctly. Lori Schulman:No consensus that Deloitte has gone too far Michael R Graham:Should we consider information/metrics that we need or should request in order to answer the questions we have been chartered to answer? Scott Austin:@George the bad faith portion of domain purchasers was my intention, which is I beieve the target of the RPM John McElwaine:I assisted with the drafting of Greg's proposal and do not agree that Deloitte has Maxim Alzoba (FAITID):shall we ask for a poll on that (or degrees of "too far/not too far/Ok) ? John McElwaine:gone to far Lori Schulman:Maxim - agree that we have to take temperature of the entire working group not the proposals of a few Maxim Alzoba (FAITID):@Lori - binary questions quite often are bit misleading Scott Austin:+1 John Mary Wong:Online survey would be better, yes Mary Wong:And on a specific proposal or alternative sets of proposals Lori Schulman:@maxim - agree which is why we need options. I would not support any suggestion that Deloitte is out of scope or "too far" Kristine Dorrain - Amazon Registry Services:+1 Paul.... sunrise and claims are separate Rebecca L Tushnet:Lori, do you think that Deloitte should have accepted all the examples in the annex? You may well think that--just trying to be clear. Maxim Alzoba (FAITID):@Lori , also adding field " comment " might help to understand other levels of support/non-suport Greg Shatan:I would also mention my ad hoc third proposal, which is for the current practice to be better carried out. Michael R Graham:@Rebecca -- What are the examples -- can you point to them? Rebecca L Tushnet:The ones sent to Deloitte--they should be on the wiki or we can ask Mary to recirculate. Michael R Graham:@Rebecca -- Thanks, I will look for them. Mary Wong:They're on the wiki - I'll send the link around again Michael R Graham:@Mary -- Thanks! George Kirikos:The Deloitte examples are at: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001583.html Mary Wong:@Michael, there you go! Thanks, George. George Kirikos:Also at: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001573.html Julie Bisland:Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group Wednesday, 17 May 2017 at 17:00 UTC for 90 minute duration. Mary Wong:1700 UTC Kathy Kleiman:To anyone attending GDD - enjoy! Lori Schulman:My regrets. It's INTA annual meeting time. George Kirikos:(2nd link starting from page 4 or so) Lori Schulman:Many will be on the road. Lori Schulman:I will be. Paul Tattersfield:Would a suggestion of extending proof of use to Claims Notices require a formal proposal? Julie Bisland:Lori, I've noted your apology. Lori Schulman:Thank you. Mary Wong:The updated Work Plan doesn't have a meeting on 24 May b/c of INTA Lori Schulman:I will miss 2 weeks then. George Kirikos:Bye folks. Have a great two weeks! Maxim Alzoba (FAITID):bye all Lori Schulman:bye Kathy Kleiman:@Paul T: probably Paul McGrady:Thanks Phil. Great call! Paul Tattersfield:thanks Kathy Paul Tattersfield:Bye all Georges Nahitchevansky:Bye everyone Greg Shatan:Bye all. David McAuley:Thanks Phil, staff, good bye all

1 0

Updated table of TMCH proposals and glossary of terms
by Mary Wong May 3, 2017

May 3, 2017

Dear all, Staff has updated the table of open TMCH questions (on design marks, GIs and TMCH matching rules) with the new proposal on GIs submitted on Friday by Jonathan Agmon (see attached document). Given the ongoing Working Group discussions on the mailing list on some of these topics, we have not attempted to summarize the specific discussion items and sub-topics, but we will be happy to do so if this will be helpful. Also attached is the staff-prepared glossary of terms relating to design marks and GIs, which we have updated slightly to note the new Amending Regulation in the EU concerning the definition of a trademark. We hope the glossary is helpful to everyone in distinguishing and/or defining many of the terms and usages around design/device/composite/figurative marks, collective and certification marks, GIs and appellations of origin, etc. You may also wish to note that WIPO maintains a searchable database of the IP laws of many countries, which you can specify the country of search as well as the type of IP right (e.g. copyright, GIs, industrial design, patents, trademarks etc.) for which you are seeking the applicable legislation or treaty: http://www.wipo.int/wipolex/en/. Thanks and cheers Mary

