+1 Sent from my iPhone

On Apr 26, 2017, at 9:32 AM, icannlists <icannlists@winston.com> wrote:

Thanks Mary.

It is helpful, especially in noting that we need a common vocabulary. Rebecca has set forth some arguments with citations to cases and secondary sources. Her comments, which have to do with stylized marks, will need a good study and some research in advance of response. It will be impossible to respond in a clear way if stylized marks are lumped in by Kathy's omnibus definition.

Thanks Rebecca.

I'm looking forward to reading through your recent substantive post in more detail. In the interim, though, let's consider whether or not we are accidently baking in a presupposition that just because a mark is registered in a stylized version that the textual elements are inherently descriptive without secondary meaning or generic. The example of the stylized version of Coca Cola (Stylized) is a great example since it is neither of those things, even when it appears in the special font (which can apparently be found here: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.dafont.c...).

More soon.

Best, Palu

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 26, 2017 9:33 AM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; J. Scott Evans <jsevans@adobe.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

If staff may be permitted to add further notes to this discussion, may I suggest that discussion recall what the basic question seems to be, i.e. whether the TMCH was intended to accept “word marks” that are not purely composed of text/letter/numeral/standard characters, and, if so, to what extent (e.g. stylized text marks vs stylized text with or integrated with graphics vs entirely graphical representations?

From ongoing Working Group discussions, it seems clear that the analysis is complicated by at least two fundamental challenges – (1) there is no universal definition or agreement as to what constitutes a “design mark” (nor is that phrase used as a definitive term in many jurisdictions); and (2) the scope of protection afforded to such marks (or even to stylized text marks).

Here’s how the US Patent & Trademark Office (USPTO) explains stylized text and standard character marks in “plain English”: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g...; and here’s how the European Union IP Office (EUIPO) explains the various types of trademarks: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feuipo.europ.... More detailed information about EU practice on what is known as “figurative marks” can be found in the Common Communication issued in October 2015 on the so-called Convergence Program no. 3: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.tmdn.or... - and Working Group members much more knowledgeable about US, EU (including Community Trademark) and other jurisdictions’ treatment of registrable marks can add to this or correct me.

One basic principle determining the final structure and scope of the TMCH was that it should not differentiate between jurisdictions in its treatment of and acceptance of marks, whether that differentiation was to require (or not) so-called substantive review/evaluation, or in the types of word marks that afforded legal rights in the mark as a source identifier (hence, incidentally, the inclusion of “marks protected by statute or treaty”). This principle was noted multiple times throughout the process of community consultation on the evolution of the Applicant Guidebook (AGB).

As such, and returning to the basic question outlined above, the analysis of Deloitte’s guidelines and practices could also focus on whether or not these align with the intent and principles underlying the TMCH as described in the AGB.

I don’t know if the above is helpful, but offer it in the hope that it might be.

Cheers Mary

On 4/26/17, 10:14, "gnso-rpm-wg-bounces@icann.org on behalf of Rebecca Tushnet" <gnso-rpm-wg-bounces@icann.org on behalf of Rebecca.Tushnet@law.georgetown.edu> wrote:

According to the Second Circuit, the only court to my knowledge to address the issue, PARENTS is a descriptive term for a magazine about parenting; the stylized version is protectable, but not the word. For your convenience, it's Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) ("the trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word 'parent,' such term being more generic than descriptive."). If you have other citations, or even a specific section of McCarthy, I'd be happy to talk about it. Below, I reproduce McCarthy section 11:30 on stylized marks (images omitted).

I don't dislike the RPMs; if I did, I'd just be advocating to get rid of them. I do think that Deloitte ignored the limits on what should go into the TMCH, and those limits exist for a good reason. I see the proposal on the table as a solution to that problem. What solutions do you see?

2 McCarthy on Trademarks and Unfair Competition § 11:30 (4th ed.)

Even if a descriptive word or composite of words is not registrable as a trademark, a distinctive display of the words is registrable in the same way as any distinctive picture.1 For example, while the term CONSTRUCT-A-CLOSET is merely descriptive of components used to construct storage systems in a closet, the illustrated distinctive display of the words was held to present a distinctive design which is registrable with the words per se disclaimed.2 But such a picture registration is not infringed by use of the exact same words in a significantly different letter style or display.3

For example, where plaintiff owned a registration of the word TEEN in upper case block letters, preceded by an apostrophe, for magazines, the court refused to enjoin PEOPLE magazine's use of TEEN PEOPLE for a magazine aimed at teenagers. The court found that the word “Teen” in plaintiff's registration, apart from its particular stylized presentation, was “an extremely weak mark,” not strong enough that confusion was likely to result from defendant's TEEN PEOPLE magazine mark.4

The Federal Circuit held that the distinctive display of the descriptive words THE SOFA & CHAIR COMPANY (Fig. 11:30B) was registerable, but that a disclaimer of the words apart from the display was necessary because distinctiveness was proven only for the display of the words, not the words themselves.5

Secondary meaning in descriptive words shown in a stylized presentation or logo does not give distinctiveness to the words alone, apart from the distinctive graphic image.6

1

See discussion of the parallel issue of distinctive display of generic names at § 12:40. See T.R. Lee, E.D. DeRosia & G.L. Christensen, An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L. Jour. 1033, 1099 (2009) (“If a descriptive word mark is presented in a spatial placement, size and style that matches the consumer's schematic mental model of what a product package and brand look like, the word may be perceived as a source indicator even if its semantic meaning is ‘merely descriptive.’”). Author's Comment: The authors conclude that this observation “debunks” the premise of the traditional spectrum of distinctiveness. I think the authors erroneously conflate a word with the way in which the word is visually displayed. The two may consist of two different trademarks.

2

In re Clutter Control, Inc., 231 U.S.P.Q. 588 (T.T.A.B. 1986).

3

Chicago Reader, Inc. v. Metro College Publishing, Inc., 495 F. Supp. 441, 211 U.S.P.Q. 411 (N.D. Ill. 1980) (while registration of descriptive term in distinctive type style and lettering is a strong mark, it is not infringed by use in a different lettering style).

4

Time, Inc. v. Petersen Pub. Co., 976 F. Supp. 263, 44 U.S.P.Q.2d 1478 (S.D.N.Y. 1997) (“Its ‘TEEN trademark in its distinctive style does not entitle Petersen to prevent a competitor from using the generic word ‘teen’ as part of a different trademark, to denote a magazine that is targeted to teenagers.”). See later proceedings at Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 50 U.S.P.Q.2d 1474 (2d Cir. 1999) (affirming jury verdict of no infringement, court of appeals remarked that: “[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself.”).

5

In re K-T Zoe Furniture, 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir. 1994) (“[T]he words and the stylized script of ‘the sofa & chair company’ are separable elements and that only the script design of the words was shown to have acquired secondary meaning.”).

6

Leejay v. Bed, Bath & Beyond, Inc., 942 F. Supp. 699, 40 U.S.P.Q.2d 1209 (D. Mass. 1996) (while the plaintiff's stylized presentation of the descriptive words “bed & bath” for retail stores selling items for the bedroom and bathroom may have acquired secondary meaning, the words themselves have no secondary meaning).

Rebecca Tushnet Georgetown Law 703 593 6759

...

On Wed, Apr 26, 2017 at 9:53 AM, J. Scott Evans <jsevans@adobe.com> wrote: I don't need a citation for black letter trademark. I can point you to McCarthy. I am fully aware that cause celeb with some IP academics is word exhaustion. However, ignoring that PARENTS is a suggestive mark for publications or that certain, even if initially descriptive, can become (at least in the US) a strong mark. I get you are fundamentally opposed to any mark having protection beyond its goods and services (even though both the ACPA and Dilution both embrace those concepts). I also know that trademark law is very fact specific with multi-factored tests to prove infringement. For this reason, you and I could throw citations to support our positions all day long. Let's focus on solutions. I acknowledge you dislike the RPMs and think they are overreaching.

Sent from my iPhone

...

On Apr 26, 2017, at 6:44 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:

Citation needed. Rebecca Tushnet Georgetown Law 703 593 6759

...

On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans@adobe.com> wrote: Rebecca:

You are simply wrong on the law.

Sent from my iPhone

...

On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:

How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759

...

On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: +1 Brian B. and J. Scott.

The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.

Best,

Paul

From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org

Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.

J. Scott

Sent from my iPhone

On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:

Kathy,

It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.

In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.

It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.

Brian

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...

Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.

If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.

Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy

On 4/19/2017 8:23 PM, icannlists wrote:

Hi Kathy,

Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.

I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:

1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).

We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.

==> The category is meant to be comprehensive and international.

2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.

This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.

==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:

“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....

==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.

==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:

[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."

"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."

"Here is an example of a standard character mark:

<image001.jpg>"

"Here are some examples of special form marks:

<image002.jpg> <image003.jpg>

<image004.jpg>"

Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....

The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.

Best, Kathy

3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.

In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.

4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.

I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.

5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.

Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).

I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.

Best,

Paul

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Hi All,

As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.

Text below and also attached as a PDF.

Best, Kathy

------------------------------------------------------

Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)

We (the RPM Working Group) have found a problem:

1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).

2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.

3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.

4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.

5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.

Expanded Discussion

A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board

The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:

“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....

Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:

“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)

The Applicant Guidebook adopted the same requirements, as it must and should, namely:

“3.2:Standards for inclusion in the Clearinghouse

3.2.1 Nationally or regionally registered word marks from all jurisdictions”

Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.

B. Harm from the Current Form

The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.

It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).

C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks

Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.

In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:

“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.

“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”

Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,

Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.

Cir. 2016).

D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.

As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.

The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:

“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”

To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.

II. Breach and Correction

Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.

Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.

Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.

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Rebecca, I think we could get a bit more done if the rhetoric could be cooled off a bit. "That includes being honest about..." implies that someone is being dishonest. I am married to an academic, so I understand that the discourse can sometimes be heated within the academic community. However, out here in the practicing world, a collegial tone coupled with supported arguments is what wins the day. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 11:48 AM To: icannlists <icannlists@winston.com> Cc: Mary Wong <mary.wong@icann.org>; J. Scott Evans <jsevans@adobe.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I should clarify that I think the arguments for exclusion are much stronger with respect to design and design + word marks, and shouldn't even need much discussion given the clarity with which ICANN specified what should not be included. I'm not trying to upset the applecart; I'd just like to make sure it's full of apples. What we have when the text portions of text-plus marks enter the TMCH is something that may or may not be an apple: maybe it's inherently distinctive, or has secondary meaning, or is merely descriptive or generic. We don't know absent further substantive examination. If we want Deloitte making substantive determinations, then we should have it go all the way and limit by goods/services, at the very least. But there was a lot of insistence, as Mary reminds us, that the TMCH should accept national determinations. That includes being honest about what the national determination actually was, in the case of a registration (or statute, or court ruling). Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 12:32 PM, icannlists <icannlists@winston.com> wrote:

Thanks Mary.

