SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
WG members: We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching.. In that regard, please take special note of this portion of the email sent by Mary--- For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions. That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response. In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory-- Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: · A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. · The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. · If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making. The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG. If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April) Dear all, The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Discuss remaining open TMCH Charter questions (see attached table and notes, below) 3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document) 4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call 5. Next steps/next meeting For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). Thanks and cheers Mary ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that *use* the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are *already* eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether *terms that are not trademarks or previously abused strings containing trademarks* should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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_______________________________________________ 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
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STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 <mailto:gregshatanipc@gmail.com> gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> > wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597 <tel:202-559-8597> /Direct 202-559-8750 <tel:202-559-8750> /Fax 202-255-6172 <tel:202-255-6172> /Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269 <tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> > wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597 <tel:202-559-8597> /Direct
202-559-8750 <tel:202-559-8750> /Fax
202-255-6172 <tel:202-255-6172> /Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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+1 Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Apr 11, 2017, at 1:51 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame. All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady <policy@paulmcgrady.com> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' <gregshatanipc@gmail.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7C3e50285bdd4d4dcf122108d4811c7d6c%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636275406753459787&sdata=aJNH0kl3W%2BhtMW0Y0kFKPhZ6UZZpl%2FwCNPiIISTjb1k%3D&reserved=0> On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
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"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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+1 to Paul and Kiran. The "Trademark Scholars Letter" makes precisely the same mistake: A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. The TMCH gives trademark owners absolutely no "rights to prevent the registration of domain names that contain their trademarks." First off, the TMCH conveys no rights, nor is it a "mechanism." It is a database. Second, neither the sunrise period nor the claims process convey any "rights to *prevent *the registration of domain names that *contain* their trademarks." The Sunrise gives trademark owners in the TMCH the opportunity to *register* domain names that (putting aside the rare TM+50) *exactly match* their trademarks before GA, for a price -- sometime an eyewatering price. This is an opportunity that brandowners need to exercise with considerable care, since acquiring domains across all of the new gTLDs would be prohibitive for nearly all brandowners (and highly unlikely as a strategy for other reasons). This "right" is an aspect of the larger "right" that brandowners have to engage in defensive registrations, a "right" that has been the scourge of brandowners about as long as the web has been around. (Although a "well-versed" and "sophisticated" group such as this probably needs no explanation, I am using the word "right" sarcastically here.) I would be happy to suggest a true "mechanism ... that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks." This has been suggested before, and is in use both in other circumstances and in the private sector. It's called a blocking list. I would be particularly happy to suggest as blocking list that can be used for domain names that "contain" a brandowner's trademarks. I'm not sure that prior suggestions for blocking lists have gone that far before, but now that it's been suggested, even as a bogeyman, it may be worth considering. I'm a little confused still after Phil's email -- sorry. Is this the right time to suggest a blocking list based on the TMCH, since it would be irrevocably interrelated to the TMCH? And is the deadline for that April 19th, or sometime later? Any advice would be appreciated. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. A "trademark claims process that gives [brandowners] early warning when domains the [sic] contain their trademarks when registered" is also not a right to *prevent* registration. The very description shows that this is not the case. As an aside, I'm not sure what "priority access ... to a trademark claims process" is exactly -- that (like the typo) is probably a result of hasty drafting rather than an actual intent to claim that there is "priority access" to Claims. In any event neither Sunrise or Claims are "special rights" given by the TMCH. It's fortunate that EFF did not dub this the "RPM Scholars Letter," or else these errors would be even more glaring. I'll stick with my earlier concern about "rolling" these together. The WGs work plan had the TMCH discussed separately from Sunrise and Claims as RPMs. Any attempt to justify rolling it all together on the basis that they're related just compounds the issue. It's worth noting that a TMCH wound not be required for those RPMs. Before the New gTLD Program, there were sunrises and claim programs that took place without a TMCH. While it would be horribly inefficient in a system that is "mass-marketing"new gTLDs, we could go back to a "thin" system where each registry maintains its own TMDB. Best regards, Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 4:58 PM, J. Scott Evans <jsevans@adobe.com> wrote:
Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame.
All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law.
J. Scott
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*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady < policy@paulmcgrady.com> *Date: *Tuesday, April 11, 2017 at 1:50 PM *To: *'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' < gregshatanipc@gmail.com> *Cc: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
*Subject: *Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is *exactly the opposite of what the ACPA states* about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Phil Corwin *Sent:* Tuesday, April 11, 2017 2:12 PM *To:* Greg Shatan <gregshatanipc@gmail.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, *nor do I believe I have seen any suggestion to that effect*. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
*A case in point is the Trademark Clearinghouse*, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
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*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* Greg Shatan [mailto:gregshatanipc@gmail.com <gregshatanipc@gmail.com>] *Sent:* Tuesday, April 11, 2017 2:33 PM *To:* Phil Corwin *Cc:* George Kirikos; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that *use* the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are *already* eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether *terms that are not trademarks or previously abused strings containing trademarks* should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com...>
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Greg: In regard to your question – “. Is this the right time to suggest a blocking list based on the TMCH, since it would be irrevocably interrelated to the TMCH? And is the deadline for that April 19th, or sometime later? Any advice would be appreciated.” – my personal view, on which I have not yet consulted with co-chairs or staff, is that this is not the time as that would be a proposal for a new TMCH-based RPM rather than a change to the TMCH itself. I would think that the proper time for entertaining such a proposal would be after we have reviewed the private sector blocking services and understand better how they operate and what their effects have been. Once again, I also note that no prior decisions are fully locked down until the final stages of Phase 1, and any decision to establish an ICANN-mandated blocking service might cause a reexamination of what terms can be placed in the TMCH. I hope that helps, at least in assuring you that I do not see any present deadline for offering such a proposal, which I am sure will be precise and rigorous if you are the proponent. Regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 5:42 PM To: J. Scott Evans Cc: Paul McGrady; Phil Corwin; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) +1 to Paul and Kiran. The "Trademark Scholars Letter" makes precisely the same mistake: A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. The TMCH gives trademark owners absolutely no "rights to prevent the registration of domain names that contain their trademarks." First off, the TMCH conveys no rights, nor is it a "mechanism." It is a database. Second, neither the sunrise period nor the claims process convey any "rights to prevent the registration of domain names that contain their trademarks." The Sunrise gives trademark owners in the TMCH the opportunity to register domain names that (putting aside the rare TM+50) exactly match their trademarks before GA, for a price -- sometime an eyewatering price. This is an opportunity that brandowners need to exercise with considerable care, since acquiring domains across all of the new gTLDs would be prohibitive for nearly all brandowners (and highly unlikely as a strategy for other reasons). This "right" is an aspect of the larger "right" that brandowners have to engage in defensive registrations, a "right" that has been the scourge of brandowners about as long as the web has been around. (Although a "well-versed" and "sophisticated" group such as this probably needs no explanation, I am using the word "right" sarcastically here.) I would be happy to suggest a true "mechanism ... that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks." This has been suggested before, and is in use both in other circumstances and in the private sector. It's called a blocking list. I would be particularly happy to suggest as blocking list that can be used for domain names that "contain" a brandowner's trademarks. I'm not sure that prior suggestions for blocking lists have gone that far before, but now that it's been suggested, even as a bogeyman, it may be worth considering. I'm a little confused still after Phil's email -- sorry. Is this the right time to suggest a blocking list based on the TMCH, since it would be irrevocably interrelated to the TMCH? And is the deadline for that April 19th, or sometime later? Any advice would be appreciated. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. A "trademark claims process that gives [brandowners] early warning when domains the [sic] contain their trademarks when registered" is also not a right to prevent registration. The very description shows that this is not the case. As an aside, I'm not sure what "priority access ... to a trademark claims process" is exactly -- that (like the typo) is probably a result of hasty drafting rather than an actual intent to claim that there is "priority access" to Claims. In any event neither Sunrise or Claims are "special rights" given by the TMCH. It's fortunate that EFF did not dub this the "RPM Scholars Letter," or else these errors would be even more glaring. I'll stick with my earlier concern about "rolling" these together. The WGs work plan had the TMCH discussed separately from Sunrise and Claims as RPMs. Any attempt to justify rolling it all together on the basis that they're related just compounds the issue. It's worth noting that a TMCH wound not be required for those RPMs. Before the New gTLD Program, there were sunrises and claim programs that took place without a TMCH. While it would be horribly inefficient in a system that is "mass-marketing"new gTLDs, we could go back to a "thin" system where each registry maintains its own TMDB. Best regards, Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 4:58 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame. All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. 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 Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, 'Greg Shatan' <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.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] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7C3e50285bdd4d4dcf122108d4811c7d6c%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636275406753459787&sdata=aJNH0kl3W%2BhtMW0Y0kFKPhZ6UZZpl%2FwCNPiIISTjb1k%3D&reserved=0> On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Pleas, NO rights? The exclusive right to register during sunrise The exclusive right to send a post-sunrise notice to registrants There is no "right" to engage in defensive registrations. Such would be a huge expansion of trademark rights. The only right granted to trademark holders are these: Preclude another proven to have infringed, from continuing infringement IN THE JURISDICTION IN WHICH THE TRADEMARK WAS REGISTERED. Infringement is limited to the same goods/services (with the exception of famous marks - of which there are damn few) There are no other rights than the above. What we are talking about here is a pre-emotive system in which a trademark holder gets the right to (A) expand the jurisdictional protection of their mark PLUS (B) declare an unlimited set of goods/services in order to assert a world-wide right to a domain name simply because the domain name is an exact or approximate match of a trademark registered in a specific jurisdiction for a specific set of goods/services. All I am asking for is a list of the trademarks claiming such a benefit so that I can determine if the claims are reasonable or abusive. Can someone please respond to what I am asking and asset a legal basis for why I cannot see the data that is required to make the determination? Sent from my iPad
On 11 Apr 2017, at 23:42, Greg Shatan <gregshatanipc@gmail.com> wrote:
+1 to Paul and Kiran.
