[gnso-rpm-wg] Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group
terri.agnew at icann.org
Thu May 18 00:01:14 UTC 2017
Please find the attendance of the call attached to this email. The MP3,
Adobe Connect recording and Adobe Connect chat below for the Review of all
Rights Protection Mechanisms (RPMs) PDP Working Group call held Wednesday,
17 May 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki
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
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Wiki page: https://community.icann.org/x/wCWAAw
Adobe Connect chat transcript for 17 May 2017:
Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms
(RPMs) in all gTLDs PDP Working Group call on Wednesday, 17 May 2017 at
17:00 UTC for 90 minute duration.
Terri Agnew:agenda wiki page:
George Kirikos:Hi folks.
Philip Corwin:Hello all. Waiting on operator
J. Scott Evans:I dialing.
George Kirikos:It took several minutes for an operator to answer, and I
called around 12:45 pm.
George Kirikos:(15 minutes early)
Terri Agnew:alerted op
Maxim Alzoba (FAITID):Hello All
Steve Levy:G'day all
Philip Corwin:Safe travel to all those WG members heading to INTA Annual
in Bacelona. I arrive Friday and look forward to seeing some of you there.
Maxim Alzoba (FAITID):is it still cold there?
Philip Corwin:I don't want to hog the spotlight. All the co-chairs should
have their 90 minutes of fame, or infamy, whatever the case may be ;-)
Philip Corwin:@Maxim--weather forecast for BCN quite nice
George Kirikos:Are some of the past data requests forthcoming? (e.g. top
500 matching terms in the TMCH, via The Analysis Group, etc.)
George Kirikos:*6 to mute/unmute
Mary Wong:@George, I think the Analysis Group is working on these requests
Amr Elsadr:Apologies. Trying to fix my audio.
Maxim Alzoba (FAITID)::( last meeting it was a flight day for me
Mary Wong:Claudio is on
Mary Wong:The table being displayed is an update from the one last
discussed. The only updates made were to include Claudio's proposal and
George Kirikos:Country names?
George Kirikos:(did I hear that correctly?)
Philip Corwin:Claudio did mention country names
Mary Wong:However, his proposal is limited to GIs only, I believe
George Kirikos:Which country names collide with GIs?
Kristine Dorrain - Amazon Registry Services:Claudio, if a GI is a
registered TM, it can enter the TMCH...are you proposing some ADDITIONAL
protection for GIs?
Mary Wong:@Kristine, isn't the challenge here that we have GIs currently
in the TMCH, not under the "registered TM" category but under the "mark
protected by statute or treaty" category (for which the TMCH does not
investigate whether there is a corresponding trademark)>
Greg Shatan:The Comite Interprofessionel du vin de Champagne controls the
George Kirikos:(GIs that aren't registered TMs, presumably)
George Kirikos:Champagne is a brand (registered TM) of mangos, by the way,
in the USA. :-)
Mary Wong:Claudio's proposal means that sui generis protection would be
Kristine Dorrain - Amazon Registry Services:@Mary, that seems like a
Kristine Dorrain - Amazon Registry Services:or slippery
Kristine Dorrain - Amazon Registry Services:I
Maxim Alzoba (FAITID):@Greg, do you suggest meeting of two sub groups :
claims + sunrise?
Susan Payne:@Greg - I think your comments about wghere this is discussed
go to the heart of how the work will be carried out going forward. I'm
certainly unclear whether the Claims and Sunrise Subs have a future role
once they have finished their current task of reviewing charter Qs,
identifying data needs and proposing work flow.
George Kirikos:Lots of audio noise.
Mary Wong:Should the first question be whether GIs should be included in a
RPM, and, if so, whether that should be Sunrise, Claims or both?
Greg Shatan:FIAT is a registered trademark....
George Kirikos:Could ACPA actions for cybersquatting be brought on the
basis of a GI that is not a registered TM? (methinks not, but curious if
anyone knows of a case....)
Mary Wong:@George, I don't know of a case but ACPA is US law so presumably
it would only apply to those GIs (if any) that are protected under US law
Greg Shatan:It is in our charter, as Claudio points out....
George Kirikos:+1 Jeremy
Mark Massey:+1 Jeremy
Susan Payne:I don't agree with the Jeremy that it is out of scope. I'm not
arguing in support of GI protection
George Kirikos:X if we disagree?
George Kirikos:And X if we disagree, to vote?