6 9

Clarification on GNSO Policy
by Mary Wong May 3, 2017

May 3, 2017

Dear all, It may be helpful to be clear in using the word “Policy” (capitalized), when we are referring to Consensus Policy that is binding on ICANN’s Contracted Parties (gTLD registries and registrars), and when we are not. A Consensus Policy is one that is created through the GNSO Policy Development Process (PDP) and adopted by the ICANN Board following the requisite steps in the ICANN Bylaws. For the purposes of our PDP, the Consensus Policy that is the Uniform Dispute Resolution Policy (UDRP) is what we will be reviewing in Phase 2. The 2007 GNSO PDP on the Introduction of New gTLDs contained a number of Principles, Recommendations and Implementation Guidelines, but did not contain specific Consensus Policy recommendations on the nature or scope of RPMs for the New gTLD Program. The development, during implementation of the PDP recommendations through community consultations on the various iterations of the Applicant Guidebook, of the RPMs we are currently reviewing, is briefly described in the letter from the October 2009 ICANN Board to the GNSO Council that resulted in the formation of the Special Trademark Issues Review Team (STI): https://gnso.icann.org/en/correspondence/beckstrom-to-gnso-council-12oct09-…. Here is the gist: o The original GNSO policy recommendation from 2007 was that “strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law” (Recommendation 3: https://gnso.icann.org/en/issues/new-gtlds/pdp-dec05-fr-parta-08aug07.htm) o In that 2007 PDP, the GNSO had formed several Working Groups, including the Protecting the Rights of Others Working Group (PRO-WG). The PRO-WG was not able to reach consensus on a list of rights protection mechanisms that could be universally applicable to all new gTLDs, in part, because of the expected diversity in new types of registry businesses, but there was consensus on six principles that included agreement on the fact “that there is no universal RPM” and that “Legal Rights [which the group defined] to be protected in a RPM must be capable of being authenticated” (PRO-WG Final Report: https://gnso.icann.org/drafts/pro-wg-final-report-26jun07.pdf) o In March 2009, the ICANN Board acknowledged that implementation issues concerning the overarching issue of trademark protection in connection with the introduction of new gTLDs needed additional community input and analysis and resolved to form the Implementation Recommendations Team (IRT) (Board resolution: https://www.icann.org/resources/board-material/resolutions-2009-03-06-en#07) o In October 2009, the ICANN Board requested the GNSO’s view as to whether the RPMs proposed at the time for the New gTLD Program were consistent with the GNSO’s 2007 policy recommendations, and are appropriate and effective in achieving the objectives (Board letter, referenced above: https://gnso.icann.org/en/correspondence/beckstrom-to-gnso-council-12oct09-…) o As noted previously, the STI was formed by the GNSO as a result of this Board request (see https://gnso.icann.org/en/group-activities/inactive/2010/sti for additional background, documents and motions). The STI’s recommendations for an alternative proposal to that suggested by ICANN staff in the then-current version of the Applicant Guidebook (AGB) – Version 3 - were adopted by the GNSO Council in December 2009 (Council resolution: https://gnso.icann.org/en/council/resolutions#20091217-2) and in February 2010 the ICANN Board expressed support for the substantive content of the STI’s recommendations and passed a resolution directing ICANN staff to analyze the public comments on the proposal in developing the next version of the AGB (Board resolution: https://www.icann.org/resources/board-material/resolutions-2010-03-12-en#6) o Version 4 of the AGB was published for public comment in May 2010. Between Versions 4 and 7, a number of changes were made to the scope of the RPMs proposed in the AGB as a result of public comments received, including introduction of the “use” requirement for Sunrise, the removal of the requirement for “substantive examination” of marks accepted into the TMCH, and the mandating of both Sunrise and Trademark Claims as a result of the Board’s acceptance of Governmental Advisory Committee (GAC) advice on the subject (ICANN Explanatory Memorandum: https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-u…. For all the various versions of the AGB, links to public comments received, and other historical documents, see https://newgtlds.icann.org/en/about/historical-documentation) I hope the above links and information are helpful. Thanks and cheers Mary From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of URS - Uniform Rapid Suspension System - MFSD <urs(a)mfsd.it> Date: Wednesday, May 3, 2017 at 08:16 To: icannlists <icannlists(a)winston.com> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Was the Policy modified unilaterally by the TMCH operator? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs(a)mfsd.it<mailto:responsabile@mfsd.it> | https://urs.mfsd.it[urs.mfsd.it]<https://urldefense.proofpoint.com/v2/url?u=https-3A__urs.mfsd.it&d=DwMFaQ&c…> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:image001.png@01D2C3FF.4492BDB0] Il giorno 02 mag 2017, alle ore 22:23, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> ha scritto: It would benefit the multistakeholder community if the Policy as written and adopted by the Board was implemented, rather the Policy as modified unilaterally by the TMCH operator. Best, Paul Paul D. McGrady, Jr. icannlists(a)winston.com<mailto:icannlists@winston.com> From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of URS - Uniform Rapid Suspension System - MFSD Sent: Tuesday, May 02, 2017 2:07 PM To: J. Scott Evans <jsevans(a)adobe.com<mailto:jsevans@adobe.com>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Importance: High I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers. Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs. If a step ahead was made, why should we make a step behind? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs(a)mfsd.it<mailto:responsabile@mfsd.it> | https://urs.mfsd.it[urs.mfsd.it]<https://urldefense.proofpoint.com/v2/url?u=https-3A__urs.mfsd.it_&d=DwMFaQ&…> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) <image001.png> Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> ha scritto: Massimo: As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com_&d=DwMFaQ…> From: Massimo Vittori <Massimo(a)origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans(a)adobe.com<mailto:jsevans@adobe.com>>, Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH. To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.” I would like to discuss the rationale behind this. Best, Massimo From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo(a)origin-gi.com<mailto:Massimo@origin-gi.com>>; Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>>; Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image002.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans(a)adobe.com<mailto:jsevans@adobe.com> www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com_&d=DwMFaQ…> From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo(a)origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: ‎01.‎05.‎2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPSseparately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon(a)ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image003.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<tel:+65%206532%202577> 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 1 May 2017, at 23:30, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm(a)eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.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<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> 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 1 May 2017, at 23:01, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm(a)eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.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<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> 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 1 May 2017, at 4:01, icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm(a)eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists(a)winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.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<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> 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: icannlists(a)winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm(a)eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul 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 Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> jmalcolm(a)eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt[na01.safelinks.protec…<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protect…> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ 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. 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