The "Trademark Scholars Letter" makes precisely the same mistake:
A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks.
The TMCH gives trademark owners absolutely no "rights to prevent the registration of domain names that contain their trademarks." First off, the TMCH conveys no rights, nor is it a "mechanism." It is a database. Second, neither the sunrise period nor the claims process convey any "rights to prevent the registration of domain names that contain their trademarks." The Sunrise gives trademark owners in the TMCH the opportunity to register domain names that (putting aside the rare TM+50) exactly match their trademarks before GA, for a price -- sometime an eyewatering price. This is an opportunity that brandowners need to exercise with considerable care, since acquiring domains across all of the new gTLDs would be prohibitive for nearly all brandowners (and highly unlikely as a strategy for other reasons).
This "right" is an aspect of the larger "right" that brandowners have to engage in defensive registrations, a "right" that has been the scourge of brandowners about as long as the web has been around. (Although a "well-versed" and "sophisticated" group such as this probably needs no explanation, I am using the word "right" sarcastically here.)
I would be happy to suggest a true "mechanism ... that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks." This has been suggested before, and is in use both in other circumstances and in the private sector. It's called a blocking list. I would be particularly happy to suggest as blocking list that can be used for domain names that "contain" a brandowner's trademarks. I'm not sure that prior suggestions for blocking lists have gone that far before, but now that it's been suggested, even as a bogeyman, it may be worth considering.
I'm a little confused still after Phil's email -- sorry. Is this the right time to suggest a blocking list based on the TMCH, since it would be irrevocably interrelated to the TMCH? And is the deadline for that April 19th, or sometime later? Any advice would be appreciated.
Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered.
A "trademark claims process that gives [brandowners] early warning when domains the [sic] contain their trademarks when registered" is also not a right to prevent registration. The very description shows that this is not the case. As an aside, I'm not sure what "priority access ... to a trademark claims process" is exactly -- that (like the typo) is probably a result of hasty drafting rather than an actual intent to claim that there is "priority access" to Claims.
In any event neither Sunrise or Claims are "special rights" given by the TMCH. It's fortunate that EFF did not dub this the "RPM Scholars Letter," or else these errors would be even more glaring.
I'll stick with my earlier concern about "rolling" these together. The WGs work plan had the TMCH discussed separately from Sunrise and Claims as RPMs. Any attempt to justify rolling it all together on the basis that they're related just compounds the issue. It's worth noting that a TMCH wound not be required for those RPMs. Before the New gTLD Program, there were sunrises and claim programs that took place without a TMCH. While it would be horribly inefficient in a system that is "mass-marketing"new gTLDs, we could go back to a "thin" system where each registry maintains its own TMDB.
Best regards,
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 4:58 PM, J. Scott Evans <jsevans@adobe.com> wrote: Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame.
All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law.
J. Scott
J. Scott Evans
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Adobe. Make It an Experience.
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From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady <policy@paulmcgrady.com> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' <gregshatanipc@gmail.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Ok stop this. As you all know, to even start under the ACPA one need a registration of a DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE. THEN you need to show relevant factors. The ACPA does NOT provide per-emptive rights. Your arguments are strawmen intended to distract from the ONLY Issue - transparency of the TMCH database so we can all the. Do our jobs. Let's get back to work please. Sent from my iPad
On 11 Apr 2017, at 22:58, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame.
All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law.
J. Scott
<image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady <policy@paulmcgrady.com> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' <gregshatanipc@gmail.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote: George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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I see nothing in the Privacy Policy of the TMCH that prevents us from seeing the data. Here is the relevant text: http://www.trademark-clearinghouse.com/content/privacy-notice "WHO RECEIVES YOUR PERSONAL DATA In order to perform the services we offer, we may have to disclose your Personal Data to theDatabase Provider, the party appointed by ICANN to operate and manage the central database for storage of Trademark Records that have achieved Activation (i.e. when we have determined that a Trademark Record meets the Eligibility Requirements as stated in the Trademark ClearinghouseGuidelines). We may disclose your Personal Data to ICANN, registries, registrars and domain name registrants in order to effectuate the purposes of the Trademark Clearinghouse. We may have to disclose your Personal Data in other situations, such as, but not limited to, to comply with legal or regulatory requirements or obligations in accordance with applicable law, a court order, administrative process or judicial process or subpoena. We will also disclose your Personal Data to a new provider of the Trademark Clearinghouse, or our successors and assigns in connection with a merger or sale of our assets. ... CHANGES TO THE PRIVACY STATEMENT We reserve the right to modify or amend this Privacy Notice at any time and for any reason. For this reason, we urge you to review this statement from time to time while you’re visiting our website. We will however bring explicitly to your attention any operational change that could impact on the choices you have made on our website regarding the processing of your Personal Data." I'm a registrant. They can disclose it to me. When they say "ICANN", do they mean "ICANN" the organization, or "ICANN" the community? I'l go for the latter definition, please. :-) Also, they can change the Privacy Notice at any time, for any reason. It doesn't sound like it's very confidential to me, given it can be disclosed "in other situations" ... "not limited to". Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 5:44 PM, Paul Keating <paul@law.es> wrote:
Ok stop this.
As you all know, to even start under the ACPA one need a registration of a DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE.
THEN you need to show relevant factors.
The ACPA does NOT provide per-emptive rights.
Your arguments are strawmen intended to distract from the ONLY Issue - transparency of the TMCH database so we can all the. Do our jobs.
Let's get back to work please.
Sent from my iPad
On 11 Apr 2017, at 22:58, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame.
All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law.
J. Scott
<image001.gif>
J. Scott Evans
408.536.5336 (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 (cell)
San Jose, CA, 95110, USA
Adobe. Make It an Experience.
jsevans@adobe.com
www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady <policy@paulmcgrady.com> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' <gregshatanipc@gmail.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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And it wouldn't seem that a TMCH participant has a contract with the "databae provider" Perhaps we are asking the wrong party here. Who is the "database Provider"? Let's find out and ask them. Sent from my iPad
On 11 Apr 2017, at 23:51, George Kirikos <icann@leap.com> wrote:
I see nothing in the Privacy Policy of the TMCH that prevents us from seeing the data. Here is the relevant text:
http://www.trademark-clearinghouse.com/content/privacy-notice
"WHO RECEIVES YOUR PERSONAL DATA
In order to perform the services we offer, we may have to disclose your Personal Data to theDatabase Provider, the party appointed by ICANN to operate and manage the central database for storage of Trademark Records that have achieved Activation (i.e. when we have determined that a Trademark Record meets the Eligibility Requirements as stated in the Trademark ClearinghouseGuidelines).
We may disclose your Personal Data to ICANN, registries, registrars and domain name registrants in order to effectuate the purposes of the Trademark Clearinghouse.
We may have to disclose your Personal Data in other situations, such as, but not limited to, to comply with legal or regulatory requirements or obligations in accordance with applicable law, a court order, administrative process or judicial process or subpoena.
We will also disclose your Personal Data to a new provider of the Trademark Clearinghouse, or our successors and assigns in connection with a merger or sale of our assets. ... CHANGES TO THE PRIVACY STATEMENT
We reserve the right to modify or amend this Privacy Notice at any time and for any reason. For this reason, we urge you to review this statement from time to time while you’re visiting our website. We will however bring explicitly to your attention any operational change that could impact on the choices you have made on our website regarding the processing of your Personal Data."
I'm a registrant. They can disclose it to me. When they say "ICANN", do they mean "ICANN" the organization, or "ICANN" the community? I'l go for the latter definition, please. :-) Also, they can change the Privacy Notice at any time, for any reason.
It doesn't sound like it's very confidential to me, given it can be disclosed "in other situations" ... "not limited to".
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 5:44 PM, Paul Keating <paul@law.es> wrote: Ok stop this.
As you all know, to even start under the ACPA one need a registration of a DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE.
THEN you need to show relevant factors.
The ACPA does NOT provide per-emptive rights.
Your arguments are strawmen intended to distract from the ONLY Issue - transparency of the TMCH database so we can all the. Do our jobs.
Let's get back to work please.
Sent from my iPad
On 11 Apr 2017, at 22:58, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame.
All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law.
