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Nathalie Peregrine's Personal Meeting Room - Shared screen with speaker view
Julie Bisland
28:45
Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call on Wednesday, 02 October at 17:00 UTC
David McAuley (Verisign)
29:04
Thank you Kathy, sad news
Ariel Liang
29:52
Staff have compiled all proposals submitted so far here: https://community.icann.org/display/RARPMRIAGPWG/TMCH+Proposals
Susan Payne
30:12
Greg has said he is in a meeting
Ariel Liang
30:27
This is the redline from Greg: https://community.icann.org/download/attachments/109482780/Comparison%20of%20Revised%20Proposal%20to%20Original%20Proposal.pdf?version=1&modificationDate=1570019803232&api=v2
Ariel Liang
31:02
Q8 Proposal from Rebecca: https://community.icann.org/download/attachments/109482780/proposal.pdf?version=1&modificationDate=1569963050000&api=v2
Julie Hedlund
31:38
We have Rebecca’s up in Zoom
Philip Corwin
32:49
Rebecca & Caludio -- can both of you please try to identify the areas of agreement in your proposals -- and the remaining area(s) of disagreement? Thanks
Susan Payne
35:58
I would like to comment on the "other IP" aspect - whenever is the most appropriate time to do that
Rebecca Tushnet
38:46
Should I respond now or wait for Claudio?
Kathy Kleiman
39:21
Feel free to respond now
Rebecca Tushnet
39:43
https://trademark-clearinghouse.com/content/what-trademark-clearinghouse
Jason Schaeffer
39:43
I just got in the meeting
Jason Schaeffer
39:52
Sorry
Susan Payne
40:56
https://trademark-clearinghouse.com/content/accepted-trademarks
Michael R. Graham
41:06
Has the rather loose use of "marks" and "Trademarks" been addressed? I would prefer use of some other term, like "designation", rather than "marks" if these are to be contrasted to "Trademarks". Otherwise, and in common use, "marks" and "Trademarks" or used and considered synonyms.
Michael R. Graham
41:28
P.S. I submit this as my audio/mic is not operating.
Rebecca Tushnet
41:30
Michael, we'd have to go through the whole AGB
Rebecca Tushnet
41:36
I noticed this too but it is really pervasive
Rebecca Tushnet
41:43
So we could have a group do this
Julie Hedlund
41:50
Noted Michael
Rebecca Tushnet
41:51
But I was unable to in the limited time availalbe
Rebecca Tushnet
42:00
And it was a bit beyond my remit
Lori Schulman
42:17
To Michaeal
Maxim Alzoba
42:19
hello all, sorry for being late
Lori Schulman
42:44
To Michael G's points: maybe the appropriate langauge is "source indicator"
Michael R. Graham
43:27
Is revision of the AGB a recommendation we could make without making the changes ourselves?
Rebecca Tushnet
43:59
We'd have to agree on what a TM was first, but I think so!
Rebecca Tushnet
44:23
New hand
Michael R. Graham
44:31
@Lori -- I'd suggest including a definition of "Trademarks" adopted from the Lanham Act definition.
Mary Wong
46:50
There are some jurisdictions that have a definition for “mark” as well as a definition for "trademark".
Michael R. Graham
47:07
@Rebecca -- I don't think we should blame trademark attorneys for the variant uses -- I'm pretty sure there were a lot of pens involved from many sources.
Marie Pattullo
47:29
TRIPS?
Michael R. Graham
47:54
@Mary: As having the same or different meanings?
Mary Wong
48:13
@Michael - as in, all trademarks are marks but not all marks are trademarks
Julie Hedlund
48:28
no hands up
Rebecca Tushnet
48:34
Michael, fair point. It's just that no single pen went through to conform, which is not surprising or unusual, but has generated some problems
Ariel Liang
49:19
Claudio’s proposal for Q8: https://community.icann.org/download/attachments/109482780/Question%208%20Proposal%20on%20GIs.docx?version=1&modificationDate=1569962980000&api=v2
Michael Karanicolas
49:28
Sorry. Don’t know why it does that by default.
Julie Bisland
49:46
Thank you, Michael K!
Julie Hedlund
50:16
Suggest we move on and staff can see if he can join?
