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

Wed Sep 11 19:04:21 UTC 2019

Michael,

I believe they do have an absolute and important incentive to be in
compliance with all the rules - so they can continue to manage the database
going forward from an ICANN contractual perspective.

Best,
Claudio

On Wed, Sep 11, 2019 at 2:59 PM Michael Karanicolas <mkaranicolas at gmail.com>
wrote:

> It should be noted that this is also completely in line with
> Deloitte's incentive structure. There's no direct benefit to careful
> scrutiny - so why would they apply a difficult test for admission?
>
> On Wed, Sep 11, 2019 at 3:38 PM Tushnet, Rebecca
> <rtushnet at law.harvard.edu> wrote:
> >
> > The answers from Deloitte don’t reflect this claim. They reflect a
> policy of putting in whatever can fit, extracting any text at all from any
> mark, disclaimed or not. That’s not indicative of any thought or policy
> based in substance.
> >
> > Rebecca Tushnet
> > Frank Stanton Professor of First Amendment Law, Harvard Law School
> >
> > Sent from my phone. Apologies for terseness/typos.
> >
> > On Sep 11, 2019, at 1:04 PM, Lori Schulman <lschulman at inta.org> wrote:
> >
> > I agree with that.  Deloitte has come up with guidelines and procedures
> that show that thought has been put into the process and they are not
> letting just anything in.  We can’t agree on our terminology, how can we
> expect them to do it?
> >
> >
> >
> > Lori S. Schulman
> >
> > Senior Director, Internet Policy
> >
> > International Trademark Association (INTA)
> >
> > +1-202-704-0408, Skype: lsschulman
> >
> >
> >
> >
> >
> >
> >
> > From: BECKHAM, Brian <brian.beckham at wipo.int>
> > Sent: Wednesday, September 11, 2019 12:56 PM
> > To: Corwin, Philip <pcorwin at verisign.com>; Lori Schulman <
> lschulman at inta.org>; zak at muscovitch.com; julie.hedlund at icann.org;
> gnso-rpm-wg at icann.org
> > Subject: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks
> >
> >
> >
> > Speaking personally, I’m not sure I agree with the supposition that
> “Deloitte accepts marks too readily” especially given the lack of clarity
> on an agreed definition of text only/standard character marks. In fact,
> that is the very core of the discusions around Kathy and Zak’s proposal.
> >
> >
> >
> > Thank!
> >
> >
> >
> > Brian
> >
> >
> >
> > Sent from my WIPO mobile
> >
> > On 11 September 2019 at 18:37:05 CEST, Corwin, Philip via GNSO-RPM-WG <
> gnso-rpm-wg at icann.org> wrote:
> >
> > Thanks Lori.
> >
> >
> >
> > We seem to be closing the gap. Given that there is general agreement
> within the WG  that Deloitte accepts design marks too readily, but some
> remaining disagreement about how to address that, this co-chair hopes that
> wide support can at least be found for those elements of a  response on
> which there is broad agreement.
> >
> >
> >
> > 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 Lori
> Schulman
> > Sent: Wednesday, September 11, 2019 12:06 PM
> > To: Zak Muscovitch <zak at muscovitch.com>; julie.hedlund at icann.org;
> gnso-rpm-wg at icann.org
> > Subject: [EXTERNAL] 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:
> >
> > As per Greg’s proposal, where a design mark with words disclaims >>all<<
> words, it does not enter TMCH. – IPC agrees.
> >
> > As per Greg’s proposal, where a design mark with words disclaims >>some
> but not all words<< it does enters the TMCH.  – IPC agrees.
> >
> > 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.
> >
> > 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.
> >
> > 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):
> >
> > As per Greg’s proposal, where a design mark with words disclaims >>all<<
> words, it does not enter TMCH.
> >
> > As per Greg’s proposal, where a design mark with words disclaims >>some
> but not all words<< it does enters the TMCH.
> >
> > 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 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.
> >
> > 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
> >
> > <ATT00001.txt>
> >
> >
> >
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> > _______________________________________________
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