Seems to me the underlying premise is flawed 3. CRITERIA FOR TRADEMARK INCLUSION IN CLEARINGHOUSE … 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 … 3.2.5 etc. Whereas the [compulsory] RPMs flow from 7.0 7. PROTECTION FOR MARKS IN CLEARINGHOUSE The scope of registered marks that must be honored by registries in providing Trademarks Claims services is broader than those that must be honored by registries in Sunrise services. 7.1 For Trademark Claims services - Registries must recognize and honor all word marks that have been or are: (i) nationally or regionally registered; (ii) court-validated; or (iii) specifically protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. No demonstration of use is required. 7.2 For Sunrise services - Registries must recognize and honor all word marks: (i) nationally or regionally registered and for which proof of use – which can be a declaration and a single specimen of current use – was submitted to, and validated by, the Trademark Clearinghouse; or (ii) that have been court-validated; or (iii) that are specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008. On Tue, Sep 17, 2019 at 4:29 PM Paul Keating <Paul@law.es> wrote:

Seems to me that the majority is attempting to guide the process by not permitting discussin on something that they disagree with .

*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi <ipcdigangi@gmail.com> *Date: *Tuesday, September 17, 2019 at 5:22 PM *To: *Kathy Kleiman <kathy@kathykleiman.com> *Cc: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] Q#8

Kathy, all,

Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7).

I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration.

A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8.

Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7.

Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8?

Thanks!

Best regards,

Claudio

On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com> wrote:

All,

Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals.

Q#8:

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.

3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3 Any word marks specified in and protected by a statute or treaty *as trademarks *[1] in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4 Other marks that constitute intellectual property. [see below]

3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks.

[1] *By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks."*

For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs.

(Appropriate corresponding changes will be percolated across the *Trademark Clearinghouse* Applicant Guidebook)

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

Best, Kathy

_______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy ( https://www.icann.org/privacy/policy) and the website Terms of Service ( https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com> Cc: gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy

Thanks for the response Claudio – and I’m glad that you found the co-chairs’ message to be helpful. Speaking only for myself, it appears that you have put something new on the table, and I look forward to discussing it tomorrow: my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: claudio di gangi <ipcdigangi@gmail.com> Sent: Tuesday, September 17, 2019 3:39 PM To: Corwin, Philip <pcorwin@verisign.com> Cc: kathy@kathykleiman.com; brian.beckham@wipo.int; gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy

Yes that is funny, I thought I wrote copyright. Good catch. On Tuesday, September 17, 2019, Michael Karanicolas <mkaranicolas@gmail.com> wrote:

That's funny... My understanding was always that the three major forms of IP are patents, trademarks and copyright - but perhaps things are taught differently in Canada...

On Tue, Sep 17, 2019 at 3:39 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

...

thanks, Phil. Very helpful as always.

I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals.

My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1.

If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know.

From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon.

This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand?

On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday.

The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text.

My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play.

In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following:

1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations);

2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims.

3) the protection of GIs are NOT mandatory for any new gTLD registry

4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability.

The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES.

But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register.

Hope this helps clarify status, and thanks for everyone's ongoing contributions.

Best regards, Claudio

On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com> wrote:

...

Claudio—

This message reflects the views of the co-chairs.

Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion.

As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls.

In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it.

Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago.

In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one.

Regards,

Brian

Philip

Kathy

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://www.google.com/maps/search/12061+Bluemont+Way+%0D%0AReston,+VA+20190...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *claudio di gangi *Sent:* Tuesday, September 17, 2019 11:22 AM *To:* Kathy Kleiman <kathy@kathykleiman.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8

Kathy, all,

Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7).

I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration.

A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8.

Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7.

Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8?

Thanks!

Best regards,

Claudio

On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com> wrote:

All,

Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals.

Q#8:

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.

3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3 Any word marks specified in and protected by a statute or treaty *as trademarks *[1] in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4 Other marks that constitute intellectual property. [see below]

3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks.

[1] *By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks."*

For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs.

(Appropriate corresponding changes will be percolated across the *Trademark Clearinghouse* Applicant Guidebook)

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

Best, Kathy

_______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

---

By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

In the U.S. the copyright and patent laws are grounded in this portion of Section 8, Article 1 of the Constitution setting for the powers of Congress: To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries Trademark, on the other hand, is based on English common and commercial law. While we don’t have GIs, there are protections for things like trade secrets and rights of publicity which I believe are mostly a matter of state law, although I’m happy to be corrected. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: claudio di gangi <ipcdigangi@gmail.com> Sent: Tuesday, September 17, 2019 4:06 PM To: Michael Karanicolas <mkaranicolas@gmail.com> Cc: Corwin, Philip <pcorwin@verisign.com>; gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 See WIPO: https://www.wipo.int/portal/en/index.html Intellectual Property Copyright Patents Trademarks Industrial Designs Geographical Indications On Tuesday, September 17, 2019, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Yes that is funny, I thought I wrote copyright. Good catch. On Tuesday, September 17, 2019, Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote: That's funny... My understanding was always that the three major forms of IP are patents, trademarks and copyright - but perhaps things are taught differently in Canada... On Tue, Sep 17, 2019 at 3:39 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way<https://www.google.com/maps/search/12061+Bluemont+Way+%0D%0AReston,+VA+20190...> Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org<mailto:GNSO-RPM-WG@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

Claudio, One small administrative correction with respect to this statement: “The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text.” The transcript and recording were posted by Julie Bisland from the GNSO Secretariat in the Post Call message as per usual procedure on 11 September, not long after the end of the call. I’ve included the message text as follows. Thus, WG members would have had Wednesday afternoon through Monday to review the material. Kind regards, Julie Hedlund From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Bisland <julie.bisland@icann.org> Date: Wednesday, September 11, 2019 at 3:14 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Cc: "gnso-secs@icann.org" <gnso-secs@icann.org> Subject: [GNSO-RPM-WG] Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Wednesday, 11 September 2019 at 17:00 UTC Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Wednesday, 11 September 2019 at 17:00 UTC can be found on the agenda wiki page<https://community.icann.org/x/KoICBw> (attendance included) and the GNSO Master calendar <https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group-...> . These include: * Attendance (please let me know if your name has been left off the attendance list) * Audio recording * Zoom chat archive * Zoom recording (including audio, visual, rough transcript) * Transcript As a reminder only members can join the call, observers can listen to the recordings and read the transcript afterwards. Please email gnso-secs@icann.org<mailto:gnso-secs@icann.org> if you would like to change your status from observer to member. For additional information, you may consult the mailing list archives <http://mm.icann.org/pipermail/gnso-rpm-wg/> and the main wiki page<https://community.icann.org/x/wCWAAw>. Thank you. With kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi <ipcdigangi@gmail.com> Date: Tuesday, September 17, 2019 at 3:39 PM To: "Corwin, Philip" <pcorwin@verisign.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy

Hi All, Hi Claudio, I’m hesitant to wade in here since my Liaison role ends in a few weeks and I’ve really tried my best to stay out of the substantive fray until then. However, I would like to more fully understand what is being proposed here. If the lodgment in the TMCH is not for Claims or Sunrise but only for voluntary programs outside of ICANN’s contractual requirements: (1) what is stopping individual contracted parties and non-contracted parties from arranging this now in a separate contract with the TMCH operator; and (2) why would we include it in this work which is limited to those things within ICANN’s remit? I ask because we have a lot of work to do in a short amount of time and I do not want to have to report to the Council that the WG has wandered down an out-of-scope cul-de-sac. Claudio, thanks in advance for your thoughts. Best, Paul This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Tuesday, September 17, 2019 3:24 PM To: claudio di gangi <ipcdigangi@gmail.com>; Corwin, Philip <pcorwin@verisign.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#8 I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility. Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, September 17, 2019 3:38 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy

I understand your point and am open to going in that direction, but does your proposal make it clear that Deloitte is currently not complying with the provisions you set out and must change its practices? Deloitte after all had the AGB to read too. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Sep 17, 2019, at 5:24 PM, John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: I would propose simplifying this a bit. The issue that we have is that Deloitte should not be placing “other marks that constitute intellectual property” in the “Clearinghouse”. The Trademark Clearinghouse is more than just to service Sunrise and Claims services. See AGB TMCH Section 1.2 (“The Clearinghouse will be required to separate its two primary functions: (i) authentication and validation of the trademarks in the Clearinghouse; and (ii) serving as a database to provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Whether the same provider could serve both functions or whether two providers will be determined in the tender process.”) Unfortunately, Section 3.2 muddies the waters and lists “other marks” as being capable of inclusion “in the Clearinghouse”. However, the purpose behind Section 3.2.2 is provided a bit more light in Section 3.6: “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide.” With respect to such other IP, the “Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database.” Thus, as I mentioned on the call, a simple solution is that we recommend “other marks that constitute intellectual property (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse. John From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Tuesday, September 17, 2019 4:24 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility. Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, September 17, 2019 3:38 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.

Again, I’m concerned that doesn’t explain what’s gone wrong, and what should be excluded. Moreover, Deloitte is using “statute/treaty,” not “other IP,” as its justification for including GIs, so your proposed change will not exclude GIs unless it adds material from other proposals. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Sep 17, 2019, at 6:00 PM, John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: We could have been provided some inaccurate or combined data, but agreed if GIs are commingled in the TMCH that should not be happening. To your other point: … a simple solution is that we recommend “other marks that constitute intellectual property” currently in the Trademark Clearinghouse, and accepted in the future, must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse. From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Tuesday, September 17, 2019 5:37 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 I understand your point and am open to going in that direction, but does your proposal make it clear that Deloitte is currently not complying with the provisions you set out and must change its practices? Deloitte after all had the AGB to read too. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Sep 17, 2019, at 5:24 PM, John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: I would propose simplifying this a bit. The issue that we have is that Deloitte should not be placing “other marks that constitute intellectual property” in the “Clearinghouse”. The Trademark Clearinghouse is more than just to service Sunrise and Claims services. See AGB TMCH Section 1.2 (“The Clearinghouse will be required to separate its two primary functions: (i) authentication and validation of the trademarks in the Clearinghouse; and (ii) serving as a database to provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Whether the same provider could serve both functions or whether two providers will be determined in the tender process.”) Unfortunately, Section 3.2 muddies the waters and lists “other marks” as being capable of inclusion “in the Clearinghouse”. However, the purpose behind Section 3.2.2 is provided a bit more light in Section 3.6: “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide.” With respect to such other IP, the “Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database.” Thus, as I mentioned on the call, a simple solution is that we recommend “other marks that constitute intellectual property (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse. John From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Tuesday, September 17, 2019 4:24 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility. Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, September 17, 2019 3:38 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.

All, Passing on a link to the “oriGIn Worldwide GIs Compilation” in case of interest to the discussion of an ancillary database: https://www.origin-gi.com/i-gi-origin-worldwide-gi-compilation-uk.html. Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Wednesday, September 18, 2019 12:09 AM To: John McElwaine <john.mcelwaine@nelsonmullins.com> Cc: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#8 John, Paul, Rebecca, I think John’s final paragraph does the trick (and I hope helps clarify my goal/objective here) - on the basis that the other ancillary database is unified and single-sourced. In other words, those records can be placed in that single separate ancillary database, and new gTLD registries can interact with it as they choose. Of course, if some particular registry wants to build something in addition and separate through Deloitte, they should maintain that option. I just wanted to avoid a scenario when GIs (like the names of famous wines and other well-known goods that are protected in the form of a GI) had to be recorded 25, 50, 100, etc different times and in different places. Best regards, Claudio On Tue, Sep 17, 2019 at 5:23 PM John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: I would propose simplifying this a bit. The issue that we have is that Deloitte should not be placing “other marks that constitute intellectual property” in the “Clearinghouse”. The Trademark Clearinghouse is more than just to service Sunrise and Claims services. See AGB TMCH Section 1.2 (“The Clearinghouse will be required to separate its two primary functions: (i) authentication and validation of the trademarks in the Clearinghouse; and (ii) serving as a database to provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Whether the same provider could serve both functions or whether two providers will be determined in the tender process.”) Unfortunately, Section 3.2 muddies the waters and lists “other marks” as being capable of inclusion “in the Clearinghouse”. However, the purpose behind Section 3.2.2 is provided a bit more light in Section 3.6: “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide.” With respect to such other IP, the “Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database.” Thus, as I mentioned on the call, a simple solution is that we recommend “other marks that constitute intellectual property (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse. John From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Tuesday, September 17, 2019 4:24 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility. Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, September 17, 2019 3:38 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. 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.