It is helpful, especially in noting that we need a common vocabulary. Rebecca has set forth some arguments with citations to cases and secondary sources. Her comments, which have to do with stylized marks, will need a good study and some research in advance of response. It will be impossible to respond in a clear way if stylized marks are lumped in by Kathy's omnibus definition.

Thanks Rebecca.

I'm looking forward to reading through your recent substantive post in more detail. In the interim, though, let's consider whether or not we are accidently baking in a presupposition that just because a mark is registered in a stylized version that the textual elements are inherently descriptive without secondary meaning or generic. The example of the stylized version of Coca Cola (Stylized) is a great example since it is neither of those things, even when it appears in the special font (which can apparently be found here: http://www.dafont.com/loki-cola.font).

More soon.

Best, Palu

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 26, 2017 9:33 AM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; J. Scott Evans <jsevans@adobe.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

If staff may be permitted to add further notes to this discussion, may I suggest that discussion recall what the basic question seems to be, i.e. whether the TMCH was intended to accept “word marks” that are not purely composed of text/letter/numeral/standard characters, and, if so, to what extent (e.g. stylized text marks vs stylized text with or integrated with graphics vs entirely graphical representations?

From ongoing Working Group discussions, it seems clear that the analysis is complicated by at least two fundamental challenges – (1) there is no universal definition or agreement as to what constitutes a “design mark” (nor is that phrase used as a definitive term in many jurisdictions); and (2) the scope of protection afforded to such marks (or even to stylized text marks).

Here’s how the US Patent & Trademark Office (USPTO) explains stylized text and standard character marks in “plain English”: https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...; and here’s how the European Union IP Office (EUIPO) explains the various types of trademarks: https://euipo.europa.eu/ohimportal/en/trade-mark-definition. More detailed information about EU practice on what is known as “figurative marks” can be found in the Common Communication issued in October 2015 on the so-called Convergence Program no. 3: https://www.tmdn.org/network/documents/10181/278891cf-6e4a-41ad-b8d8-1e0795c... - and Working Group members much more knowledgeable about US, EU (including Community Trademark) and other jurisdictions’ treatment of registrable marks can add to this or correct me.

One basic principle determining the final structure and scope of the TMCH was that it should not differentiate between jurisdictions in its treatment of and acceptance of marks, whether that differentiation was to require (or not) so-called substantive review/evaluation, or in the types of word marks that afforded legal rights in the mark as a source identifier (hence, incidentally, the inclusion of “marks protected by statute or treaty”). This principle was noted multiple times throughout the process of community consultation on the evolution of the Applicant Guidebook (AGB).

As such, and returning to the basic question outlined above, the analysis of Deloitte’s guidelines and practices could also focus on whether or not these align with the intent and principles underlying the TMCH as described in the AGB.

I don’t know if the above is helpful, but offer it in the hope that it might be.

Cheers Mary

On 4/26/17, 10:14, "gnso-rpm-wg-bounces@icann.org on behalf of Rebecca Tushnet" <gnso-rpm-wg-bounces@icann.org on behalf of Rebecca.Tushnet@law.georgetown.edu> wrote:

According to the Second Circuit, the only court to my knowledge to address the issue, PARENTS is a descriptive term for a magazine about parenting; the stylized version is protectable, but not the word. For your convenience, it's Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) ("the trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word 'parent,' such term being more generic than descriptive."). If you have other citations, or even a specific section of McCarthy, I'd be happy to talk about it. Below, I reproduce McCarthy section 11:30 on stylized marks (images omitted).

I don't dislike the RPMs; if I did, I'd just be advocating to get rid of them. I do think that Deloitte ignored the limits on what should go into the TMCH, and those limits exist for a good reason. I see the proposal on the table as a solution to that problem. What solutions do you see?

2 McCarthy on Trademarks and Unfair Competition § 11:30 (4th ed.)

Even if a descriptive word or composite of words is not registrable as a trademark, a distinctive display of the words is registrable in the same way as any distinctive picture.1 For example, while the term CONSTRUCT-A-CLOSET is merely descriptive of components used to construct storage systems in a closet, the illustrated distinctive display of the words was held to present a distinctive design which is registrable with the words per se disclaimed.2 But such a picture registration is not infringed by use of the exact same words in a significantly different letter style or display.3

For example, where plaintiff owned a registration of the word TEEN in upper case block letters, preceded by an apostrophe, for magazines, the court refused to enjoin PEOPLE magazine's use of TEEN PEOPLE for a magazine aimed at teenagers. The court found that the word “Teen” in plaintiff's registration, apart from its particular stylized presentation, was “an extremely weak mark,” not strong enough that confusion was likely to result from defendant's TEEN PEOPLE magazine mark.4

The Federal Circuit held that the distinctive display of the descriptive words THE SOFA & CHAIR COMPANY (Fig. 11:30B) was registerable, but that a disclaimer of the words apart from the display was necessary because distinctiveness was proven only for the display of the words, not the words themselves.5

Secondary meaning in descriptive words shown in a stylized presentation or logo does not give distinctiveness to the words alone, apart from the distinctive graphic image.6

1

See discussion of the parallel issue of distinctive display of generic names at § 12:40. See T.R. Lee, E.D. DeRosia & G.L. Christensen, An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L. Jour. 1033, 1099 (2009) (“If a descriptive word mark is presented in a spatial placement, size and style that matches the consumer's schematic mental model of what a product package and brand look like, the word may be perceived as a source indicator even if its semantic meaning is ‘merely descriptive.’”). Author's Comment: The authors conclude that this observation “debunks” the premise of the traditional spectrum of distinctiveness. I think the authors erroneously conflate a word with the way in which the word is visually displayed. The two may consist of two different trademarks.

2

In re Clutter Control, Inc., 231 U.S.P.Q. 588 (T.T.A.B. 1986).

3

Chicago Reader, Inc. v. Metro College Publishing, Inc., 495 F. Supp. 441, 211 U.S.P.Q. 411 (N.D. Ill. 1980) (while registration of descriptive term in distinctive type style and lettering is a strong mark, it is not infringed by use in a different lettering style).

4

Time, Inc. v. Petersen Pub. Co., 976 F. Supp. 263, 44 U.S.P.Q.2d 1478 (S.D.N.Y. 1997) (“Its ‘TEEN trademark in its distinctive style does not entitle Petersen to prevent a competitor from using the generic word ‘teen’ as part of a different trademark, to denote a magazine that is targeted to teenagers.”). See later proceedings at Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 50 U.S.P.Q.2d 1474 (2d Cir. 1999) (affirming jury verdict of no infringement, court of appeals remarked that: “[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself.”).

5

In re K-T Zoe Furniture, 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir. 1994) (“[T]he words and the stylized script of ‘the sofa & chair company’ are separable elements and that only the script design of the words was shown to have acquired secondary meaning.”).

6

Leejay v. Bed, Bath & Beyond, Inc., 942 F. Supp. 699, 40 U.S.P.Q.2d 1209 (D. Mass. 1996) (while the plaintiff's stylized presentation of the descriptive words “bed & bath” for retail stores selling items for the bedroom and bathroom may have acquired secondary meaning, the words themselves have no secondary meaning).

Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 9:53 AM, J. Scott Evans <jsevans@adobe.com> wrote: > I don't need a citation for black letter trademark. I can point you to McCarthy. I am fully aware that cause celeb with some IP academics is word exhaustion. However, ignoring that PARENTS is a suggestive mark for publications or that certain, even if initially descriptive, can become (at least in the US) a strong mark. I get you are fundamentally opposed to any mark having protection beyond its goods and services (even though both the ACPA and Dilution both embrace those concepts). I also know that trademark law is very fact specific with multi-factored tests to prove infringement. For this reason, you and I could throw citations to support our positions all day long. Let's focus on solutions. I acknowledge you dislike the RPMs and think they are overreaching. > > Sent from my iPhone > >> On Apr 26, 2017, at 6:44 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >> >> Citation needed. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >>> On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans@adobe.com> wrote: >>> Rebecca: >>> >>> You are simply wrong on the law. >>> >>> Sent from my iPhone >>> >>>> On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >>>> >>>> How does stylization translate into the DNS? We know that stylized >>>> PARENTS and OWN YOUR POWER, to take two examples already discussed, >>>> provide no trademark rights in the words "parents" and "own your >>>> power." Accepting stylized versions, as Deloitte currently does, thus >>>> gives TMCH protection to words as to which there is no underlying >>>> trademark protection. "Text" is not an invention by ICANN. >>>> Rebecca Tushnet >>>> Georgetown Law >>>> 703 593 6759 >>>> >>>> >>>>> On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: >>>>> +1 Brian B. and J. Scott. >>>>> >>>>> >>>>> >>>>> The T Markey (stylized) example Kathy gave proves the point I am trying to >>>>> make. There is nothing about that mark which would not translate into the >>>>> DNS or would limit analysis of it by a trademark office on absolute grounds. >>>>> So long as we continue to mash up Stylized marks with other design and >>>>> composite marks, we simply don’t have a functional vocabulary to have this >>>>> conversation. In other words, we have to use well established trademark >>>>> vocabulary to talk about trademarks. We can’t invent our own language and >>>>> then evaluate the TMCH rules through the new language rather than the >>>>> language it was written in. >>>>> >>>>> >>>>> >>>>> Best, >>>>> >>>>> Paul >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> From: J. Scott Evans [mailto:jsevans@adobe.com] >>>>> Sent: Wednesday, April 26, 2017 6:41 AM >>>>> To: Beckham, Brian <brian.beckham@wipo.int> >>>>> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists >>>>> <icannlists@winston.com>; gnso-rpm-wg@icann.org >>>>> >>>>> >>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design >>>>> Mark and Appropriate Balance) >>>>> >>>>> >>>>> >>>>> I have several problems with this proposal too. Kathy's conclusory statement >>>>> about how he breadth of protection afforded by a composite or stylized mark >>>>> is incorrect. Second, and more importantly, I am bothered by all the >>>>> hyperbole and accusatory language like "breach", etc. this language is >>>>> emotional and charged with negativity. I think it is inappropriate and not >>>>> productive. >>>>> >>>>> >>>>> >>>>> J. Scott >>>>> >>>>> Sent from my iPhone >>>>> >>>>> >>>>> On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: >>>>> >>>>> Kathy, >>>>> >>>>> >>>>> >>>>> It’s not clear that the reference to “only marks registered as text” is >>>>> necessarily incompatible with the “T. MARKEY” examples provided. The >>>>> second, stylized version shows a “mark registered as text”. It simply >>>>> happens to be text in a stylized (non-standard) form. >>>>> >>>>> >>>>> >>>>> In other words, a mark “registered as text” may not necessarily be >>>>> exclusively the same as (in USPTO parlance) “a standard character mark”. >>>>> >>>>> >>>>> >>>>> It may therefore not be entirely accurate to suggest that if the TMCH >>>>> allowed the second “T. MARKEY” example in stylized form (again, arguably a >>>>> mark “registered as text”) versus the standard character version, it would >>>>> somehow be “expand[ing] existing trademark rights”. >>>>> >>>>> >>>>> >>>>> Brian >>>>> >>>>> >>>>> >>>>> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] >>>>> On Behalf Of Kathy Kleiman >>>>> Sent: Wednesday, April 26, 2017 5:12 AM >>>>> To: icannlists; gnso-rpm-wg@icann.org >>>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design >>>>> Mark and Appropriate Balance) >>>>> >>>>> >>>>> >>>>> Hi Paul, >>>>> Apologies. I saw your thanks, but not your notes farther down. (For those of >>>>> us skimming hundreds of emails, feel free to use use >>>>> red/green/stars/asterisks to designate comments...) I caught it on a >>>>> re-read... >>>>> >>>>> Quick note that the purpose of this recommendation is to share what is >>>>> clearly before the Working Group: that rules created for the Trademark >>>>> Clearinghouse process are not being followed. The goal is not to delve into >>>>> motive or intent, but rather compliance and review. The actions of our TMCH >>>>> database provider, as an ICANN contractor, must follow and comply with the >>>>> rules as set out by the ICANN Community. >>>>> >>>>> If we want to change the rules, that's fine; we can do it by consensus. But >>>>> until that happens, the rules adopted unanimously by the GNSO Council and >>>>> ICANN Board are the policy. It's not for third parties to make their own or >>>>> follow a different set. >>>>> >>>>> Paul, I'll respond to what I think are your questions below. My answers are >>>>> preceded by => >>>>> Best, Kathy >>>>> >>>>> >>>>> On 4/19/2017 8:23 PM, icannlists wrote: >>>>> >>>>> Hi Kathy, >>>>> >>>>> >>>>> >>>>> Thank you so much for being willing to put forward a proposal. I know this >>>>> is hard work (having put forward one on the GIs myself this week!) so it is >>>>> appreciated. >>>>> >>>>> >>>>> >>>>> I am getting my initial thoughts on this out to the list on this as quickly >>>>> as possible in the hopes that your proposal can be reworked a bit prior to >>>>> our next WG call. A few thoughts: >>>>> >>>>> >>>>> >>>>> 1. We have learned that Deloitte is accepting the words of design >>>>> marks, composite marks, figurative marks, stylized marks, mixed marks, and >>>>> any similar combination of characters and design (collectively “design >>>>> marks”). >>>>> >>>>> >>>>> >>>>> We spent the better half of our last call untangling these definitions and >>>>> to see them lumped in together again when these are not the same things >>>>> makes the proposal impossible to read for we trademark folks. It would be >>>>> great if we could include the clarity we achieved last week. >>>>> >>>>> ==> The category is meant to be comprehensive and international. >>>>> >>>>> >>>>> >>>>> >>>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>>> expressly bar the acceptance of design marks into the TMCH Database. >>>>> >>>>> >>>>> >>>>> >>>>> This is just inaccurate as written, mostly, but not entirely, by the way you >>>>> have defined the terms. For example, I know of no GNSO Council prohibition >>>>> that would reject a mark just because it is in a cursive font instead of >>>>> plain block font. Can you either fix this or send us to a link supporting >>>>> the claim? Perhaps if you unpack your collective definition, resulting a >>>>> more precise claim and provide the link, that might give us something to >>>>> talk about. As written now, I’ve just come to a halt on it because it >>>>> doesn’t reflect the facts on the ground. >>>>> >>>>> ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded >>>>> Discussion" discussion which follows in my recommendation directly below the >>>>> opening section and explains exactly where this sentence comes from and what >>>>> it references. I'm happy to paste some of this discussion here too. The STI >>>>> Final Report (adopted by GNSO Council and ICANN Board) stated: >>>>> >>>>> “The TC Database should be required to include nationally or multinationally >>>>> registered “text mark” trademarks, from all jurisdictions, (including >>>>> countries where there is no substantive review). (The trademarks to be >>>>> included in the TC are text marks because “design marks” provide protection >>>>> for letters and words only within the context of their design or logo and >>>>> the STI was under a mandate not to expand existing trademark rights.) >>>>> Emphasis added. Section 4.1, National or Multinational Registered Marks, >>>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti... >>>>> >>>>> >>>>> >>>>> ==> The words mean exactly what they say - only marks registered as text can >>>>> be registered into the Trademark Clearinghouse; nothing that "provide[s] >>>>> protection for letters and words only within the content of their design or >>>>> logo." It states why: "the STI was under a mandate not to expand existing >>>>> trademark rights." The issue was the balancing of underlying concept adopted >>>>> here as part of the rights of trademark owners and the rights of current and >>>>> future registrants. Domain names are text based. >>>>> >>>>> >>>>> ==> We certainly meant to differentiate a trademark in a "cursive font >>>>> instead of a plain text font." That's the whole purpose for Section 4.1's >>>>> text, and the unusual extra step of including the explanation right next to >>>>> it. Those of us who worked on this section (including myself and Dr. >>>>> Konstantinos Komaitis, whose PhD became the book The Current State of Domain >>>>> Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated >>>>> World) spent a lot of time on this issue. In evaluating it, the STI Final >>>>> Report followed the guidance of experts such as those at the US Trademark >>>>> Office regarding the different representation of marks: >>>>> >>>>> [USPTO Representation of Mark] "During the application process for a >>>>> standard character mark, the USPTO will depict the mark in a simple >>>>> standardized typeface format. However, it is important to remember that >>>>> this depiction does not limit or control the format in which you actually >>>>> "use" the mark. In other words, the rights associated with a mark in >>>>> standard characters reside in the wording (or other literal element, e.g., >>>>> letters, numerals, punctuation) and not in any particular display. >>>>> Therefore, registration of a standard character mark would entitle you to >>>>> use and protect the mark in any font style, size, or color. It is for this >>>>> reason that a standard character mark can be an attractive option for many >>>>> companies." >>>>> >>>>> "The stylized/design format, on the other hand, is appropriate if you wish >>>>> to register word(s) by themselves or combined to form a phrase of any length >>>>> and/or letter(s) having a particular stylized appearance, a mark consisting >>>>> of a design element, or a combination of stylized wording and a design. Once >>>>> filed, any design element will be assigned a “design code,” as set forth in >>>>> the Design Search Code Manual." >>>>> >>>>> "Here is an example of a standard character mark: >>>>> >>>>> <image001.jpg>" >>>>> >>>>> "Here are some examples of special form marks: >>>>> >>>>> <image002.jpg> <image003.jpg> >>>>> >>>>> <image004.jpg>" >>>>> >>>>> Quotes above from >>>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti... >>>>> >>>>> The rest of the recommendation follows from these finding. Again, this not a >>>>> matter of a good job or a bad job -- no value judgement is intended. Rather >>>>> it is a compliance and review issue. Are the rules followed? The answer is >>>>> no. >>>>> >>>>> Best, Kathy >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>>> adopted and must revise its practice to follow the ruls adopted by the GNSO >>>>> Council and ICANN Board for TMCH operation. >>>>> >>>>> >>>>> >>>>> In order to buy this conclusion, the premises have to be correct, but the >>>>> premises (as mentioned in 1 and 2) are not close to ready. I have to >>>>> suspend consideration of the conclusion contained in this paragraph due to >>>>> the faulty syllogism we have in front of us. Maybe if you make the edits in >>>>> 1 and 2 suggested, we can then examine whether or not your paragraph 3 >>>>> conclusion is correct, partially correct, or incorrect. >>>>> >>>>> >>>>> >>>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>>> and present the GNSO Council and ICANN Board with an expanded set of rules >>>>> that Deloitte, or any future TMCH Provider, must follow. >>>>> >>>>> I guess I don’t understand this. Are you saying that if Deloitte is not in >>>>> breach by letting in marks written in cursive fonts, then the WG can by >>>>> Consensus propose changes? I’m not sure that the two things are connected. >>>>> >>>>> >>>>> >>>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>>> Further details, information and explanation below. >>>>> >>>>> >>>>> >>>>> Same response as #3 