George Kirikos:Examined, (but ultimately rejected).....could still show we
considered/reviewed GIs (i.e. shows up as "PDP decided not to expand
protection to GIs"....)
Kristine Dorrain - Amazon Registry Services:Claudio, how is the proposal
to add non-registered GIs different from expanding the TMCH to common law
George Kirikos:(which might be useful, to ensure that no future PDP needs
to review the issue)
Paul McGrady\:@Claudio - kicking the can on an issue that has already been
talked to death is not a good use of resources.
Kathy Kleiman:Claudio: could you summarize your revised proposal in a
George Kirikos:Very low volume.
Philip Corwin:While I am somewhat agnostic on GIs, I am adamantly against
creation of a database separate from the TMCH
Claudio:@Kathy, for the WG to consider how GIs should be protected in new
Mary Wong:Although this may be jumping the gun - staff feels oblged to
note that it is open to this WG to recommend that GIs (and possibly other
source identifers that are not also registered TMs) - be considered for
rights protection, possibly via a different mechanism TBD.
Claudio:consistent with the Charter provision "Examine the protection of
country names and geographical indications, and generally of indications of
source, within the RPMs."
Paul McGrady\:@Mary - it is also open to interested individuals to start a
PDP in the ordinary course
Claudio:@Paul, this is the RPM working group - why isn't this the right
group to consider this topic?
Mark Massey:Kathy +1
Marie Pattullo:GIs are a form of IPR in the EU, so not akin to other
Paul McGrady\:@Claudio - because it will slow this process down to a
crawl. It took 4 weeks just to get your proposal.
Jon Nevett:thinking about the .wine experience and the European
governments, some group needs to deal with this at some point in detail
George Kirikos:As Claudio mentions, it's in the charter, but ultimately
it's going to go nowhere, so......it should probably be reflected in our
Claudio:Paul, so we don't have enough time to consider it is your reason?
Paul McGrady\:@Claudio, my reasons have been spoken and written repeatedly
on these calls and on the various lists.
Kathy Kleiman:@Claudio: there are provisions for other databases to be
kept and maintained separately by the Trademark Clearinghosue
Phil Marano:Won't this topic just come up again anyway in connection with
the Draft Report and public comments on it?
Claudio:@Kathy, I agree
Lori Schulman:agree. we need a GI WG to look at the panoply of GI issues
in the DNS
George Kirikos:@Phil: right, I raised my hand to say the exact same thing.
George Kirikos:We don't want it to be raised elsewhere, otherwise it'll
keep coming up, and volunteer fatigue sets in, and opponents won't always
Claudio:This is the RPM WG, so this is the right group to consider whether
a type of IP should be protected
Mary Wong:All, from the staff perspective - it may be helpful to note in
our Initial Report that the question of GIs (and potentially other types of
source identifiers) was raised but no recommendation was developed.
Mary Wong:Public comments (as Phil M noted) may then provide us and the
GNSO Council with feedback on how that might best be tackled.
J. Scott Evans:can everyone clear the votes
Lori Schulman:agree with Mary. we need to note that GI issue raised and
outcome of proposal.
George Kirikos:Far too many false positives, though, especially for short
Louise Marie Hurel:+1 Rebecca
Mark Massey:+1 Rebecca
Vinzenz Heussler:+ 1 Rebecca
Maxim Alzoba (FAITID):Also Registries ...are they to pay to ICANN as for
claim registrations in those numerous occasions?
Maxim Alzoba (FAITID):I do not think we need to create rights which do not
exist in real world
George Kirikos:Also, from an implementation basis, beyond my prior
comments, one might need to give a *different* TM Claims notice wording for
these non-identical matches.
Maxim Alzoba (FAITID):single letter TMCH entries ... do they have rights
for almost all symbols?
Maxim Alzoba (FAITID):two chars
George Kirikos:e.g. someone wants to register "CARS", and gets a notice
"Your domain might be infringing on the Computer Associates TM for
George Kirikos:(claims notice might be different than if someone wanted to
Maxim Alzoba (FAITID):or the infamous "the" TMCH entry ... will it lead to
the* wildcard situation?
Susan Payne:yes, that was my intention Phil
George Kirikos:At least with the TM+50, there have been cases of actual
cybersquatting with those variations.
George Kirikos:If it applied to Legacy, that implies that Claims Notices
would be perpetual, instead of 90 days.