Rebecca, all, I support John's proposal below as the simplest approach, with Paul's language about 3.2.4 being the qualifying text for the inclusion of GIs, along with a provision this IP database will be centralized for all new gTLD registries. Rebecca - you asked about the supporting rationale in a recent note, so I would like to address your question. The purpose is to avoid creating a scenario of having 300 (or pick some number) of ancillary databases, each requiring separate submissions and validations. Again, I say this because Mary confirmed that currently the ancillary database concept is registry-specific. The main TMCH is not registry-specific, all new gTLD registries connect to the database in a unified manner. For the sake of providing examples, <.tea> launches as a new gTLD in the next round; that registry will need to expend time and resources to collaborate with Deloitte to establish a new ancillary database, and the regional authority/producers of DARJEELING TEA, (under the current model) would be required to submit the GI registration to the ancillary database of <.tea> and have it validated at that time. In the same round, <.चाय> launches ("tea" in the Hindi script - a language spoken in India, as an IDN), the current model requires this same (or different) registry operator to create another new ancillary database, with new submissions of registrations, additional validations, etc. <.drinks>, <.beverages>, <.web>, <.internet>, etc.. the list goes on and on, for every new gTLD there has to be separate ancillary databases. Each registry and registrar will then have to allocate resources to promote the registry-specific database to IP owners around the world, and connect to the database from a technical level. I can only imagine the confusion and unnecessary costs that this approach would impose on contracted parties and the public. It would also defeat the purpose and benefit of a having a centralized, unified system that simplifies recordation and validation from both an administrative and technical basis for all parties. The Limited Registration Period is an existing RPM that functions similar to Sunrise, but takes place after the Sunrise Period, during which time these 3.2.4. marks can be protected. Since it is already permitted, I propose that we specify there is a voluntary option for a IP Claims notice for these 3.2.4 marks (identical to the TM Claims notice, i.e. using the same language). These are completely voluntary RPMs for contracted parties - especially, for those that operate in jurisdictions where GIs are protected under local laws, and/or for those which decide to take proactive measures to prevent abusive registrations in their TLD(s) to have a safe namespace for their users. Since registries are already allowed to create voluntary RPMs, the proposal is based on improving things from a technical and administrative basis, in a manner that is fully consistent with the law, and with the overall goal of protecting consumers and promoting trust in new gTLDs. Finally, as Brian noted there is an existing database of GIs, managed by OriGin, which Deloitte/IBM can interface with to help simplify the process, which is an idea we can include for public comment in association with the main recommendation. All we need to do is agree that this approach makes sense from a policy perspective, and the IRT that follows this PDP can develop the appropriate implementation procedures to put everything into place. Please let me know of any questions. Best regards, Claudio On Tue, Sep 17, 2019 at 5:23 PM John McElwaine < john.mcelwaine@nelsonmullins.com> wrote:

I would propose simplifying this a bit. The issue that we have is that Deloitte should not be placing “other marks that constitute intellectual property” in the “Clearinghouse”. The Trademark Clearinghouse is more than just to service Sunrise and Claims services. See AGB TMCH Section 1.2 (“The Clearinghouse will be required to separate its two primary functions: (i) authentication and validation of the trademarks in the Clearinghouse; and (ii) serving as a database to provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Whether the same provider could serve both functions or whether two providers will be determined in the tender process.”) Unfortunately, Section 3.2 muddies the waters and lists “other marks” as being capable of inclusion “in the Clearinghouse”.

However, the purpose behind Section 3.2.2 is provided a bit more light in Section 3.6: “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide.” With respect to such other IP, the “Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and *any data used for those services are kept separate from the Clearinghouse database*.”

Thus, as I mentioned on the call, a simple solution is that we recommend “other marks that constitute intellectual property (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse.

John

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *Tushnet, Rebecca *Sent:* Tuesday, September 17, 2019 4:24 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Corwin, Philip < pcorwin@verisign.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] Q#8

*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org

I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility.

Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.)

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi <ipcdigangi@gmail.com> *Sent:* Tuesday, September 17, 2019 3:38 PM *To:* Corwin, Philip <pcorwin@verisign.com> *Cc:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#8

thanks, Phil. Very helpful as always.

I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals.

My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1.

If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know.

From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon.

This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand?

On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday.

The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text.

My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play.

In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following:

1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations);

2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims.

3) the protection of GIs are NOT mandatory for any new gTLD registry

4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability.

The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES.

But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register.

Hope this helps clarify status, and thanks for everyone's ongoing contributions.

Best regards,

Claudio

On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com> wrote:

Claudio—

This message reflects the views of the co-chairs.

Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion.

As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls.

In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it.

Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago.

In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one.

Regards,

Brian

Philip

Kathy

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *claudio di gangi *Sent:* Tuesday, September 17, 2019 11:22 AM *To:* Kathy Kleiman <kathy@kathykleiman.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8

Kathy, all,

Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7).

I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration.

A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8.

Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7.

Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8?

Thanks!

Best regards,

Claudio

On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com> wrote:

All,

Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals.

Q#8:

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.

3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3 Any word marks specified in and protected by a statute or treaty *as trademarks *[1] in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4 Other marks that constitute intellectual property. [see below]

3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks.

[1] *By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks."*

For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs.

(Appropriate corresponding changes will be percolated across the *Trademark Clearinghouse* Applicant Guidebook)

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

Best, Kathy

Confidentiality Notice

This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.

