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

Terri Agnew terri.agnew at icann.org
Wed Feb 8 22:29:41 UTC 2017

Dear All,


Please find the attendance of the call attached to this email and the MP3,
Adobe Connect recording and Adobe Connect chat below for the Review of all
Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held
on Wednesday, 08 February 2017 at 18:00 UTC. Attendance of the call is
posted on agenda wiki page: https://community.icann.org/x/Q53DAw


MP3:   https://audio.icann.org/gnso/gnso-rpm-review-08feb17-en.mp3


Adobe Connect recording:

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 08 February 2017:     

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

  Terri Agnew:agenda wiki page:

  Petter Rindforth:Hi, just a note that I have to be on another call at the
same time, so I will only follow you/participate (mutely) online this time.

  Terri Agnew:thank you for this information Petter

  George Kirikos:Hi folks.

  Maxim Alzoba (FAITID):Hello All

  Philip Corwin:hello/dialing in now

  Ivett Paulovics:Hi everyone!

  Paul Tattersfield:Hi Everyone


  Salvador Camacho:Hello everybody

  Ankur Raheja:Hello

  Martin Silva:Hi all

Steve Levy:Hello all!

  George Kirikos:Perhaps Rebecca can email her statement to the mailing

  Rebecca Tushnet:My comment--my apologies for having to leave so soon: 

  Rebecca Tushnet:the text symbols accepted into the TMCH and used to send
notifications in case of matches, or used for Sunrise registration, should
themselves be valid marks; if the symbols alone do not fully comprise a
registered mark, the registration should not be accepted into the
TMCH.]Special Trademark Issues Review TeamRecommendations, Rough consensus:
The TC Database should be required to include nationally or multinationally
registered "text mark" trademarks, fromall jurisdictions, . (Thetrademarks
to be included in the TC are text marks because "design marks"
provideprotection for letters and words only within the context of their
design or logo and theSTI was under a  mandate not to expand existing
trademark rights.)  Minority opinion of BC:  did not like this overall
provision because they wanted broader matching, but did not argue that text
+ design marks should be accepted as text entries in TMCH

  Mary Wong:Thanks, Rebecca - staff will note your comment.

  George Kirikos:Very fast typing! (or copy/paste) :-)

  Rebecca Tushnet:That last bit was a quote from the recommendations; it is
my belief that the current rules implemented by the TMCH are not consistent
with this direction

  Rebecca Tushnet:Sorry for going out of order!

  Paul keating:hi sorry for being late.

  Mary Wong:@George, if you think Rebecca types quickly (she DOES!) you
should see her live-blogging. It's awesome :)

  George Kirikos::-)

  George Kirikos:The middle column is new, I think.

  J. Scott Evans:Yes, I had seen this last week.

  Paul Tattersfield:It was in two? parts

  Paul Tattersfield:it was available in parts earlier this week

  Susan Payne:it does pulltogether information we have seen already, ie
responses from Deloitte and responses from the Registries which we have

  George Kirikos:Right, first time consolidated like this before the "live"
working group calls.

  Maxim Alzoba (FAITID):I wonder, is the situation when TMDB does not allow
Registries to connect due to technical issues is a part of RPMs (do mind
mediocre responce time of IBM service, few days without a meaningful
responce is expected)

  J. Scott Evans:I still remain unconvinced that there needs to be any
education on the Clearinghouse. 

  J. Scott Evans:In contrast, I think registrars should be educating their
customers about Sunrise and Trademark Claims.

  Mary Wong:Maybe one basic question is whether the TMCH should be educating
other parties besides rights holders.

  Kristine Dorrain - Amazon Registry Services:@Mary, for instance, what
would they educate on?

  Kristine Dorrain - Amazon Registry Services:They do educate THEIR users.

  Mary Wong:@Kristine, right - it may make a difference whether we are
talking about the existence and scope of the TMCH vs how Claims and Sunrise

  Kristine Dorrain - Amazon Registry Services:and claims and sunrise are
ICANN policies.

  George Kirikos:If challenges to TMCH recordals are allowed, then it's
prospective domain name registrants who would want to be educated (to be
able to deny someone else a sunrise registration).

  Susan Payne:I don't need to speak - completely agree with everything
J.Scott has just said, which is what I was going to say

  Paul keating:I think what is included and how the inclusion decision is
made IS an important aspect to openly disclose.