J. Scott
<image001.gif>
J. Scott Evans
408.536.5336 (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 (cell)
San Jose, CA, 95110, USA
Adobe. Make It an Experience.
jsevans@adobe.com
www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady <policy@paulmcgrady.com> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' <gregshatanipc@gmail.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote: WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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I am not sure “personal data” is anything other than PII NOT which marks are actually registered in the database. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/11/17, 2:51 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote: I see nothing in the Privacy Policy of the TMCH that prevents us from seeing the data. Here is the relevant text: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademar... "WHO RECEIVES YOUR PERSONAL DATA In order to perform the services we offer, we may have to disclose your Personal Data to theDatabase Provider, the party appointed by ICANN to operate and manage the central database for storage of Trademark Records that have achieved Activation (i.e. when we have determined that a Trademark Record meets the Eligibility Requirements as stated in the Trademark ClearinghouseGuidelines). We may disclose your Personal Data to ICANN, registries, registrars and domain name registrants in order to effectuate the purposes of the Trademark Clearinghouse. We may have to disclose your Personal Data in other situations, such as, but not limited to, to comply with legal or regulatory requirements or obligations in accordance with applicable law, a court order, administrative process or judicial process or subpoena. We will also disclose your Personal Data to a new provider of the Trademark Clearinghouse, or our successors and assigns in connection with a merger or sale of our assets. ... CHANGES TO THE PRIVACY STATEMENT We reserve the right to modify or amend this Privacy Notice at any time and for any reason. For this reason, we urge you to review this statement from time to time while you’re visiting our website. We will however bring explicitly to your attention any operational change that could impact on the choices you have made on our website regarding the processing of your Personal Data." I'm a registrant. They can disclose it to me. When they say "ICANN", do they mean "ICANN" the organization, or "ICANN" the community? I'l go for the latter definition, please. :-) Also, they can change the Privacy Notice at any time, for any reason. It doesn't sound like it's very confidential to me, given it can be disclosed "in other situations" ... "not limited to". Sincerely, George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... On Tue, Apr 11, 2017 at 5:44 PM, Paul Keating <paul@law.es> wrote: > Ok stop this. > > As you all know, to even start under the ACPA one need a registration of a > DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE. > > THEN you need to show relevant factors. > > The ACPA does NOT provide per-emptive rights. > > Your arguments are strawmen intended to distract from the ONLY Issue - > transparency of the TMCH database so we can all the. Do our jobs. > > Let's get back to work please. > > Sent from my iPad > > On 11 Apr 2017, at 22:58, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: > > Yes, and Trademark Dilution under the Lanham Act does not take into > consideration the goods and services of the parties. Also, I believe “famous > and well-known marks” under 6bis of the Paris Convention do not require any > special association with goods and services. While I realize that both of > these theories concentrate on “famous marks”, it clearly shows a that > similarity in goods and services is not necessarily a prerequisite to > trademark protection. Paul’s example is even better because the ACPA applies > to all marks and does not require fame. > > > > All this to say that the “Trademark Scholars Letter” is better titled > “Trademark Professors with a Particular Viewpoint on the Scope of Trademark > Protection”, rather than a piece of scholarship that accurately sets forth > the law. > > > > J. Scott > > > > <image001.gif> > > J. Scott Evans > > 408.536.5336 (tel) > > 345 Park Avenue, Mail Stop W11-544 > > Director, Associate General Counsel > > 408.709.6162 (cell) > > San Jose, CA, 95110, USA > > Adobe. Make It an Experience. > > jsevans@adobe.com > > www.adobe.com > > > > > > > > > > From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul McGrady > <policy@paulmcgrady.com> > Date: Tuesday, April 11, 2017 at 1:50 PM > To: 'Phil Corwin' <psc@vlaw-dc.com>, 'Greg Shatan' <gregshatanipc@gmail.com> > Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and > documents for Wednesday Working Group meeting (12 April) > > > > STRICTLY IN MY PERSONAL CAPACITY > > > > Hi Phil, > > > > Thanks for your note. The “Trademark Scholars Letter” you reference seems > to imply that the TMCH is “recently demanded by trademark owners.” Quite > the opposite – it is an implemented RPM that has been out there for years > now and is up for review. With due respect to the contribution made by the > “Trademark Scholars Letter”, it does not appear to be keeping pace with the > facts on the ground. It also conflates the TMCH itself with the Sunrise and > Claims which draw upon data from the TMCH. The TMCH is a database, not an > RPM. While it is used in conjunction with the Sunrise and Claims RPM, so > are all sorts of other technologies (email, as an example) and that doesn’t > make those other technologies an RPM. Also, the ““Trademark Scholars > Letter” doesn’t cite to authorities supporting many of the claims it makes > (which is odd for a letter seeking special status as ‘scholarship.”). > Lastly, the “Trademark Scholars Letter” contains statements which are > questionable at best. For example, the claim that “Under U.S. and most > other countries’ trademark laws, ordinarily a trademark right only exists > within a distinct class of goods or services” which is exactly the opposite > of what the ACPA states about trademark rights as applied in the > cybersquatting context namely that the analysis is “without regard to the > goods or services of the parties.” > > > > Like you, I’m a great advocate of rigor and accuracy, and as such I am not > hanging too many hats on the “Trademark Scholars Letter.” > > > > Best, > > Paul > > > > > > > > > > From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] > On Behalf Of Phil Corwin > Sent: Tuesday, April 11, 2017 2:12 PM > To: Greg Shatan <gregshatanipc@gmail.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and > documents for Wednesday Working Group meeting (12 April) > > > > Greg: > > > > To clarify, I was referencing significant TMCH issues that can be addressed, > if a WG member or members wish to, by the submission of specific proposals > over the coming weeks as we strive to conclude, to the full extent possible, > our consideration of TMCH matters and move on to Sunrise Registrations and > TM Claims Notices. I was not restricting examples to what is on our agenda > for this Wednesday and I was not trying to be inflammatory. > > > > I am frankly quite surprised at your statement, “I am at a loss to see how > the TMCH database itself gives unfair advantage to TM owners, nor do I > believe I have seen any suggestion to that effect. “ > > > > The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively > on this list discussed makes precisely that point: > > We are concerned that the expansive protections recently > demanded by trademark owners > > are inconsistent with basic propositions of trademark law. > > A case in point is the Trademark Clearinghouse, a mechanism established for > the new > > gTLDs that gives trademark owners special rights to prevent the registration > of domain > > names that contain their trademarks. Those registered in the Trademark > Clearinghouse have > > access to a sunrise period that gives them priority access to domain names > in a new gTLD, > > and to a trademark claims process that gives them early warning when domains > the contain > > their trademarks are registered. > > > > I do not presently subscribe to the view that the TMCH is inconsistent with > TM law and should be eliminated, but I wouldn’t be at all surprised to see a > proposal to that end presented by a WG member given statements that have > been made on this list. > > > > Likewise, I am well aware that the TMCH is supportive database and not an > RPM in itself, which is why my email used the term “placement in the TMCH > database”. I’m also very aware that TM+50 terms are eligible for TMCH > registration, as well as terms protected by statute or treaty (which your > response neglected to mention), but didn’t think I needed to put all of that > in an example relating to possible proposals to expand eligible terms by > making trademark+additional word or typographical variations of trademarks > into the TMCH for this well-versed audience of WG members. > > > > Lastly I will differ to some extent with your concern about “an unfortunate > tendency to roll the TMCH (which is a database) together with Sunrise and > Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise > and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. > If there was no TMCH then there would be no foundation for the associated > RPMs, and if we contract or expand the terms eligible for placement in the > TMCH then the associated RPMs will contract or expand accordingly. > > > > I’m a great advocate of rigor and accuracy, especially when we get to > actually debating specific proposals. But I hope the members of this WG will > remember that the voluntary co-chairs of this WG are devoting a great deal > of effort to trying to keep it moving a long and on track and, cut us a > little sympathetic slack when we employ some verbal shorthand on the > assumption that sophisticated WG members will know the additional nuances > and need not have them repeatedly pointed out. > > > > Thank you and best regards, > > Philip > > > > > > > > Philip S. Corwin, Founding Principal > > Virtualaw LLC > > 1155 F Street, NW > > Suite 1050 > > Washington, DC 20004 > > 202-559-8597/Direct > > 202-559-8750/Fax > > 202-255-6172/Cell > > > > Twitter: @VlawDC > > > > "Luck is the residue of design" -- Branch Rickey > > > > From: Greg Shatan [mailto:gregshatanipc@gmail.com] > Sent: Tuesday, April 11, 2017 2:33 PM > To: Phil Corwin > Cc: George Kirikos; gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and > documents for Wednesday Working Group meeting (12 April) > > > > I have some problems with the examples given here: > > > > > > That means that if you are of a view that the TMCH should be eliminated > because you believe it gives unfair advantage to TM owners you will have a > chance to present a proposal to that effect. > > > > Likewise, if you are of the view that additional terms besides registered > trademarks should be eligible for placement in the TMCH database you will > also have a chance to make your case and seek consensus support. > > > > In the first example, the first problem is that it is outside the four > topics that Phil indicated were open for discussion in his follow-up email > (design marks, G.I.s, “identical match” and TMDB confidentiality). So it > seems inappropriate (and a bit inflammatory) to suggest that this could be a > submission in response to Mary's email. Second, this seems to be yet > another example of an unfortunate tendency to roll the TMCH (which is a > database) together with Sunrise and Claims (which are RPMs). I am at a loss > to see how the TMCH database itself gives unfair advantage to TM owners, nor > do I believe I have seen any suggestion to that effect. TMCH on its own > does nothing for trademark owners (other than take their money). There > have, of course, been suggestions that the RPMs that use the database > (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that > I agree, of course). So, it would seem that this example is in fact related > to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly > framed