I agree with Kathy. That seems like a completely new proposal. Among other things, John’s language doesn’t deal with GIs/“statute or treaty.” I also think you are overreading Mary’s comment since none of these ancillary databases appear to exist. There is presently no prohibition on creating a new one that could serve multiple registries. I don’t think we should direct Deloitte to do so. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Sep 18, 2019, at 12:34 PM, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: Claudio and All, For those who may not be able to follow all of the messages, could you send a full set of what you are thinking of for new language/Q#8? At least two Pauls have commented, so I am not sure what you are referencing. Having it all in one place would be useful. Tx, Kathy <<Rebecca, all, I support John's proposal below as the simplest approach, with Paul's language about 3.2.4 being the qualifying text for the inclusion of GIs, along with a provision this IP database will be centralized for all new gTLD registries. Rebecca - you asked about the supporting rationale in a recent note, so I would like to address your question. The purpose is to avoid creating a scenario of having 300 (or pick some number) of ancillary databases, each requiring separate submissions and validations. Again, I say this because Mary confirmed that currently the ancillary database concept is registry-specific. The main TMCH is not registry-specific, all new gTLD registries connect to the database in a unified manner. For the sake of providing examples, <.tea> launches as a new gTLD in the next round; that registry will need to expend time and resources to collaborate with Deloitte to establish a new ancillary database, and the regional authority/producers of DARJEELING TEA, (under the current model) would be required to submit the GI registration to the ancillary database of <.tea> and have it validated at that time. In the same round, <.चाय> launches ("tea" in the Hindi script - a language spoken in India, as an IDN), the current model requires this same (or different) registry operator to create another new ancillary database, with new submissions of registrations, additional validations, etc. <.drinks>, <.beverages>, <.web>, <.internet>, etc.. the list goes on and on, for every new gTLD there has to be separate ancillary databases. Each registry and registrar will then have to allocate resources to promote the registry-specific database to IP owners around the world, and connect to the database from a technical level. I can only imagine the confusion and unnecessary costs that this approach would impose on contracted parties and the public. It would also defeat the purpose and benefit of a having a centralized, unified system that simplifies recordation and validation from both an administrative and technical basis for all parties. The Limited Registration Period is an existing RPM that functions similar to Sunrise, but takes place after the Sunrise Period, during which time these 3.2.4. marks can be protected. Since it is already permitted, I propose that we specify there is a voluntary option for a IP Claims notice for these 3.2.4 marks (identical to the TM Claims notice, i.e. using the same language). These are completely voluntary RPMs for contracted parties - especially, for those that operate in jurisdictions where GIs are protected under local laws, and/or for those which decide to take proactive measures to prevent abusive registrations in their TLD(s) to have a safe namespace for their users. Since registries are already allowed to create voluntary RPMs, the proposal is based on improving things from a technical and administrative basis, in a manner that is fully consistent with the law, and with the overall goal of protecting consumers and promoting trust in new gTLDs. Finally, as Brian noted there is an existing database of GIs, managed by OriGin, which Deloitte/IBM can interface with to help simplify the process, which is an idea we can include for public comment in association with the main recommendation. All we need to do is agree that this approach makes sense from a policy perspective, and the IRT that follows this PDP can develop the appropriate implementation procedures to put everything into place. Please let me know of any questions. Best regards, Claudio On Tue, Sep 17, 2019 at 5:23 PM John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: I would propose simplifying this a bit. The issue that we have is that Deloitte should not be placing “other marks that constitute intellectual property” in the “Clearinghouse”. The Trademark Clearinghouse is more than just to service Sunrise and Claims services. See AGB TMCH Section 1.2 (“The Clearinghouse will be required to separate its two primary functions: (i) authentication and validation of the trademarks in the Clearinghouse; and (ii) serving as a database to provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Whether the same provider could serve both functions or whether two providers will be determined in the tender process.”) Unfortunately, Section 3.2 muddies the waters and lists “other marks” as being capable of inclusion “in the Clearinghouse”. However, the purpose behind Section 3.2.2 is provided a bit more light in Section 3.6: “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide.” With respect to such other IP, the “Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database.” Thus, as I mentioned on the call, a simple solution is that we recommend “other marks that constitute intellectual property (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse must be placed into a separate ancillary database by the operator and not in the Trademark Clearinghouse. John From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Tuesday, September 17, 2019 4:24 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility. Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, September 17, 2019 3:38 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know. From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon. This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. 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Very good questions, Rebecca. On your main substantive question, i.e. the second one: because as I understand Mary’s intervention on Wednesday, the ancillary database concept is registry-specific (Mary kindly correct me if I am mistaken), so each new gTLD registry would have to establish and maintain their own separate ancillary database through Deloitte, each potentially with their own varying rules for inclusion and operation. The main purpose of the Clearinghouse is to have a centralized repository of verified rights under uniform standards. In previous rounds of new gTLDs, each registry operated their own Sunrise, etc. and marks had to be validated/recorded/processed by each registry operator along with the validating agency they contracted with to perform this function, each under their own separate set of instructions. For example, when .EU launched, this led to a scenario where if the paperclip on the supporting paperwork submitted by the IP owner was misapplied, it led to validation issues. As you can imagine, this created substantial administrative burdens, difficulties, and costs on the parties - costs which we know are often eventually passed down to the consumer and/or registrant. This happened in an environment when we saw 7 new gTLDs launch per round, with each gTLD launching virtually in isolation from one another. In light of the new gTLD program, the benefit and value of the Clearinghouse is to have one streamlined location where IP rights can be recorded, validated, and used to support the RPMs, whether they are mandatory or voluntary in nature. So this is the main reason to have them recorded in a unified location, and not across multiple independent ancillary databases. In terms of the process of their protection, the Applicant Guidebook has an existing registration period that takes place prior to General Availability such as GIs can be protected. So my proposal really changes nothing in that substantive regard. It’s based on the premise to function under the existing RPM policy rules (as described above). One element, as you note, that may require some form of modification, lies on a technical level - which is managed by IBM. I do not see this type of minor modification being of such a non-trivial degree that a company like IBM couldn’t handle it based on the skills, capacity, and resources we know that company possesses. On the other hand, there is evidence of the need to protect these source identifiers, because they are easily registered as domain names in certain countries to confuse consumers and commit fraud. For this reason, the ICANN registry agreement was designed to allow the protection of this form of IP, so what we are simply discussing is the most practical, efficient and cost effective means of doing so, in order to help prevent consumer harm in the new gTLD environment. With that said, it’s vital we do not create unnecessary complexities and processes, which may defeat the purpose of having these systems and protections in place in the first instance. Finally, having Deloitte on the call was something I requested last week to discuss potential changes that we may decide to recommend going forward, so I trust that point was taken into consideration when the decision was made to formally invite them on the next call. Best regards, Claudio On Tuesday, September 17, 2019, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

I'm still quite factually confused by this proposal. "Accepted in the Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise upon proof of use." It appears to me that this is proposing a nontrivial technical change (at the very least the implementation of a new coding category, which will have to be retrofitted to existing entries), without evidence either of its need or its feasibility.

Relatedly: If GIs are to be treated so differently, why put them in the Clearinghouse, given that there is consensus that they shouldn't be used for Claims or Sunrise? Kathy's clarifying language allows for registries etc. to adopt various business models and for Deloitte and other operators to run systems that facilitate those business models, including the ones Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra business that would make competition in the market for providing additional services less likely.)

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi <ipcdigangi@gmail.com> *Sent:* Tuesday, September 17, 2019 3:38 PM *To:* Corwin, Philip <pcorwin@verisign.com> *Cc:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#8

thanks, Phil. Very helpful as always.

I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals.

My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1.

If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know.

From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon.

This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand?

On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday.

The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text.

My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play.

In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following:

1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations);

2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims.

3) the protection of GIs are NOT mandatory for any new gTLD registry

4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability.

The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES.

But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register.

Hope this helps clarify status, and thanks for everyone's ongoing contributions.

