[gnso-rpm-wg] Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group

Terri Agnew terri.agnew at icann.org
Wed Feb 1 18:44:43 UTC 2017

Dear All,


Please find the attendance of the call attached to this email and the MP3
recording below for the Review of all Rights Protection Mechanisms (RPMs) in
all gTLDs PDP Working Group call held on Wednesday, 01 February 2017 at
17:00 UTC. Attendance of the call is posted on agenda wiki page:


MP3:   http://audio.icann.org/gnso/gnso-rpm-review-01feb17-en.mp3 

The recordings and transcriptions of the calls are posted on the GNSO Master
Calendar page: http://gnso.icann.org/en/group-activities/calendar

** Please let me know if your name has been left off the list **


Mailing list archives:  <http://mm.icann.org/pipermail/gnso-rpm-wg/>


Wiki page: https://community.icann.org/x/wCWAAw


Thank you.

Kind regards,

Terri Agnew



Adobe Connect chat transcript for 01 February 2017:     

       Terri Agnew:Dear all, Welcome to the Review of all Rights Protection
Mechanisms (RPMs) in all gTLDS PDP Working Group call on Wednesday, 01
February 2017 at 17:00 UTC

  Terri Agnew:agenda wiki page:

  George Kirikos:Hi folks.

  Jay Chapman:Howdy, George

  George Kirikos:Hey Jay.

  Nat Cohen:Hi Goerge, Jay, all

  Nat Cohen:George

  Maxim Alzoba (FAITID):Hello All

  George Kirikos:Welcome, Nat and Maxim.

  Steve Levy:Hi everyone

  George Kirikos:Hi Steve.

  Philip Corwin:Hello all

  George Kirikos:Hey Phil.

  Terri Agnew:currently all can scroll slides themselves

  Mary Wong:I've now posted the 4 options in the Notes pod on the right hand
side (they were also in the email sent out with the agenda)

  Mary Wong:Note that Deloitte's response provides some information about
the kind of outreach and education they have performed.

  George Kirikos:Here's Deloitte's response on the wiki:

  Mary Wong:We have Deloitte's response available to post in the Adobe
Connect room as well.

  Mary Wong:They are on the wiki, let me get the link.

  Mary Wong:Final agreed list of TMCH Charter questions (16 questions in 6

  George Kirikos:We're able to scroll ourselves now.

  Terri Agnew:everyone can scroll themselves on the document

  George Kirikos:Most of their outreach appears to be geared to the IP
constituency (as one might expect), rather than to registrants (or
prospective registrants) who are affected by the claims process.

  Edward Morris:The education seems only oriented towards rights holders -
what about registrants?

  George Kirikos:+1 Edward

  Mary Wong:@George, from what Deloitte has said publicly, it seems that
they consider their primary audience TM rights holders and their agents

  Kurt Pritz:That is not surprising to me.

  Marc Trachtenberg:Why would their audience be anyone other than TM rights
holders since the TNCH is a respository of TM rights?

  George Kirikos:@Marc: Well, if the ability to challenge recordals existed,
then the potential audience would include those "challengers" (i.e.
registrants and prospective registrants, typically, although perhaps also

  David McAuley (RySG):I took a look at Deloitte's answers

  David McAuley (RySG):they sounded frustrated with some of the q's

  Marc Trachtenberg:@George:  They reached out to TM Rights holders becuase
they wanted people to use the TMCH.  They had no obligatio to reach out to

  Susan Payne:This is exactly as I expected from Deloitte.  They do not
consider it to be their role and remit to educate.  where they did so, it
was to educate those who would be considered the users/customers of their

  David McAuley (RySG):agreed Kathy - some answers quite informative

  Marc Trachtenberg:The TMCH is a database not a university.

  George Kirikos:@Marc: Agree, it's to be expected, given that their mission
is to make $$$$$. That's why the hybrid model, where ICANN can look at other
stakeholders (like registrants, etc) is appealing.

  Susan Payne:+1 Marc

  Marc Trachtenberg:The obligation to communicate and educate stakeholders
regarding the TMCH  falls on ICANN, not the TMCH

  Marie Pattullo:But George, all the TMCH does is record legal TMs. So if a
"challenger" thought the recordal was wrong, he'd oppose the TM itself in
the relevant TM Registry.

  George Kirikos:@Marie: Not quite, since they also test for "use" (not just
registration). The "use" can be entirely bogus, and subject to challenge.

  Lori Schulman:Use isnt' challenged at TMCH level, is it?  

  Griffin Barnett:@George, I don't think that's quite right actually....you
can record a mark in the TMCH without proof of use, you just can't use it to
make Sunrise registrations without providing acceptable proof of use

  Lori Schulman:I would image it would have to be at either an admin hearing
or court proceeding as with all TM matters

  Mary Wong:@Griffin, yes, that is the case.

  Griffin Barnett:So I think Marie's point above is still correct

  George Kirikos:The sunrise scenario is the main one --- a registrant won't
really care if they get "notice", but can still ignore it and get the domain
they requested.

  George Kirikos:i.e. that's where the "gaming" aspect of the TMCH is
highest, for use to get first dibs during sunrise.

