Comments in line below. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Lori Schulman <lschulman@inta.org> Date: Wednesday, September 11, 2019 at 6:07 PM To: Zak Muscovitch <zak@muscovitch.com>, "julie.hedlund@icann.org" <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks Dear All, We have had some side line conversations regarding the proposal below. I informed Zak separately and wish to conveny that this is where the IPC currently stands: 1. As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. – IPC agrees. 2. As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH. – IPC agrees. 3. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. – The IPC disagrees as this would undermine the purpose of registering with the TMCH to begin with. PRK:       This appears to have been suggested as a compromise as I understand that the current rules prohibit the registration of such marks.   As such, and if my understanding is correct as noted, then absent the compromise I would seek to support the current rules and remove any improperly included marks. 4. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. – The IPC is willing to discuss this proposal. We agree in principle that language that is not well understood or could frighten an unsophisticated applicant should be revised. However, the notice should not be providing legal advice or any advice about effects of certain types of trademark registrations. PRK:       I agree that the notice should not provide legal advice.  To that end, it is consistent that it not be read to over legitimize the validity of the asserted trademark.  It should only state it has been registered and state the jurisdiction of registration. 5. Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. – The IPC does not agree as this outcome is contrary to trademark law. In general, it appears that Greg’s proposal addresses 3 and 5. To what degree to people object? We see the proposal as creating a solution for a small problem with significant, unintended consequences. There are objections procedures for domains registered during Sunrise period and we believe that these procedures should be highlighted as remedy for the concerns that registrant’s have regarding this issue. Thank you for opening the dialog and we look forward to more discussion where we can find compromise. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 10, 2019 1:36 PM To: Zak Muscovitch <zak@muscovitch.com>; julie.hedlund@icann.org; gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks Dear Co-chairs, Staff and WG members, please see below a revised proposal regarding Question #7 (TMCH/Design Marks): 1. As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. 2. As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH. 3. Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. 4. The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. 5. Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. This proposal has been circulated amongst some stakeholders for feedback (with mixed results), however I am now sharing it with the entire Working Group. Zak Muscovitch General Counsel, ICA Muscovitch Law P.C. zak@muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: September-04-19 1:07 PM To: Lori Schulman <lschulman@inta.org>; Corwin, Philip <pcorwin@verisign.com>; julie.hedlund@icann.org; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Attached is the redline version. Apologies for only sending it now. Zak Muscovitch Law P.C. zak@muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: Lori Schulman <lschulman@inta.org> Sent: September-04-19 12:48 PM To: Corwin, Philip <pcorwin@verisign.com>; Zak Muscovitch <zak@muscovitch.com>; julie.hedlund@icann.org; gnso-rpm-wg@icann.org Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Hi, Support Phil’s suggestion and a post call redline per my earlier message. Thank you. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: Corwin, Philip <pcorwin@verisign.com> Sent: Wednesday, September 04, 2019 12:39 PM To: zak@muscovitch.com; Lori Schulman <lschulman@inta.org>; julie.hedlund@icann.org; gnso-rpm-wg@icann.org Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Zak: As we reviewed all the proposals last week, I would suggest that you focus in your presentation on what changes you and Kathy have made to the original and the rationale for doing so. 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: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Wednesday, September 04, 2019 12:36 PM To: Lori Schulman <lschulman@inta.org>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Lori, I'm trying to get one together, not sure I will be able to unfortunately. Muscovitch Law P.C. zak@muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: Lori Schulman <lschulman@inta.org> Sent: September-04-19 12:08 PM To: Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Hi, Thank you for this. As this is so close to the call, do you have a redline so we can compare the changes quickly? It would be most helpful to be prepared on a quick notice. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Wednesday, September 04, 2019 11:45 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Dear Co-Chairs, Working Group Members, and Staff, Further to the call last week and further to the below Agenda for today's call, please see the attached updated proposal re: Question #7, from Kathy Kleiman and myself. You will note therein, that the revised proposal contains some revised language, some revised rationale, and a potential alternative to the existing rule for discussion purposes. Zak Muscovitch General Counsel, ICA Muscovitch Law P.C. zak@muscovitch.com 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Julie Hedlund Sent: September-03-19 1:02 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC Dear RPM WG members, Please find the agenda and materials for the WG meeting tomorrow, Wednesday, 04 September at 17:00-18:30 UTC. Please note the following actions captured from last week's meeting and sent to the list last week: Actions: 1. Revision of Existing Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members who had previously submitted proposals relating to the Open TMCH Questions (see attached) may offer revised proposals that take into consideration the work completed by the WG since the proposals were originally submitted. 2. New Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members may submit new proposals relating to Charter questions 7, 8, and 10. Please send suggested revisions or new proposals by COB today, 03 September, if at all possible. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 - Proposals from Kathy Kleiman and Greg Shatan * Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi * If Time Permits: Question 10 - Proposal from Michael Graham 3. AOB Best Regards, Mary, Julie, Ariel _______________________________________________ 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.