Best regards, Claudio

On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com> wrote:

Claudio—

This message reflects the views of the co-chairs.

Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion.

As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls.

In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it.

Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago.

In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one.

Regards,

Brian

Philip

Kathy

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://www.google.com/maps/search/12061+Bluemont+Way+%0D%0AReston,+VA+20190...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *claudio di gangi *Sent:* Tuesday, September 17, 2019 11:22 AM *To:* Kathy Kleiman <kathy@kathykleiman.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8

Kathy, all,

Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7).

I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration.

A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8.

Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7.

Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8?

Thanks!

Best regards,

Claudio

On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com> wrote:

All,

Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals.

Q#8:

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.

3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3 Any word marks specified in and protected by a statute or treaty *as trademarks *[1] in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4 Other marks that constitute intellectual property. [see below]

3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks.

[1] *By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks."*

For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs.

(Appropriate corresponding changes will be percolated across the *Trademark Clearinghouse* Applicant Guidebook)

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

Best, Kathy

I agree with Claudio's position. Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: <mailto:amanoff@vmf.com.ar> amanoff@vmf.com.ar Web: <http://www.vmf.com.ar/> http://www.vmf.com.ar De: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de claudio di gangi Enviado el: martes, 17 de septiembre de 2019 16:39 Para: Corwin, Philip CC: gnso-rpm-wg@icann.org Asunto: Re: [GNSO-RPM-WG] Q#8 thanks, Phil. Very helpful as always. I see your point that proposal #1 and #2 overlap, in the sense that they both deal with whether GIs should be recorded in the TMCH. My proposal (#3) integrates the other two proposals. My concern during the call was that I felt a premature signal being expressed that agreement was being quickly being reached after several members spoke (and I was one of them), while several other members asked clarifying questions. I may be mistaken, but don't recall Jason or Rebecca objecting to the thoughts I expressed during discussion on proposal #1. If I am mistaken, and there was a meaningfully larger list of proponents for proposal #1 expressed on the call, I am happy to be corrected - please let me know.

From my perspective, the majority of members did not express a position while the discussion was taking place, so I was left confused under what basis that statement that consensus was reached was based upon.

This is also why I recently expressed not having the benefit of the informal poll that you conducted two weeks ago. Can we please do this tomorrow to get a better sense of where folks stand? On this same line of reasoning, I was concerned that we did not have full participation on the last week's call (where any registries and registrars on the call?). Moreover, I indicated last week that I had off-line discussions with WG members who expressed support for my suggested approach, but were not able to join the call, so I was hoping to hear from them on the list prior to Wednesday. The transcript and recording were posted by Julie on Friday, 13 Sept. so members did not really have much time (Friday and Monday) to reply with input before things (I personally feel) got somewhat short-cut this morning with the posting that expressed here is the consensus view of the WG, along with the associated implementation text. My concern when this occurs is it changes the dynamic about how members feel about weighing-in and 'going against the thread' so to speak, and also may create confusion about the accurate state of play. In terms of substance and to clarify, my proposal is based on finding common ground and compromise that integrates the two proposals, as per the following: 1) Going forward, GI are accepted in the Clearinghouse or ONE main ancillary database that all registries/registrars can connect to (which potentially can be integrated with the main external GI database that exists, with Deloitte performing validations); 2) GIs are NOT protected during the Sunrise or Claims period, which remain for trademarks; which was something that we established during the review of Sunrise and Claims. 3) the protection of GIs are NOT mandatory for any new gTLD registry 4) for new gTLD registries that choose and desire to protect GIs (as the current rules permit) because of local laws and/or other reasons, they are protected during the Limited Registration Period, to help prevent abusive registrations before General Availability. The rationale for this approach is that GIs are one of the three major forms of IP (patents, trademarks, and GIs) and function as source identifiers for goods and services in a manner that is similar to trademarks (and can be registered as domains in the same manner). For example, GIs are protected in the United States (under the TRIPS agreement) as collective or certification marks, think FLORIDA ORANGES or IDAHO POTATOES. But in other countries, outside of the United States, they are protected under local laws that place them on a separate registry, apart from the trademark register. Hope this helps clarify status, and thanks for everyone's ongoing contributions. Best regards, Claudio On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin@verisign.com> wrote: Claudio— This message reflects the views of the co-chairs. Q8 and all of its related proposals were extensively discussed on the September 4th call. The meeting on 11 September was a continued discussion on Q8 and Q7 in case there were further proposals, and the major focus was on Q7 as we had run out of time on the prior call and a new modified proposal had been submitted for discussion. As regards Q 8, all of the first three proposals converge in that they would limit the registration of GIs in the TMCH to “marks” of some sort, whether trademarks or collective marks or certification marks; there also seemed to be some recognition and agreement that GIs that did not constitute “marks” could be recorded in an ancillary database for the purpose of assisting certain new gTLDs that recognized and provided some additional consideration to them. It appeared to the co-chairs that restricting TMCH recordation of GIs to those that constituted “marks” had fairly broad support among WG members participating on the calls. In regard to your fourth proposal -- “(1) Add the consideration of GIs to the policy review of the Sunrise and Claims services; and (2) withhold final consideration of the current TMCH proposals relating to GIs, until we conclude the policy review of the new gTLD RPMs (as described in the Charter).” – the Sunrise and Claims reviews have been concluded, and we are now wrapping up (concluding) our review of the new gTLD RPMs. So this proposal no longer seems timely or relevant; but if you wish to amend it and make a specific proposal for the treatment of GIs in the TMCH, tomorrow is the time to make it. Finally, as regards your proposal that we withhold a decision until Deloitte participated in a call on this subject, we see no reason to do so as there is no indication that Deloitte has changed its practice in regard to GI recordation since it wrote to the WG two years ago. In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow but will facilitate discussion of an amended proposal from you if you wish to offer one. Regards, Brian Philip Kathy Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Tuesday, September 17, 2019 11:22 AM To: Kathy Kleiman <kathy@kathykleiman.com> Cc: gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 Kathy, all, Last week, we spent the first full hour of the call discussing the first Question 8 proposal, and zero minutes on the second proposal on Question #8 (In comparison we spent much time discussing both proposals for question #7). I am aware that some members spoke in support of the first proposal (I was on audio only), but do not know how many, while some others did not speak in support, and that we agreed to spend this full week to solicit WG members views on the list before moving forward. This week has not yet concluded (we have through today), yet new language is being posted below now for consideration. A few additional points, the week prior Phil conducted an informal poll using the Zoom room functionality, which helped provide transparency on WG members views for consensus building, which was not done last week on Question #8. Nor has there been an effort to bring the various proponents together to reach a compromise position, which we recently did in the sprint of the consensus-building process on Question #7, the design mark topic. So I’m not sure why question #8 is being treated so differently in all these various ways (as described above) compared to Question #7. Can someone kindly shed some light on this disparity in treatment between the way we are approaching question 7 and question 8? Thanks! Best regards, Claudio On Tuesday, September 17, 2019, Kathy Kleiman <kathy@kathykleiman.com> wrote: All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy

I want to caution against providing a definition of intellectual property since it's far beyond our remit and since things like trade secrets and patents should never be substantively eligible for the TMCH or any domain name registration process in the first place even though they are "IP": I am unable to think of how one could have a trade secret in a domain name, or a utility or design or plant patent, and we have no reason to speculate about it or generate confusion about it. Nor should we encourage copyright claims to be made on the kind of short phrases that make plausible registrations. Let's not go down this rabbit hole: if providers decide to make ancillary databases, they can. In terms of Scott's proposal, I can nonetheless live with the suggested change, though "strings" or "words" would be more neutral. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Scott Austin <SAustin@vlplawgroup.com> Sent: Wednesday, September 18, 2019 9:46 AM To: Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 Kathy: I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection. To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate). In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located. Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative. Best regards, Scott Please click below to schedule a call with me through my assistant for: a 15-minute call<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D56E02.58A70B30][IntellectualPropertyLaw 100] [microbadge[1]] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avvo.com_attorneys_3...> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Tuesday, September 17, 2019 10:52 AM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#8 All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.

My point exactly! We are wandering too far afield if we try and guess what might fit in an ancillary database. "Marks" was Kathy's suggestion, which I'm fine with because it tracks with what plausibly might be in an ancillary database; I can also live with "IP" if we don't confuse the issue since it is not our job to determine what should be in an ancillary database. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup@gmail.com> Sent: Wednesday, September 18, 2019 10:22 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Scott Austin <SAustin@vlplawgroup.com>; Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#8 Rebecca, Wouldn’t one normally suggest that there was a distinction between types of intellectual property such as trade secrets, marks, copyrights and patents etc? Or are you suggesting plant patents inter alia are types of marks? Thanks, Paul On Wed, Sep 18, 2019 at 2:57 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I want to caution against providing a definition of intellectual property since it's far beyond our remit and since things like trade secrets and patents should never be substantively eligible for the TMCH or any domain name registration process in the first place even though they are "IP": I am unable to think of how one could have a trade secret in a domain name, or a utility or design or plant patent, and we have no reason to speculate about it or generate confusion about it. Nor should we encourage copyright claims to be made on the kind of short phrases that make plausible registrations. Let's not go down this rabbit hole: if providers decide to make ancillary databases, they can. In terms of Scott's proposal, I can nonetheless live with the suggested change, though "strings" or "words" would be more neutral. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Wednesday, September 18, 2019 9:46 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 Kathy: I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection. To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate). In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located. Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative. Best regards, Scott Please click below to schedule a call with me through my assistant for: a 15-minute call<https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_15...> a 30-minute call<https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_30...> a 60-minute call<https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_60...> [cid:16d44bed8ce4cff311][IntellectualPropertyLaw 100] [microbadge[1]] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avvo.com_attorneys_3...> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Tuesday, September 17, 2019 10:52 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Q#8 All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org<mailto:GNSO-RPM-WG@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=2IT88ja5IaG4rqCKPMaWmBIFI2JCSQF4pGki1K5XXRg&s=FqH22Wt-N1YkZuZ_Kyor6mGnVIEYtN1gJKItcIUYs7E&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=2IT88ja5IaG4rqCKPMaWmBIFI2JCSQF4pGki1K5XXRg&s=tU5NtB9a3Td1KhPKNxh0ByCssKIyKZQHsct552-JMr8&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=2IT88ja5IaG4rqCKPMaWmBIFI2JCSQF4pGki1K5XXRg&s=EziUsW0f0t0YWWDPwlseteTRlMGPh8dGdBFqTY_eYzU&e=>). 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I agree with Paul, very well stated. Best, Claudio On Wed, Sep 18, 2019 at 10:44 AM Paul Tattersfield <gpmgroup@gmail.com> wrote:

Thanks Rebecca. In that case I think it is important we do not change the current wording of

3.2.4 - Other marks that constitute intellectual property.

It is an elegant catch all for all other type of marks not all other types of IP. This includes any type of mark that is not included in 3.2.1, 3.2.2 & 3.2.3. GIs would seem to be a good example

The RPMs flow from 7.1. & 7.2 and they do not reference 3.2.4

On Wed, Sep 18, 2019 at 3:25 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

...

My point exactly! We are wandering too far afield if we try and guess what might fit in an ancillary database. "Marks" was Kathy's suggestion, which I'm fine with because it tracks with what plausibly might be in an ancillary database; I can also live with "IP" if we don't confuse the issue since it is not our job to determine what should be in an ancillary database.

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Paul Tattersfield <gpmgroup@gmail.com> *Sent:* Wednesday, September 18, 2019 10:22 AM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Scott Austin <SAustin@vlplawgroup.com>; Kathy Kleiman < kathy@kathykleiman.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#8

Rebecca,

Wouldn’t one normally suggest that there was a distinction between types of intellectual property such as trade secrets, marks, copyrights and patents etc? Or are you suggesting plant patents inter alia are types of marks? Thanks, Paul

On Wed, Sep 18, 2019 at 2:57 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

I want to caution against providing a definition of intellectual property since it's far beyond our remit and since things like trade secrets and patents should never be substantively eligible for the TMCH or any domain name registration process in the first place even though they are "IP": I am unable to think of how one could have a trade secret in a domain name, or a utility or design or plant patent, and we have no reason to speculate about it or generate confusion about it. Nor should we encourage copyright claims to be made on the kind of short phrases that make plausible registrations. Let's not go down this rabbit hole: if providers decide to make ancillary databases, they can.

In terms of Scott's proposal, I can nonetheless live with the suggested change, though "strings" or "words" would be more neutral.

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Scott Austin <SAustin@vlplawgroup.com> *Sent:* Wednesday, September 18, 2019 9:46 AM *To:* Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#8

Kathy:

I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection.

To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate).

In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located.

Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative.

Best regards,

Scott

*Please click below to schedule a call with me through my assistant for:*

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Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Tuesday, September 17, 2019 10:52 AM *To:* gnso-rpm-wg@icann.org *Subject:* [GNSO-RPM-WG] Q#8

All,

Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals.

