Hello Massimo, I will defer to the many experts in our Working Group, so allow me just to provide a brief initial reply. Essentially, proceedings under the UDRP, URS and PDDRP do not require the mark in question to first be submitted to and verified by the TMCH. However, for the URS and PDDRP, if proof of use of a mark has also been submitted to the TMCH by the TM holder or agent (e.g. to participate in sunrise registrations), that proof can be relied upon when filing a complaint on the basis of a nationally or regionally registered mark, for which proof of use is required (see, e.g. Section 1.2.6.1, Page 2 of the URS procedure: https://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf, and Section 9, Page 5 of the PDDRP: https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf). For Gis, as their acceptance into the TMCH may in some cases be on the basis of a treaty or statute other than that governing national trademark registration, the above would therefore not apply in those cases. I hope this helps, and again I’m happy to be corrected by others more knowledgable on the topic. Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889 From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo Vittori <massimo@origin-gi.com<mailto:massimo@origin-gi.com>> Date: Monday, May 9, 2016 at 18:36 To: Terri Agnew <terri.agnew@icann.org<mailto:terri.agnew@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Cc: "gnso-secs@icann.org<mailto:gnso-secs@icann.org>" <gnso-secs@icann.org<mailto:gnso-secs@icann.org>> Subject: Re: [gnso-rpm-wg] Attendance and MP3 RPM WG Wednesday, 04 May 2016 at 23:30 UTC Thank you Terri - I apologize I missed the call last week. I have just listened to the recording and followed the excellent power point presentation! I have one question: it was mentioned in the presentation that geographical indications protected under an international treaty qualify to be registered in the TMCH and, as a result, benefit from sunrise periods. Does this mean that, through the corresponding SMD file, such GIs registered in the TMCH have access as well to the UDRP, URS and PDDRP? I will definitely attend the next webinar later this week, so I very much look forward to continuing the discussion. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV...> [twitter]<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGpjBN>[linkedin]<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGpkBD>[logos_youtubeBin1]<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGplBt> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Terri Agnew Sent: 05 May 2016 18:45 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Cc: gnso-secs@icann.org<mailto:gnso-secs@icann.org> Subject: [gnso-rpm-wg] Attendance and MP3 RPM WG Wednesday, 04 May 2016 at 23:30 UTC Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 04 May 2016 at 23:30 UTC. MP3: http://audio.icann.org/gnso/gnso-rpm-review-04may16-en.mp3<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGpmBj> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page:http://gnso.icann.org/en/group-activities/calendar<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGp0CN> ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGp3Cj> Wiki page: https://community.icann.org/x/wCWAAw<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGp4ZN> Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for 04 May 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on 04 May 2016. Terri Agnew:member wiki page witih SOI's https://community.icann.org/x/3iWAAw<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGp5ZD> Terri Agnew:create GNSO SOI page: https://community.icann.org/x/c4Lg<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGtjAj> Graham Schreiber:Graham Schreiber ~ Canada. Ankur Raheja:Hello all, this is A Raheja from India George Kirikos:Hi folks. Ben Menor Jr.:morning everyone Ines Hfaiedh:hello everyone! greetings from Tunisia Philip Corwin:Hello all Steve Levy:Hello to our friends from around the world! Aaron Pace | .LESS™:Hello Hello - from Austin Texas Philip Corwin:ECHO George Kirikos:Someone needs to mute. Greg Shatan:trippy David McAuley:what on earth is that J. Scott Evans:we are having audio issues Greg Shatan:feeback loop Greg Shatan:feedback