and premature (were it rewritten to refer to Sunrise and/or Claims > rather than "the TMCH"). We need to be much more careful in keeping these > concepts separate. > > > > The second example does seem to relate to an extent to one of the four open > topics (G.I.s) but the example is factually inaccurate, since additional > terms besides registered trademarks are already eligible for placement in > the TMCH (TM+50 and "marks protected by statute or treaty"). It's not > helpful to give the impression that the TMCH database is currently limited > to registered trademarks (I would hope that most of us know that already, > but that's not the point). The discussion around G.I.s would more > accurately be framed as whether terms that are not trademarks or previously > abused strings containing trademarks should be eligible for the TMCH > database. > > > > A little more rigor and accuracy will help us all, as we drink from the WG > firehose.... > > > > Greg > > > > > > > Greg Shatan > C: 917-816-6428 > S: gsshatan > Phone-to-Skype: 646-845-9428 > gregshatanipc@gmail.com > > > > On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote: > > George: > > I am consulting with other co-chairs and support staff in regard to what > procedure we will follow when any member of this WG asserts that > insufficient data has been obtained to resolve a proposed RPM modification > on an informed basis, and that such data exists and can be accessed within a > reasonable time. We'll get back to the full WG on that. > > In the interim I would point out that the deadline of 19 April was proposed > only in relation to the 4 questions on the structure and operations of the > TMCH which the WG had agreed were still open (design marks, G.I.s, > “identical match” and TMDB confidentiality). Some other questions have been > closed for the time being, a few are being tabled for further discussion > following WG work on Sunrise and Claims. These 4 questions have been > discussed extensively for some time. Data needs were identified and sought. > To the extent that a decision on any proposal on any of these 4 TMCH-related > questions may be contingent on further data, it will be helpful if the type > of data and (if possible) suggested source(s) can be indicated in the > proposal. > > Also remember that we have always been clear that all decisions by the WG > are not final and are subject to being revisited up until the submission of > our Phase 1 Finales Report and recommendations, if intervening decisions and > new information justifies such revisiting. > > So we are not trying to cut off any discussion prematurely. But this is not > a debating society but a WG charged with making decisions and forwarding > recommendations, and we do have a timeline we are trying to adhere to. That > is why the co-chairs are now actively urging that we move the TMCH > discussions away from open-ended discussions and toward focused debate on > specific proposals. > > Finally --and this is solely a personal observation -- I think there are > likely some issues where no amount of data will bring about consensus due to > substantial differences in perspective. > > Thanks and best regards, > Philip > > Philip S. Corwin, Founding Principal > Virtualaw LLC > 1155 F Street, NW > Suite 1050 > Washington, DC 20004 > 202-559-8597/Direct > 202-559-8750/Fax > 202-255-6172/Cell > > Twitter: @VlawDC > > "Luck is the residue of design" -- Branch Rickey > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] > On Behalf Of George Kirikos > Sent: Tuesday, April 11, 2017 12:33 PM > To: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and > documents for Wednesday Working Group meeting (12 April) > > Phil: > > With respect, this timeline is too short, given that we've not even had > answers/data to this working group's questions returned from Deloitte. e.g. > just last week I specifically asked for the top 500 terms (not just the top > 10), and I had asked for that prior to last week (i.e. during the Copenhagen > calls in March). Other answers/data have not been provided, either (e.g. > ICANN has the right to audit Deloitte's financials, to see if the fees to > TMCH applicants/registries are reasonable, etc.), or the entire table of > questions, etc. that was prepared that sought out relevant data. > > Proper order is: Data first, then analysis of the data, then proposals for > changes, then conclusions. > > We can't go straight to proposals and then conclusions, without having > received back all the data that this working group's members have requested. > > At some point, this PDP will have public comment periods, and the public > comments will be able to say "you didn't do the work, didn't collect the > data, refused to look for data, refused to analyze the data, refused to > accept the conclusions that flowed from the data", etc. This PDP should be > sensitive to that, and actually do the work, instead of pretending to do the > work to support a predetermined > (rigged) outcome of "no change to the status quo" that some people seem to > feel should happen, despite evidence identifying numerous problems. > > This is probably going to be one of the most scrutinized PDPs in ICANN's > history --- let's do the work so that its reports/conclusions can stand up > to scrutiny. > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... > > > > > On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote: >> WG members: >> >> >> >> We have been having some very lively and occasionally heated >> discussions on TMCH-related matters. However, these discussions have >> been somewhat amorphous as they have not been focused on any specific >> proposal for altering the TMCH. That is about to change, as the time >> for discussion of TMCH matters is closing and the time for decisions is >> fast approaching.. >> >> >> >> In that regard, please take special note of this portion of the email >> sent by Mary--- >> >> >> >> For Agenda Item #2, please note the following: >> >> As these questions have already been the subject of substantial >> Working Group discussion, the aim at this meeting is to allow Working >> Group members who wish to propose recommendations for the full Working >> Group to consider to do so. Any such proposals or recommendations >> should be specific, include a list of the benefits and costs, >> advantages and disadvantages, and be sent to the Working Group mailing >> list no later than 7 days following the call this week (i.e. 19 April). >> >> >> >> In other words, starting tomorrow we are both soliciting, and will >> soon be setting a final deadline, for the presentation of proposals to >> alter the current policy concerning the TMCH and its implementation, >> with such proposals relating to specific TMCH questions. >> >> >> >> That means that if you are of a view that the TMCH should be >> eliminated because you believe it gives unfair advantage to TM owners >> you will have a chance to present a proposal to that effect. >> >> >> >> Likewise, if you are of the view that additional terms besides >> registered trademarks should be eligible for placement in the TMCH >> database you will also have a chance to make your case and seek consensus >> support. >> >> >> >> The above two examples are merely illustrative and by no means >> intended to limit anyone’s ability to advocate any question-specific >> response. >> >> >> >> In an April 9th email I laid out my expectations for how proposals >> would be presented -- Since then the co-chairs have engaged in a >> conference call and concurred on this approach, and that is reflected >> in Mary’s advisory-- >> >> >> >> Here’s how this co-chair would hope our internal decision process >> plays out on this or any other policy/implementation matter: >> >> · A proponent of making a change to present policy and practice >> should articulate the rationale for the proposal and the benefits >> expected to flow from its adoption. >> >> · The proponent should also be candid about what costs or burdens >> might be imposed on various parties if it is adopted and explain why >> those costs are outweighed by the envisioned benefits. >> >> · If an adopted change would not be self-executing but would >> require >> significant implementation details then the proponent should at least >> explain the basics how that would be practically effected. >> >> >> >> I believe that if proponents of making a change follow those >> suggestions it will set the stage for at least a fully informed debate >> and subsequent decision-making. >> >> >> >> The co-chairs have also agreed that when the WG is presented with a >> specific proposal we shall, after some reasonable time for discussion, >> take a straw poll of WG members participating in the meeting in which >> it is raised to ROUGHLY gauge the level of support/opposition for it. >> However, that straw poll will not be binding and whether or not >> consensus exists for a particular proposal will be determined by >> polling the entire membership of the WG. >> >> >> >> If you have any concerns or questions about this approach please let >> us know. Again, the main message is that, so far as the TMCH is >> concerned, the time for concluding talk and making decisions is fast >> approaching. >> >> >> >> Thank you and best regards, >> >> Philip >> >> >> >> >> >> >> >> >> >> Philip S. Corwin, Founding Principal >> >> Virtualaw LLC >> >> 1155 F Street, NW >> >> Suite 1050 >> >> Washington, DC 20004 >> >> 202-559-8597/Direct >> >> 202-559-8750/Fax >> >> 202-255-6172/Cell >> >> >> >> Twitter: @VlawDC >> >> >> >> "Luck is the residue of design" -- Branch Rickey >> >> >> >> From: gnso-rpm-wg-bounces@icann.org >> [mailto:gnso-rpm-wg-bounces@icann.org] >> On Behalf Of Mary Wong >> Sent: Monday, April 10, 2017 5:56 PM >> To: gnso-rpm-wg@icann.org >> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working >> Group meeting (12 April) >> >> >> >> Dear all, >> >> >> >> The proposed agenda for our call this Wednesday (12 April), which is >> scheduled as a 90-minute call commencing at 1600 UTC, is as follows: >> >> >> >> 1. Roll call (via Adobe Connect and phone bridge only); updates to >> Statements of Interest >> >> 2. Discuss remaining open TMCH Charter questions (see attached table >> and notes, below) >> >> 3. Overview by Co-Chairs on preliminary recommendations related to >> RPMs from the Competition, Consumer Protection & Consumer Trust Review >> Team >> (CCT-RT) (see attached document) >> >> 4. Administrative details: e.g. Working Group & Sub Team meeting >> dates >> for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th >> rotating >> (0300 UTC) Working Group call >> >> 5. Next steps/next meeting >> >> >> >> For Agenda Item #2, please note the following: >> >> As these questions have already been the subject of substantial >> Working Group discussion, the aim at this meeting is to allow Working >> Group members who wish to propose recommendations for the full Working >> Group to consider to do so. Any such proposals or recommendations >> should be specific, include a list of the benefits and costs, >> advantages and disadvantages, and be sent to the Working Group mailing >> list no later than 7 days following the call this week (i.e. 19 April). >> >> >> >> Thanks and cheers >> >> Mary >> >> ________________________________ >> >> No virus found in this message. >> Checked by AVG - https://na01.safelinks.protection.outlook.com/?url=www.avg.com&data=02%7C01%... >> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: >> 04/07/17 >> >> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > > ----- > > No virus found in this message. > Checked by AVG - https://na01.safelinks.protection.outlook.com/?url=www.avg.com&data=02%7C01%... > Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > > > > ________________________________ > > No virus found in this message. > Checked by AVG - https://na01.safelinks.protection.outlook.com/?url=www.avg.com&data=02%7C01%... > Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Hi folks, On Tue, Apr 11, 2017 at 6:21 PM, J. Scott Evans <jsevans@adobe.com> wrote:
I am not sure “personal data” is anything other than PII NOT which marks are actually registered in the database.