Q#8:

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.

3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3 Any word marks specified in and protected by a statute or treaty *as trademarks *[1] in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4 Other marks that constitute intellectual property. [see below]

3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks.

[1] *By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks."*

For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs.

(Appropriate corresponding changes will be percolated across the *Trademark Clearinghouse* Applicant Guidebook)

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

Best, Kathy

This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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Sorry Rebecca, I can not see why you think that they are currently being granted Claims/ Sunrise. I must be missing something please can you explain that to me? Thanks, Paul On Wed, Sep 18, 2019 at 4:01 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

Then let’s stick with Kathy’s proposal, which allocates their status correctly rather than granting them Claims/Sunrise as presently.

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School

Sent from my phone. Apologies for terseness/typos.

On Sep 18, 2019, at 10:56 AM, claudio di gangi <ipcdigangi@gmail.com> wrote:

I agree with Paul, very well stated.

Best, Claudio

On Wed, Sep 18, 2019 at 10:44 AM Paul Tattersfield <gpmgroup@gmail.com> wrote:

...

Thanks Rebecca. In that case I think it is important we do not change the current wording of

3.2.4 - Other marks that constitute intellectual property.

It is an elegant catch all for all other type of marks not all other types of IP. This includes any type of mark that is not included in 3.2.1, 3.2.2 & 3.2.3. GIs would seem to be a good example

The RPMs flow from 7.1. & 7.2 and they do not reference 3.2.4

On Wed, Sep 18, 2019 at 3:25 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

...

My point exactly! We are wandering too far afield if we try and guess what might fit in an ancillary database. "Marks" was Kathy's suggestion, which I'm fine with because it tracks with what plausibly might be in an ancillary database; I can also live with "IP" if we don't confuse the issue since it is not our job to determine what should be in an ancillary database.

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Paul Tattersfield <gpmgroup@gmail.com> *Sent:* Wednesday, September 18, 2019 10:22 AM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Scott Austin <SAustin@vlplawgroup.com>; Kathy Kleiman < kathy@kathykleiman.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#8

Rebecca,

Wouldn’t one normally suggest that there was a distinction between types of intellectual property such as trade secrets, marks, copyrights and patents etc? Or are you suggesting plant patents inter alia are types of marks? Thanks, Paul

On Wed, Sep 18, 2019 at 2:57 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

I want to caution against providing a definition of intellectual property since it's far beyond our remit and since things like trade secrets and patents should never be substantively eligible for the TMCH or any domain name registration process in the first place even though they are "IP": I am unable to think of how one could have a trade secret in a domain name, or a utility or design or plant patent, and we have no reason to speculate about it or generate confusion about it. Nor should we encourage copyright claims to be made on the kind of short phrases that make plausible registrations. Let's not go down this rabbit hole: if providers decide to make ancillary databases, they can.

In terms of Scott's proposal, I can nonetheless live with the suggested change, though "strings" or "words" would be more neutral.

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Scott Austin <SAustin@vlplawgroup.com> *Sent:* Wednesday, September 18, 2019 9:46 AM *To:* Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#8

Kathy:

I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection.

To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate).

In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located.

Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative.

Best regards,

Scott

*Please click below to schedule a call with me through my assistant for:*

* a 15-minute call <https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_15...> * a 30-minute call <https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_30...> a 60-minute call <https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_60...>

*<image001.png><image002.jpg> **<image003.jpg>* <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avvo.com_attorneys_3...>

Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP

101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301

Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Tuesday, September 17, 2019 10:52 AM *To:* gnso-rpm-wg@icann.org *Subject:* [GNSO-RPM-WG] Q#8

All,

Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals.

Q#8:

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.

3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3 Any word marks specified in and protected by a statute or treaty *as trademarks *[1] in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4 Other marks that constitute intellectual property. [see below]

3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks.

[1] *By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks."*

For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs.

(Appropriate corresponding changes will be percolated across the *Trademark Clearinghouse* Applicant Guidebook)