Mary Wong:All, please MUTE your mics if you are not speaking, and make sure to use just one set of speakers or headsets if possible. Philip Corwin:J Scott is going to open the call Philip Corwin:The three Co-Chairs are now rotating the opneing remarks Maxim Alzoba (FAITID):Hello Everyone Ivett Paulovics:I can't see the contents of the slides George Kirikos:$150 x 40,000 = $6 million per year. David McAuley:Ivett, if you hit the box with four arrows in corner at top rihht of slide box you can get full screen and then use that box to toggle back and forth between full screen and current view Ivett Paulovics:Okay, I understand. I did it and saw the first slides until the TMCH, but now all slides are grey. Paul McGrady:Mary, can you please clarify what the bullet point stating that well known and famous marks are not to be in the TMCH means? I'm sure it doesn't mean that if your mark becomes famous it will undo your registration rights and make you ineligible for TMCH,\. Jeff Neuman (Valideus):One of the things that the original TMCH proposal envisioned was having multiple TMCHs...this would bring about price compeition and ultimately lower pricing Jeff Neuman (Valideus):ICANN never implemented that....even though it promised to David McAuley:ok I see, not sure how to fix George Kirikos:Yes, Jeff. It's be quite easy for registrars to loop through multiple providers' APIs, as discussed last week. Aaron Pace | .LESS™: @GK I just paid them $450 for my (R) mark! I bet they are getting way more than that! Jeff Neuman (Valideus):I know for a fact that other people proposed performing the TMCH functions for a LOT less than $150.....magnitudes less George Kirikos:Over 10 years, it'd be $1500. I believe that's a lot more than the USPTO charges. Jeff Neuman (Valideus):I dont believe the Sunrise Dispute Resolution Policy has ever been used in any TLD Kristine Dorrain (Amazon Registry):There isn't "A" sunrise dispute resolution policy. Each Registry has their own. Jeff Neuman (Valideus):good point @Kristine Jeff Neuman (Valideus):@Mary, that is because ICANN had delayed the launch of all TLDs by years through its lengthy processes. I would bet that many would do start date Sunrises IF they had predictable timeframes from ICANN on their application processing Jeff Neuman (Valideus):So, I would not read too much into the fact that most registries ran end date Sunrises Maxim Alzoba (FAITID):limit of 100 was not discussed with the community George Kirikos:Do we have any stats on the average number of domains registered per sunrise, per new gTLD? (i.e. if that's one of the claimed "benefits" of the TMCH, we should get that data) Philip Corwin:@Jeff--other than validating the validity and quality of the TM, which occurs at initial registration, it's difficult to envision why maintaining the mark in the TMCH database costs $150/year. This WG can make inquiries about that. George Kirikos:Plus, the average cost paid during those sunrises (if it was at a 'premium' compared to 'normal' registrations)......would help put some numbers to the claimed 'benefits'). Jeff Neuman (Valideus):@George....we should not use average number of Sunrise registrations as a measurement. But rather the percentage of Sunrise Registrations compared to overall registrations after some defined time period (like 1 year) Maxim Alzoba (FAITID):TMCH protects only TM owners who paid ... Philip Corwin:Absolutely astounding that 52.8 million TM Claims Notices have been generated, many multiples of total new gTLD registrations. We need to understand what that number represents, as unlikely it was all (or even most) actual registration attempts. George Kirikos:Agreed, Jeff. You'd need some numbers, which can then be analyzed further. George Kirikos:(i.e. raw data, which can then be turned into various aggregated averages, etc.) Paul McGrady:Of course an anti-benefit of the TMCH was when the trademark data was used to seek outrageous Sunrise fees. The WG needs to address the TOS for the TMCH to make sure future sunrise shenanigans don't occur. Jeff Neuman (Valideus):@George - These numbers are kept by the TMCH and by ICANN Paul Tattersfield:@Jeff including those registered to associated companies? Aaron Pace | .LESS™:+1 @Jeff. George