Mary Wong
50:47
@Marie, @Michael, all, there IS a definition of “trademark” in TRIPS.
Rebecca Tushnet
51:11
I would also invite Paul to say more about his idea, as discussed on the mailing list, if we come back to this
Ariel Liang
51:12
This is the document of all TMCH charter questions: https://docs.google.com/document/d/1PG_-rjslTTcUYrMNpuwo5_YWvSu40cc3/edit#heading=h.gjdgxs
Mary Wong
52:14
From TRIPS Art. 15(1): “Any sign, or any combination of signs, capable of distinguishing the goods or services of oneundertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs,in particular words including personal names, letters, numerals, figurative elements and combinationsof colours as well as any combination of such signs, shall be eligible for registration as trademarks”.
Marie Pattullo
53:37
Yes Mary - Art 15? Would make more sense to use that than one national definition (should we need one).
Rebecca Tushnet
54:01
Some obvious problems w/that one (it jumps us right back into word marks, and it is about what is capable of being a TM, which is not our issue--our issue is what is in a statute or treaty, including GIs)
Marie Pattullo
54:11
Ha. Faster than me, as ever ;-).
Maxim Alzoba
55:54
on Q12, could we count as benefit the situation where the probability that two TMCH providers are down the same time is lower than the single one (given historical exp.)
Mary Wong
56:11
@Rebecca, the starting point for that category is that it must, first of all, be a “trademark” - so what Michael and others seem to be saying is that it may be helpful to at least have a pointer/description about what that word means.
Julie Hedlund
56:13
We have a proposal for Q15 from Michael Karanicolas
Maxim Alzoba
56:22
could we read this one? (my note about Q12)
Ariel Liang
56:55
This is Michael’s proposal for Q15: https://community.icann.org/download/attachments/109482780/Transparency%20Proposal%20Rev.docx?version=1&modificationDate=1569963124000&api=v2
Rebecca Tushnet
57:17
Except it's not helpful for our purposes--I have proposed "trademark, service mark, collective mark, or certification mark" which gives guidance at the level necessary rather than for the more general theoretical question "what is capable of being a trademark"?
Rebecca Tushnet
57:40
For proponents of the TRIPS definition: do you intend to include GIs? If not, how do you intend to exclude them?
Mary Wong
58:26
@Rebecca - TRIPS has a separate section and definition for GIs.
Rebecca Tushnet
58:41
Yes, and how do you intend to exclude them?
Michael R. Graham
58:55
@Mary and all -- Significantly, TRIPS "definition" says what CAN be a trademark and that trademarks may be registered, but skirts the definition of a "trademark" which is, I would suggest, better defined in the Lanham Act as: The term “trademark” includes any word, name, symbol, or device, or any combination thereof—(1) used by a person, or(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.The term “service mark” means any word, name, symbol, or device, or any combination thereof—(1) used by a person, or(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,to identify and distinguish the services of one person, including a unique serv
Rebecca Tushnet
58:55
GIs fall under both definitions, in theory
Rebecca Tushnet
59:04
That is why we shouldn't look at the theoretical definition
Rebecca Tushnet
59:08
but at the working definition we need
Michael R. Graham
01:00:32
@Rebecca: But whereas trademarks are fundamentally source indicators, geographic indicators do not indicate the source of anything but a geographic place or region.
Mary Wong
01:00:41
Just to be clear - staff is not championing a particular definition, we were offering information. We do want to caution, however, against adopting a definition (if any) that is text from one country’s national legislation.
Rebecca Tushnet
01:00:42
That's a source indicator.
Marie Pattullo
01:00:48
There are commercial reasons behind which TMs a TM holder chooses to enter into the TMCH. It’s a choice/strategy. Disclosing that would be contentious for many TM holders.
Marie Pattullo
01:01:58
+1 John.
Susan Payne
01:02:38
agree John
Michael R. Graham
01:04:21
@Marie and John -- As a trademark owner with a number of trademarks registered with the TMCH, I would frankly not have a concern about revealing any "secret schemes" for protection of my trademarks or their value. Knowing what has been registered and having the ability to challenge such registrations could benefit trademark owners. And as for revealing a strategy of protecting particular trademarks -- that could actually be beneficial.
Maxim Alzoba
01:05:07
misuse can be seen only after use … and if an organization just register and dies nothing?