Kathy Kleiman:Enom -> Venom (discussed extensively in the STI)
Philip Corwin:@George--agree that applying Claims Notices to legacy would
imply perpetual notices
Maxim Alzoba (FAITID):creating wildcard like trigger needs an answer - do
those TM owners have the right for the same in Real World?
Philip Corwin:Based on Deloitte data there has been very little use of
Rebecca L Tushnet:Before we talk about matching rules shouldn't we
establish the existence of a problem to be solved?
Philip Corwin:GM/froGMan - I think the "dumb matches" will be endless
Amr Elsadr:Non-exact matches were considered in the AG revised report
regarding omitting ampersands, replacing ampersands with "and", replacing @
with "at", removing all spaces and other non-allowed characters, replacing
all spaces and other non-allowed characters with hyphens
Philip Corwin:Not arguing for TM+goods/service, but at least that relates
to the TM. But TM anywhere in the string gets wildly afield of the scope of
Maxim Alzoba (FAITID):or 'est' with west, rest, best
Greg Shatan:I suggest looking at UDRP and trademark infringement
litigation, also typosquatting, etc. if you want to establish the issue. I
think the issue is clear enough we can take "judicial notice" of it.
Mary Wong:One more document I forgot to mention - ICANN Explanatory
Memorandum from Sept 2012 on this question, noting that it will be important
that the TMCH not be asked to exercise subjective judgment (e.g. for the
so-called "dumb matches" and false positives Greg, Phil and others
Steve Levy:Need to jump to the audio-only line...
Greg Shatan:I'm not suggesting subjective judgment, only more carefully
Mary Wong:@Greg, yes - just noting some rationale that was provided for
the current rule.
Rebecca L Tushnet:Greg, there's certainly cybersquatting--but I would like
to see what indication we have that expanding the match criteria would
matter because many marks are not in the TMCH.
Mark Massey:This degenerates to a problem in semantic analysis. There is
ALOT of technology that could be potentially employed here. But doing this
right would require a deep beifing of this technology.
Jeremy Malcolm:Agree with Kathy
Mark Massey:Agree with Kathy
khouloud Dawahi:i agree with kathy as well.
Greg Shatan:Rebecca, there will always be those who don't take advantage
of the TMCH. I don't think that should have an effect on policy relating to
those who do.
Jon Nevett:Practical question -- do we think that we would get sufficient
consensus of the community on extending past exact match? If not, let's not
kick the can down ther road on this issue either for all the reasons Paul
McGrady argued on the GI issue.
Greg Shatan:That's already the case even with exact match.
Jeremy Malcolm:+1 Jon
Mark Massey:+1 on public database Greg
Marie Pattullo:Disagree on public DB as discussed at length on the lists.
Kristine Dorrain - Amazon Registry Services:+ 1 Jon
Mark Massey:Just kill the idea of expanded matching - it is a complexity
reltive to the basic purpose of the TMCH
Maxim Alzoba (FAITID):ending up with 100% of registrations causing notices
... is not better than having zero number of notices
Kathy Kleiman:@Phil: who matches, who monitors?
George Kirikos:If the TMCH is public, good faith purchasers could check
Kristine Dorrain - Amazon Registry Services:+1 Maxim
Marie Pattullo:Was never the purpose of the DB, George, as again already
Kristine Dorrain - Amazon Registry Services:@George most people who just
want to buy a domain name for their lawn mowing service are not going to
search a db any more than the USPTO
George Kirikos:Gentleman.tld === likely matches "GE", "NTL", "MAN", and
other TMCH claims, just for 1 domain.
Kathy Kleiman:Agree with Phil re: the matches problem
Mark Massey:Agree with Phil and Kathy
Marie Pattullo:+1 Kristine
Jon Nevett:@Phil -- same issues for mark + keyword -- ING -- walking,
Mary Wong:Would it be worth distingushing between plurals, typos,
mark+keyword and "mark contains"?
George Kirikos:I think expanded matches should only be triggered for some
of the most famous marks, e.g. Verizon, Google, Yahoo, Lego, i.e. ones that
get lots and lots of UDRPs/cybersquatting.
Kristine Dorrain - Amazon Registry Services:@ George, now we're back to
the fight over whose mark is famous enough
George Kirikos:i.e. instead of allowing ALL TMCH marks to trigger it,
auction 50 or 100 slots, and those top 50 or 100 brands get the right to the
George Kirikos:@Kristine: correct. And some TM folks want to avoid that
George Kirikos:But, in reality, some marks are more famous than others.
