Thanks Claudio, This supplemental clarification fits with what I have understood the proposal to say all along. (For example, the NFL<https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0128.html> or Major League Baseball<https://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0985.html> could bring a consolidated claim<https://www.wipo.int/amc/en/domains/search/overview3.0/#item411> on behalf of the teams in their respective league.) Thank you for this – which should allow us to consider this particular discussion closed – as we move towards drafting the Initial Report. Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Wednesday, January 15, 2020 11:35 PM To: Terri Agnew <terri.agnew@icann.org> Cc: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] WG discussion on proposal #6 - last week hi all, I just had a chance to catch up on last week's WG call, when we discussed proposal #6 among other topics. Thanks for the robust discussion on this proposal. Since I wasn't able to join, I am writing to clarify and respond to members' questions about how the proposal is intended to align with the overall design of the URS procedure. Under the existing URS procedure, multiple companies, i.e. complainants, are permitted to consolidate their claims against a single domain name registrant who has registered multiple domain names, but only when they can establish to the panelist that they are all related companies. Under the UDRP, multiple unrelated companies are permitted to consolidate their claim in one proceeding against a single domain name registrant who has registered multiple domain names. So the proposal harmonizes the URS with the UDRP in this one respect, by allowing unrelated companies to consolidate the same way they are permitted to consolidate under the UDRP. Under the existing URS, importantly there is no requirement that the related companies use the same or similar trademarks or other business identifiers in commerce. So the way things exist today the related companies can appear to be unrelated entities on the surface (because they use different trademarks, trade names, and business identifiers) until their trademark registration certificates (and/or other legal documentation) are reviewed by the panelist in order to establish that the various companies are in fact related and all fall under the same corporate 'umbrella'. This documentation must be provided by the complainants and reviewed by the panelist under the existing rules. Proposal #6 proposes to eliminate this step or requirement, i.e. that the companies are related, because it serves no practical purpose, in order to generate efficiencies and reduce costs. Moreover, in terms of the number of domain names in a particular case: the Providers charge additional fees based on the number of domain names per case, with additional fees when the complaint involves over a certain number of domain names. So the proposal does not touch upon this issue or recommend any changes in this respect. I hope this explanation is helpful, and if there are any further questions please do not hesitate to let me know. Thanks in advance for your time. Cheers, Claudio World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