  Philip Corwin:On the education issue, of course the TMCH's primary focus
is going to be on making its potential customers, who are rights holders.
The venues it is active in will get some attendance from sophisticated
domain investors and their counsel, but not ordinary registrants. For
ordinary registrants, the primary factor they need to understand is whether
receipt of a Claims Notice means that continuing with a registration meamns
they will be commiting infringement.

  Marc Trachtenberg:@Phil: Agree but it is not the responsobility of the
TMCH to educate registrants - that is the job of ICANN

  Maxim Alzoba (FAITID):+1 Philip


  Kurt Pritz:My takeaway is that the TMCH exceeded expectations on
education, we expected them to be a mere repository, However, communications
on the new gTLD overall should be approved. ICANN should develop an
alternate communications plan and can ask the TMCH to undertake pertinent
(to TM holders) parts of it if that makes sense and communicate to
registrants and other through other chanels. 

  Mary Wong:On screen now - the full Deloitte response to all the questions.

  Philip Corwin:For those ordinary registrants, my own view is that the best
way to educate them is to develop some information understandable by laymen,
but not constituting legal advice, available on the ICANN website with a
link in a revised Claims Notice, supplemented by a similar information sheet
that can be distributed to registrars and made available to their customers.

  Griffin Barnett:Agree w/ Marc and Kurt

  Kurt Pritz:The costs of communications should not be passed onto TMCH

  George Kirikos:+1 Phil. 

  Marc Trachtenberg:@ Phil - Sounds like you agree with me that this is
ICANN's responsibility

  George Kirikos:@Marc: in conjunction with registrars, too.

  Marie Pattullo:Agree with Phil re the registrars; that's where registrants
go after all, and they should explain the process 

  Vaibhav Aggarwal, NCSG:So Icann can have a SPV for Educaton Purposes

  Vaibhav Aggarwal, NCSG:there it will solve the entire Saga

  Griffin Barnett:I have no problem with including a link to ICANN
educational materials in a TM Claims Notice

  Marc Trachtenberg:@ George - Are you saying registrars need to also be
educated, or that they have an obligation to ecuate registrants?

  Edward Morris:Agree with Phil

  George Kirikos:@Marc: They'd be posting the link to ICANN materials, etc.
(i.e. it should be part of their registration flow, or duplicated in their
FAQs, etc.).

  Marc Trachtenberg:@George - I have no problem with them doing that and
they should do that.  However they have no obligation to do that unless put
in the RAA

  Vaibhav Aggarwal, NCSG:@George @Marc I think it is Icann or Registrars -
isnt it the same thing ?

  Vaibhav Aggarwal, NCSG:Infact if they are doing business on registrants'
money Might as well be a part of the Education effort

  Marc Trachtenberg:@ Vaibhav - ICANN and the Registrars are not the same
thing.  They are separate legal entities in a contactualrelationship.

  Griffin Barnett:Number 5 appears directed to rights holders themselves to
challenge a rejection of their mark being recorded

  Marie Pattullo:See above - don't see how the TMCH can be somewhere to
oppose a TM.

  George Kirikos:"an objection to an accepted recordal" (vs a challenge of a
rejected recordal) for #5

  Mary Wong:@George, if something is rejected, it won't become a recordal

  Marie Pattullo:Re Mary's point, Lori explained why TM holders don't
support the searchable DB, not least because of commercial strategy of not
disclosing which TMs they have chosen to record.

  George Kirikos:@Marie: But, domain names are public. By that logic, should
the domain name database be private, lest their "commercial strategy" of not
disclosing which matching domain names they've chosen not to register become

  George Kirikos:e.g. if Microsoft owns a TM for "cortana", but hasn't
registered "cortana.TLD".......

  George Kirikos:There's a bit of a disconnect --- TM holders support
searching which other domain names a domain name registrant owns (i.e. they
generally oppose WHOIS privacy), in order to demonstrate a "pattern" of
cybersquatting, etc.

  Lori Schulman:Marie has reiterated my point. That is what I explained on
the last call.

  David McAuley (RySG):Good idea Mary

  Susan Payne:very helpful thanks Mary

  Mary Wong:We will do our best

  Marie Pattullo:Many cases, but one: you register a new TM for a product,
and at the same time record in the TM as, when you actually lauch the
product, you know where/if  to regsiter the DN. Only when the product  is
popualt would you get the baseline cybersquatter trying to register that TM
as a DN.

  Marie Pattullo:Popular. Even. Sorry.

  Maxim Alzoba (FAITID):bye all, need to attend another call

  Marc Trachtenberg:@George: There is a dicsonnect becuase as many have
pointed out, domain names are different than trademarks

  George Kirikos:That would be the middle of the night on the US East coast,
if it's in the morning in Denmark.

  Mary Wong:That's right, Kathy

  Terri Agnew:Review of all Rights Protection Mechanisms (RPMs) in all gTLDs
PDP Working Group is scheduled for Wednesday, 08 February 2017 at 18:00 UTC
for 60 minutes.

  Vaibhav Aggarwal, NCSG:Thanx Guys 

  Vaibhav Aggarwal, NCSG:Ciao

  Marie Pattullo:Thanks all.

  David McAuley (RySG):Thanks Kathy, Mary, terri and all

  George Kirikos:Bye folks.

  David McAuley (RySG):Terri, that is



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