George Kirikos:Or get more cybersquatting, or more damage (e.g. banks).
George Kirikos:So, limit it to 50 or 100 "critical" cases (e.g Paypal).
Susan Payne:@Jon, good point, that is another dumb match, but I think you
can find a way to identify keywords that have a direct relevance to the TM
Louise Marie Hurel:I don't agree we that should go for famous as criteria
Marie Pattullo:Damage is relative, and consumer damage/confusion should
not be forgotten.
Susan Payne:+1 Michael
Amr Elsadr:@Michael: I need to double check, but I believe that finding in
the AG revised report might have been specific to effectiveness of the
Claims Notice in deterring bad-faith registration attempts.
Philip Corwin:As I understand it, 'mark contained' generation of claims
notice would be an automated process. Only way to avoid
dumb/crazy/irrelevant matches would be to develop software that would pare
the matches only to words (containing the mark) that related to the goods &
services associated with the trademark. Who would develop that, and would it
Amr Elsadr:And abandoment rate.
George Kirikos:It has to be "exact match+", if you already registered
every exact mark yourself. :-)
khouloud Dawahi:yes I agree with georges !+1
Grace M:True @ Luoise Marie, famous is relative to many factors
George Kirikos:e.g. if Google registered every Google.TLD, of course all
their cases will be Google+something.
Rebecca L Tushnet:"Get the geeks on it" is not a compelling plan--that's
very different from "it's a covered good or service," which at least has a
limit we can understand.
Susan Payne:Analysis Group also did not actually conduct any cost analysis
at all, so had no data on which to base their cost-based conclusion. Nor
did AG consider mark + indistry keyword such as the apple-computer example
despite acknowledging that it was a very relevant assessment for them to do
George Kirikos:You still get matches for long domains, e.g. someone
registers "GeorgeCloud.xyz", gets a TM notice for (1) GE, (2) George AND (3)
George Kirikos:(and probably other TM terms, too)
Greg Shatan:All still dumb matches.
Cyntia King:I suggest that the TMCH charteer should be limitd & that the
TMCH should provide the full range of potential matches. Other entities (or
the TMCH administrator) could elect to provide services to manipulate the
results (likely for a fee) based on a TM ownrs needs (e.g. how many TMs do
they own, known confilcts, regional application of marks, etc.)
George Kirikos:@Greg: how about MicrosoftGoogle.xyz -- you'd still get 2
Greg Shatan:@Susan, should it be called "Speculation and Conjecture Group"
George Kirikos:Or, MicrosoftCloud.xyz (since "CLOUD" is in the TMCH).
George Kirikos:If you want to "enhance notice", make the TMCH public.
Philip Corwin:Noting that if GM is in the TMCH and therefore generates a
claims notioce for frogman, or if GE is registered and registers a notice
for pageant, neither frogman or pageant would be considered identical or
confusingly similar for UDRP/URS purposes.
Mark Massey:If the CLearing House was open this would be a non-issue. A
reasonable human correlates this kind of info very quickly.
George Kirikos:@Kathy: there were multiple points in the proposal (scroll
to the bottom of page 7 on the screen).
Philip Corwin:So what I am saying is that these preventative RPMs should
bear some relationship to the curative rights protections available if the
domain registration proceeds
khouloud Dawahi:yes the very famous criterion is very subjective and
discretionary (inspired from the usa trademark law) however without it we
will be in a swamp
Marie Pattullo:Restricting to so-called "famous" marks would serve no
purpose except to discriminate against owners of perfectly legitimate, yet
smaller (again, a subjective term) TM, for no reason.
George Kirikos:@Khouloud: yes, that's why an auction approach, limiting to
50 or 100 critical brands, would be more defensible (e.g. PayPal, American
Express, other payment services, Google, Microsoft, and a few others who
spend a lot on UDRPs).
Maxim Alzoba (FAITID):I wonder what happens to
Rebecca L Tushnet:On mushing together: consider the unfortunate URL of
this Chinese restaurant: handynasty.com
Michael Graham:@Jeremy: I'm not proposing allowing Deloitte discretion --
but a defined rule.
Paul McGrady\:Can think of all kinds of good reasons to register
apple.farms, but very few for applycomputer.farms...