  Kristine Dorrain - Amazon Registry Services:Paul, that information is
readily available.  Is it necessary to make that information super easily
digestable for the average internet user?  If you care enough about the
detailed workings of the TMCH, you can find that.

  J. Scott Evans:Are we sure they don't alreay? One of the big issues in
educating users is to make sure there is not a  glut of information.

  J. Scott Evans:Too much information is just as confusing as no

  Mary Wong:Note that what the TMCH is, what it does, and the Guidelines it
uses for verification, are all available on the TMCH website and to some
extent on the ICANN New gTLDs microsite.

  Paul keating:j. Scott,  education does it only imply formal education.
education occurs when information is disclosed, e.g. transparency.

  Ivett Paulovics:I agree with Philip Corwin

  J. Scott Evans:@Paul. What transparency are you wanting? 

  J. Scott Evans:If you get a Claims Notice for adobe.software, the claims
notice tells you that Adobe is claiming trademark rights in Adobe.

  J. Scott Evans:If I get adobe.software in a Sunrise Period, it is clear
and transparent that I have registered my Adobe trademark registration in
the Clearinghouse and that has been verified.

  George Kirikos:Volume is a bit low for Kristine.

  Kurt Pritz:One question on education: Should there be affirmative outreach
to Trademark holders to make them aware of the TMCH, Sunrise and Claims?
I.e., it is one matter for a trademark holder to decide to not participate
in the TMCH;it is another matter that a trademark holder not participate
because they are unaware of the TMCH one-stop shop. 

  Kristine Dorrain - Amazon Registry Services:Sorry George, will speak up
next time.

  Paul keating:e.g list of registered marks having rights in sunrise.  just
the list would show the number of potentially expansive registrations such
as "the" as noted earlier this week.

  J. Scott Evans:Again, the free market allows for different versions of
these things. Hence, it is up to registries and registrars to educate their

  Paul McGrady:@Kristine - agree.  There are lots of things people need to
know to participate in commerce.  I'm not sure how this is in ICANN's remit
(or the remit of its contracted parties or vendors for that matter).  

  Marc Trachtenberg:+1 to J. Scott

  J. Scott Evans:Paul. The Trademark Community will not agree to disclose
that information. It is a trade secret.

  Paul keating:@j Scott.  neither of those have sufficient gross revenues to
embark on education.

  Paul keating:how is a list of sunrise qualified registered trademarks a
trade secret?

  George Kirikos:+1 Pauk Keating

  Kurt Pritz:I think it is ICANN's remit to ensure Trademark holders are
aware of the TMCH protections

  J. Scott Evans:@Paul. How do you know what a registry or registrars
revenues are? It seems to me that a service provider (who is  smart) will
want to ensure that their customers understand the system.

  Kristine Dorrain - Amazon Registry Services:@ PaulK, gross revenues?
Again, it's not global education.  It's a registry/registrar providing
customer service.

  George Kirikos:Not a trade secret, when anyone can run a dictionary search
to reverse engineer the entire list.

  Paul keating:I work for them

  J. Scott Evans:Agree with Kristine Dorrain.

  Marc Trachtenberg:@ George - how could you run a dictionary search that
would show what registrations are entered into the TMCH or registered in
various jurisdictions?

  Paul keating:@kristine. question is who is better positioned to educate.
I say all should.  you want only the entity with t)3 least interest and
least amount of revenue per domain.

  J. Scott Evans:@George. Yes it is. You do not know which of my 3,000 marks
I have deemed important enough to put in the TMCH. THAT tidbit is simply a
road map for abuse. We will not agree to that and we were VERY clear during
the STI and IRT that this information should not be publicly available.

  George Kirikos:@Marc: attempt to register tens of thousands of domain
names (i.e. working through a "dictionary" -- e.g. a list of all USPTO
marks, or some other list(s)), and see which generate notices.

  Kristine Dorrain - Amazon Registry Services:@PaulK, as others have pointed
out, the people with the direct relationship to their own customer should be
educating their customer.

  Paul McGrady:+1 Kristine.