above. Also, this really confused paragraph 4 for me >>>>> further. It seemed like paragraph 4 indicated that if paragraph 3 were not >>>>> accurate, consensus driven solutions would be possible (again not sure those >>>>> two things are connected) but then you go on to say in 5 that conclusions in >>>>> 3 are a foregone conclusion (thus obviating any perceivable need for >>>>> paragraph 4). >>>>> >>>>> >>>>> >>>>> I’m sure other thoughts will come to me as we dig in to either this version >>>>> or an amended version, but these were the issues that jumped out at me right >>>>> away. If you could respond to the full list on this as soon as practical, I >>>>> would appreciate it. >>>>> >>>>> >>>>> >>>>> Best, >>>>> >>>>> Paul >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> >>>>> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] >>>>> On Behalf Of Kathy Kleiman >>>>> Sent: Wednesday, April 19, 2017 6:18 PM >>>>> To: gnso-rpm-wg@icann.org >>>>> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark >>>>> and Appropriate Balance) >>>>> >>>>> >>>>> >>>>> Hi All, >>>>> >>>>> As promised, I am resubmitting a new version of my earlier recommendation. >>>>> It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate >>>>> Balance). I submit this recommendation to the Working Group in my capacity >>>>> as a member and not as a co-chair. >>>>> >>>>> Text below and also attached as a PDF. >>>>> >>>>> Best, Kathy >>>>> >>>>> ------------------------------------------------------ >>>>> >>>>> >>>>> >>>>> Design Mark Recommendation for Working Group - for Question #7 and Question >>>>> #16 of TMCH Charter Questions (#7, How are design marks currently handled by >>>>> the TMCH provider?; and #16, Does the scope of the TMCH and the protections >>>>> mechanisms which flow from it reflect the appropriate balance between the >>>>> rights of trademark holders and the rights of non-trademark registrants?) >>>>> >>>>> >>>>> >>>>> We (the RPM Working Group) have found a problem: >>>>> >>>>> 1. We have learned that Deloitte is accepting the words of design >>>>> marks, composite marks, figurative marks, stylized marks, mixed marks, and >>>>> any similar combination of characters and design (collectively “design >>>>> marks”). >>>>> >>>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>>> expressly bar the acceptance of design marks into the TMCH Database. >>>>> >>>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>>> adopted and must revise its practice to follow the rules adopted by the GNSO >>>>> Council and ICANN Board for TMCH operation. >>>>> >>>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>>> and present the GNSO Council and ICANN Board with an expanded set of rules >>>>> that Deloitte, or any future TMCH Provider, must follow. >>>>> >>>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>>> Further details, information and explanation below. >>>>> >>>>> >>>>> >>>>> Expanded Discussion >>>>> >>>>> >>>>> >>>>> A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN >>>>> Board >>>>> >>>>> The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report >>>>> and IRT Recommendations) that were very clear about the type of mark to be >>>>> accepted by the Trademark Clearinghouse: >>>>> >>>>> “4.1 National or Multinational Registered Marks The TC Database should be >>>>> required to include nationally or multinationally registered “text mark” >>>>> trademarks, from all jurisdictions, (including countries where there is no >>>>> substantive review).” >>>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti... >>>>> >>>>> >>>>> >>>>> Further, the adopted rules themselves are very clear about the Harm of >>>>> putting design marks into the TMCH Database: >>>>> >>>>> “[Also 4.1] (The trademarks to be included in the TC are text marks because >>>>> “design marks” provide protection for letters and words only within the >>>>> context of their design or logo and the STI was under a mandate not to >>>>> expand existing trademark rights.) >>>>> >>>>> >>>>> >>>>> The Applicant Guidebook adopted the same requirements, as it must and >>>>> should, namely: >>>>> >>>>> “3.2:Standards for inclusion in the Clearinghouse >>>>> >>>>> 3.2.1 Nationally or regionally registered word marks from all >>>>> jurisdictions” >>>>> >>>>> >>>>> >>>>> Nonetheless, and in violation of the express rules adopted by the GNSO >>>>> Council and ICANN Board and placed into the Applicant Guidebook, TMCH >>>>> Provider Deloitte is accepting into the TMCH database words and letters it >>>>> has extracted from composite marks, figurative marks, stylized marks, >>>>> composite marks and mixed marks. Deloitte is removing words and letters from >>>>> designs, patterns, special lettering and other patterns, styles, colors, and >>>>> logos which were integral to the trademark as accepted by the national or >>>>> regional trademark office. >>>>> >>>>> >>>>> >>>>> B. Harm from the Current Form >>>>> >>>>> The harm from this acceptance is that it violates the rules under which >>>>> Deloitte is allowed to operate. It creates a situation in which Deloitte is >>>>> operating under its own authority, not that of ICANN and the ICANN >>>>> Community. Such action, in violation of rules clearly adopted by the GNSO >>>>> Council and ICANN Board and written into the New gTLD Applicant Guidebook, >>>>> gives too much power to Deloitte -- a contractor of ICANN, to make its own >>>>> rules and adopt its own protocol without regard to the scope, breadth and >>>>> reach of the governing rules. >>>>> >>>>> >>>>> >>>>> It is the type of misconduct anticipated by the GNSO Council and ICANN >>>>> Board, and why the rules demand that ICANN hold a close relationship with >>>>> the TMCH Provider by contract to allow close oversight and correction of >>>>> misinterpretation or failure to follow the rules. (See, 3.1 in Relationship >>>>> with ICANN, Special Trademark Issues Review Team Recommendations). >>>>> >>>>> >>>>> >>>>> C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version >>>>> of the Registration Marks >>>>> >>>>> Further, words and letters within a composite marks, figurative marks, >>>>> stylized marks, and mixed marks are protected within the scope of the >>>>> designs, logos, lettering, patterns, colors, etc. That's not a Working Group >>>>> opinion, that's a legal opinion echoed through case law and UDRP decisions. >>>>> >>>>> >>>>> >>>>> In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. >>>>> D2012-1064, the Panel found: >>>>> >>>>> “Complainant has shown that it owns two trademark registrations in >>>>> Argentina. The Panel notes that both registrations are for “mixed” marks, >>>>> where each consists of a composition made of words and graphic elements, >>>>> such as stylized fonts, a roof of a house, etc. See details of the >>>>> registrations with drawings at section 4 above. >>>>> >>>>> >>>>> >>>>> “As explained on the INPI website, “[m] ixed (marks) are those constituted >>>>> by the combination of word elements and figurative elements together, or of >>>>> word elements in stylized manner.” Accordingly, the protection granted by >>>>> the registration of a mixed mark is for the composition as a whole, and not >>>>> for any of its constituting elements in particular. Thus, Complainant is not >>>>> correct when he asserts that it has trademark rights in the term “cabañas” >>>>> (standing alone), based on these mixed trademark registrations.” >>>>> >>>>> >>>>> >>>>> Similarly, in the US, federal courts have found that the presumption of >>>>> trademark validity provided by registration does not extend to the >>>>> non-stylized versions of the registration marks. See e.g., >>>>> >>>>> Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. >>>>> 2005) (registration of stylized mark didn’t extend protection to nonstylized >>>>> uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing >>>>> with special form mark whose words were unprotectable absent stylization), >>>>> aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. >>>>> >>>>> Cir. 2016). >>>>> >>>>> >>>>> >>>>> D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN >>>>> Board Agreed to Provide Trademark Owners. >>>>> >>>>> >>>>> >>>>> As has been pointed out in our Working Group calls, the STI evaluations and >>>>> IRT evaluations were long and hard and both groups decided in their >>>>> recommendations to protect only the word mark – the text itself when the >>>>> text was registered by itself. Neither allowed for the extraction of a word >>>>> or letters from amidst a pattern, style, composite or mixed marks; neither >>>>> created a process for doing so; neither accorded the discretion to the TMCH >>>>> Provider (now Deloitte) to adopt any processes to handle this process >>>>> independently. >>>>> >>>>> >>>>> >>>>> The STI clearly elaborated its reasoning: that extracting a word or letters >>>>> from a larger design, gives too many rights to one trademark owner over >>>>> others using the same words or letters. As clearly elaborated in the STI >>>>> Recommendations and adopted by the GNSO Council and ICANN Board >>>>> (unanimously), it would be an unfair advantage for one trademark owner over >>>>> others using the same words or letters. Specifically: >>>>> >>>>> “(The trademarks to be included in the TC are text marks because “design >>>>> marks” provide protection for letters and words only within the context of >>>>> their design or logo and the STI was under a mandate not to expand existing >>>>> trademark rights.)” >>>>> >>>>> >>>>> >>>>> To the extent that Deloitte as a TMCH Provider is operating within its >>>>> mandate, and the limits of the rules and contract imposed on it, it may not >>>>> take steps to expand existing trademark rights. The rights, as granted by >>>>> national and regional trademark offices are rights that expressly include >>>>> the patterns, special lettering and other styles, colors, and logos that are >>>>> a part of the trademark granted by the Trademark Office and certification >>>>> provided by each Trademark Office and presented to the Trademark >>>>> Clearinghouse. >>>>> >>>>> >>>>> >>>>> II. Breach and Correction >>>>> >>>>> >>>>> >>>>> Accordingly, Deloitte is in breach of the rules that ICANN adopted and must >>>>> revise its practice to go to follow the rules adopted by the GNSO Council >>>>> and ICANN Board. Deloitte’s extraction of words and letters from patterns, >>>>> special lettering, styles, colors and logos, as outlined above, violates the >>>>> rules adopted by the GNSO Council and ICANN Board for the Trademark >>>>> Clearinghouse operation. >>>>> >>>>> >>>>> >>>>> Bringing Deloitte’s operation of the TMCH – and its terms and requirements - >>>>> rules does not require a consensus of the Working Group. Rather, it is a >>>>> fundamental aspect of our job as a Working Group, as laid out by the GNSO >>>>> Council in our charter, to review the operation of the Trademark >>>>> Clearinghouse in compliance with its rules. As Deloitte is not operating in >>>>> compliance with its rules in this area, it is in breach and must come into >>>>> compliance. The excellent work of the Working Group in this area, and >>>>> finding this problem through hard work and research, should be sufficient >>>>> for ICANN Staff to act in enforcement of its contract and our rules. Point >>>>> it out clearly and directly to Deloitte, to ICANN Board and Staff, and to >>>>> the ICANN Community is one small additional step the Working Group might >>>>> take. >>>>> >>>>> >>>>> >>>>> Alternatively, the Working Group by consensus may CHANGE the rules and >>>>> present to the GNSO Council and ICANN Board a new set of standards by which >>>>> Deloitte (or any future TMCH provider) may use to accept the design and >>>>> stylized marks currently barred by the rules. But such a step would require >>>>> a change to the ICANN rules under which the Trademark Clearinghouse operate, >>>>> and then acceptance by the GNSO Council and ICANN Board. ICANN contractors >>>>> do not have the unilateral power to make their own rules or to change the >>>>> rule that are given them. >>>>> >>>>> >>>>> >>>>> ________________________________ >>>>> >>>>> The contents of this message may be privileged and confidential. If this >>>>> message has been received in error, please delete it without reading it. >>>>> Your receipt of this message is not intended to waive any applicable >>>>> privilege. Please do not disseminate this message without the permission of >>>>> the author. Any tax advice contained in this email was not intended to be >>>>> used, and cannot be used, by you (or any other taxpayer) to avoid penalties >>>>> under applicable tax laws and regulations. >>>>> >>>>> >>>>> >>>>> World IP Day 2017 – Join the conversation >>>>> >>>>> Web: https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti... >>>>> >>>>> Facebook: https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti... >>>>> >>>>> >>>>> >>>>> World Intellectual Property Organization Disclaimer: This electronic message >>>>> may contain privileged, confidential and copyright protected information. 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________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