Maxim Alzoba
01:05:17
*does
Marie Pattullo
01:05:45
My members have given me the opposite comments @Michael - concern about the disclosure of their commercial strategy, inter alia to competitors.
Michael R. Graham
01:05:50
NOTE: Do we really believe that not registering a trademark in the TMCH would adversely affect a company's ability to protect that trademark either through UDRP or other legal proceedings?
Rebecca Tushnet
01:05:53
A global brand is going to have multiple public registrations already; hard to see the marginal "strategy" info involved here
Marie Pattullo
01:07:34
Public TM registration - on thing. Of the 100s of TMs you own, choosing to only enter 10 in the TMCH shows your competitors that those are the ones you are likely to want to use/protect online. Very different information.
Michael R. Graham
01:08:36
@Marie -- Obiviously without knowing who those members might be I cannot address their concerns. I frankly think the horribles closure was meant to avoid may have been hobgoblins and not real. I would really like to hear any real examples where a transparent registry would create issues. Doesn't TM registration and non-registration itself reveal strategy?
Marie Pattullo
01:10:11
TM databases should be public. Of course. And yes you can (should!!) do a search before you try to use a registered TM in your own business as there indeed be hobgoblins. (About 2500 brand holders - aim.be for overview ;-)).
Rebecca Tushnet
01:10:13
If you own 100s of TMs, then it is also checkable whether you have 100s of registrations in multiple countries or just 10
Susan Payne
01:10:19
@Michael G - which 10 or 20 or 40 of your 100s of registered marks you put in the TMCH is the concern
Rebecca Tushnet
01:10:54
Also, it is usually pretty clear which marks a company w/ 100s of registrations truly relies on
Rebecca Tushnet
01:11:12
Nike has 100s of registrations, but it is not a mystery which ones are important to its strategy
Marie Pattullo
01:11:23
Having a registered TM and your commercial strategy or what you intend to do with that in the DNS is different.
Marie Pattullo
01:11:45
*on what...
Rebecca Tushnet
01:12:44
What is the benefit you get from having it secret just for the Sunrise period? If it is actually part of your commercial strategy, that is revealed very quickly
Michael R. Graham
01:13:59
@Susan -- Why is that a concern? If those are the marks I particularly want to protect in the domain name space I WANT to make clear to others. It does not mean I won't protect my other 80 trademarks -- just that for whatever reason (cost? likelihood of registration? etc.?) I did not register them in TMCH. If they are registered trademarks they have the same power in UDRPs.
Rebecca Tushnet
01:14:01
+1 Phil--a bad actor can do this already; the question is whether there will be transparency
Michael R. Graham
01:15:14
My suggestion -- for those concerned that making TMCH registrations public would create issues with proteciton -- would be to include a specific statement that registration or non-registration should have no effect on the protectability of a trademark as against third party use or domain names (with better wording).
Marie Pattullo
01:16:02
@Rebecca - what is the benefit to potential registrants when they can conduct a free TM search first?
Kathy Kleiman
01:16:11
@Michael Graham, can you come online to speak?
Rebecca Tushnet
01:16:45
Not sure what you mean by free TM search.
John McElwaine
01:17:04
I found the proposal from June that we were working on and uploaded it.
Rebecca Tushnet
01:17:05
Anyone interested in testing what Nike's strategy is can (1) look at what TMs it has registered in
Ariel Liang
01:17:07
Just quickly go back to the comment that John made regarding the “single-shot access to the trademark record in the TMCH by legitimate challengers”, staff believe it was discussed during the Sunrise discussions. However, this proposal did not gain wide support from the Sub Team, hence it did not become a Sunrise recommendation
Rebecca Tushnet
01:17:13
multiple countries, and (2) test individual marks
Michael R. Graham
01:17:26
@Kathy -- trying to get phone to work.
Marie Pattullo
01:17:32
It's nothing to do with the legal protectability of a legal right. And remember - not every jurisdiction requires use before registration.
John McElwaine
01:17:42
@Ariel that proposal was what I uploaded.
Ariel Liang
01:17:50
@John - you beat staff to it :) We actually have a record in an earlier version table of draft Sunrise recommendations
Marie Pattullo
01:18:18
Searching for whether a TM I available, @Rebecca. e.g. TMView.