  Kristine Dorrain - Amazon Registry Services:TMCH=brand owners, RgY/Rgr=RgT

  George Kirikos:@J.Scott: If I tried to register each of those 3,000 marks,
and saw which ones generated TM claims notices, it would be easy to to know
which were "deemed important enough to put in the TMCH"

  Kurt Pritz:Why are we leaving education behind - it seems like we are
right in the middle of discussion and at what point to we attempt to answer
these questions and get them behind us?

  Terri Agnew:as a reminder, to active your AC mic, top tool bar, select the
telephone icon and follow the prompts

  Paul keating:j. Scott,  I still fail to see how the list is a trade
secret.  if you have sunrise rights how can that be abused?  I want to know
the nature of words that have been reserved exclusively for sunrise.

  J. Scott Evans:@George. There is a difference btwn. handing someone a
trade secret and a third party doing a work around or reverse engineering.

  George Kirikos:"I tried to register each of these 3,000 marks" == "I tried
to register them as domain names in new gTLDs".

  Marie Pattullo:But that's not education about how the TMCH works George,
that's education about Adobe's commercial choices. Not the same thing.

  George Kirikos:@J.Scott: not a big one, when it can be automated at low
cost (for someone who cared; I personally don't care to do it, but it
wouldn't be hard).

  Paul keating:the issue is finding abuse.

  J. Scott Evans:@Paul. The mere listing of a registration in the TMCH does
not mean it will be used for a Sunrise. It might be if the TM owner wants a
sunrise registration, but they don't need to nor is it automatic.

  George Kirikos:@Marie: see what Paul Keating said.

  Paul keating:j. Scott, for me it is seeing if there is abuse.

  Terri Agnew:Ivett is now connected via telephone with audio

  George Kirikos:Just like TM owners get a list of matching domain names, to
"see if there is abuse".

  J. Scott Evans:You could put together a list of perceived "abuseive
behaviors" and ask Deloitte if there are any TMCH rregistrations that fall
within the parameters. If so, how many? That would let us have the
information. You don't need to  know specific marks to get this analysis.

  Kristine Dorrain - Amazon Registry Services:Thanks Phil!

  Paul Tattersfield:@ George - what's the current percentage of abusive
registrations in new gTLDs v. more traditional gTLDs?

  Marc Trachtenberg:@ George - so you are saying if you could game the
system and reverse engineer what marks are in the TMCH, that they wouldn't
be trade secrets?

  George Kirikos:@PaulT: depends on the definition of 'abusive'??

  George Kirikos:@Marc: I wouldn't call them trade secrets in the first
place, given they're disclosed to any potential registrant.

  Paul keating:@mary we do need further responses from them, particularly in
areas where they didn't understand - a good example of which is the
'figurative' mark that was described as design...  exec.

  George Kirikos:Here's a US definition of "trade secret"

  Mary Wong:@Paul, yes - staff will compile a list based on what Deloitte
said they didn't understand, plus WG members' suggestions

  George Kirikos:Seems it fails under (A), given any prospective registrant
can determine the information.

  Paul keating:j. Scott and Paul, I still fail to see a trade secret here.
why do I need to rely upon Deloitte?  

  J. Scott Evans:The trade secret isn't the individual registration listed
in the TMCH, but rather, the report showing which marks a trademark owner
with multiple marks has chosen to put into the Clearinghouse.

  Marc Trachtenberg:@ George - the entire list of all trademarks registered
by a particular company is not disclosed to a potential registrant in the
claims notice

  Kathy Kleiman:To the discussion above, one of the questions above is
Category 1, Question, 1, Section iii: Is the TMCH clearly communicating...
options for third parties who may have challenges to or questions about
recordals in the TMCH?   There should be a way to address this question... 

  George Kirikos:@Marc: It's disclosed via a public US database, and can be
easily compared.

  George Kirikos:(some foreign jurisdictions don't disclose, I know...)

  Elizabeth Featherman:Sorry, I have to run to a meeting. 

  Marc Trachtenberg:@ George - the worldwide list of all TM registrations is
not disclosed in a public US database

  Mary Wong:@Kathy, we have a note on that which says that as the TMCH
Database is not publicly searchable, it may be impossible for third parties
to even know what to challenge.