The stylized PARENTS mark was part of the test set sent to Deloitte; without an audit, it's pretty hard to check other problematic examples. What are your examples of marks that really should be in the TMCH that wouldn't be allowed if Deloitte was directed to adhere to the text-only rule? Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 11:38 AM, Colin O'Brien <colin@partridgepartnerspc.com> wrote:

It is extremely frustrating to read hundreds of emails which are focusing on mere conjecture. There have been numerous references to PARENTS but the term is not even in the TMCH! I just registered parents.coach. Also, Gruner + Jahr USA owns word mark registrations for PARENTS (Reg. Nos. 2631504, 2461585) and, as such, it would be entitled to enter the mark into the TMCH if it wished.

Scott Austin raised a very valid question " why should the presence of stylization or even a design with text negate the use of that text for string comparison in the DNS?" For those who are so adamant that this is a grave injustice please provide actual evidence of the harm that has been done by Deloitte.

Thanks

Colin Thomas Jefferson O’Brien

321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:14 AM To: J. Scott Evans; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

According to the Second Circuit, the only court to my knowledge to address the issue, PARENTS is a descriptive term for a magazine about parenting; the stylized version is protectable, but not the word. For your convenience, it's Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) ("the trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word 'parent,' such term being more generic than descriptive."). If you have other citations, or even a specific section of McCarthy, I'd be happy to talk about it. Below, I reproduce McCarthy section 11:30 on stylized marks (images omitted).

I don't dislike the RPMs; if I did, I'd just be advocating to get rid of them. I do think that Deloitte ignored the limits on what should go into the TMCH, and those limits exist for a good reason. I see the proposal on the table as a solution to that problem. What solutions do you see?