George Kirikos:@Rebecca: Indeed, and with IDNs, where the term is
XN--somethingorother, there can be a LOT of false positives.
Greg Shatan:Not suggesting discretion. Han Dynasty's domain would not
come up in a rules-based matching system.
George Kirikos:(since the something ot other after XN-- in an IDN can be
relatively "random" ASCII)
Greg Shatan:NB: They deliver to my apartment, but I prefer some of the
other Chinese restaurants in the area.....
Mark Massey:disagree with Susan
Mark Massey:What about other nations etc.
Paul McGrady\:Good point Brian
George Kirikos:GM, "MAGMA.TLD" too.
Susan Payne:thanks Brian, really good point
Greg Shatan:frogman/GM = dumb match.
Mark Massey:+1 Greg
khouloud Dawahi:@george yes I totally agree with you an auction approach
limitin g to 50or 100would be better
George Kirikos:@Greg: but, how do you define what is a "smart" match?
Mary Wong:Note - the Claims Service has two parts: pre-registration notice
to the potential registrant, and post-registration notice to the
rights-holder. In reviiewing this proposal, the WG may wish to consider if
it is concerned with both aspects, or just with the Notice of Registered
Name to the rights-holder.
Greg Shatan:A limited list of rules.
George Kirikos:i.e. a mechanical rule that only increased the TM claims
notices from 30% of the time to 31% might be OK. One that takes it from 30%
to 90% -- not ok.
Paul McGrady\:@Phil - nor can I imagine a potential registration of
FROGMAN being deterred by a notice about the GM's mark
Rebecca L Tushnet:+1 George K
Kathy Kleiman:Right, this is exactly what the URS was intended for -
George Kirikos:Only a simulation would reveal what would happen.
Cyntia King:Generating data set - TMCH job. Sorting data set - TM owner
job (which could be accomplished in-house or by outside, paid service).
Marie Pattullo:+ 1 Paul
Griffin Barnett:+1 Paul....the language of the notice should be sufficient
to explain this
Kathy Kleiman:those cases that are "slam dunk abuse"
George Kirikos:(and one can simulate it, by getting a list of all
George Kirikos:Simulate it against the .com zone file, too.
George Kirikos:I imagine that would be fun.
Kathy Kleiman:Agree w/ Phil re: concerns he raised.
Kathy Kleiman:Well reasoned
Michael Graham:@J Scott -- Could I propose that I revise language in
proposal to address some of the issues raised?
George Kirikos: Silicon Valley joke there. ;-) via HBO
not-hotdog-app-download if you've not seen the show.
Michael Graham:@Greg -- Too much Silicon Valley!!!!
George Kirikos:It actually *is* rocket science.
Kathy Kleiman:this is exactly what the URS was created for.
George Kirikos:To limit false posititves is hard.
Mark Carvell UK GAC rep:GM is the two letter country code for The Gambia -
thought I'd just mention that....! Relates to a different dialogue....
Greg Shatan:GE is Georgia....
George Kirikos:Consider how often false positives happen with automated
censoring of comments on WordPress blogs, or YouTube, Facebook, etc.
Philip Corwin:@Mark -- NO ;-)
Michael Graham:Also UDRP incorporates a Bad Faith Use requirement that
further hinders applicants.
Terri Agnew:Next call: Review of all Rights Protection Mechanisms (RPMs)
in all gTLDs PDP Working Group is scheduled for Wednesday, 31 May 2017 at
16:00 UTC for 90 minute duration.
Amr Elsadr:No, J. Scott.
George Kirikos:2 weeks.
Greg Shatan:I'd like to suggest a refined version of Claudio's proposal as
Philip Corwin:No call next week due to INTA
Greg Shatan:Agreement on one call??!!
Michael Graham:I will work on a draft for Monday after INTA.
George Kirikos:Productive call. Kudos, folks!
George Kirikos:Bye everyone.
Paul McGrady\:See many of you in Barcelona!
Michael Graham:Thanks all!
Jay Chapman:thanks all
Mark Massey:Bye all!
Mary Wong:Thanks everyone, and J. Scott!
khouloud Dawahi:thank you all
Amr Elsadr:Thanks all. Bye.
Susan Payne:thanks J Scott
David McAuley:thanks all, bye
J. Scott Evans:ciao
Monica Mitchell:thank you all
Greg Shatan:Bye all!
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