Dear all, Further to Paul’s request (below) and my earlier note, staff hopes that the following additional information is also helpful. Under Specification 7 of the base New gTLD Registry Agreement, all New gTLD registry operators are obliged to implement the TMCH Requirements referenced previously. These Requirements incorporate the two provisions I mentioned in my note, and set out further criteria, processes and other terms relating to the provision of Sunrise and Claims Services. A copy of the base New gTLD Registry Agreement (as of January 2014) can be found here: http://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-...; and individually-executed Registry Agreements are listed here: https://www.icann.org/resources/pages/registries/registries-agreements-en. In addition, all New gTLD registry operators and registrars wishing to sell domains under the 2012 New gTLD Program are required to agree to the Terms of Service for Registries and Registrars prior to offering any Sunrise or Claims Services: https://marksdb.org/tmdb/public/tandc (note that these registries and registrars also have to complete testing with, and be certified by, IBM in order to use the TMCH). In relation to the discussion about registrar (rather than registry) obligations, the TMCH Requirements state the nature and limit of registrar obligations in relation to the provision of Claims Notices to potential registrants (e.g. they must be clear and conspicuous, be in the prescribed form, and provided in English and preferably also the language of the registration agreement). The TMCH Requirements also provide that registrars may query the Claims Notice Information Service only in relation to domain names actually applied for by a potential registrant, and not for any other purpose. Finally, under the Terms of Service for Registries and Registrars referenced above, WG members may be interested to review the following provision (quoted here in relevant part only): “You agree that you will not use the Trademark Clearinghouse or the Services in a manner (as determined by us in our sole discretion) that: 7.1.1 Is illegal, or promotes or encourages illegal activity; 7.1.2 Infringes on the intellectual property rights of any other person or entity; 7.1.3 Interferes with the operation of the Trademark Clearinghouse or the Services; 7.1.4 Modifies or alters any part of the Clearinghouse Content or the Services; 7.1.5 Results in the distribution of Clearinghouse Content in a manner not authorized or contemplated by the Functional Specifications or TMCH Requirements …. “ We realize that these are fairly voluminous additional documents for which we are providing the links here and in my last message; however, we hope that in combination they provide a useful summary of the various obligations of and restrictions on both registries and registrars in relation to the provision of Sunrise and Claims Services under the 2012 New gTLD Program. Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889 From: Paul Keating <paul@law.es> Date: Tuesday, September 27, 2016 at 08:40 To: Greg Shatan <gregshatanipc@gmail.com>, Mary Wong <mary.wong@icann.org> Cc: "J. Scott Evans" <jsevans@adobe.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives Greg, A few comments: 1. Publicly Available Data. I did not say that the TMCH database was publicly available. However, the TMCH database is nothing but a collection of public trademark registrations and evidence of actual use. As such, the original trademark registrations are publicly available. Thus, the registries could simply use other public sources and be able to price “trademark-related” domain names as they wish. 2. Restrictions on use. Your reference to limited purpose use does not appear in Mary’s underlying email. To obtain any use restrictions we would have to review any relevant agreements between TMCH and the registries (or ICANN if TMCH has an agreement with ICANN which is somehow incorporated within the Registry agreement). In the absence of any restrictions in the agreement, I see no basis for a subjective description indicating that use is somehow improper. The same goes for any access provided to registrars. @Mary, can you supply such agreements? 3. Legal Restrictions. Antitrust laws would not seem to apply unless the affected “market” were limited to a specific extension. I cannot recall how that issue was addressed in the litigation against Verisign/ICANN over pricing but reference to that case might give further information. Even if antitrust (or other) laws applied such would be factually specific and best addressed via a post occurrence curative rights process such as the UDRP/URS (in the case of cybersquatting) or litigation (in the case the claim was based upon the pricing in the absence of subsequent cybersquatting). @Phil do you remember how the court addressed the market in that case? 4. RPM – I think you are mixing things up a bit. The SunRise was a RPM (allowing trademark holders to pre-emotively register domain names based solely upon a trademark registration and evidence of use). It did not extend to protect non-trademark holders in situations where in the asserted mark was in fact descriptive/generic and thus available for non-cybersquatting use. TMCH was NOT a RPM. It was a means to make the Sunrise process more efficient (by creating a uniform process) and less costly for the trademark holders (by permitting them to merely reference their TNCH record instead of producing evidence each time). The additional RPM you are not considering are the curative rights processes found in the UDRP and URS which protect the trademark holder IF (a) they did not register during Sunrise AND (b) the domain was later registered illegitimately and registered and used in bad faith. As far as I can see none of these policy tools were intended to address pricing – an issue intentionally left to the market. 