All, Brian kindly pointed out to me that the proposal was ““against a single domain name registrant”. As I noted to Brian, that does not change the problem. The same burden applies as to that registrant. Further, the UDRP precedent is far from consistent on linking multiple domains to a single registrant. I have seen decisions stating that linkage was present based upon multiple domains using the same Name Server. So, while I greatly respect Brian, I do not believe the fact that it is limited to a “single” registrant moves the needle and I am still strongly opposed to the proposal because it places too much of an unfair burden on the registrant and the rationale for doing so seems to be tilted towards saving on filing fees for the complainants. I am open to further discussion on this and in particular rationale that would overcome the points I have raised. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> Date: Thursday, January 16, 2020 at 3:15 PM To: "BECKHAM, Brian" <brian.beckham@wipo.int>, claudio di gangi <ipcdigangi@gmail.com>, Terri Agnew <terri.agnew@icann.org> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] WG discussion on proposal #6 - last week Brian There are several separate issues here: Your comment regarding the NFL/NBA involves a representative complainant this is proper only when the representative complainant establishes authority to act on behalf of the trademark holder. In the case of a corporate parent or licensee this a established by evidence (which is not typically part of the PTO record) In cases involving multiple Complainant’s, each complainant must establish a trademark with respect to each and every domain at issue. It is entirely improper to have multiple Complainants with some having claims against some domains and other Complainants with claims as against other domains. To Permit such actions is an undue burden on the respondent who is under both time and page limits and who must respond with both factual evidence and legal arguments to multiple complainants. I am strongly opposed to such a proposition as outlined below. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "BECKHAM, Brian" <brian.beckham@wipo.int> Date: Thursday, January 16, 2020 at 9:52 AM To: claudio di gangi <ipcdigangi@gmail.com>, Terri Agnew <terri.agnew@icann.org> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] WG discussion on proposal #6 - last week Thanks Claudio, This supplemental clarification fits with what I have understood the proposal to say all along. (For example, the NFL<https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0128.html> or Major League Baseball<https://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0985.html> could bring a consolidated claim<https://www.wipo.int/amc/en/domains/search/overview3.0/#item411> on behalf of the teams in their respective league.) Thank you for this – which should allow us to consider this particular discussion closed – as we move towards drafting the Initial Report. Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Wednesday, January 15, 2020 11:35 PM To: Terri Agnew <terri.agnew@icann.org> Cc: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] WG discussion on proposal #6 - last week hi all, I just had a chance to catch up on last week's WG call, when we discussed proposal #6 among other topics. Thanks for the robust discussion on this proposal. Since I wasn't able to join, I am writing to clarify and respond to members' questions about how the proposal is intended to align with the overall design of the URS procedure. Under the existing URS procedure, multiple companies, i.e. complainants, are permitted to consolidate their claims against a single domain name registrant who has registered multiple domain names, but only when they can establish to the panelist that they are all related companies. Under the UDRP, multiple unrelated companies are permitted to consolidate their claim in one proceeding against a single domain name registrant who has registered multiple domain names. So the proposal harmonizes the URS with the UDRP in this one respect, by allowing unrelated companies to consolidate the same way they are permitted to consolidate under the UDRP. Under the existing URS, importantly there is no requirement that the related companies use the same or similar trademarks or other business identifiers in commerce. So the way things exist today the related companies can appear to be unrelated entities on the surface (because they use different trademarks, trade names, and business identifiers) until their trademark registration certificates (and/or other legal documentation) are reviewed by the panelist in order to establish that the various companies are in fact related and all fall under the same corporate 'umbrella'. This documentation must be provided by the complainants and reviewed by the panelist under the existing rules. Proposal #6 proposes to eliminate this step or requirement, i.e. that the companies are related, because it serves no practical purpose, in order to generate efficiencies and reduce costs. Moreover, in terms of the number of domain names in a particular case: the Providers charge additional fees based on the number of domain names per case, with additional fees when the complaint involves over a certain number of domain names. So the proposal does not touch upon this issue or recommend any changes in this respect. I hope this explanation is helpful, and if there are any further questions please do not hesitate to let me know. Thanks in advance for your time. Cheers, Claudio World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