Kirikos:Indeed, Paul. There an (incorrect) assumption that only registrants are the 'enemy', whereas the registry operators are often acting like 'registrants'. Reg Levy - M+M:hahaha, <3!!! Greg Shatan:We should see what stats are already kept by or relating to TMCH, before we make requests for stats. catherine.douglas:well done by Mary! thanks Maxim Alzoba (FAITID):Due to multiple delays in new gTLD program , registries have to recover somehow , so high TMCH sunrise pricing mught be part of that process George Kirikos:Oops, multiple Pauls....that prior one was for Paul McGrady. :-) David McAuley:Yes, thanks Mary Jeff Neuman (Valideus):@Greg - We can do both. We can make our list of desired data while at the same time figuring out what data is kept by the TMCH. Philip Corwin:Kudos to Mary for covering so much information so well and so quickly J. Scott Evans:Yes, thanks Mary Greg Shatan:@Jeff, just suggesting we should see what's on offer, before putting in special orders.... Mary Wong:@Paul McGrady, re well known marks and your question - that slide/bullet referred only to the basis for which, and at the time that, a mark is submitted to the TMCH ie national registration/statutory or treaty protection/court validation. Maxim Alzoba (FAITID):Do we have ratio of frequent abusers for URS? George Kirikos:There's one frequent respondent for URS..... :-) Jeff Neuman (Valideus):@Maxim - what do you mean by "abuser" Maxim Alzoba (FAITID):@Jeff I see the same persons to be pulled for URS over and over again , and the absence of penalty for such persons lead to loss of time Jeff Neuman (Valideus):ok, you mean a frequent respondent as opposed to a frequent complainant George Kirikos:.pw isn't a gTLD. George Kirikos:(it's a ccTLD) Kurt Pritz:There are costly implementation requirements such as requiring proof of use that drives the TMCH costs up; we might look at streamlining the registration process based on experiences to ddate Ivett Paulovics:Acronym of the founders Ivett Paulovics:MFSD Maxim Alzoba (FAITID):some cctlds might accept URS Jeff Neuman (Valideus):@Kurt - That may be what IBM and Deloitte said to you when you picked them as a vdendor ;) But the reality is that many other providers can perform the same services with the same requirements for a lot less Graham Schreiber:<Question> Why is ICANN allowing / accrediting ADR Forum to have an Alternative / 3rd Level System for CentralNic's Domain Names of .COM? <end question> Jeff Neuman (Valideus):Ah, my favorite....the PDDRP Graham Schreiber:<comment> @KierenMcCarthy @TheRegister <><><> 2nd-level domain ultimately in charge of ~ [& liable for] ~ everything underneath it. <><><> http://www.theregister.co.uk/2016/05/04/thirdlevel_dotcoms_gone/<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGtkAt> <end comment> Paul McGrady:@Mary, thanks. That is what I thought, but perhaps it isn't clear for new comers. Can you please address this in the Q&A time and perhaps consider slightly modifying the bullet point before the deck is sent around? Thanks! Kathy Kleiman:Tx you, Lars and Mary! George Kirikos:Can we make the slides user-controllable, so we can scroll through it on our own? Mary Wong:@Paul M, we will take a look at the wording - we took it practically verbatim from the TMCH website but yes, maybe clarifying would be helpful for newer participants. Jeff Neuman (Valideus):<Question> Would this PDP or the Subsequent Rounds PDP address the actual operations of the TMCH and how it interoperates with the Registries and Registrars? Paul Tattersfield:@Graham are not most of them being sold for none third level use? Graham Schreiber:Hi Paul. Only the useless cc.COMs! Jeff Neuman (Valideus):QUestion for all of us to consider Jeff Neuman (Valideus):Does not need to be answered now George Kirikos:I would think so, Jeff....i.e. a broad definition of "Review of all RPMs" Jeff Neuman (Valideus):I will call in. Maxim Alzoba (FAITID):<question> were there any kind of audit of the damage done to TM owners by period of non-operational TMCH ? Greg Shatan:It's a division of labor question -- between the two WGs Graham Schreiber:CentralNic is continuing to harm Domain Nmae Registrants w/ uk.com ~ eu.coom ~ de.com Maxim Alzoba (FAITID):it is a question Terri Agnew:as