[GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Wed Sep 11 17:30:15 UTC 2019

Comments in line below.

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Lori Schulman <lschulman at inta.org>
Date: Wednesday, September 11, 2019 at 6:07 PM
To: Zak Muscovitch <zak at muscovitch.com>, "julie.hedlund at icann.org" <julie.hedlund at icann.org>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Dear All,

We have had some side line conversations regarding the proposal below.  I informed Zak separately and wish to conveny that this is where the IPC currently stands:

1.       As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH. – IPC agrees. 

2.       As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH.  – IPC agrees. 

3.       Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority. – The IPC disagrees as this would undermine the purpose of registering with the TMCH to begin with. 

PRK:       This appears to have been suggested as a compromise as I understand that the current rules prohibit the registration of such marks.   As such, and if my understanding is correct as noted, then absent the compromise I would seek to support the current rules and remove any improperly included marks. 

4.       The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. – The IPC is willing to discuss this proposal.  We agree in principle that language that is not well understood or could frighten an unsophisticated applicant should be revised.  However, the notice should not be providing legal advice or any advice about effects of certain types of trademark registrations.

PRK:       I agree that the notice should not provide legal advice.  To that end, it is consistent that it not be read to over legitimize the validity of the asserted trademark.  It should only state it has been registered and state the jurisdiction of registration.

5.       Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH. – The IPC does not agree as this outcome is contrary to trademark law. 

In general, it appears that Greg’s proposal addresses 3 and 5.  To what degree to people object?  We see the proposal as creating a solution for a small problem with significant, unintended consequences.

There are objections procedures for domains registered during Sunrise period and we believe that these procedures should be highlighted as remedy for the concerns that registrant’s have regarding this issue.

Thank you for opening the dialog and we look forward to more discussion where we can find compromise.

Lori S. Schulman

Senior Director, Internet Policy

International Trademark Association (INTA)

+1-202-704-0408, Skype: lsschulman

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak Muscovitch
Sent: Tuesday, September 10, 2019 1:36 PM
To: Zak Muscovitch <zak at muscovitch.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
Subject: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Dear Co-chairs, Staff and WG members, please see below a revised proposal regarding Question #7 (TMCH/Design Marks):

1.       As per Greg’s proposal, where a design mark with words disclaims >>all<< words, it does not enter TMCH.

2.       As per Greg’s proposal, where a design mark with words disclaims >>some but not all words<< it does enters the TMCH.  

3.       Where a design mark with words is permitted into the TMCH, it entitles the mark holder to a Claims Notice, but not a Sunrise priority.

4.       The Claims Notice would have to specify inter alia, that it is notifying prospective registrants of someone claiming to have rights corresponding to the domain name, but that not in all cases does having a design mark confer rights over the words inside, or something to that effect. 

5.       Design marks consisting of a single letter, e.g. a stylized or graphical “i”, whether disclaimed or not, do not go into the TMCH.

This proposal has been circulated amongst some stakeholders for feedback (with mixed results), however I am now sharing it with the entire Working Group.

Zak Muscovitch

General Counsel, ICA

Muscovitch Law P.C.

zak at muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/

https://www.muscovitch.com/

https://dnattorney.com/

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak Muscovitch
Sent: September-04-19 1:07 PM
To: Lori Schulman <lschulman at inta.org>; Corwin, Philip <pcorwin at verisign.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Attached is the redline version. Apologies for only sending it now. 

Zak

Muscovitch Law P.C.

zak at muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/

https://www.muscovitch.com/

https://dnattorney.com/

From: Lori Schulman <lschulman at inta.org> 
Sent: September-04-19 12:48 PM
To: Corwin, Philip <pcorwin at verisign.com>; Zak Muscovitch <zak at muscovitch.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Hi,

Support Phil’s suggestion and a post call redline per my earlier message.

Thank you.

Lori S. Schulman

Senior Director, Internet Policy

International Trademark Association (INTA)

+1-202-704-0408, Skype: lsschulman

From: Corwin, Philip <pcorwin at verisign.com> 
Sent: Wednesday, September 04, 2019 12:39 PM
To: zak at muscovitch.com; Lori Schulman <lschulman at inta.org>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Zak:

As we reviewed all the proposals last week, I would suggest that you focus in your presentation on what changes you and Kathy have made to the original and the rationale for doing so.

Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

"Luck is the residue of design" -- Branch Rickey

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak Muscovitch
Sent: Wednesday, September 04, 2019 12:36 PM
To: Lori Schulman <lschulman at inta.org>; Julie Hedlund <julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Lori, I'm trying to get one together, not sure I will be able to unfortunately. 

Muscovitch Law P.C.

zak at muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/

https://www.muscovitch.com/

https://dnattorney.com/

From: Lori Schulman <lschulman at inta.org> 
Sent: September-04-19 12:08 PM
To: Zak Muscovitch <zak at muscovitch.com>; Julie Hedlund <julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Hi,

Thank you for this. As this is so close to the call, do you have a redline so we can compare the changes quickly? It would be most helpful to be prepared on a quick notice.

Lori S. Schulman

Senior Director, Internet Policy

International Trademark Association (INTA)

+1-202-704-0408, Skype: lsschulman

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak Muscovitch
Sent: Wednesday, September 04, 2019 11:45 AM
To: Julie Hedlund <julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Dear Co-Chairs, Working Group Members, and Staff,

Further to the call last week and further to the below Agenda for today's call, please see the attached updated proposal re: Question #7, from Kathy Kleiman and myself. 

You will note therein, that the revised proposal contains some revised language, some revised rationale, and a potential alternative to the existing rule for discussion purposes.

Zak Muscovitch

General Counsel, ICA

Muscovitch Law P.C.

zak at muscovitch.com

1-866-654-7129

416-924-5084

http://www.trademarks-canada.com/

https://www.muscovitch.com/

https://dnattorney.com/

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Julie Hedlund
Sent: September-03-19 1:02 PM
To: gnso-rpm-wg at icann.org
Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September 17:00-18:30 UTC

Dear RPM WG members, 

Please find the agenda and materials for the WG meeting tomorrow, Wednesday, 04 September at 17:00-18:30 UTC. 

Please note the following actions captured from last week's meeting and sent to the list last week:

Actions:

1. Revision of Existing Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members who had previously submitted proposals relating to the Open TMCH Questions (see attached) may offer revised proposals that take into consideration the work completed by the WG since the proposals were originally submitted.
2. New Proposals: For consideration at the meeting on Wednesday, 04 September, RPM PDP WG members may submit new proposals relating to Charter questions 7, 8, and 10.

Please send suggested revisions or new proposals by COB today, 03 September, if at all possible.

Proposed Agenda:

1. Review Agenda and Updates to Statements of Interest
2. Proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): 

* Question 7 - Proposals from Kathy Kleiman and Greg Shatan
* Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi
* If Time Permits: Question 10 - Proposal from Michael Graham

3. AOB

Best Regards,

Mary, Julie, Ariel 

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