dear all, I received some correspondence last night after I sent my last note, and I am aware of the additional list traffic today. Please kindly allow me to clarify status. I think its OK that we have minor substantive discussion so long as it is within the parameters of considering whether a proposal should be posted for public comment, as noted by Brian. In fact, the only reason I sent the email last night is because there was substantive discussion during last week's call and I wasn't on that call to respond. Here is the text of Proposal #6: *"*The recommendation is to permit multiple unrelated complainants to bring a single complaint jointly against a single domain name registrant (or related registrants) who has registered multiple domain names,* by deleting the following procedural element within Section 1.1.3 of the URS Procedure: "One Complaint is acceptable for multiple related companies against one Registrant, but only if the companies complaining are related." (emphasis added)* Accordingly, under the existing URS rules, Section 1.1.3 already permits multiple *related* companies to consolidate against a registrant. In order to consolidate their claims, Section 1.1.3 sets forth that the complainants establish and prove to the panelist that they are all related companies. Under this scenario, some of the companies (or organizations) may appear to be related because the various companies use the same or similar names, trademarks, trade names, logos, shop signs, and/or other business identifiers. However, under this same scenario, some of companies *may not* appear to be related, because the various companies (which are in fact legally related) use trademarks, trade names, logos, shop signs, and/or other business identifiers that *are not* similar. In other words, under the existing URS rules, there is no requirement that the legally-related companies use the same or similar trademarks, trade names, logos, shop signs, or other related business identifiers. For example, a parent company may be called "X" and use trademark "Y", and its subsidiary, affiliate, joint-partnership, sister company, etc. may be called "W" and use trademark "Z". What makes them "related companies" has nothing to do with the name of the company, or which trademarks they have acquired rights to, it is purely a matter of the corporate form and other legal considerations relevant under the laws of the respective jurisdiction in which the companies are incorporated, operate, or are otherwise established. What has to happen is these cases, is for the panelist to confirm at least the following matters: 1) ownership of the trademarks; 2) the registrant is one entity or person (or related entities or persons); 3) the domain names have been registered and used in bad faith (under the clear and convincing standard); and 4) the companies are all related companies, which naturally requires the panelist to examine the underlying documentary evidence that is provided by the complainants, such as their trademark registrations certificates, and/or other corporate documentation that establishes the companies are in fact legally related to one another. However under the existing URS rules, Section 1.1.3, *unrelated* companies *are not* permitted to consolidate. This is because the rule is hard-coded into the URS, as specified in Section 1.1.3. The proposal seeks to simply delete Section 1.1.3, which currently prevents unrelated companies to consolidate their complaints. In all cases, the ownership of the trademark(s) must be established, along with the fact that the registrant (or related registrants) is the registrant of the domain names subject of the complaint, and that the respective domain name are registered and used in bad faith. The reason I propose to delete this entire section (1.1.3) is because I support the approach that Gerry described so well, which is that something of this nature should come about as a matter of jurisprudence under the procedure, the same way it has under the UDRP. In both situations, the panelist has to perform the same exact steps and the Providers are permitted to impose additional fees that correspond to the number of domain names that are subject to the complaint. Whether the companies are related or unrelated entities does not go to the issue of which names they operate under, and which trademarks they use in commerce. As outline above, related companies may be using different names and different trademarks in the marketplace, and unrelated companies may be using similar names and similar trademarks (but in terms of trademark law, they are generally not permitted to use confusingly-similar trademarks, unless there is an co-existence agreement and other issues that I don't think we need to go into here). I wanted to take a brief moment to thank Brian and Cyntia for providing helpful illustrative examples of why it would make sense to permit consolidation of complainants in practical terms, even when the complainants are not *legally-related* companies, e.g. their relationship comes about because they are in the same industry or other facts which indicate they have been commonly-targeted by the cybersquatter. The specific contours of which situations make sense to permit consolidation is something better left to the jurisprudence of the particular procedure, and therefore I believe it is wholly appropriate to delete Section 1.1.3 as proposed in Proposal #6. I'm sorry for the long note, but I hope it helps to clarify the existing landscape and the intent of what is being proposed. I believe the URS is under-utilized for significantly more vital reasons than the subject matter of proposal #6, including the remedy and related issues that are the subject of the other proposals. My intent is not to open up a wide ranging discussion, I just wanted to provide a response because I didn't want to leave these questions lingering for several months while the public comments came through. Cheers, Claudio On Wed, Jan 15, 2020 at 5:34 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

hi all,

I just had a chance to catch up on last week's WG call, when we discussed proposal #6 among other topics.

Thanks for the robust discussion on this proposal. Since I wasn't able to join, I am writing to clarify and respond to members' questions about how the proposal is intended to align with the overall design of the URS procedure.

Under the existing URS procedure, multiple companies, i.e. complainants, are permitted to consolidate their claims against a single domain name registrant who has registered multiple domain names, but only when they can establish to the panelist that they are all *related companies*.

Under the UDRP, multiple *unrelated companies* are permitted to consolidate their claim in one proceeding against a single domain name registrant who has registered multiple domain names.

So the proposal harmonizes the URS with the UDRP in this one respect, by allowing *unrelated companies* to consolidate the same way they are permitted to consolidate under the UDRP.

Under the existing URS, importantly there is no requirement that the *related companies* use the same or similar trademarks or other business identifiers in commerce. So the way things exist today the related companies can appear *to be** unrelated entities on the surface* (because they use different trademarks, trade names, and business identifiers) until their trademark registration certificates (and/or other legal documentation) are reviewed by the panelist in order to establish that the various companies are in fact related and all fall under the same corporate 'umbrella'. This documentation must be provided by the complainants and reviewed by the panelist under the existing rules.

Proposal #6 proposes to eliminate this step or requirement, i.e. that the companies are related, because it serves no practical purpose, in order to generate efficiencies and reduce costs.

Moreover, in terms of the number of domain names in a particular case:

the Providers charge additional fees based on the number of domain names per case, with additional fees when the complaint involves over a certain number of domain names. So the proposal does not touch upon this issue or recommend any changes in this respect.

I hope this explanation is helpful, and if there are any further questions please do not hesitate to let me know. Thanks in advance for your time.

Cheers, Claudio