Proposed agenda and documents for RPM Working Group call on 14 December
Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889
Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4. In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity? The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm <http://www.adrforum.com/domaindecisions/1672049A.htm>; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/system_data/source_pdf/flossy.shoes.pdf <https://urs.mfsd.it/system_data/source_pdf/flossy.shoes.pdf>). Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential. Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes? Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated? Kind regards. Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it <mailto:responsabile@mfsd.it> | urs.mfsd.it <http://ww.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org> ha scritto:
Dear all,
The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows:
1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting
For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December).
For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org <mailto:mary.wong@icann.org> Telephone: +1-603-5744889
<Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation of Registry Responses to TMCH Data Gathering Sub Team.docx>_______________________________________________ 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
On the last point: It seems to me that the very essence of a Geographic Indicator is that the word element is no longer a generic or descriptive term. Greg Shatan On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it> wrote:
Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4.
In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity?
The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/ system_data/source_pdf/flossy.shoes.pdf).
Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential.
Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes?
Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated?
Kind regards.
Ivett Paulovics URS Domain Dispute Case Manager ---
MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 <+39%2002%204550%206624> | F +39 02 91471087 <+39%2002%209147%201087> M +39 329 2596103 <+39%20329%20259%206103> urs@mfsd.it <responsabile@mfsd.it> | urs.mfsd.it <http://ww.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org> ha scritto:
Dear all,
The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows:
1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting
*For Agenda Item #2*: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December).
*For Agenda Item #3*: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889 <(603)%20574-4889>
<Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation of Registry Responses to TMCH Data Gathering Sub Team.docx> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
With apologies, I have a business meeting conflicting with this call, and won't be able to participate. Greg Shatan On Wed, Dec 14, 2016 at 11:14 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
On the last point: It seems to me that the very essence of a Geographic Indicator is that the word element is no longer a generic or descriptive term.
Greg Shatan
On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it> wrote:
Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4.
In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity?
The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/s ystem_data/source_pdf/flossy.shoes.pdf).
Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential.
Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes?
Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated?
Kind regards.
Ivett Paulovics URS Domain Dispute Case Manager ---
MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 <+39%2002%204550%206624> | F +39 02 91471087 <+39%2002%209147%201087> M +39 329 2596103 <+39%20329%20259%206103> urs@mfsd.it <responsabile@mfsd.it> | urs.mfsd.it <http://ww.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org> ha scritto:
Dear all,
The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows:
1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting
*For Agenda Item #2*: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December).
*For Agenda Item #3*: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889 <(603)%20574-4889>
<Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation of Registry Responses to TMCH Data Gathering Sub Team.docx> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I have been on a plane and am in mandatory legal meeting at Adobe. Apologies for missing. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Wednesday, December 14, 2016 at 8:57 AM To: URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it<mailto:urs@mfsd.it>> 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] Proposed agenda and documents for RPM Working Group call on 14 December With apologies, I have a business meeting conflicting with this call, and won't be able to participate. Greg Shatan On Wed, Dec 14, 2016 at 11:14 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: On the last point: It seems to me that the very essence of a Geographic Indicator is that the word element is no longer a generic or descriptive term. Greg Shatan On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it<mailto:urs@mfsd.it>> wrote: Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4. In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity? The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/system_data/source_pdf/flossy.shoes.pdf). Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential. Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes? Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated? Kind regards. Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624<tel:+39%2002%204550%206624> | F +39 02 91471087<tel:+39%2002%209147%201087> M +39 329 2596103<tel:+39%20329%20259%206103> urs@mfsd.it<mailto:responsabile@mfsd.it> | urs.mfsd.it<http://ww.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:5042491A-3B0F-4172-BD47-DF4A6B8798BE@office.fasano.pro] Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> ha scritto: Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:(603)%20574-4889> <Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation of Registry Responses to TMCH Data Gathering Sub Team.docx>_______________________________________________ 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 _______________________________________________ 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 ________________________________ <ACL>