2 McCarthy on Trademarks and Unfair Competition § 11:30 (4th ed.)

Even if a descriptive word or composite of words is not registrable as a trademark, a distinctive display of the words is registrable in the same way as any distinctive picture.1 For example, while the term CONSTRUCT-A-CLOSET is merely descriptive of components used to construct storage systems in a closet, the illustrated distinctive display of the words was held to present a distinctive design which is registrable with the words per se disclaimed.2 But such a picture registration is not infringed by use of the exact same words in a significantly different letter style or display.3

For example, where plaintiff owned a registration of the word TEEN in upper case block letters, preceded by an apostrophe, for magazines, the court refused to enjoin PEOPLE magazine's use of TEEN PEOPLE for a magazine aimed at teenagers. The court found that the word “Teen” in plaintiff's registration, apart from its particular stylized presentation, was “an extremely weak mark,” not strong enough that confusion was likely to result from defendant's TEEN PEOPLE magazine mark.4

The Federal Circuit held that the distinctive display of the descriptive words THE SOFA & CHAIR COMPANY (Fig. 11:30B) was registerable, but that a disclaimer of the words apart from the display was necessary because distinctiveness was proven only for the display of the words, not the words themselves.5

Secondary meaning in descriptive words shown in a stylized presentation or logo does not give distinctiveness to the words alone, apart from the distinctive graphic image.6

1

See discussion of the parallel issue of distinctive display of generic names at § 12:40. See T.R. Lee, E.D. DeRosia & G.L. Christensen, An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L. Jour. 1033, 1099 (2009) (“If a descriptive word mark is presented in a spatial placement, size and style that matches the consumer's schematic mental model of what a product package and brand look like, the word may be perceived as a source indicator even if its semantic meaning is ‘merely descriptive.’”). Author's Comment: The authors conclude that this observation “debunks” the premise of the traditional spectrum of distinctiveness. I think the authors erroneously conflate a word with the way in which the word is visually displayed. The two may consist of two different trademarks.

2

In re Clutter Control, Inc., 231 U.S.P.Q. 588 (T.T.A.B. 1986).

3

Chicago Reader, Inc. v. Metro College Publishing, Inc., 495 F. Supp. 441, 211 U.S.P.Q. 411 (N.D. Ill. 1980) (while registration of descriptive term in distinctive type style and lettering is a strong mark, it is not infringed by use in a different lettering style).

4

Time, Inc. v. Petersen Pub. Co., 976 F. Supp. 263, 44 U.S.P.Q.2d 1478 (S.D.N.Y. 1997) (“Its ‘TEEN trademark in its distinctive style does not entitle Petersen to prevent a competitor from using the generic word ‘teen’ as part of a different trademark, to denote a magazine that is targeted to teenagers.”). See later proceedings at Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 50 U.S.P.Q.2d 1474 (2d Cir. 1999) (affirming jury verdict of no infringement, court of appeals remarked that: “[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself.”).

5

In re K-T Zoe Furniture, 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir. 1994) (“[T]he words and the stylized script of ‘the sofa & chair company’ are separable elements and that only the script design of the words was shown to have acquired secondary meaning.”).

6

Leejay v. Bed, Bath & Beyond, Inc., 942 F. Supp. 699, 40 U.S.P.Q.2d 1209 (D. Mass. 1996) (while the plaintiff's stylized presentation of the descriptive words “bed & bath” for retail stores selling items for the bedroom and bathroom may have acquired secondary meaning, the words themselves have no secondary meaning).

Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 9:53 AM, J. Scott Evans <jsevans@adobe.com> wrote:

...

I don't need a citation for black letter trademark. I can point you to McCarthy. I am fully aware that cause celeb with some IP academics is word exhaustion. However, ignoring that PARENTS is a suggestive mark for publications or that certain, even if initially descriptive, can become (at least in the US) a strong mark. I get you are fundamentally opposed to any mark having protection beyond its goods and services (even though both the ACPA and Dilution both embrace those concepts). I also know that trademark law is very fact specific with multi-factored tests to prove infringement. For this reason, you and I could throw citations to support our positions all day long. Let's focus on solutions. I acknowledge you dislike the RPMs and think they are overreaching.

Sent from my iPhone

...

On Apr 26, 2017, at 6:44 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:

Citation needed. Rebecca Tushnet Georgetown Law 703 593 6759

...

On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans@adobe.com> wrote: Rebecca:

You are simply wrong on the law.

Sent from my iPhone

...

On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:

How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759

...

On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: +1 Brian B. and J. Scott.

The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.

Best,

Paul

From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org

Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.

J. Scott

Sent from my iPhone

On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:

Kathy,

It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.

In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.

It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.

Brian

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...

Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.

If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.

Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy

On 4/19/2017 8:23 PM, icannlists wrote:

Hi Kathy,

Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.

I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:

1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).

We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.

==> The category is meant to be comprehensive and international.

2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.

This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.

==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:

“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fg nso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09 -en.pdf&data=02%7C01%7C%7C9634d6087c074d32337508d48ca96206%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C1%7C636288106505848556&sdata=hiv 9%2Fm8w018T3t1y%2FbUYhcAiim2riM%2BPNuF15BkTY%2F0%3D&reserved=0

==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.

==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:

[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."

"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."

"Here is an example of a standard character mark:

<image001.jpg>"

"Here are some examples of special form marks:

<image002.jpg> <image003.jpg>

<image004.jpg>"

Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fw ww.uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frep resentation-mark&data=02%7C01%7C%7C9634d6087c074d32337508d48ca9620 6%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288106505848556& sdata=71xhrgyiegxP1VDZdQa0adJW2eu5zd6KP6QTmKAi8d8%3D&reserved=0

The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.

Best, Kathy

3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.

In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.

4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.

I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.

5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.

Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).

I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.

Best,

Paul

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Hi All,

As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.

Text below and also attached as a PDF.

Best, Kathy

------------------------------------------------------

Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)

We (the RPM Working Group) have found a problem:

1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).

2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.

3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.

4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.

5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.

Expanded Discussion

A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board

The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:

“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fg nso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09 -en.pdf&data=02%7C01%7C%7C9634d6087c074d32337508d48ca96206%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C1%7C636288106505848556&sdata=hiv 9%2Fm8w018T3t1y%2FbUYhcAiim2riM%2BPNuF15BkTY%2F0%3D&reserved=0

Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:

“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)

The Applicant Guidebook adopted the same requirements, as it must and should, namely:

“3.2:Standards for inclusion in the Clearinghouse

3.2.1 Nationally or regionally registered word marks from all jurisdictions”

Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.

B. Harm from the Current Form

The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.

It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).

C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks

Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.

In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:

“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.

“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”

Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,

Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.

Cir. 2016).

D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.

As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.

The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:

“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”

To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.

II. Breach and Correction

Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.

Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.

Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.

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On 26/4/17 9:00 am, Colin O'Brien wrote:

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

Correct. In fact, every owner of a mark ACME can register in the TMCH. 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@adobe.com www.adobe.com On 4/26/17, 10:41 AM, "gnso-rpm-wg-bounces@icann.org on behalf of Silver, Bradley via gnso-rpm-wg" <gnso-rpm-wg-bounces@icann.org on behalf of gnso-rpm-wg@icann.org> wrote: Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) On 26/4/17 9:00 am, Colin O'Brien wrote: > Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise. The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat... jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org... PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ====================================================================== Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. ================================================================= _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...

Over 36,000 registrations in the TMCH. Approximately 130 Sunrise Registrations per new gTLD. I just don’t see the enormous encroachment you are complaining about. Not to mention that Sunrise is limited to exact string. So, cloud.tld doesn’t prevent registration of ihatecloud.tld, clouds.tld, ilovecloud.tld. 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@adobe.com www.adobe.com On 4/26/17, 10:46 AM, "gnso-rpm-wg-bounces@icann.org on behalf of Jeremy Malcolm" <gnso-rpm-wg-bounces@icann.org on behalf of jmalcolm@eff.org> wrote: On 26/4/17 10:41 am, Silver, Bradley wrote: > Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored. The sunrise period can allow the owner of (to use Rebecca's example) the PARENTS stylized mark to seize the parents.forum domain to the exclusion of someone who wants to run a parenting forum. Call it an exclusive right or whatever you want, but it goes further than trademark law. A rose by any other name... -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat... jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org... PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

FIFY. The sunrise period can allow the owner of (to use Rebecca's example) the PARENTS stylized mark who must have paid to register that as a TM and complied with all of the relevant IPO/legal requirements therefore so, inter alia, don’t want their consumers to be confused to seize pay to register and maintain the parents.forum domain to the exclusion of someone who wants to run a parenting forum with an identical name although they would be free to apply for and register and maintain a forum under an almost infinite number of different strings. Call it an exclusive right or whatever you want, (being a DN registrant maybe?) but it goes further than trademark law because we’re talking about a DN. A rose by any other name... could be rosykids or rosemumsanddads, although I’ve always been partial to lilies myself. Marie -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: mercredi 26 avril 2017 19:50 To: Jeremy Malcolm; Silver, Bradley; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Over 36,000 registrations in the TMCH. Approximately 130 Sunrise Registrations per new gTLD. I just don’t see the enormous encroachment you are complaining about. Not to mention that Sunrise is limited to exact string. So, cloud.tld doesn’t prevent registration of ihatecloud.tld, clouds.tld, ilovecloud.tld. 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. <mailto:jsevans@adobe.com> jsevans@adobe.com <http://www.adobe.com> www.adobe.com On 4/26/17, 10:46 AM, " <mailto:gnso-rpm-wg-bounces@icann.org%20on%20behalf%20of%20Jeremy%20Malcolm> gnso-rpm-wg-bounces@icann.org on behalf of Jeremy Malcolm" < <mailto:gnso-rpm-wg-bounces@icann.org%20on%20behalf%20of%20jmalcolm@eff.org> gnso-rpm-wg-bounces@icann.org on behalf of jmalcolm@eff.org> wrote: On 26/4/17 10:41 am, Silver, Bradley wrote: > Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored. The sunrise period can allow the owner of (to use Rebecca's example) the PARENTS stylized mark to seize the parents.forum domain to the exclusion of someone who wants to run a parenting forum. Call it an exclusive right or whatever you want, but it goes further than trademark law. A rose by any other name... -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat...> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat... <mailto:jmalcolm@eff.org> jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org...> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org... PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:5900ddf416977571013393!