That's not correct. See: http://www.trademark-clearinghouse.com/content/privacy-notice "INFORMATION WE COLLECT We will collect and process your Personal Data, including your name, the name of your organization, your contact information, ***** your trademark information******, whether you are a Trademark Holder or Trademark Agent, your payment information and any other information necessary to effectuate the purposes of the Trademark Clearinghouse." (emphasis added) I'd like to see the contracts between ICANN & IBM (TMCH provider) and Deloitte (validator) to see exactly what they say. (redacted, if need be, with redactions justified by something), to answer this "confidentiality" claim. [I can file a DIDP request, but let's not waste a month] The public privacy policy of Deloitte seems to differ from what TM owners are saying. I think I asked already to see it (at least the one for Deloitte), around the time I posted about that Fadi Chehade blog post (which revealed ICANN's ability to audit, etc.). Does anyone have a problem with our group seeing those 2 contracts? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Thank you George. Sent from my iPad
On 12 Apr 2017, at 00:56, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Tue, Apr 11, 2017 at 6:21 PM, J. Scott Evans <jsevans@adobe.com> wrote: I am not sure “personal data” is anything other than PII NOT which marks are actually registered in the database.
That's not correct. See:
http://www.trademark-clearinghouse.com/content/privacy-notice
"INFORMATION WE COLLECT
We will collect and process your Personal Data, including your name, the name of your organization, your contact information, ***** your trademark information******, whether you are a Trademark Holder or Trademark Agent, your payment information and any other information necessary to effectuate the purposes of the Trademark Clearinghouse."
(emphasis added)
I'd like to see the contracts between ICANN & IBM (TMCH provider) and Deloitte (validator) to see exactly what they say. (redacted, if need be, with redactions justified by something), to answer this "confidentiality" claim. [I can file a DIDP request, but let's not waste a month] The public privacy policy of Deloitte seems to differ from what TM owners are saying. I think I asked already to see it (at least the one for Deloitte), around the time I posted about that Fadi Chehade blog post (which revealed ICANN's ability to audit, etc.). Does anyone have a problem with our group seeing those 2 contracts?
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
A DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE. All the marks in the Clearinghouse are distinctive marks given that they have been registered. True, they may be distinctive as to some goods and descriptive and/or suggestive as to others, but if they are registered there is a strong assumption that they are distinctive. In addition, all registrations or determinations of trademark rights that are registered in the clearinghouse predate the domain at issue. My point was that the letter incorrectly states that trademark protection is always tied to a party having to show a similarity of between the goods and services. This is simply not the state of the law. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: Paul Keating <paul@law.es> Date: Tuesday, April 11, 2017 at 2:44 PM To: J Scott Evans <jsevans@adobe.com> Cc: Paul McGrady <policy@paulmcgrady.com>, Phil Corwin <psc@vlaw-dc.com>, Greg Shatan <gregshatanipc@gmail.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Ok stop this. As you all know, to even start under the ACPA one need a registration of a DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE. THEN you need to show relevant factors. The ACPA does NOT provide per-emptive rights. Your arguments are strawmen intended to distract from the ONLY Issue - transparency of the TMCH database so we can all the. Do our jobs. Let's get back to work please. Sent from my iPad On 11 Apr 2017, at 22:58, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Yes, and Trademark Dilution under the Lanham Act does not take into consideration the goods and services of the parties. Also, I believe “famous and well-known marks” under 6bis of the Paris Convention do not require any special association with goods and services. While I realize that both of these theories concentrate on “famous marks”, it clearly shows a that similarity in goods and services is not necessarily a prerequisite to trademark protection. Paul’s example is even better because the ACPA applies to all marks and does not require fame. All this to say that the “Trademark Scholars Letter” is better titled “Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection”, rather than a piece of scholarship that accurately sets forth the law. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. 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 Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> Date: Tuesday, April 11, 2017 at 1:50 PM To: 'Phil Corwin' <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, 'Greg Shatan' <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.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] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7C3e50285bdd4d4dcf122108d4811c7d6c%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636275406753459787&sdata=aJNH0kl3W%2BhtMW0Y0kFKPhZ6UZZpl%2FwCNPiIISTjb1k%3D&reserved=0> On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Well said Paul +1 Colin Thomas Jefferson O’Brien [PartridgePartners_logo_final (002)] 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.partridge.partners_&d=CwMGaQ&c=kqD9Q09X0_hF3XfnL01GEfIkP9-W7TXn6puQBrgMIlo&r=9-_oVnIkTFYkZzv8b5PGVZckJXV9d_c5sI_KGA4CFMQ&m=Dun2gPGoNhOgvtpfJFgCNhsEsF1r1qZZAGfEZ63PcqU&s=dcEs8IDDNmTr1H9cTMbFBrHidXnGIT9Xd63iQR0KkHI&e=> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Tuesday, April 11, 2017 3:50 PM To: 'Phil Corwin'; 'Greg Shatan' Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Paul, Please let's not get lost in the trees. The issue is trans-Arendt of the TMCH list. Nothing more. More signifies prejudgment on what is found after a peek under the hood. If there is no issue then there is none. If, however, there is an issue of abuse it must be addressed. That is what we are tasked to do. Absent the information it is difficult to complete ten task - which is to review and recommend. Sent from my iPad
On 11 Apr 2017, at 22:51, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote: George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Paul: If you took my reference to the “Trademark Scholars Letter” (note that this term is in quotations, which can either mean a precise reference to the “Trademark Scholars Letter to ICANN GNSO RPM Working Group” posted at https://www.eff.org/document/trademark-scholars-letter-icann-gnso-rpm-workin... , or ‘so-called’, take your pick) as implying that the TMCH is ““recently demanded by trademark owners” then you have detected an implication that was not in any way intended. I referenced the letter not to indicate agreement or disagreement with anything in it, but merely to document that there have been suggestions that the TMCH gives unfair advantage to trademark owners that have been posted to and discussed on this list and therefore it would not be shocking to see a proposal offered to either eliminate the TMCH or at least one or both of the RPMs that it supports. Also, to be clear and for future reference, when I give a hypothetical example of a proposal that might be offered for consideration by this WG I am neither encouraging nor endorsing such a proposal, merely offering an example of the types of proposals that will soon be in order. In point of fact, both hypotheticals that I posited – eliminating the TMCH and/or an associated RPM, or significantly expanding the terms that can be registered in the TMCH – are not proposals that I would be presently inclined to support. But I will try to keep an open mind if any proposals dealing with these or other TMCH issues are offered at some point in our work. Finally, in regard to the heading STRICTLY IN MY PERSONAL CAPACITY I have always presumed that your posts have been in such capacity. Have I been mistaken in that? With best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Tuesday, April 11, 2017 4:50 PM To: Phil Corwin; 'Greg Shatan' Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Hi Phil, Thanks for the clarification. Regarding your question about personal capacity, that is my general approach but even so I thought I should make it extra-clear that I was not speaking for the IPC in that particular post given that I expect some pushback from those who have elevated it to a special status on this list. Best, Paul From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Tuesday, April 11, 2017 4:52 PM To: Paul McGrady <policy@paulmcgrady.com>; 'Greg Shatan' <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Paul: If you took my reference to the “Trademark Scholars Letter” (note that this term is in quotations, which can either mean a precise reference to the “Trademark Scholars Letter to ICANN GNSO RPM Working Group” posted at https://www.eff.org/document/trademark-scholars-letter-icann-gnso-rpm-workin... , or ‘so-called’, take your pick) as implying that the TMCH is ““recently demanded by trademark owners” then you have detected an implication that was not in any way intended. I referenced the letter not to indicate agreement or disagreement with anything in it, but merely to document that there have been suggestions that the TMCH gives unfair advantage to trademark owners that have been posted to and discussed on this list and therefore it would not be shocking to see a proposal offered to either eliminate the TMCH or at least one or both of the RPMs that it supports. Also, to be clear and for future reference, when I give a hypothetical example of a proposal that might be offered for consideration by this WG I am neither encouraging nor endorsing such a proposal, merely offering an example of the types of proposals that will soon be in order. In point of fact, both hypotheticals that I posited – eliminating the TMCH and/or an associated RPM, or significantly expanding the terms that can be registered in the TMCH – are not proposals that I would be presently inclined to support. But I will try to keep an open mind if any proposals dealing with these or other TMCH issues are offered at some point in our work. Finally, in regard to the heading STRICTLY IN MY PERSONAL CAPACITY I have always presumed that your posts have been in such capacity. Have I been mistaken in that? With best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Tuesday, April 11, 2017 4:50 PM To: Phil Corwin; 'Greg Shatan' Cc: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> > Cc: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 <mailto:gregshatanipc@gmail.com> gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> > wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597 <tel:202-559-8597> /Direct 202-559-8750 <tel:202-559-8750> /Fax 202-255-6172 <tel:202-255-6172> /Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269 <tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> > wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597 <tel:202-559-8597> /Direct
202-559-8750 <tel:202-559-8750> /Fax
202-255-6172 <tel:202-255-6172> /Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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It probably makes sense for me to point out that no member, officer or councilor of the IPC speaks for the IPC on this list, unless expressly stated otherwise. This includes me (though I have not noted the capacity in which I was speaking). It's always a good idea for those who wear several hats to be transparent about which one they're wearing at a given time. Greg Shatan *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 6:35 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
Hi Phil,
Thanks for the clarification.