5. Future use prohibitions. I may be mistaken but I believe that TMCH already has an agreement with ICANN and/or the Registries. If so, any proposal you are suggesting would require a specific amendment (requiring consent of all parties). And, of course, such a restriction would do little good given that the same exact data can be collected from any number of publicly available sources. I remain unconvinced there is an actual issue here (my view being that pricing includes a value that cannot be said to be entirely unreasonable). And, I am not at all convinced that this is an appropriate area for the WG given our charter. Sincerely, Paul Raynor Keating, Esq. Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFAw&c=FmY1u...> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul@law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Tuesday, September 27, 2016 at 5:18 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Cc: Paul Keating <paul@law.es<mailto:paul@law.es>>, "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I take from this the following: * The TMCH database is NOT publicly available, in spite of claims to the contrary. A policy decision was made NOT to make the TMCH database publicly available, to avoid gaming and targeting of trademark owners. If it is "publicly available" through some channels, these are not authorized sources. It's reasonable to assume that these are either leaked or reverse engineered. I'm not sure what the "evil source" is -- there may be multiple evil sources. * The DNL List, containing only the DNL field of the the TMCH database, is made available to New gTLD Registries, who are required to have it and update it daily. * The sole purpose the DNL List is given to Registries is so they can check whether a requested domain name matches a domain name label of a pre-registered mark during the Trademark Claims Period. Any other use would be an unauthorized use. * Neither the TMCH database or the DNL List is made available to Registrars. If a Registrar has either one of these, it has come from a source not authorized to share it (either a Registry which received it legally, or a third party who reverse engineered it) or the Registrar reverse engineered it. In either case, a Registrar is not authorized to either to have or to use the TMCH database or the DNL List. * A Registry using the DNL list in order to set differentiated wholesale prices for particular domains and target particular trademark owners during the Sunrise Period (or for that matter during GA or any other period) is making an unauthorized and unintended use of the DNL list. J Scott has called this a "bad faith" use and I am inclined to agree, especially since it begins with "unclean hands." (Note: this is a different issue from a Registry setting a single high price for all trademark owners during Sunrise (or GA, etc.) This is also a problematic practice but not the one being discussed.) * Registrars probably don't need the DNL List, since they can key retail prices off the wholesale prices (and each Registrar is free to decide their markup over the wholesale price) and can use "premium" lists set by the registries. However, if a Registrar has the DNL list (which they shouldn't) and uses it to set further differentiated prices for particular domains, that would be an unauthorized use of the DNL list. That would also be a "bad faith" use of the data, especially since the Registrar isn't even supposed to have the data. These practices may violate both the law and ICANN policy. On the legal front, these may be violations of antitrust/competition laws, either under a price discrimination theory or under a wrongful exercise of monopoly power theory. Anti-price-gouging laws could also be implicated here. I have not conducted an analysis of these points, but it would be good to do so. (Similar issues may arise with across-the-board exorbitant prices in Sunrise Periods.) The possession and use of the DNL List for anything other than its intended purpose by its intended recipient could also violate data protection laws, and could be violations of the terms under which the DNL List is distributed. On the policy front, these activities could be violations of the ICANN policies relating to the creation and purpose of the TMCH database and the Sunrise Periods. These could be more granular violations of particular policy points and/or a violation of the entire purpose of these policies. On the latter point, these polices are Rights Protection Mechanisms. They were set up to protect the rights of