Thanks Jeremy. As to claims, it provides absolutely nothing that doesn't already exist as a matter of law which already holds (at least for the US) that there is constructive notice of a trademark registrant's rights if the mark appears on the principal register: "§1072 REGISTRATION AS CONSTRUCTIVE NOTICE OF CLAIM OF OWNERSHIP Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof." The TMCH + Claims are purely a service to the potential registrant which might deter the occasional act of cybersquatting, thus reducing liability for the would be registrant, nuisance and costs for the brand owners, and headaches for deceived consumers. They don't result in any new rights whatsoever - just a second source of information about trademark rights that a registrant should be aware of before forking over $14.99 to GoDaddy. As to Sunrise, either way once a domain name is registered, the registrant has the exclusive right to that particular second level domain name for the length of their contract with the registrar, and subject to good behavior, etc. Whether it is the trademark right holder via Sunrise or a rich person via "premium" or a garden variety person like me via landrush, someone ends up with the "exclusive right." So, I think we can move off the "exclusive rights" idea and talk more plainly - I think you just don't think brand owners should have any particular right to go first. Correct? Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 12:47 PM To: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) On 26/4/17 10:41 am, Silver, Bradley wrote:

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

The sunrise period can allow the owner of (to use Rebecca's example) the PARENTS stylized mark to seize the parents.forum domain to the exclusion of someone who wants to run a parenting forum. Call it an exclusive right or whatever you want, but it goes further than trademark law. A rose by any other name... -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt 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. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

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Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-registration-i... Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

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Overreaching is in the eye of the beholder. If a TMCH that only contains anything other than fanciful (coined) marks in "standard form" (text without any font or stylization) is overreaching, then I would be hard-pressed to call that pro-trademark. That's what I perceive to be your desired TMCH; if I'm wrong, it would be helpful to know. I am sure there were many trademark owners who sought to register domains consisting of or including their mark and inevitably received Claims notices. Whether any of them were deterred is questionable -- and certainly not inevitable. Revising the Claims notice to make it more understandable and less "scary" (but still appropriately pause-worthy) is a concept that I don't think will be all that controversial (not sure what steps you were contemplating, but perhaps that's some lower-hanging fruit for the group). Finally, the vast majority of trademark owners aren't participating in the TMCH (I assume that's what you mean by the "process") and even most of those that are have marks that they did not put in the TMCH. Also, even for "participating" trademark owners with marks in the TMCH, the fact that the TMCH is non-exclusive means that those owners will receive Claims notices when they attempt to register those marks. I want to dispel any notion that the TMCH is somehow the plaything of a cabal of "participating" trademark owners. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Wed, Apr 26, 2017 at 10:16 PM, Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:

Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering- disagreement-registration-in-modern-american-trademark-law/

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

===================================================================== =

Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com

================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================

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Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring. However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote:

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-registra tion-in-modern-american-trademark-law/

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

==================================================================== = =

Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com

================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================

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________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms." That is clearly and absolutely *not* the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:

Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring.

However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-registra tion-in-modern-american-trademark-law/

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

==================================================================== = =

Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com

================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================

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Same answer as all the times before: without data taken at the time of the abandonment, no one has any way to know. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:58 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:

"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."

That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.

Greg

Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com

On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:

...

Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring.

However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-regi stra tion-in-modern-american-trademark-law/

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote: > Nice try Rebecca but I'm not attempting to overturn the apple cart. > If you have actual examples of problems then provide them > otherwise this is an indulgent academic exercise.

The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

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Paul, we have been asked by the GNSO Council to evaluate the balance of the rights of trademark owners to those of current and future registrants. That's the issue Professor Tushnet has been addressing. As a GNSO Councilor, I would expect you to welcome experts/members of the Community into our PDP process, whether or not they say anything favorable to position. Further, it's certainly not anti-trademark to say that the balance and very clear lines that the STI/GNSO Council/ICANN Board created in favor of word marks and barring design marks is not anti-trademark. It was considered very pro-trademark at the time. I wonder why the lines have moved? And under what PDP authority? Best, Kathy On 4/26/2017 9:50 PM, icannlists wrote:

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-registration-i...

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise. The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

===================================================================== =

Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com

================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================

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Paul, I don't think Kathy was wearing her "co-chair" hat when she wrote those remarks. I would not say that the STI report was considered to be "very pro-trademark" at the time. The IRT report was considered to be very pro-trademark. The STI report was a significant watering-down of the IRT report -- perhaps inevitable in the multistakeholder model, but hardly "pro-trademark". If it were so pro-trademark, the "Trademark Strawman" would not have come to pass. Also, I have to object to the continued mischaracterization of the ICANN Board's actions with regard to the STI Report. The Board did not adopt or create the STI Report. The Board was very clear and used some fairly uncommon wording when it deal with the STI Report: "“ Whereas, subject to any amendments in response to public comment, the Board *supports* the *substantive content* of the Clearinghouse and URS proposals that were posted on 15 February 2010 for public comment and expects that they will be included in version 4 of the Draft Applicant Guidebook. Resolved (2010.03.12.19), *ICANN staff shall analyze public comments* on the Clearinghouse proposal *and develop a final version* to be included in version 4 of the Draft Applicant Guidebook.“ https://www.icann.org/resources/board-material/resolutions-2010-03-12-en#6 (emphasis added) ​"​ ​Finally, I understand Kathy's argument about where she thinks the line was drawn between "word" marks and "design" marks. But stating it as if was a fact doesn't make it right or true (though it might make it an "alternative fact"). There are many in this group that believe the intent and effect of the STI language was significantly different. In any case, the exact language of the STI was not adopted by the ICANN Board -- the ICANN Board merely "supported" the "substantive content" of those proposals. The Board then asked staff to analyze public comments and develop a final version for the AGB. (In fact, there were a few more twists and turns beyond that.) Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Wed, Apr 26, 2017 at 10:27 PM, icannlists <icannlists@winston.com> wrote:

Hi Kathy,

You have known me forever and you do know that I welcome all voices, whether or not they agree with me. But that doesn't mean that I have agree with all of the positions of various voices. As co-chair of this PDP, I would expect you to understand the difference and welcome all voices, not just the ones that happen to hold the same views that you do. Trying to shut me down by implying I am somehow not living up to my role as GNSO Councilor is unlike you.

Best, Paul

-----Original Message----- From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, April 26, 2017 9:20 PM To: gnso-rpm-wg@icann.org; McGrady, Paul D. <PMcGrady@winston.com> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Paul, we have been asked by the GNSO Council to evaluate the balance of the rights of trademark owners to those of current and future registrants. That's the issue Professor Tushnet has been addressing. As a GNSO Councilor, I would expect you to welcome experts/members of the Community into our PDP process, whether or not they say anything favorable to position.

Further, it's certainly not anti-trademark to say that the balance and very clear lines that the STI/GNSO Council/ICANN Board created in favor of word marks and barring design marks is not anti-trademark. It was considered very pro-trademark at the time. I wonder why the lines have moved? And under what PDP authority?

Best, Kathy

On 4/26/2017 9:50 PM, icannlists wrote:

...

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-registra tion-in-modern-american-trademark-law/

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise. The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

==================================================================== = =

Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com

================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================

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+1 Greg From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Wednesday, April 26, 2017 9:50 PM To: icannlists <icannlists@winston.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Paul, I don't think Kathy was wearing her "co-chair" hat when she wrote those remarks. I would not say that the STI report was considered to be "very pro-trademark" at the time. The IRT report was considered to be very pro-trademark. The STI report was a significant watering-down of the IRT report -- perhaps inevitable in the multistakeholder model, but hardly "pro-trademark". If it were so pro-trademark, the "Trademark Strawman" would not have come to pass. Also, I have to object to the continued mischaracterization of the ICANN Board's actions with regard to the STI Report. The Board did not adopt or create the STI Report. The Board was very clear and used some fairly uncommon wording when it deal with the STI Report: "“ Whereas, subject to any amendments in response to public comment, the Board supports the substantive content of the Clearinghouse and URS proposals that were posted on 15 February 2010 for public comment and expects that they will be included in version 4 of the Draft Applicant Guidebook. Resolved (2010.03.12.19), ICANN staff shall analyze public comments on the Clearinghouse proposal and develop a final version to be included in version 4 of the Draft Applicant Guidebook.“ https://www.icann.org/resources/board-material/resolutions-2010-03-12-en#6 (emphasis added) ​"​ ​Finally, I understand Kathy's argument about where she thinks the line was drawn between "word" marks and "design" marks. But stating it as if was a fact doesn't make it right or true (though it might make it an "alternative fact"). There are many in this group that believe the intent and effect of the STI language was significantly different. In any case, the exact language of the STI was not adopted by the ICANN Board -- the ICANN Board merely "supported" the "substantive content" of those proposals. The Board then asked staff to analyze public comments and develop a final version for the AGB. (In fact, there were a few more twists and turns beyond that.) Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Wed, Apr 26, 2017 at 10:27 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Kathy, You have known me forever and you do know that I welcome all voices, whether or not they agree with me. But that doesn't mean that I have agree with all of the positions of various voices. As co-chair of this PDP, I would expect you to understand the difference and welcome all voices, not just the ones that happen to hold the same views that you do. Trying to shut me down by implying I am somehow not living up to my role as GNSO Councilor is unlike you. Best, Paul -----Original Message----- From: Kathy Kleiman [mailto:kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>] Sent: Wednesday, April 26, 2017 9:20 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Paul, we have been asked by the GNSO Council to evaluate the balance of the rights of trademark owners to those of current and future registrants. That's the issue Professor Tushnet has been addressing. As a GNSO Councilor, I would expect you to welcome experts/members of the Community into our PDP process, whether or not they say anything favorable to position. Further, it's certainly not anti-trademark to say that the balance and very clear lines that the STI/GNSO Council/ICANN Board created in favor of word marks and barring design marks is not anti-trademark. It was considered very pro-trademark at the time. I wonder why the lines have moved? And under what PDP authority? Best, Kathy On 4/26/2017 9:50 PM, icannlists wrote:

Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.

Best, Paul

-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See https://harvardlawreview.org/2017/01/registering-disagreement-registra tion-in-modern-american-trademark-law/

Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>

On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote:

...

Thanks Rebecca. There is not much new here. Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level. So, it is not just a question of if, but of when and who. I think it is OK to just say "I don't want it to be a trademark owner." Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist. Trademark owners want them first in order to protect their brands and consumers. Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right. Fair enough. Now we see if we can get to consensus on changing the AGB. I doubt we will, but at least the free speech veneer is pulled back.

Best, Paul

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 3:11 PM To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

By that logic the mandate not to expand on trademark rights would have been pointless because no activity in domain name space could ever have expanded trademark rights. Call it a right, call it a privilege, call it an alien from Xenon if you like, but ICANN did not want trademark owners to be able to assert control over domain names in excess of what underlying trademark law would have allowed. Under the "nothing in domain names can expand trademark rights because they're never exclusive" logic, was the ICANN direction completely meaningless, or did it have some meaning? (Trademark rights, of course, are never "exclusive" either, which is why we can use any examples we want in this discussion.) Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>

On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote:

...

Jeremy - the TMCH does not allow exclusive rights in domains. Having a mark in the TMCH affords nothing close an exclusive right. That's a basic truth which shouldn’t be ignored.