Regarding your question about personal capacity, that is my general approach but even so I thought I should make it extra-clear that I was not speaking for the IPC in that particular post given that I expect some pushback from those who have elevated it to a special status on this list.
Best,
Paul
*From:* Phil Corwin [mailto:psc@vlaw-dc.com] *Sent:* Tuesday, April 11, 2017 4:52 PM *To:* Paul McGrady <policy@paulmcgrady.com>; 'Greg Shatan' < gregshatanipc@gmail.com> *Cc:* gnso-rpm-wg@icann.org
*Subject:* RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Paul:
If you took my reference to the “Trademark Scholars Letter” (note that this term is in quotations, which can either mean a precise reference to the “Trademark Scholars Letter to ICANN GNSO RPM Working Group” posted at https://www.eff.org/document/trademark-scholars-letter- icann-gnso-rpm-working-group , or ‘so-called’, take your pick) as implying that the TMCH is ““recently demanded by trademark owners” then you have detected an implication that was not in any way intended. I referenced the letter not to indicate agreement or disagreement with anything in it, but merely to document that there have been suggestions that the TMCH gives unfair advantage to trademark owners that have been posted to and discussed on this list and therefore it would not be shocking to see a proposal offered to either eliminate the TMCH or at least one or both of the RPMs that it supports.
Also, to be clear and for future reference, when I give a hypothetical example of a proposal that might be offered for consideration by this WG I am neither encouraging nor endorsing such a proposal, merely offering an example of the types of proposals that will soon be in order. In point of fact, both hypotheticals that I posited – eliminating the TMCH and/or an associated RPM, or significantly expanding the terms that can be registered in the TMCH – are not proposals that I would be presently inclined to support. But I will try to keep an open mind if any proposals dealing with these or other TMCH issues are offered at some point in our work.
Finally, in regard to the heading STRICTLY IN MY PERSONAL CAPACITY I have always presumed that your posts have been in such capacity. Have I been mistaken in that?
With best regards,
Philip
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* Paul McGrady [mailto:policy@paulmcgrady.com <policy@paulmcgrady.com>] *Sent:* Tuesday, April 11, 2017 4:50 PM *To:* Phil Corwin; 'Greg Shatan' *Cc:* gnso-rpm-wg@icann.org *Subject:* RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is *exactly the opposite of what the ACPA states* about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Phil Corwin *Sent:* Tuesday, April 11, 2017 2:12 PM *To:* Greg Shatan <gregshatanipc@gmail.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, *nor do I believe I have seen any suggestion to that effect*. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
*A case in point is the Trademark Clearinghouse*, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* Greg Shatan [mailto:gregshatanipc@gmail.com <gregshatanipc@gmail.com>] *Sent:* Tuesday, April 11, 2017 2:33 PM *To:* Phil Corwin *Cc:* George Kirikos; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that *use* the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are *already* eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether *terms that are not trademarks or previously abused strings containing trademarks* should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
*Greg Shatan*C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Thanks Paul. Likewise, unless otherwise stated all views expressed by me on this email list are strictly personal and should not be viewed as those of the BC, the ICA, or any other client. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Tuesday, April 11, 2017 6:36 PM To: Phil Corwin; 'Greg Shatan' Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Hi Phil, Thanks for the clarification. Regarding your question about personal capacity, that is my general approach but even so I thought I should make it extra-clear that I was not speaking for the IPC in that particular post given that I expect some pushback from those who have elevated it to a special status on this list. Best, Paul From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Tuesday, April 11, 2017 4:52 PM To: Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>>; 'Greg Shatan' <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Paul: If you took my reference to the “Trademark Scholars Letter” (note that this term is in quotations, which can either mean a precise reference to the “Trademark Scholars Letter to ICANN GNSO RPM Working Group” posted at https://www.eff.org/document/trademark-scholars-letter-icann-gnso-rpm-workin... , or ‘so-called’, take your pick) as implying that the TMCH is ““recently demanded by trademark owners” then you have detected an implication that was not in any way intended. I referenced the letter not to indicate agreement or disagreement with anything in it, but merely to document that there have been suggestions that the TMCH gives unfair advantage to trademark owners that have been posted to and discussed on this list and therefore it would not be shocking to see a proposal offered to either eliminate the TMCH or at least one or both of the RPMs that it supports. Also, to be clear and for future reference, when I give a hypothetical example of a proposal that might be offered for consideration by this WG I am neither encouraging nor endorsing such a proposal, merely offering an example of the types of proposals that will soon be in order. In point of fact, both hypotheticals that I posited – eliminating the TMCH and/or an associated RPM, or significantly expanding the terms that can be registered in the TMCH – are not proposals that I would be presently inclined to support. But I will try to keep an open mind if any proposals dealing with these or other TMCH issues are offered at some point in our work. Finally, in regard to the heading STRICTLY IN MY PERSONAL CAPACITY I have always presumed that your posts have been in such capacity. Have I been mistaken in that? With best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Tuesday, April 11, 2017 4:50 PM To: Phil Corwin; 'Greg Shatan' Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) STRICTLY IN MY PERSONAL CAPACITY Hi Phil, Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.” Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.” Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg: To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory. I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “ The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered. I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list. Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members. Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly. I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out. Thank you and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) I have some problems with the examples given here: That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect. Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support. In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate. The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database. A little more rigor and accuracy will help us all, as we drink from the WG firehose.... Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: George: I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that. In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal. Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting. So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals. Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Phil: With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data. Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions. We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested. At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems. This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny. Sincerely, George Kirikos 416-588-0269<tel:416-588-0269> http://www.leap.com/ On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759 On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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The statute specifically states " without regard to the goods or services of the parties." How is Paul being misleading on this point? Here is the relevant section: (d)Cyberpiracy prevention (1) (A)A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person— (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii)registers, traffics in, or uses a domain name that— (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36. https://www.law.cornell.edu/uscode/text/15/1125 Colin Thomas Jefferson O’Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Tuesday, April 11, 2017 4:55 PM To: Paul McGrady Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759 On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Thanks Colin. Rebecca, how is quoting the law as it is actually written misleading? Your letter says “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” but the right to enforce against cybersquatting in pretty ordinary at this point since the law has been in force since Bill Clinton signed it. Me quoting the law - as it actually exists - isn't misleading, no matter how unhelpful the actual law may be to viewpoints contained in the Trademark Professors with a Particular Viewpoint on the Scope of Trademark Protection Letter. Best, Paul -----Original Message----- From: Colin O'Brien [mailto:colin@PartridgePartnersPC.com] Sent: Tuesday, April 11, 2017 5:00 PM To: 'Rebecca Tushnet' <Rebecca.Tushnet@law.georgetown.edu>; Paul McGrady <policy@paulmcgrady.com> Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) The statute specifically states " without regard to the goods or services of the parties." How is Paul being misleading on this point? Here is the relevant section: (d)Cyberpiracy prevention (1) (A)A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person— (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii)registers, traffics in, or uses a domain name that— (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36. https://www.law.cornell.edu/uscode/text/15/1125 Colin Thomas Jefferson O’Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Tuesday, April 11, 2017 4:55 PM To: Paul McGrady Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759 On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Really? in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36. Not one comment is about marks qualifying for ACPA protection. The ACPA has exactly 0 to so with the discussion. The comments you are arguing against ask for 1 simple thing: Let us look at the marks registered in the TMCH database to ensure there is no abuse or if abuse that it is not substantial enough to seek rectification. Please please please SOMEONE provide us with a cogent argu,net based upon facts and legal authority establishing that this WG has no right to see the data being sought. And, please stop the political arguments as to whether we should ask. Sent from my iPad
On 12 Apr 2017, at 00:00, Colin O'Brien <colin@PartridgePartnersPC.com> wrote:
The statute specifically states " without regard to the goods or services of the parties." How is Paul being misleading on this point?
Here is the relevant section:
(d)Cyberpiracy prevention (1) (A)A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person— (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii)registers, traffics in, or uses a domain name that— (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
https://www.law.cornell.edu/uscode/text/15/1125
Colin Thomas Jefferson O’Brien
321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Tuesday, April 11, 2017 4:55 PM To: Paul McGrady Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote: STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote: WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Rebecca, I and many of the other WG members on this list routinely practice trademark law and are quite clear on the requirements for a valid mark. Our clients depend on that. As you must know, although trademarks are ordinarily and routinely *registered* in identified classes of goods and services using the Nice Classifications, trademark registrations (which should be distinguished from trademarks) in most regimes rarely "cover" identified classes of goods. On the one hand, registrations in certain regimes such as the US cannot ordinarily and routinely be made for an entire class of goods and services, but rather must be made for a more limited list of goods and services within the class, while on the other hand, certain regimes are open to "registering the class." Furthermore, the "identified class" of goods and services is not particularly in determining the scope of a brandowner's rights. In an infringement analysis under US law, one looks at "related goods and services" including the natural zone of expansion and the likelihood of bridging the gap. (There can be some interesting surprises in the law regarding findings of "relatedness" and "non-relatedness." As a younger lawyer, I would amuse myself by leafing through the "Products Comparison Manual for Trademark Users <https://www.bna.com/products-comparison-manual-p17179874185/>." I don't know if you did that as well, but I'll admit I'm a bit wonky that way.) Indeed, the disinterest in Nice Classifications in infringement analysis goes beyond "not particularly germane." In "both opposition proceedings and federal court actions in the United States, it has been held that the classification of goods and services has no bearing on the determination of likelihood of confusion. The purpose of classification of goods is for internal administration and convenience at the Patent and Trademark Office. Classification does not limit or extend a registrant's rights." http://www.inta.org/Advocacy/Pages/UseofClassificationinLikelihoodofConfusio... The Nice Classifications are a formalistic and somewhat antiquated taxonomy of Classes of Goods and Services, and anyone who regularly needs to classify the good or service of a product for a trademark application will occasionally find themselves trying to put a round peg in a square hole. It comes with the job when prosecuting trademarks. The Nice Classifications often do not line up well with commercial realities, as the courts have long recognized. Any attempt to use them as if they are dispositive of the reach of any brandowner's rights would be making an unfortunate mistake. I'll let Paul McGrady respond to your charge that his reference is "incredibly misleading." Best regards, Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 5:54 PM, Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:
As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Greg, While we can all bicker about the scope of trademark rights, How are your comments related to the TMCH transparency issue? As concerns classifications, you are entirely incorrect. As-registrant you remain free to describe goods/services as you see fit. You are not limited by class. The only requirement at issue is that you accurately describe the goods and services. Attempts are made to regulate language for obvious reasons. Of course if your description crosses over into another NICE code then your client gets to pay more. That renders the NICE code system a billing mechanism. Let's not try to make things bigger than they really are. Sent from my iPad
On 12 Apr 2017, at 00:28, Greg Shatan <gregshatanipc@gmail.com> wrote:
Rebecca,
I and many of the other WG members on this list routinely practice trademark law and are quite clear on the requirements for a valid mark. Our clients depend on that.