Marie Pattullo
01:18:28
*is
John McElwaine
01:18:31
@Ariel - Admittedly, my revisions might not have made it into the record as Kathy and I were trading drafts offline if I recall
Ariel Liang
01:19:24
That’s right, John
Rebecca Tushnet
01:19:31
To do this hypothetical searching right, a cybersquatter would have to have side by side (1) a list of all TMs of its target, (2) the database, and compare. But it has (1) now and can just do (2) by running through the database by trying to register serially. Also, cybersquatters are rarely interested in Nike's 1000th most valuable mark--this is a solution in search of a problem.
Rebecca Tushnet
01:20:12
By comparison, the Christmas-type registrations that aren't the most queried (like cloud) and aren't reported on by SEO Watch and the like just sit there
Ariel Liang
01:20:47
@John, what we recorded for that proposal included the revisions that you shared via the discussion thread.
Michael Karanicolas
01:21:10
Exactly. It’s trivially easy to find those holes already.
Michael Karanicolas
01:21:22
If you want to find what’s NOT in the database - that’s easy enough.
Michael Karanicolas
01:22:12
It’s the worst of both worlds now. “Bad actors” would easily be able to find those gaps. But without any form of meaningful oversight which transparency should facilitate.
Ariel Liang
01:23:13
@John - And to continue - I think you didn’t get a chance to fully review the revised language for that proposal (sub point C of the first bullet point of that proposal, etc.), so it wasn’t fully fleshed out. Coupled with the lack of wide support from the Sub Team, this proposal didn’t become a Sunrise recommendation
John McElwaine
01:24:20
If we did not find consensus on a much narrower proposal, then I think we ought to move on from this discussion. This seems to be another bite at the apple.
Greg Shatan
01:24:45
With apologies, I need to leave for a business call.
Marie Pattullo
01:24:46
Brand has not yet developed its market around TM. It is all ready to go, ducks are in a row, it wants the DN ready when it does. Again - in the EU, you search registers first and you don't have to prove use before TM registration. The concern is this, and also premium (predatory) pricing for certain premium names. And I still don't see evidence of the massive abuse of the Sunrise/Claims we're presupposing either.
Philip Corwin
01:28:54
@John--agreed we are unlikely to get agreement today. Best course might be to frame TMCH transparency question for IR and solicit community feedback
Mary Wong
01:29:17
QUESTION: Will the fact that some jurisdictions do not have a “use” requirement to register a TM affect the question of openness of the TMDB?
John McElwaine
01:29:18
@Phil +1
Maxim Alzoba
01:30:09
I hope to have a chance to talk about Q12 before we ran out of time :)
Rebecca Tushnet
01:31:01
Of course, no Sunrise without use
Rebecca Tushnet
01:32:21
Competitors generally monitor national filings if they're in a business that rewards that--still not seeing the marginal utility
Michael R. Graham
01:32:21
@Marie -- The challenge you are talking about for new trademark applicant/owners exist regardless of recordation in the TM clearinghouse -- since only Registered or Authorized Trademarks can be registered. I simply don't understand how the non-use basis for applications affects TMCH registration practices.
Kathy Kleiman
01:33:28
@Marie - new hand?
Kathy Kleiman
01:33:53
@Michael K - new hand
claudio
01:34:30
I'm on the call now, going on audio only soon
Marie Pattullo
01:35:11
You register your mark. You're starting the scale up of your brand. So you then have the (minor) use before the (major) use. We're just not going to agree on this ;-). And as I keep saying - YES search that the TM exists, but you don't know which one(s) I'm about to take big to market.
Mary Wong
01:35:18
The staff understands that use is not required for either application for or registration of a EU trademark (though it is possible to delist one for lack of use). Marie can confirm if I am correct.
John McElwaine
01:35:32
@Jason - that every TM database is searchable is not correct. For Marie's reasons, I often file in one of a few certain jurisdictions to protect a client's proprietary interests.
Julie Bisland
01:35:56
@Kathy—Claudio has joined on audio only
claudio
01:36:30
@Julie, thanks. Did we discuss the GI proposals or did we start with the other topics?
Julie Hedlund
01:36:58
@Claudio: We discussed Rebecca’s proposal, but not yours.