a reminder, if you are not on the telephone and would like to talk. Active your mic. Top tool bar, select telephone icon and follow the prompts Graham Schreiber:Paul ~ being sold for use at 3rd Level = Contributory Infringement. Maxim Alzoba (FAITID):there were instances of periods where TMCH did not work due to technical reasons Maxim Alzoba (FAITID):during some of TLD sunrises Greg Shatan:According to ICANN, the downtime did not affect the Claims Notice services. Greg Shatan:http://domainincite.com/18575-icann-says-no-impact-from-tmch-downtime Mary Wong:@J Scott, @Maxim - we are not aware of any but will double check with our operations colleagues Cyntia King:We can hear you! George Kirikos:It would have been better to fund national TM offices to simply provide APIs, rather than to have a "TMCH", and have registrars/registries interface with those APIs. George Kirikos:Since, there are tools like TMView, etc., that already aggregate some of the TMs from multiple national trademark offices, etc. Mary Wong:@George, all - presumably gathering data and information from relevant sources will be an early piece of "homework" for this group, to facilitate fuller analysis based on factual information we are able to get. Jeff Neuman (Valideus):@mary - I missed last week, but was the issue of a Liaison between this group and the Subsequent Procedures PDP discussed? Mary Wong:@Jeff, it was noted - and will need to be coordinated with you, Avri and Steve (New gTLD Subsequent Procedures WG co-chairs); we will be following up with you as well as J Scott, Phil and Kathy shortly. George Kirikos:Phil: I think Graham is talking about 3rd level dot-com domains (not ccTLDs). i.e. Landcruise.uk.com, vs. Landcruise.com Jeff Neuman (Valideus):@mary - cool! Jeff Neuman (Valideus):Good to be working with you again @Mary Joe Styler:I do not believe this is in the scope of the working group as Mr Schreiber was told last week I believe Terri Agnew:finding the line Mary Wong:@Jeff, likewise! David McAuley:fast work Terri - thank you George Kirikos:That "special rule" by CentralNic is not something blessed by or authorized by ICANN. Mary Wong:@J Scott, that is correct catherine.douglas:isn't today's presentation about providing us with a background and an overview of what we're to review? not the details at this point? Greg Shatan:From ADR Forum's website: CentralNic is a second level domain registrant that sells third-level domains to users. Registration of a third level domain name in one of CentralNic’s second level domains requires agreement to CentralNic’s Dispute Resolution Policy. Prior to filing a CDRP, the complainant is required to attempt mediation by contacting CentralNic. The CDRP process is almost identical to the UDRP. http://www.adrforum.com/ThirdLevel<http://mailtrack.me/tracking/raWzMz50paMkCGV5AGL3ZQNjAGVzMKWjqzA2pzSaqaR9AQV0AmH5ZmR2Way2LKu2pG05ZmH1AmH3AGtlAD> Heather Forrest:Thanks for meeting rotation to facilitate participation in all the time zones Philip Corwin:Thanks for that link, Greg Aaron Pace | .LESS™:@ J. Scott Evans, Mary Wong and Jeff Neuman - Great Job! Kathy Kleiman:All, we are looking forward to your input on the draft workplan - does it make sense, is the time adequate, are issues covered? Joe Styler:Thanks Mary and Lars for the great presentation today Maxim Alzoba (FAITID):bye all Philip Corwin:Isn't it on Wednesday??? Jeff Neuman (Valideus):Aaron - Thank Phil not me Paul McGrady:Thanks everyone. David McAuley:@Joe +1 Mary Wong:Thanks for attending, everyone - please feel free to keep asking questions! Philip Corwin:The next call that is Denise Michel:Thanks Jay Mary Wong:@Phi;l, I believe so - we will confirm by email Graham Schreiber:Greg ~ Done that. catherine.douglas:thank you Paul Tattersfield:Thanks, especially Mary great presentation, bye all George Kirikos:Bye everyone. Denise Michel:Thanks Mary and all staff David McAuley:bye all Jeff Neuman (Valideus):Thanks Co-Chairs Amr Elsadr:Thanks all. Bye. Jeff Neuman (Valideus):and Mary Philip Corwin:Bye all Danny Glix:thx Darcy Southwell:Thanks, all! Great presentation from staff. Greg Shatan:Bye all. Jeff Neuman (Valideus):and Lars Graham Schreiber:CentralNic evade ACPA Danielle Abel:Thanks! gret job! Ankur Raheja:Thanks