As you must know, although trademarks are ordinarily and routinely registered in identified classes of goods and services using the Nice Classifications, trademark registrations (which should be distinguished from trademarks) in most regimes rarely "cover" identified classes of goods. On the one hand, registrations in certain regimes such as the US cannot ordinarily and routinely be made for an entire class of goods and services, but rather must be made for a more limited list of goods and services within the class, while on the other hand, certain regimes are open to "registering the class."
Furthermore, the "identified class" of goods and services is not particularly in determining the scope of a brandowner's rights. In an infringement analysis under US law, one looks at "related goods and services" including the natural zone of expansion and the likelihood of bridging the gap. (There can be some interesting surprises in the law regarding findings of "relatedness" and "non-relatedness." As a younger lawyer, I would amuse myself by leafing through the "Products Comparison Manual for Trademark Users." I don't know if you did that as well, but I'll admit I'm a bit wonky that way.)
Indeed, the disinterest in Nice Classifications in infringement analysis goes beyond "not particularly germane." In "both opposition proceedings and federal court actions in the United States, it has been held that the classification of goods and services has no bearing on the determination of likelihood of confusion. The purpose of classification of goods is for internal administration and convenience at the Patent and Trademark Office. Classification does not limit or extend a registrant's rights." http://www.inta.org/Advocacy/Pages/UseofClassificationinLikelihoodofConfusio...
The Nice Classifications are a formalistic and somewhat antiquated taxonomy of Classes of Goods and Services, and anyone who regularly needs to classify the good or service of a product for a trademark application will occasionally find themselves trying to put a round peg in a square hole. It comes with the job when prosecuting trademarks. The Nice Classifications often do not line up well with commercial realities, as the courts have long recognized. Any attempt to use them as if they are dispositive of the reach of any brandowner's rights would be making an unfortunate mistake.
I'll let Paul McGrady respond to your charge that his reference is "incredibly misleading."
Best regards,
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 5:54 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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This thread wasn't about the TMCH transparency issue. You are mixing your threads up, or you are trying to flog everyone into talking about nothing but "transparency" on every thread in the RPM group. As concerns classifications, I stand by my earlier statement as entirely correct. I wish you were right in saying that as a registrant (or more accurately, an applicant) "you remain free to describe goods/services as you see fit." If this were the case, there are hundreds of seriously confused Trademark Examiners and Supervisors at the USPTO. There is a substantial amount of both rigor and formalism in preparing an acceptable description of goods and services for a trademark application (and you are most definitely limited by the Nice Classification system), and Examiners are not shy about issuing Office Actions in that regard for any number of infirmities in the "ID". In spite of your cynicism, I have not generally found Examiners trying to divide descriptions into classes as a revenue generation tool. Rather they are following largely the same practices I've seen over the years. And then, when you get to an infringement analysis it matters not a whit. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 6:45 PM, Paul Keating <paul@law.es> wrote:
Greg,
While we can all bicker about the scope of trademark rights, How are your comments related to the TMCH transparency issue?
As concerns classifications, you are entirely incorrect. As-registrant you remain free to describe goods/services as you see fit. You are not limited by class. The only requirement at issue is that you accurately describe the goods and services. Attempts are made to regulate language for obvious reasons.
Of course if your description crosses over into another NICE code then your client gets to pay more. That renders the NICE code system a billing mechanism. Let's not try to make things bigger than they really are.
Sent from my iPad
On 12 Apr 2017, at 00:28, Greg Shatan <gregshatanipc@gmail.com> wrote:
Rebecca,
I and many of the other WG members on this list routinely practice trademark law and are quite clear on the requirements for a valid mark. Our clients depend on that.
As you must know, although trademarks are ordinarily and routinely *registered* in identified classes of goods and services using the Nice Classifications, trademark registrations (which should be distinguished from trademarks) in most regimes rarely "cover" identified classes of goods. On the one hand, registrations in certain regimes such as the US cannot ordinarily and routinely be made for an entire class of goods and services, but rather must be made for a more limited list of goods and services within the class, while on the other hand, certain regimes are open to "registering the class."
Furthermore, the "identified class" of goods and services is not particularly in determining the scope of a brandowner's rights. In an infringement analysis under US law, one looks at "related goods and services" including the natural zone of expansion and the likelihood of bridging the gap. (There can be some interesting surprises in the law regarding findings of "relatedness" and "non-relatedness." As a younger lawyer, I would amuse myself by leafing through the "Products Comparison Manual for Trademark Users <https://www.bna.com/products-comparison-manual-p17179874185/>." I don't know if you did that as well, but I'll admit I'm a bit wonky that way.)
Indeed, the disinterest in Nice Classifications in infringement analysis goes beyond "not particularly germane." In "both opposition proceedings and federal court actions in the United States, it has been held that the classification of goods and services has no bearing on the determination of likelihood of confusion. The purpose of classification of goods is for internal administration and convenience at the Patent and Trademark Office. Classification does not limit or extend a registrant's rights." http://www.inta.org/Advocacy/Pages/UseofClassificationinLikelihoo dofConfusionAnalysis.aspx
The Nice Classifications are a formalistic and somewhat antiquated taxonomy of Classes of Goods and Services, and anyone who regularly needs to classify the good or service of a product for a trademark application will occasionally find themselves trying to put a round peg in a square hole. It comes with the job when prosecuting trademarks. The Nice Classifications often do not line up well with commercial realities, as the courts have long recognized. Any attempt to use them as if they are dispositive of the reach of any brandowner's rights would be making an unfortunate mistake.
I'll let Paul McGrady respond to your charge that his reference is "incredibly misleading."
Best regards,
Greg
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 5:54 PM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote:
As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172 <(202)%20255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Apologies if I have mixed and matched WGs Generally agree as to pressure but the examiners are attempting to unify language for obvious reasons no? Nothing like charging more to limit descriptions. :-0 Infringement is all about defendant's use vs how the applicant described their goods/services. So disagree completely there. Sent from my iPad
On 12 Apr 2017, at 00:54, Greg Shatan <gregshatanipc@gmail.com> wrote:
This thread wasn't about the TMCH transparency issue. You are mixing your threads up, or you are trying to flog everyone into talking about nothing but "transparency" on every thread in the RPM group.
As concerns classifications, I stand by my earlier statement as entirely correct. I wish you were right in saying that as a registrant (or more accurately, an applicant) "you remain free to describe goods/services as you see fit." If this were the case, there are hundreds of seriously confused Trademark Examiners and Supervisors at the USPTO. There is a substantial amount of both rigor and formalism in preparing an acceptable description of goods and services for a trademark application (and you are most definitely limited by the Nice Classification system), and Examiners are not shy about issuing Office Actions in that regard for any number of infirmities in the "ID". In spite of your cynicism, I have not generally found Examiners trying to divide descriptions into classes as a revenue generation tool. Rather they are following largely the same practices I've seen over the years.
And then, when you get to an infringement analysis it matters not a whit.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 6:45 PM, Paul Keating <paul@law.es> wrote: Greg,
While we can all bicker about the scope of trademark rights, How are your comments related to the TMCH transparency issue?
As concerns classifications, you are entirely incorrect. As-registrant you remain free to describe goods/services as you see fit. You are not limited by class. The only requirement at issue is that you accurately describe the goods and services. Attempts are made to regulate language for obvious reasons.
Of course if your description crosses over into another NICE code then your client gets to pay more. That renders the NICE code system a billing mechanism. Let's not try to make things bigger than they really are.
Sent from my iPad
On 12 Apr 2017, at 00:28, Greg Shatan <gregshatanipc@gmail.com> wrote:
Rebecca,
I and many of the other WG members on this list routinely practice trademark law and are quite clear on the requirements for a valid mark. Our clients depend on that.
As you must know, although trademarks are ordinarily and routinely registered in identified classes of goods and services using the Nice Classifications, trademark registrations (which should be distinguished from trademarks) in most regimes rarely "cover" identified classes of goods. On the one hand, registrations in certain regimes such as the US cannot ordinarily and routinely be made for an entire class of goods and services, but rather must be made for a more limited list of goods and services within the class, while on the other hand, certain regimes are open to "registering the class."