When you’re in the Far East, it’s just too late, or too early… Every time… [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans Sent: Thursday, December 15, 2016 1:28 AM To: Greg Shatan <gregshatanipc@gmail.com>; URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposed agenda and documents for RPM Working Group call on 14 December I have been on a plane and am in mandatory legal meeting at Adobe. Apologies for missing. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Wednesday, December 14, 2016 at 8:57 AM To: URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it<mailto:urs@mfsd.it>> 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] Proposed agenda and documents for RPM Working Group call on 14 December With apologies, I have a business meeting conflicting with this call, and won't be able to participate. Greg Shatan On Wed, Dec 14, 2016 at 11:14 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: On the last point: It seems to me that the very essence of a Geographic Indicator is that the word element is no longer a generic or descriptive term. Greg Shatan On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it<mailto:urs@mfsd.it>> wrote: Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4. In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity? The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/system_data/source_pdf/flossy.shoes.pdf). Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential. Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes? Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated? Kind regards. Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624<tel:+39%2002%204550%206624> | F +39 02 91471087<tel:+39%2002%209147%201087> M +39 329 2596103<tel:+39%20329%20259%206103> urs@mfsd.it<mailto:responsabile@mfsd.it> | urs.mfsd.it<http://ww.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:image001.png@01D256BB.CDBD8B30] Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> ha scritto: Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:(603)%20574-4889> <Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation of Registry Responses to TMCH Data Gathering Sub Team.docx>_______________________________________________ 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 _______________________________________________ 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 ________________________________ <ACL>
+1 Jonathan Agmon. The time schedule for these calls is often awful for APAC region. Please accept my belated apologies. Best wishes, Heather Forrest ________________________________ From: gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org> on behalf of Jonathan Agmon <jonathan.agmon@ip-law.legal> Sent: Thursday, December 15, 2016 1:12:58 PM To: J. Scott Evans; Greg Shatan; URS - Uniform Rapid Suspension System - MFSD Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposed agenda and documents for RPM Working Group call on 14 December When you’re in the Far East, it’s just too late, or too early… Every time… [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans Sent: Thursday, December 15, 2016 1:28 AM To: Greg Shatan <gregshatanipc@gmail.com>; URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposed agenda and documents for RPM Working Group call on 14 December I have been on a plane and am in mandatory legal meeting at Adobe. Apologies for missing. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Wednesday, December 14, 2016 at 8:57 AM To: URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it<mailto:urs@mfsd.it>> 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] Proposed agenda and documents for RPM Working Group call on 14 December With apologies, I have a business meeting conflicting with this call, and won't be able to participate. Greg Shatan On Wed, Dec 14, 2016 at 11:14 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: On the last point: It seems to me that the very essence of a Geographic Indicator is that the word element is no longer a generic or descriptive term. Greg Shatan On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it<mailto:urs@mfsd.it>> wrote: Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4. In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity? The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/system_data/source_pdf/flossy.shoes.pdf). Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential. Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes? Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated? Kind regards. Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624<tel:+39%2002%204550%206624> | F +39 02 91471087<tel:+39%2002%209147%201087> M +39 329 2596103<tel:+39%20329%20259%206103> urs@mfsd.it<mailto:responsabile@mfsd.it> | urs.mfsd.it<http://ww.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:image001.png@01D256BB.CDBD8B30] Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> ha scritto: Dear all, The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest 2. Continue discussion of proposed TMCH Charter questions (see attached document) 3. [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached) 4. Next steps/next meeting For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December). For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:(603)%20574-4889> <Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation of Registry Responses to TMCH Data Gathering Sub Team.docx>_______________________________________________ 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 _______________________________________________ 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 ________________________________ <ACL>
participants (6)
-
Greg Shatan -
Heather Forrest -
J. Scott Evans -
Jonathan Agmon -
Mary Wong -
URS - Uniform Rapid Suspension System - MFSD