  Maxim Alzoba (FAITID):@George, some of those wants money :)

  Susan Payne:@George the whole point is that the confidential part is the
tM owner's strategy - which of their marks they decide to pt int he TMCH and
which they don't.  The marks themselves are all on public TM office
databases around the world.  the strategy of which they put in the TMCH
should not be

  George Kirikos:Adobe doesn't seem to keep its TMs much of a secret, given
they post the list on their website:

  George Kirikos:(although, that list isn't complete)

  Paul McGrady:RE: "1 year from now", we are just applying ICANN calendar
calculation rules, e.g. This is the first round of what is to be an ongoing
process forthe introduction of new TLDs = at least an 6 year gap.  :)

  Marie Pattullo:Agree with Susan.

  Kristine Dorrain - Amazon Registry Services:I'm  having a hard time
connecting the chat discussion about making the list of marks in the TMCH
available to anyone (apparently for the purpose of policing the entries for
abuse (as subjectively determined by a 3P?)) with the discussion about

  J. Scott Evans:Oh George. You are just missing my point. None of our
trademarks are secret, by virture of the fact they are trademarks. However,
which of those marks publicly listed that are in the TMCH, is not a public

  Marie Pattullo:And agree with Kristine too!

  George Kirikos:@Susan: it's easy to infer their strategy, though. Not
being in the TMCH doesn't act as some waiver of the TM owner's rights.

  Paul keating:@ Mary Phil, per j Scott suggestion pls ask Deloitte for list
of all registrations in tmch with sunrise preference and which are
dictionary terms.

  Kurt Pritz:Is question #4 where we would discuss "proof of use" - its
efficacy, importance, cost, benefits, etc?

  J. Scott Evans:@Paul. Yes, but enforcing trademark  rights is an expensive

  Susan Payne:@George of course not I did not suggest anything of the sort

  George Kirikos:@PaulK: @ Mary: plus all acronyms less than 5 characters.

  Paul keating:Deloitte should of course NOT identify the trademark owner.
but should list if there are multiple entries for any given term.

  Paul McGrady:@Paul K - none of the numbers in our social security numbers
are secret, but I suspect we would all resist not only posting the
individual numbers in order in the chat, but posting the individual numbers
at all.

  Paul keating:@jscott, enforcing any right is expensive.  missing a
valuable generic/descriptive domain registration is also expensive.

  Kathy Kleiman:.. and on the last call too, Phil.

  Vinzenz Heussler:the link leading to the TMCH guidelines doesn't work

  Kathy Kleiman:People seemed pretty satisfied.

  Mary Wong:@Vincenz, we will check and fix the link, thank you for spotting

  J. Scott Evans:@Paul. What makes you thing you or anyone deserves to use a
word it believes is generic and I have trademarked?

m8MPJa22a0NSZ9VXXl0Y6VOrFa--SRZrkqYQ&e=   "A register that does not
accurately reflect marks in use in commerce in the United States for the
goods/services identified in registrations imposes costs and burdens on the

  Paul keating:@paul G, agreed but let's drop the trade secret label and
agree that we can protect against inappropriate disclosure.  the underlying
issue is important.

  George Kirikos:@JScott: That's like suggesting a TM provides a monopoly.
No one needs to "deserve" it; they have a right to use terms in a
non-infringing manner.

  Marie Pattullo:And what happens if a string of letters is fanciful in
language A, a trade mark in language B, and against public policy rules in
language 3?

  George Kirikos:+1 Kathy.

  J. Scott Evans:George. A trademark is a monopoly. See McCarthy on
Trademarks and Unfair Competition.

  George Kirikos:lol I just said the word "Adobe", J. Scott. Are you saying
I can't use that word now? :-)

  Paul keating:@phil,  there should be a mechanism set out, even if it is
nothing but an agreement as to jurisdiction.

  George Kirikos:I can say "Adobe products are great." Did you stop me from
saying that? :-)

  J. Scott Evans:@Kathy. Shouldn't we look at the TMCH website and see if
this informaiton is availabe and, if not, then asked the question.

  George Kirikos:Or, I designed my house in the adobe style of Mexico.....

  Kristine Dorrain - Amazon Registry Services:Here you go, Kathy...

  J. Scott Evans:George. You clearly do not understand trademark law.

  Marie Pattullo:+ 1 to J.Scott...

  George Kirikos:@JScott: I do, and also its limitations.

  Kristine Dorrain - Amazon Registry Services:+1 J. Scott

  Griffin Barnett:+1

  Griffin Barnett:(to J. Scott)

  Susan Payne:+1 J Scott

  Kathy Kleiman:Tx Kristine; and fair enough J. Scott!