Furthermore, the "identified class" of goods and services is not particularly in determining the scope of a brandowner's rights. In an infringement analysis under US law, one looks at "related goods and services" including the natural zone of expansion and the likelihood of bridging the gap. (There can be some interesting surprises in the law regarding findings of "relatedness" and "non-relatedness." As a younger lawyer, I would amuse myself by leafing through the "Products Comparison Manual for Trademark Users." I don't know if you did that as well, but I'll admit I'm a bit wonky that way.)
Indeed, the disinterest in Nice Classifications in infringement analysis goes beyond "not particularly germane." In "both opposition proceedings and federal court actions in the United States, it has been held that the classification of goods and services has no bearing on the determination of likelihood of confusion. The purpose of classification of goods is for internal administration and convenience at the Patent and Trademark Office. Classification does not limit or extend a registrant's rights." http://www.inta.org/Advocacy/Pages/UseofClassificationinLikelihoodofConfusio...
The Nice Classifications are a formalistic and somewhat antiquated taxonomy of Classes of Goods and Services, and anyone who regularly needs to classify the good or service of a product for a trademark application will occasionally find themselves trying to put a round peg in a square hole. It comes with the job when prosecuting trademarks. The Nice Classifications often do not line up well with commercial realities, as the courts have long recognized. Any attempt to use them as if they are dispositive of the reach of any brandowner's rights would be making an unfortunate mistake.
I'll let Paul McGrady respond to your charge that his reference is "incredibly misleading."
Best regards,
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 5:54 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Paul K., You sent me an email that was off list. Was that on purpose? If not, can you please publish it to the entire list? If you dropped the list on purpose, I’d like to respectfully decline non-list emails from you on this PDP. I think keeping the record intact is important. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Tuesday, April 11, 2017 5:45 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April) Greg, While we can all bicker about the scope of trademark rights, How are your comments related to the TMCH transparency issue? As concerns classifications, you are entirely incorrect. As-registrant you remain free to describe goods/services as you see fit. You are not limited by class. The only requirement at issue is that you accurately describe the goods and services. Attempts are made to regulate language for obvious reasons. Of course if your description crosses over into another NICE code then your client gets to pay more. That renders the NICE code system a billing mechanism. Let's not try to make things bigger than they really are. Sent from my iPad On 12 Apr 2017, at 00:28, Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> > wrote: Rebecca, I and many of the other WG members on this list routinely practice trademark law and are quite clear on the requirements for a valid mark. Our clients depend on that. As you must know, although trademarks are ordinarily and routinely registered in identified classes of goods and services using the Nice Classifications, trademark registrations (which should be distinguished from trademarks) in most regimes rarely "cover" identified classes of goods. On the one hand, registrations in certain regimes such as the US cannot ordinarily and routinely be made for an entire class of goods and services, but rather must be made for a more limited list of goods and services within the class, while on the other hand, certain regimes are open to "registering the class." Furthermore, the "identified class" of goods and services is not particularly in determining the scope of a brandowner's rights. In an infringement analysis under US law, one looks at "related goods and services" including the natural zone of expansion and the likelihood of bridging the gap. (There can be some interesting surprises in the law regarding findings of "relatedness" and "non-relatedness." As a younger lawyer, I would amuse myself by leafing through the "Products Comparison Manual for Trademark Users <https://www.bna.com/products-comparison-manual-p17179874185/> ." I don't know if you did that as well, but I'll admit I'm a bit wonky that way.) Indeed, the disinterest in Nice Classifications in infringement analysis goes beyond "not particularly germane." In "both opposition proceedings and federal court actions in the United States, it has been held that the classification of goods and services has no bearing on the determination of likelihood of confusion. The purpose of classification of goods is for internal administration and convenience at the Patent and Trademark Office. Classification does not limit or extend a registrant's rights." http://www.inta.org/Advocacy/Pages/UseofClassificationinLikelihoodofConfusio... The Nice Classifications are a formalistic and somewhat antiquated taxonomy of Classes of Goods and Services, and anyone who regularly needs to classify the good or service of a product for a trademark application will occasionally find themselves trying to put a round peg in a square hole. It comes with the job when prosecuting trademarks. The Nice Classifications often do not line up well with commercial realities, as the courts have long recognized. Any attempt to use them as if they are dispositive of the reach of any brandowner's rights would be making an unfortunate mistake. I'll let Paul McGrady respond to your charge that his reference is "incredibly misleading." Best regards, Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 <mailto:gregshatanipc@gmail.com> gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 5:54 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu <mailto:Rebecca.Tushnet@law.georgetown.edu> > wrote: As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759 <tel:703%20593%206759> On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com <mailto:policy@paulmcgrady.com> > wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> > Cc: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597 <tel:202-559-8597> /Direct
202-559-8750 <tel:202-559-8750> /Fax
202-255-6172 <tel:202-255-6172> /Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> ] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 <tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <tel:646-845-9428> gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> > wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597 <tel:202-559-8597> /Direct 202-559-8750 <tel:202-559-8750> /Fax 202-255-6172 <tel:202-255-6172> /Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 <tel:416-588-0269> http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> > wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597 <tel:202-559-8597> /Direct
202-559-8750 <tel:202-559-8750> /Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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+! Sent from my iPad
On 11 Apr 2017, at 21:11, Phil Corwin <psc@vlaw-dc.com> wrote:
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point: We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote: George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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Greg, I have not hear "eliminate" anything. What I have heard is a repeated request for I formation so that this WG can actually do its job and determine if abuse has occurred and if so what, of any, remedies are appropriate. On the other side I see nothing. I suspect you do not even know the answer. Do you not see that the more you strive to maintain obscurity the more people demand to look? Sent from my iPad
On 11 Apr 2017, at 20:33, Greg Shatan <gregshatanipc@gmail.com> wrote:
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote: George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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Paul, I agree that I have not heard "eliminate" anything up to this point. That's why I was so surprised that our esteemed co-chair would offer up "a view that the TMCH should be eliminated" as an example of the type of suggestion that the co-chairs are soliciting. Now, Phil says he wouldn't be surprised if such a suggestion is made. Interesting. I was not even referring to the issue of an open vs. a closed database. I have seen quite a bit said on both sides of that issue. As for my view, I would be interested to know whether there is abuse of the system (and abuse of underlying trademark registration systems) by those who would seek to use the Sunrise to acquire domain names for resale rather than to protect valuable trademark rights that are an important aspect of their company's business. We have seen isolated reports of such abuse, but it would be good to look into how often this happens and how to tailor a remedy for this problem without harming those who hold rights that the TMCH and its irrevocably intertwined RPMs were designed to protect. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Apr 11, 2017 at 5:17 PM, Paul Keating <paul@law.es> wrote:
Greg,
I have not hear "eliminate" anything. What I have heard is a repeated request for I formation so that this WG can actually do its job and determine if abuse has occurred and if so what, of any, remedies are appropriate.
On the other side I see nothing. I suspect you do not even know the answer.
Do you not see that the more you strive to maintain obscurity the more people demand to look?
Sent from my iPad
On 11 Apr 2017, at 20:33, Greg Shatan <gregshatanipc@gmail.com> wrote:
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that *use* the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are *already* eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether *terms that are not trademarks or previously abused strings containing trademarks* should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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Greg, I re-read Phil's email 2x. He makes no statement that elimination should be considered. Hos suggestion that one might surface is not surprising. There appear to be all sorts of extremists on this list including J. Scott (also a co-chair). The more obfuscation is suggested the more likely an extremely opposite opinion will surface. That's human nature. Let's get beyond this. Let's seek the list and find out if there is any abuse and even if there is whether it is significant enough to address. Above all let's stop playing h9de the ball. It's boring. Sent from my iPad
On 11 Apr 2017, at 23:52, Greg Shatan <gregshatanipc@gmail.com> wrote:
Paul,
I agree that I have not heard "eliminate" anything up to this point. That's why I was so surprised that our esteemed co-chair would offer up "a view that the TMCH should be eliminated" as an example of the type of suggestion that the co-chairs are soliciting. Now, Phil says he wouldn't be surprised if such a suggestion is made. Interesting.
I was not even referring to the issue of an open vs. a closed database. I have seen quite a bit said on both sides of that issue. As for my view, I would be interested to know whether there is abuse of the system (and abuse of underlying trademark registration systems) by those who would seek to use the Sunrise to acquire domain names for resale rather than to protect valuable trademark rights that are an important aspect of their company's business. We have seen isolated reports of such abuse, but it would be good to look into how often this happens and how to tailor a remedy for this problem without harming those who hold rights that the TMCH and its irrevocably intertwined RPMs were designed to protect.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 5:17 PM, Paul Keating <paul@law.es> wrote: Greg,
I have not hear "eliminate" anything. What I have heard is a repeated request for I formation so that this WG can actually do its job and determine if abuse has occurred and if so what, of any, remedies are appropriate.
On the other side I see nothing. I suspect you do not even know the answer.
Do you not see that the more you strive to maintain obscurity the more people demand to look?
Sent from my iPad
On 11 Apr 2017, at 20:33, Greg Shatan <gregshatanipc@gmail.com> wrote:
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote: George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
________________________________
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participants (9)
-
Colin O'Brien -
George Kirikos -
Greg Shatan -
J. Scott Evans -
Kiran Malancharuvil -
Paul Keating -
Paul McGrady -
Phil Corwin -
Rebecca Tushnet