trademark holders. They were certainly not set up to use those rights to victimize trademark owners, by singling them out and targeting them with exorbitant pricing schemes. These pricing schemes (whether differentiated or across-the-board) make a mockery of these rights protection mechanisms. Instead, they become "rights detection mechanisms," allowing those unfortunately detected to be charged extra-high prices solely based on their identity. On a going-forward basis, we should make absolutely certain that (1) any use of the DNL List (or the TMCH database) by a Registry for any other purpose than sending Claims Notices is strictly prohibited and a violation of applicable terms and contracts; (2) any use or possession of the DNL List (or the TMCH database) by anyone other than a Registry is strictly prohibited and a violation of applicable terms and contracts (if these parties are subject to terms and/or contracts with ICANN). Greg On Tue, Sep 27, 2016 at 1:12 AM, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, in response to Paul’s request, here is some information that we hope is helpful. First, the TMCH Technical Requirements and Functional Specifications have certain criteria and requirements for Registries in terms of the data they can fetch from the TMCH (the Technical Requirements can be found at https://newgtlds.icann.org/en/about/trademark-clearinghouse/rpm-requirements-14may14-en.pdf[newgtlds.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_about_trademark-2Dclearinghouse_rpm-2Drequirements-2D14may14-2Den.pdf&d=DQMFAw&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ghSvzVl3PiFfJ7oungGlzzY1TEUWUjuxd-KNVjKy2GY&s=wfEoSYAVw1fxCS9qHYNGJhT5UywXT1_JYIE82itW8GE&e=> and the Functional Specifications at http://tools.ietf.org/html/draft-lozano-tmch-func-spec)[tools.ietf.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__tools.ietf.org_html_draft-2Dlozano-2Dtmch-2Dfunc-2Dspec-29&d=DQMFAw&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ghSvzVl3PiFfJ7oungGlzzY1TEUWUjuxd-KNVjKy2GY&s=Q3PIGvOCTToaTC9N6uXMb6yjseqdgkCGfb21u86990s&e=>. For example: · REQUIREMENT - Registries must refresh the latest version of the SMD Revocation List at least once every 24 hours. NOTES: - The SMD (Signed Mark Data) Revocation List is the list of SMDs that have been revoked, maintained by the TMCH database. It contains all the revoked SMDs present in the TMCH database at the date and time it is generated. The SMD Revocation List is used during the Sunrise Period to validate SMDs received. During the Sunrise Period the Registry fetches the most recent SMD Revocation List from the TMCH database at regular intervals. - As noted during the Sunrise Overview WG discussion a couple of weeks ago, after a successful registration of a mark, the TMCH validator returns an SMD File to the TM holder. A SMD is a cryptographically signed token issued by the TMCH validator to the TM holder, to be used in the Sunrise Period to apply for a domain name matching a domain name label of a mark that has been pre-registered with the TMCH. · REQUIREMENT - Registries must download and refresh the latest version of the DNL List at least once every 24 hours. NOTES: - The DNL List contains every Domain Name Label (DNL) that matches a pre-registered mark present in the TMCH database at the date and time it is generated. The list is maintained by the TMCH database. Registries use the DNL List during the Trademark Claims Period to check whether a requested domain name matches a domain name label of a pre-registered mark. Secondly, the TMCH provides public monthly reports on TMCH trademark validation and dispute resolution activity, which are posted by ICANN here: https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-registrars/reports[newgtlds.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_about_trademark-2Dclearinghouse_registries-2Dregistrars_reports&d=DQMFAw&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ghSvzVl3PiFfJ7oungGlzzY1TEUWUjuxd-KNVjKy2GY&s=IOZ14ElSKePyz3YGNRygi6PyuQjtkjctM8_W1V5_qkU&e=>. Thirdly, the TMCH publishes regularly on its own website statistics about TMCH records, including number of marks submitted and number of Claims Notices issued; for example: http://www.trademark-clearinghouse.com/content/tmch-stats-april-20th[trademark-clearinghouse.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_content_tmch-2Dstats-2Dapril-2D20th&d=DQMFAw&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ghSvzVl3PiFfJ7oungGlzzY1TEUWUjuxd-KNVjKy2GY&s=7-ZOCczNMinIXPt547GBt6iSsvI1iVphd1HMcIrgI8c&e=>. Finally, ICANN maintains a page containing the dates of all the Sunrise, Claims and related pre-launch RPMs offered by each New gTLD registry operator: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods[newgtlds.