  George Kirikos:Trademarks are not monopolies:

  J. Scott Evans:George. A trademark is by its very essence a monopoly for
the goods and services for which is registered.

  Kathy Kleiman:@Mary: proposal again to clarify our question: relocate
Category 1, Question, 1, Section iii to Category 2, Question 2. These are
similar questions - challenges by TM owners and third parties. 

  George Kirikos:J. Scott: you're adding a limitation there, "for the goods
and services for which it is registered".

  Paul McGrady:@George K - I'm unawaree of any house built out of domain
names, so your example seems unrelated to the conversation.  

  Mary Wong:@George, I thought Kathy had wanted it moved to Cat 2 Q4 or 5,
not Q2

  George Kirikos:That's all I'm saying, that that limitation exists. One
doesn't have a limitation over the use of the word itself. Scroll up.

  George Kirikos:@Paul: I wan't talking about domain names, I was talking
about the use of the word "adobe", which Adobe Corporation doesn't
exclusively control in the English language.

  Paul McGrady:@George K - oh, OK, but the rest of us are talking about
domain names, not home construction.

  George Kirikos:(i.e. they might have exclusive use of it in the realm of
software, but not in the English language for non-infringing uses)

  Paul keating:@phil,  Deloitte should poll the various public registries to
find if cancellation occurred.

  Paul keating:@phil, API access is available.

  George Kirikos:@Paul: I can certainly find a non-infringing use for
Adobe.houses, etc., if you want to talk about domains. Why should Adobe Corp
get first dibs on that?

  Greg Shatan:Good point, Susan.

  George Kirikos:+1 Kathy

  J. Scott Evans:Correction: Cancelled registration. REDSKINS remains a
valid common law mark.

  Paul keating:@ Phil, cancellation includes failure to file section 8 with
USPTO.  they have a limited number of entries and know the jurisdiction of
registration.  they can easily verify.

  Marc Trachtenberg:@Paul - you are kidding, right?  First, there is not API
access to every Trademark Office registry.  Regardless, this is a gigantic
burden on the TMCH and not possible from a practical perspective.  It would
also require the cooperation of the trademark offices

  George Kirikos:REDSKINS is probably still a registered mark, outside the

  Paul McGrady:@George K - I am unaware of a <.houses> top level domain name

  Paul keating:jscott, perhaps but no longer able to benefit from the TMCH

  George Kirikos:Yep, Washington Redskins in Canada, TMA251755

  Paul Tattersfield:.eco would be a better example that could coexist 

  George Kirikos:@PaulM: nitpicking typos. I meant ".house"

  Paul keating:@mark,  I'm not kidding.  do you know the source
registrations?  confirmation is a simple process as it is an exact match and
has reg number.

  Kristine Dorrain - Amazon Registry Services:with a valid CA mark,  then
the redskins could keep their mark in the TMCH...not sure what the problem
is.  US TM DB is not conclusive.

  Paul keating:certainly not more silly than domain registrants should
conduct a trademark search before registration of a domain.

  George Kirikos:"REDSKINS" in the Benelux and other countries, see TMView.

  Terri Agnew:next call: Review of all Rights Protection Mechanisms (RPMs)
in all gTLDs PDP Working Group is scheduled for Wednesday, 15 February 2017
at 17:00 UTC for 60 minutes

  Kathy Kleiman:I'll be in Iceland too

  Terri Agnew:@Phil and Kathy apology is noted

  Kathy Kleiman:The Slants

  George Kirikos:An interesting case, for sure.

  Paul keating:@phil, yes but raises the issue of a Tm being cancelled in
one j but not others.

  J. Scott Evans:adious

  J. Scott Evans:cia

  J. Scott Evans:ciao

  Maxim Alzoba (FAITID):bye all

  Vaibhav Aggarwal, NCSG:Thanks Phil & kathy for leading this WG. It is
wonderful to work with gr8 leadership

  Paul keating:thank you all for the discussions.

  Kathy Kleiman:Tx Phil!

  Vaibhav Aggarwal, NCSG:BY Bye

  Steve Levy:Ciao

  Salvador Camacho:Bye!

  Martin Silva:By all!

  Paul Tattersfield:thanks bye all


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