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

Best, Kathy

This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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But we are not guided by Deloitte's policies but rather what is stated in the rules establishing the TMCH. On 9/18/19, 5:14 PM, "GNSO-RPM-WG on behalf of Michael Karanicolas" <gnso-rpm-wg-bounces@icann.org on behalf of mkaranicolas@gmail.com> wrote: Paul - we've been over this repeatedly. The reason is because Deloitte's current policies allow for that, as they confirmed. On Wed, Sep 18, 2019 at 11:12 AM Paul Tattersfield <gpmgroup@gmail.com> wrote: > > Sorry Rebecca, I can not see why you think that they are currently being granted Claims/ Sunrise. I must be missing something please can you explain that to me? Thanks, Paul > > On Wed, Sep 18, 2019 at 4:01 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: >> >> Then let’s stick with Kathy’s proposal, which allocates their status correctly rather than granting them Claims/Sunrise as presently. >> >> Rebecca Tushnet >> Frank Stanton Professor of First Amendment Law, Harvard Law School >> >> Sent from my phone. Apologies for terseness/typos. >> >> On Sep 18, 2019, at 10:56 AM, claudio di gangi <ipcdigangi@gmail.com> wrote: >> >> I agree with Paul, very well stated. >> >> Best, >> Claudio >> >> On Wed, Sep 18, 2019 at 10:44 AM Paul Tattersfield <gpmgroup@gmail.com> wrote: >>> >>> Thanks Rebecca. In that case I think it is important we do not change the current wording of >>> >>> 3.2.4 - Other marks that constitute intellectual property. >>> >>> It is an elegant catch all for all other type of marks not all other types of IP. This includes any type of mark that is not included in 3.2.1, 3.2.2 & 3.2.3. GIs would seem to be a good example >>> >>> The RPMs flow from 7.1. & 7.2 and they do not reference 3.2.4 >>> >>> >>> On Wed, Sep 18, 2019 at 3:25 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: >>>> >>>> My point exactly! We are wandering too far afield if we try and guess what might fit in an ancillary database. "Marks" was Kathy's suggestion, which I'm fine with because it tracks with what plausibly might be in an ancillary database; I can also live with "IP" if we don't confuse the issue since it is not our job to determine what should be in an ancillary database. >>>> >>>> >>>> Rebecca Tushnet >>>> Frank Stanton Professor of First Amendment Law, Harvard Law School >>>> 703 593 6759 >>>> ________________________________ >>>> From: Paul Tattersfield <gpmgroup@gmail.com> >>>> Sent: Wednesday, September 18, 2019 10:22 AM >>>> To: Tushnet, Rebecca <rtushnet@law.harvard.edu> >>>> Cc: Scott Austin <SAustin@vlplawgroup.com>; Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> >>>> Subject: Re: [GNSO-RPM-WG] Q#8 >>>> >>>> Rebecca, >>>> >>>> Wouldn’t one normally suggest that there was a distinction between types of intellectual property such as trade secrets, marks, copyrights and patents etc? Or are you suggesting plant patents inter alia are types of marks? Thanks, Paul >>>> >>>> >>>> On Wed, Sep 18, 2019 at 2:57 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: >>>> >>>> I want to caution against providing a definition of intellectual property since it's far beyond our remit and since things like trade secrets and patents should never be substantively eligible for the TMCH or any domain name registration process in the first place even though they are "IP": I am unable to think of how one could have a trade secret in a domain name, or a utility or design or plant patent, and we have no reason to speculate about it or generate confusion about it. Nor should we encourage copyright claims to be made on the kind of short phrases that make plausible registrations. Let's not go down this rabbit hole: if providers decide to make ancillary databases, they can. >>>> >>>> In terms of Scott's proposal, I can nonetheless live with the suggested change, though "strings" or "words" would be more neutral. >>>> >>>> >>>> Rebecca Tushnet >>>> Frank Stanton Professor of First Amendment Law, Harvard Law School >>>> 703 593 6759 >>>> ________________________________ >>>> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Scott Austin <SAustin@vlplawgroup.com> >>>> Sent: Wednesday, September 18, 2019 9:46 AM >>>> To: Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> >>>> Subject: Re: [GNSO-RPM-WG] Q#8 >>>> >>>> >>>> Kathy: >>>> >>>> I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection. >>>> >>>> To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate). >>>> >>>> In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located. >>>> >>>> Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative. >>>> >>>> Best regards, >>>> >>>> Scott >>>> >>>> >>>> >>>> Please click below to schedule a call with me through my assistant for: >>>> >>>> a 15-minute call a 30-minute call a 60-minute call >>>> >>>> >>>> >>>> <image001.png><image002.jpg> <image003.jpg> >>>> >>>> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP >>>> >>>> 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 >>>> >>>> Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com >>>> >>>> >>>> >>>> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman >>>> Sent: Tuesday, September 17, 2019 10:52 AM >>>> To: gnso-rpm-wg@icann.org >>>> Subject: [GNSO-RPM-WG] Q#8 >>>> >>>> >>>> >>>> All, >>>> >>>> Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. >>>> >>>> Q#8: >>>> >>>> 3.2 The standards for inclusion in the Clearinghouse are: >>>> >>>> 3.2.1 Nationally or regionally registered word marks from all jurisdictions. >>>> >>>> 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. >>>> >>>> 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. >>>> >>>> 3.2.4 Other marks that constitute intellectual property. [see below] >>>> >>>> 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. >>>> >>>> [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." >>>> >>>> For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. >>>> >>>> (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) >>>> >>>> ----------------- >>>> >>>> Best, Kathy >>>> >>>> >>>> >>>> This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. >>>> _______________________________________________ >>>> GNSO-RPM-WG mailing list >>>> GNSO-RPM-WG@icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>> _______________________________________________ >>>> By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. >>> >>> _______________________________________________ >>> GNSO-RPM-WG mailing list >>> GNSO-RPM-WG@icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> _______________________________________________ >>> By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. > > _______________________________________________ > GNSO-RPM-WG mailing list > GNSO-RPM-WG@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > _______________________________________________ > By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

I refer you to Deloitte’s answers to our questions from April 2017 which confirmed its practice. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Sep 18, 2019, at 11:11 AM, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Sorry Rebecca, I can not see why you think that they are currently being granted Claims/ Sunrise. I must be missing something please can you explain that to me? Thanks, Paul On Wed, Sep 18, 2019 at 4:01 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Then let’s stick with Kathy’s proposal, which allocates their status correctly rather than granting them Claims/Sunrise as presently. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Sep 18, 2019, at 10:56 AM, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: I agree with Paul, very well stated. Best, Claudio On Wed, Sep 18, 2019 at 10:44 AM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Thanks Rebecca. In that case I think it is important we do not change the current wording of 3.2.4 - Other marks that constitute intellectual property. It is an elegant catch all for all other type of marks not all other types of IP. This includes any type of mark that is not included in 3.2.1, 3.2.2 & 3.2.3. GIs would seem to be a good example The RPMs flow from 7.1. & 7.2 and they do not reference 3.2.4 On Wed, Sep 18, 2019 at 3:25 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: My point exactly! We are wandering too far afield if we try and guess what might fit in an ancillary database. "Marks" was Kathy's suggestion, which I'm fine with because it tracks with what plausibly might be in an ancillary database; I can also live with "IP" if we don't confuse the issue since it is not our job to determine what should be in an ancillary database. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Sent: Wednesday, September 18, 2019 10:22 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 Rebecca, Wouldn’t one normally suggest that there was a distinction between types of intellectual property such as trade secrets, marks, copyrights and patents etc? Or are you suggesting plant patents inter alia are types of marks? Thanks, Paul On Wed, Sep 18, 2019 at 2:57 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I want to caution against providing a definition of intellectual property since it's far beyond our remit and since things like trade secrets and patents should never be substantively eligible for the TMCH or any domain name registration process in the first place even though they are "IP": I am unable to think of how one could have a trade secret in a domain name, or a utility or design or plant patent, and we have no reason to speculate about it or generate confusion about it. Nor should we encourage copyright claims to be made on the kind of short phrases that make plausible registrations. Let's not go down this rabbit hole: if providers decide to make ancillary databases, they can. In terms of Scott's proposal, I can nonetheless live with the suggested change, though "strings" or "words" would be more neutral. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Wednesday, September 18, 2019 9:46 AM To: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Q#8 Kathy: I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection. To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate). In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located. Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative. Best regards, Scott Please click below to schedule a call with me through my assistant for: a 15-minute call<https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_15...> a 30-minute call<https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_30...> a 60-minute call<https://urldefense.proofpoint.com/v2/url?u=http-3A__calendly.com_saustin2_60...> <image001.png><image002.jpg> <image003.jpg><https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avvo.com_attorneys_3...> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Tuesday, September 17, 2019 10:52 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Q#8 All, Last week we found considerable overlap and common ground on Q#8. I promised to circulate language sharing that agreement and slightly refining existing proposals. Q#8: 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word marks specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) ----------------- Best, Kathy This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. 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