Marie Pattullo
01:37:03
I'm not IPC. For transparency ;-).
Lori Schulman
01:37:56
To Marie's point: Brands are a general business concern.
Jason Schaeffer
01:38:02
I understand that certain jurisdictions are not searchable, however the major DBs are searchabel
Jason Schaeffer
01:38:10
*searchable
Maxim Alzoba
01:38:17
for example , some sell services for ‘search’ in their databases
Jay Chapman
01:38:52
I support the proposal and its place it in the initial report
Claudio DiGangi
01:39:03
@Julie, thanks. Time permitting, I'm happy to go over my proposal at the time of the call.
Rebecca Tushnet
01:39:44
I have to go audio only, apologies
Julie Bisland
01:39:58
Thank you, Rebecca, noted
Philip Corwin
01:42:04
Re Q 15, to be clear, my personal view is not necessarily that the proposal be included in the IR, but that the issue be presented for community comment in an objective fashion that lays out the positions on both sides. But the WG can decide the best approach when we soon reach the drafting stage.
Mary Wong
01:43:01
@Maxim, all - we will need to check; whether we have those records likely depends on what the SLAs are we have with Deloitte.
Mary Wong
01:44:07
@Maxim - has the CPH reported this to Org?
Maxim Alzoba
01:45:31
the thing is - two TMCH operators might be better (not expected to have downtime the same time)
Julie Hedlund
01:46:00
greg has left
Julie Hedlund
01:46:04
Claudio is here
Maxim Alzoba
01:46:20
@Mary, it is between a particular TLD and ICANN GDD, and is documented in e-mails to GDD staff or/and GDD portal
Philip Corwin
01:46:37
I guess the first step would be to try to find out if there is any documentation of TMCH downtime indicating this has been a significant issue
Ariel Liang
01:46:55
Claudio’s proposal for Q8: https://community.icann.org/download/attachments/109482780/Question%208%20Proposal%20on%20GIs.docx?version=1&modificationDate=1569962980000&api=v2
Mary Wong
01:47:19
@Maxim, thanks - we did not want the WG to think that there had been substantial TMCH downtime that Org did not investigate. It’s not the same as problems with the NSP or specific issues with one gTLD.
Maxim Alzoba
01:47:40
@Mary, there is zero transparency around it
Maxim Alzoba
01:48:23
and it is about services, not total shutdown
Maxim Alzoba
01:48:43
for example , Registries can not upload LORDN
Kathy Kleiman
01:49:00
Could Staff page down?
Maxim Alzoba
01:50:27
the same for maintenance windows for TMCH operators (all ICANN needs - is to request them not to have it the same time)
Lori Schulman
01:52:43
Have dash to another call. See you all next week.
Lori Schulman
01:52:56
Actually not. Next week is Yom Kippur.
Lori Schulman
01:53:07
Wishing a sweet new year to all who celebrate.
Maxim Alzoba
01:53:30
about services - example where in AUG-SEP 2019 defence servers of IBM were cutting off submitted LORDN files , which affected few Sunrises
Maxim Alzoba
01:54:05
in support - case of IBM SR21675636, case of ICANN GDD ref:_00D616tJk._5004MZIhYD:ref
Michael Karanicolas
01:54:20
Sounds like another argument for transparency!!!
Mary Wong
01:54:26
@Claudio, Deloitte said they could not tell which of the 75 were GIs, due to how they were validated.
Mary Wong
01:55:08
i.e. “protected by statute or treaty” did not specify GIs and there is also the fundamental principle that the TMCH provider is not to engage in substantive analysis.
Maxim Alzoba
01:55:24
@Mary, please copy notes about TMCH downtime cases
David McAuley (Verisign)
01:55:30
Thanks Kathy
Kathy Kleiman
01:55:44
Can people join us next Thurs usual time?
Mary Wong
01:56:00
@Maxim we will convey the request to our operations colleagues, but as noted, it may depend on SLA requirements.
Maxim Alzoba
01:56:12
the same issue was between 23 August 2018 and 26 September 2018.
Susan Payne
01:56:12
apologies I cannot do Thursday. And inconveniently I fixed a flight Thursdayy am rather than Weds pm to allow me to be on the Wednesday call
Julie Hedlund
01:56:20
Thanks everyone - bye!