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_program-2Dstatus_sunrise-2Dclaims-2Dperiods&d=DQMFAw&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ghSvzVl3PiFfJ7oungGlzzY1TEUWUjuxd-KNVjKy2GY&s=op8IT0VYAgly0aSYsz3q0OBhCYWyHWuOQM230l5pXi4&e=>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Paul@law.es<mailto:Paul@law.es> ZIMBRA" <paul@law.es<mailto:paul@law.es>> Date: Monday, September 26, 2016 at 16:39 To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I apologize for the name error. As for use of data, I believe the same data is publicly available from any number of non-TMCH data. In that regard can staff please publish the data points that TMCH does publish to registries? Paul Keating On 26 Sep 2016, at 11:54 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: First, we can agree to disagree. Also, my name is “J. Scott” (kind of my trademark) :-). Second, I am not talking about regulating a price. However, I do think pricing is relevant if the “data” is being used for a purpose (targeting trademarks for increased pricing) for which it was not intended and that is against the interest of the parties who the TMCH was designed to assist in handling the explosion of new gTLDs. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.c[adobe.c]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=KIFna-qoWWOSGEvjDtb1t_47kx-6hWlYcVZJcs1n2iE&s=0wZ3PX9qW61FgYqX24S9mAjNh5ojS5z2k3Fdl9M3huE&e=>om From: "Paul@law.es<mailto:Paul@law.es> ZIMBRA" <paul@law.es<mailto:paul@law.es>> Date: Monday, September 26, 2016 at 1:22 PM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, Rebecca Tushnet <rlt26@law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Scott, I strongly disagree. First I don't think it is bad faith and certainly not per se so as to warrant a global pricing restriction. The fact that there are potential buyers who may value a domain at a higher price is nothing but applying traditional market principles applied in virtually every other form of business. Domains are not utilities to be regulated in such manner. Nor do I see any basis to guaranty pricing for the benefit of trademark holders. Second, given that the same "TMCH data" is publicly available I don't understand the basis for focusing on TMCH as the evil source. Paul Keating On 26 Sep 2016, at 9:26 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: Respectfully, I think you are missing some of the point here. I agree the market should operate as a free market. However, using the data in the TMCH to create lists of “premium” domains in the hope of having trademark owners pay exorbitant prices to acquire their marks is a bad faith practice that should be halted. J Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.c[adobe.c]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=KIFna-qoWWOSGEvjDtb1t_47kx-6hWlYcVZJcs1n2iE&s=0wZ3PX9qW61FgYqX24S9mAjNh5ojS5z2k3Fdl9M3huE&e=>om From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <Paul@law.es<mailto:Paul@law.es>> Date: Friday, September 23, 2016 at 9:04 AM To: Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, Rebecca Tushnet <rlt26@law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives Phil, In furtherance to my last email responding to Mr. Levy, even an unreasonably priced domain is not infringing. It is important that we not mix up the concepts at issue. We are discussing both “preventative rights: and “curative rights”. The preventative rights mechanism should be severely limited because it acts as a restraint of market tendencies in the absence of actual infringement. Imposing preventative measures is akin to imposing a “prior restraint” which (certainly in the area of speech) is disfavored as a matter of public policy. The curative rights mechanism is the 2nd tool which permits rights holders to rectify an infringement that has actually occurred. Rights holders already have the ability to pursue legal claims against a registry who is intentionally targeting them by restricting access to domains other than by way of exorbitant pricing. The hurdles that the rights holders must overcome to succeed on such claims are understandably high – just as they are with any other claimant faced with a similar situation in a non-domain-related situation. However, such is life. It is not our place to alter the legal environment and create contractually-based claims that do not already exist in the law. I believe this was the import of the comment made during the last call asking to differentiate economic costs from “rights”. Sincerely, Paul Raynor Keating, Esq. Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFaQ&c=FmY1u...> Tel. +34 93 368 0247<tel:%2B34%2093%20368%200247> (Spain) Tel. +44.7531.400.177<tel:%2B44.7531.400.177> (UK) Tel. +1.415.937.0846<tel:%2B1.415.937.0846> (US) Fax. (Europe) +34 93 396 0810<tel:%2B34%2093%20396%200810> Fax. (US)(415) 358.4450<tel:%28415%29%20358.4450> Skype: Prk-Spain email: Paul@law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Friday, September 23, 2016 at 5:39 PM To: Rebecca Tushnet <rlt26@law.georgetown.edu<mailto:rlt26@law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH review objectives I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public. This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: TMCH review objectives I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] TMCH review objectives Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others. Yours, Rebecca Tushnet Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> ================================================================= Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. 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