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy Malcolm Sent: Wednesday, April 26, 2017 1:32 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 9:00 am, Colin O'Brien wrote:

...

Nice try Rebecca but I'm not attempting to overturn the apple cart. If you have actual examples of problems then provide them otherwise this is an indulgent academic exercise. The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.

-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org>

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Fun post Jeremy. Not terribly on point, but still a nice cheeky change of pace to bring a little levity to the list. I’ll treat you to another one. Maybe the EFF is anti-free speech since it has (under some of the arguments raised by not-me on this list) obtained exclusive rights to speak within the following 125 domain names. ;-) 1 ADDTLS.COM<https://whois.domaintools.com/addtls.com?hash=pRj%2FjnFYFP8BgrRHSlmWKvikOYJ8...> 2 ADDTLS.ME<https://whois.domaintools.com/addtls.me?hash=pRj%2FjnFYFP8BgrRHSlmWKvikOYJ87...> 3 ADDTLS.NET<https://whois.domaintools.com/addtls.net?hash=pRj%2FjnFYFP8BgrRHSlmWKvikOYJ8...> 4 ADDTLS.ORG<https://whois.domaintools.com/addtls.org?hash=pRj%2FjnFYFP8BgrRHSlmWKvikOYJ8...> 5 CANVASTRACKERSIMULATOR.ORG<https://whois.domaintools.com/canvastrackersimulator.org?hash=pRj%2FjnFYFP8B...> 6 CERTBOT.COM<https://whois.domaintools.com/certbot.com?hash=pRj%2FjnFYFP8BgrRHSlmWKo6NWlt...> 7 CERTBOT.INFO<https://whois.domaintools.com/certbot.info?hash=pRj%2FjnFYFP8BgrRHSlmWKo6NWl...> 8 CERTBOT.NET<https://whois.domaintools.com/certbot.net?hash=pRj%2FjnFYFP8BgrRHSlmWKo6NWlt...> 9 CERTBOT.ORG<https://whois.domaintools.com/certbot.org?hash=pRj%2FjnFYFP8BgrRHSlmWKo6NWlt...> 10 COMEBACKWITHAWARRANT.ORG<https://whois.domaintools.com/comebackwithawarrant.org?hash=pRj%2FjnFYFP8Bgr...> 11 COPYCRIME.COM<https://whois.domaintools.com/copycrime.com?hash=pRj%2FjnFYFP8BgrRHSlmWKnCVe...> 12 COPYCRIME.ORG<https://whois.domaintools.com/copycrime.org?hash=pRj%2FjnFYFP8BgrRHSlmWKnCVe...> 13 COPYRIGHT-WATCH.ORG<https://whois.domaintools.com/copyright-watch.org?hash=pRj%2FjnFYFP8BgrRHSlm...> 14 COPYRIGHTTRAP.NET<https://whois.domaintools.com/copyrighttrap.net?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 15 COPYRIGHTTRAP.ORG<https://whois.domaintools.com/copyrighttrap.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 16 CRYPTOBOT.ORG<https://whois.domaintools.com/cryptobot.org?hash=pRj%2FjnFYFP8BgrRHSlmWKtst0...> 17 CRYSTALPRISON.ORG<https://whois.domaintools.com/crystalprison.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 18 DEARFCC.COM<https://whois.domaintools.com/dearfcc.com?hash=pRj%2FjnFYFP8BgrRHSlmWKvG0W5R...> 19 DEARFCC.NET<https://whois.domaintools.com/dearfcc.net?hash=pRj%2FjnFYFP8BgrRHSlmWKvG0W5R...> 20 DEARFCC.ORG<https://whois.domaintools.com/dearfcc.org?hash=pRj%2FjnFYFP8BgrRHSlmWKvG0W5R...> 21 DEFENDINNOVATION.COM<https://whois.domaintools.com/defendinnovation.com?hash=pRj%2FjnFYFP8BgrRHSl...> 22 DEFENDINNOVATION.ORG<https://whois.domaintools.com/defendinnovation.org?hash=pRj%2FjnFYFP8BgrRHSl...> 23 DIGCIT.COM<https://whois.domaintools.com/digcit.com?hash=pRj%2FjnFYFP8BgrRHSlmWKkwM9WaJ...> 24 DIGCIT.ORG<https://whois.domaintools.com/digcit.org?hash=pRj%2FjnFYFP8BgrRHSlmWKkwM9WaJ...> 25 DO-NOT-TRACK.ORG<https://whois.domaintools.com/do-not-track.org?hash=pRj%2FjnFYFP8BgrRHSlmWKn...> 26 DO-NOT-TRACKER.ORG<https://whois.domaintools.com/do-not-tracker.org?hash=pRj%2FjnFYFP8BgrRHSlmW...> 27 DONOTTRACK.US<https://whois.domaintools.com/donottrack.us?hash=pRj%2FjnFYFP8BgrRHSlmWKsuFG...> 28 EFF-CTF.ORG<https://whois.domaintools.com/eff-ctf.org?hash=pRj%2FjnFYFP8BgrRHSlmWKrdy%2B...> 29 EFF-EUROPE.ORG<https://whois.domaintools.com/eff-europe.org?hash=pRj%2FjnFYFP8BgrRHSlmWKs9Z...> 30 EFF.COM<https://whois.domaintools.com/eff.com?hash=pRj%2FjnFYFP8BgrRHSlmWKn7Zg%2BuzF...> 31 EFF.NET<https://whois.domaintools.com/eff.net?hash=pRj%2FjnFYFP8BgrRHSlmWKog%2F3h4km...> 32 EFF.ORG<https://whois.domaintools.com/eff.org?hash=pRj%2FjnFYFP8BgrRHSlmWKsqUudOFtrQ...> 33 ELECTIONAWARENESS.COM<https://whois.domaintools.com/electionawareness.com?hash=pRj%2FjnFYFP8BgrRHS...> 34 ELECTIONAWARENESS.ORG<https://whois.domaintools.com/electionawareness.org?hash=pRj%2FjnFYFP8BgrRHS...> 35 ELECTIONDAYREPORT.COM<https://whois.domaintools.com/electiondayreport.com?hash=pRj%2FjnFYFP8BgrRHS...> 36 ELECTIONDAYREPORT.ORG<https://whois.domaintools.com/electiondayreport.org?hash=pRj%2FjnFYFP8BgrRHS...> 37 ELECTIONDAYREPORTS.COM<https://whois.domaintools.com/electiondayreports.com?hash=pRj%2FjnFYFP8BgrRH...> 38 ELECTIONDAYREPORTS.ORG<https://whois.domaintools.com/electiondayreports.org?hash=pRj%2FjnFYFP8BgrRH...> 39 ELECTRONICFRONTIERFOUNDATION.ORG<https://whois.domaintools.com/electronicfrontierfoundation.org?hash=pRj%2Fjn...> 40 EVILTRACK.NET<https://whois.domaintools.com/eviltrack.net?hash=pRj%2FjnFYFP8BgrRHSlmWKtxj2...> 41 EVILTRACKER.NET<https://whois.domaintools.com/eviltracker.net?hash=pRj%2FjnFYFP8BgrRHSlmWKtx...> 42 FIGHT215.COM<https://whois.domaintools.com/fight215.com?hash=pRj%2FjnFYFP8BgrRHSlmWKljUBq...> 43 FIGHT215.ORG<https://whois.domaintools.com/fight215.org?hash=pRj%2FjnFYFP8BgrRHSlmWKljUBq...> 44 FIRSTPARTYSIMULATE.NET<https://whois.domaintools.com/firstpartysimulate.net?hash=pRj%2FjnFYFP8BgrRH...> 45 FIRSTPARTYSIMULATE.ORG<https://whois.domaintools.com/firstpartysimulate.org?hash=pRj%2FjnFYFP8BgrRH...> 46 FIRSTPARTYSIMULATOR.NET<https://whois.domaintools.com/firstpartysimulator.net?hash=pRj%2FjnFYFP8BgrR...> 47 FIRSTPARTYSIMULATOR.ORG<https://whois.domaintools.com/firstpartysimulator.org?hash=pRj%2FjnFYFP8BgrR...> 48 FREERANGEKITTEN.COM<https://whois.domaintools.com/freerangekitten.com?hash=pRj%2FjnFYFP8BgrRHSlm...> 49 FREEYOURIPHONE.ORG<https://whois.domaintools.com/freeyouriphone.org?hash=pRj%2FjnFYFP8BgrRHSlmW...> 50 FREEYOURPHONE.ORG<https://whois.domaintools.com/freeyourphone.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 51 GLOBALCHOKEPOINTS.ORG<https://whois.domaintools.com/globalchokepoints.org?hash=pRj%2FjnFYFP8BgrRHS...> 52 HIJACK-ME.COM<https://whois.domaintools.com/hijack-me.com?hash=pRj%2FjnFYFP8BgrRHSlmWKk6JX...> 53 HTTPSEVERYWHERE.ORG<https://whois.domaintools.com/httpseverywhere.org?hash=pRj%2FjnFYFP8BgrRHSlm...> 54 HTTPSNOW.COM<https://whois.domaintools.com/httpsnow.com?hash=pRj%2FjnFYFP8BgrRHSlmWKn4Vxp...> 55 HTTPSNOW.ORG<https://whois.domaintools.com/httpsnow.org?hash=pRj%2FjnFYFP8BgrRHSlmWKn4Vxp...> 56 IFIGHTSURVEILLANCE.COM<https://whois.domaintools.com/ifightsurveillance.com?hash=pRj%2FjnFYFP8BgrRH...> 57 IFIGHTSURVEILLANCE.NET<https://whois.domaintools.com/ifightsurveillance.net?hash=pRj%2FjnFYFP8BgrRH...> 58 IFIGHTSURVEILLANCE.ORG<https://whois.domaintools.com/ifightsurveillance.org?hash=pRj%2FjnFYFP8BgrRH...> 59 INTERNETSLOWLANE.COM<https://whois.domaintools.com/internetslowlane.com?hash=pRj%2FjnFYFP8BgrRHSl...> 60 INTERNETSLOWLANE.NET<https://whois.domaintools.com/internetslowlane.net?hash=pRj%2FjnFYFP8BgrRHSl...> 61 INTERNETSLOWLANE.ORG<https://whois.domaintools.com/internetslowlane.org?hash=pRj%2FjnFYFP8BgrRHSl...> 62 ISAPPLEEVIL.COM<https://whois.domaintools.com/isappleevil.com?hash=pRj%2FjnFYFP8BgrRHSlmWKuY...> 63 ISFACEBOOKEVIL.COM<https://whois.domaintools.com/isfacebookevil.com?hash=pRj%2FjnFYFP8BgrRHSlmW...> 64 ISGOOGLEEVILNOW.COM<https://whois.domaintools.com/isgoogleevilnow.com?hash=pRj%2FjnFYFP8BgrRHSlm...> 65 ISGOOGLEEVILYET.COM<https://whois.domaintools.com/isgoogleevilyet.com?hash=pRj%2FjnFYFP8BgrRHSlm...> 66 ISMICROSOFTEVIL.COM<https://whois.domaintools.com/ismicrosoftevil.com?hash=pRj%2FjnFYFP8BgrRHSlm...> 67 JAILBREAKINGISNOTACRIME.ORG<https://whois.domaintools.com/jailbreakingisnotacrime.org?hash=pRj%2FjnFYFP8...> 68 JAILBREAKTHELAW.COM<https://whois.domaintools.com/jailbreakthelaw.com?hash=pRj%2FjnFYFP8BgrRHSlm...> 69 JAILBREAKTHELAW.ORG<https://whois.domaintools.com/jailbreakthelaw.org?hash=pRj%2FjnFYFP8BgrRHSlm...> 70 LOCALSTORAGETRACKERSIMULATOR.ORG<https://whois.domaintools.com/localstoragetrackersimulator.org?hash=pRj%2Fjn...> 71 MANILAPRINCIPLES.COM<https://whois.domaintools.com/manilaprinciples.com?hash=pRj%2FjnFYFP8BgrRHSl...> 72 MANILAPRINCIPLES.NET<https://whois.domaintools.com/manilaprinciples.net?hash=pRj%2FjnFYFP8BgrRHSl...> 73 MANILAPRINCIPLES.ORG<https://whois.domaintools.com/manilaprinciples.org?hash=pRj%2FjnFYFP8BgrRHSl...> 74 MULTISTAKEHOLDER.ORG<https://whois.domaintools.com/multistakeholder.org?hash=pRj%2FjnFYFP8BgrRHSl...> 75 MUWATANALRAQAMY.ORG<https://whois.domaintools.com/muwatanalraqamy.org?hash=pRj%2FjnFYFP8BgrRHSlm...> 76 MUWATENRAQAMY.ORG<https://whois.domaintools.com/muwatenraqamy.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 77 NECESSARYANDPROPORTIONATE.NET<https://whois.domaintools.com/necessaryandproportionate.net?hash=pRj%2FjnFYF...> 78 NECESSARYANDPROPORTIONATE.ORG<https://whois.domaintools.com/necessaryandproportionate.org?hash=pRj%2FjnFYF...> 79 NOGLOBALWARRANTS.COM<https://whois.domaintools.com/noglobalwarrants.com?hash=pRj%2FjnFYFP8BgrRHSl...> 80 NOGLOBALWARRANTS.NET<https://whois.domaintools.com/noglobalwarrants.net?hash=pRj%2FjnFYFP8BgrRHSl...> 81 NOGLOBALWARRANTS.ORG<https://whois.domaintools.com/noglobalwarrants.org?hash=pRj%2FjnFYFP8BgrRHSl...> 82 NOTEVILTRACK.NET<https://whois.domaintools.com/noteviltrack.net?hash=pRj%2FjnFYFP8BgrRHSlmWKl...> 83 NOTEVILTRACKER.NET<https://whois.domaintools.com/noteviltracker.net?hash=pRj%2FjnFYFP8BgrRHSlmW...> 84 ONLINECENSORSHIP.NET<https://whois.domaintools.com/onlinecensorship.net?hash=pRj%2FjnFYFP8BgrRHSl...> 85 ONLINECENSORSHIP.ORG<https://whois.domaintools.com/onlinecensorship.org?hash=pRj%2FjnFYFP8BgrRHSl...> 86 OPEN-WIRELESS.ORG<https://whois.domaintools.com/open-wireless.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 87 OPENWIRELESS.ORG<https://whois.domaintools.com/openwireless.org?hash=pRj%2FjnFYFP8BgrRHSlmWKn...> 88 PANOPTICLICK.COM<https://whois.domaintools.com/panopticlick.com?hash=pRj%2FjnFYFP8BgrRHSlmWKg...> 89 PBTEST.ORG<https://whois.domaintools.com/pbtest.org?hash=pRj%2FjnFYFP8BgrRHSlmWKq3VN8TO...> 90 PRIVACYBADGER.COM<https://whois.domaintools.com/privacybadger.com?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 91 PRIVACYBADGER.ORG<https://whois.domaintools.com/privacybadger.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 92 PROJECTSECRETIDENTITY.COM<https://whois.domaintools.com/projectsecretidentity.com?hash=pRj%2FjnFYFP8Bg...> 93 PROJECTSECRETIDENTITY.ORG<https://whois.domaintools.com/projectsecretidentity.org?hash=pRj%2FjnFYFP8Bg...> 94 REALNETNEUTRALITY.COM<https://whois.domaintools.com/realnetneutrality.com?hash=pRj%2FjnFYFP8BgrRHS...> 95 REALNETNEUTRALITY.ORG<https://whois.domaintools.com/realnetneutrality.org?hash=pRj%2FjnFYFP8BgrRHS...> 96 RECLAIMINVENTION.COM<https://whois.domaintools.com/reclaiminvention.com?hash=pRj%2FjnFYFP8BgrRHSl...> 97 RECLAIMINVENTION.NET<https://whois.domaintools.com/reclaiminvention.net?hash=pRj%2FjnFYFP8BgrRHSl...> 98 RECLAIMINVENTION.ORG<https://whois.domaintools.com/reclaiminvention.org?hash=pRj%2FjnFYFP8BgrRHSl...> 99 RIGHTOCONNECT.COM<https://whois.domaintools.com/rightoconnect.com?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 100 RIGHTTOCONNECT.COM<https://whois.domaintools.com/righttoconnect.com?hash=pRj%2FjnFYFP8BgrRHSlmW...> 101 RIPMIXMAKE.ORG<https://whois.domaintools.com/ripmixmake.org?hash=pRj%2FjnFYFP8BgrRHSlmWKpU%...> 102 SAVECRYPTO.NET<https://whois.domaintools.com/savecrypto.net?hash=pRj%2FjnFYFP8BgrRHSlmWKuep...> 103 SAVECRYPTO.ORG<https://whois.domaintools.com/savecrypto.org?hash=pRj%2FjnFYFP8BgrRHSlmWKuep...> 104 SHARINGISNOTACRIME.COM<https://whois.domaintools.com/sharingisnotacrime.com?hash=pRj%2FjnFYFP8BgrRH...> 105 SHARINGISNOTACRIME.NET<https://whois.domaintools.com/sharingisnotacrime.net?hash=pRj%2FjnFYFP8BgrRH...> 106 SSLDATA.ORG<https://whois.domaintools.com/ssldata.org?hash=pRj%2FjnFYFP8BgrRHSlmWKqfQsSh...> 107 STANDAGAINSTSPYING.COM<https://whois.domaintools.com/standagainstspying.com?hash=pRj%2FjnFYFP8BgrRH...> 108 STANDAGAINSTSPYING.NET<https://whois.domaintools.com/standagainstspying.net?hash=pRj%2FjnFYFP8BgrRH...> 109 STANDAGAINSTSPYING.ORG<https://whois.domaintools.com/standagainstspying.org?hash=pRj%2FjnFYFP8BgrRH...> 110 STOP3STRIKES.COM<https://whois.domaintools.com/stop3strikes.com?hash=pRj%2FjnFYFP8BgrRHSlmWKu...> 111 STOPCOPYRIGHTCOPS.COM<https://whois.domaintools.com/stopcopyrightcops.com?hash=pRj%2FjnFYFP8BgrRHS...> 112 STOPTHESPYING.ORG<https://whois.domaintools.com/stopthespying.org?hash=pRj%2FjnFYFP8BgrRHSlmWK...> 113 STREETLEVELSURVEILLANCE.ORG<https://whois.domaintools.com/streetlevelsurveillance.org?hash=pRj%2FjnFYFP8...> 114 STUDENTINNOVATION.NET<https://whois.domaintools.com/studentinnovation.net?hash=pRj%2FjnFYFP8BgrRHS...> 115 STUDENTINNOVATION.ORG<https://whois.domaintools.com/studentinnovation.org?hash=pRj%2FjnFYFP8BgrRHS...> 116 SURVEILLANCESELFDEFENSE.COM<https://whois.domaintools.com/surveillanceselfdefense.com?hash=pRj%2FjnFYFP8...> 117 SURVEILLANCESELFDEFENSE.NET<https://whois.domaintools.com/surveillanceselfdefense.net?hash=pRj%2FjnFYFP8...> 118 SURVEILLANCESELFDEFENSE.ORG<https://whois.domaintools.com/surveillanceselfdefense.org?hash=pRj%2FjnFYFP8...> 119 TOSBACK.COM<https://whois.domaintools.com/tosback.com?hash=pRj%2FjnFYFP8BgrRHSlmWKtQTonG...> 120 TOSBACK.NET<https://whois.domaintools.com/tosback.net?hash=pRj%2FjnFYFP8BgrRHSlmWKtQTonG...> 121 TOSBACK.ORG<https://whois.domaintools.com/tosback.org?hash=pRj%2FjnFYFP8BgrRHSlmWKtQTonG...> 122 TOSSBACK.ORG<https://whois.domaintools.com/tossback.org?hash=pRj%2FjnFYFP8BgrRHSlmWKuRVyl...> 123 TRACKERSIMULATE.ORG<https://whois.domaintools.com/trackersimulate.org?hash=pRj%2FjnFYFP8BgrRHSlm...> 124 TRACKERSIMULATOR.ORG<https://whois.domaintools.com/trackersimulator.org?hash=pRj%2FjnFYFP8BgrRHSl...> 125 TROLLINGEFFECTS.ORG<https://whois.domaintools.com/trollingeffects.org?hash=pRj%2FjnFYFP8BgrRHSlm...> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Thursday, April 27, 2017 4:04 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) On 26/4/17 6:50 pm, icannlists wrote: Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse. It may be worth noting that if we go by the public remarks of the International Trademark Association, they too don't seem to believe that the lowest common denominator standards of a single country should have extra-territorial application throughout the world, as occurs in the case of the TMCH (this comes from their application to be joined to the Equustek case, a Canadian case which sought to apply its law extra-territorially). INTA has an over-arching interest in having the territoriality of trademark law recognized in court decisions around the world. This appeal is squarely within INTA's interests as it raises the issue of the appropriate territorial effect of an injunctive remedy granted in the context of trademark litigation. ... In particular INTA will provide submissions on how the territorial nature of trademark rights relates to the scope of extra-territorial injunctions available to enforce those rights; and the issue of trademark territoriality as it relates to "the core values of any nation" that may be effected by an extra-territorial injunction which prevents, in the worlds of the Court of Appeal for British Columbia, "advertising [of] wares that violate ... intellectual property rights." So maybe INTA too is anti-trademark. ;-) -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. 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