ACTION ITEMS FROM THE MEETING:

• Staff will review the TMCH statistics as there may be as many as 30,000 DNL List Labels currently in the system

• Staff will Validate whether Section 4.1.3 would apply when an RO only intends to block variants.

• Staff to draft text along the lines of the recap. Response to charter question F1 will be drafted (including rationale and group deliberations. Also, investigations based on a team member’s comments will be addressed and brought back to the group for review.

• Staff will create a separate recommendation that is specific where any transfers of domains that are part of the variant set, the consequences should be the same.

• Staff will clarify in the text the definition for variant set. Expanding upon the previously stated definition that it is determined by the primary or source domain will allow the definition to better sync with the Subpro definition

• Staff should ask WIPO or other experts how they would interpret the current UDRP and other policies.

• Staff should double check whether the team confirmed earlier that if they are allowed to change the primary then they should be able to without enforcing deletion.

• Staff will add Implementation Guidance that - 

• Staff to draft the text for WG members to review for question F2

• The chair asked staff to discuss with ICANN org colleagues on the feasibility of RDAP changes to better denote / reflect variants and the primary / source domains.

• Staff should come back to the topic of matching guidance to ccNSO policy on Friday of the meeting to fine-tune. Leadership/staff can develop a straw person and bring it back to the group for discussion.

• Staff should add an implementation guidance to a pre-existing recommendation we’ve drafted or develop a new recommendation. Registries have their discretion to implement policies; however, they should take into consideration the SSAC guidance. It would be beneficial to reference SSAC 060 and leave it to the registries to implement themselves.

• Staff will work with leadership to develop some language to address the gap in recommendation 18 that could encourage registries to publish information relating to  existing domains and variants that do not have the same-entity principle remaining available. 

• The RySG will deliberate and get feedback on harmonization / variant tables

• The Contracted Parties and ICANN org will discuss how to include the definition of harmonization for registries to check if their tables are harmonized to the correct level.

• For Variant Domain Name, Staff needs to adjust text regarding “registered in different ways”, which implies different mechanisms.

• Staff should draw a picture of the life cycle, preferably of the domain set of variants. Without it there may be confusion (different interpretations of where the domain exists.)

• D4.6 should be changed to allocated as it includes the lifecycle stages of redemption, pending delete, where the same-entity principle should be upheld.

• D6.7 should be modified to reflect that it can be allocated as variants that are currently EPP Hold or don’t have name servers (not activated) must still be included in the transfer.

NOTES FROM THE MEETING:

DAY 1 

Session 1

Action Items:

• Staff will review the TMCH statistics as there may be as many as 30,000 DNL List Labels currently in the system

Notes:

The chair welcomed everyone to the meeting and the team introduced themselves going around the table and virtually.

The chair thanked everyone coming from the GNSO SPS meeting in Washington and then passed it off to a staff member for logistics, including lunch, dinner, and snacks.

Staff began to introduce charter question F1, with discussions from the team on the Trademark Clearinghouse.

Expanding on the TMCH sunrise service, including the processes and order of operations for the mark holders and potential applicants.

Also explained were the inclusion of Domain Name Labels, rules for Matching for the Sunrise provision and Claims Services.

There was a question on if “Spaces” are omitted from the matching rules? Staff will look into this

Trademark owners provide the labels but the TMCH is the body that determines if the labels are eligible. There 10 labels included in the original fee, but more can be added for additional costs.

Statistics were presented for the trademarks that are verified, DNL List Labels, and SURL List Labels. 

ACTION ITEM: Staff will review the TMCH statistics as there may be as many as 30,000 DNL List Labels currently in the system.

The provisions for languages and scripts through the TMCH were defined, with a question for variants in the TMCH.

Regarding the variants, TMCH does not verify trademarks and supports any language that grants trademark rights.

“TMCH does not track if the TM is still existing even the next day after the TM pays to TM" per a participant. 

The chair discussed that the Trademark Clearing House is a separate service from registry/registrar observations. It is optional. Is this discussion relevant to the EPDP?

One team member asked the role of the EPDP in determining any actions in this process.

It was suggested by another member that the registry operator would have to verify if the variants are active trademarks, but otherwise the TMCH doesn't have any actions to complete.

Different team members described the process for the claims process. The effect of having a trademark on, for example, not every variant that is being applied for was described. There is protection at the top level for the primary TLD, and variants even without the trademark there may be protections due to the process.

The claims phase is meant as a safeguard for registries to be alerted there may be a potential applicant that could infringe on the mark. There could still be a registration, but there is a warning that could set forth actions to stop the process. Updating this process for variant labels might be as simple as that warning saying a variant is being attempted to be applied for, per a team member. 

It is troubling that one part of the ICANN ecosystem recognizes variants and one part doesn't per a different team member.

The chair asked if the same entity principle provides the protection at the second label for the TMCH.

The sunrise period may not have any work for the EPDP team, the claims period might, per two team members. 

A team member asked a question on if there is a conflict, does the EPDP team have the remit to make an action? 

Staff expanded more on the abilities of the TMCH to recognize accents and diacritics as an ancillary service of the TMCH. Also described were third party services that are not mandated and outside of the policy remit to discuss and create policy for.

Are these ancillary services provided inside and/or outside of the 90 day claims period? They are provided after the claims period. During the 90 day claims period, the examples on the Ancillary Service Ongoing Notification slide do not carry the same protections.

The chair ended the session by asking about the implication of the same

Session 2

ACTION ITEMS

• Staff will Validate whether Section 4.1.3 would apply when an RO only intends to block variants.

NOTES

Tentative outcomes - for Sunrise, does not seem to require adjustments. Still need to discuss Claims.

Continuing now with discussions about the elements in the Registry Agreement. Reviewing slide 14, in respect of 2.4.2. 

Confirmation that is more or less accurate except for potentially bullet 4 where the domains are not necessarily registered and activated, but it’s more of a request/reservation. This allows for resolution of multiple requests for the same strings. It might make more sense to just allow for the variants to be registered after Sunrise since no other party will be able to do so (i.e., same entity rule).

Re: 4.1.3, would this also apply if the policy only allows for blocking, or does it only apply for Allocation. May need to validate that this provision would apply if the registry only blocks variants. Question for this group - does this need to be policy or is it sufficient to have the requirement captured in the RA?

For the end of the Sunrise, all blocked variants will be relevant.

Reviewing slide 15, in respect of 4.1.3. Would this work the same way if the variants are blocked? It seems to be the case since the language of 4.1.3 says ALL labels. When applying IDN tables to Exhibit A, the registry must state whether variants will be allocated and/or blocked. 

Action Item: Validate whether Section 4.1.3 would apply when an RO only intends to block variants.

On slide15, it probably means that bullet 2 should include all variants, not just allocatable ones. This group might want to consider how to pass the work on to RPMs.

Question about the last bullet, allowing the potential registrant to elect to proceed with the registration. How does this impact the same entity requirement? Reminder that claims only flags, does not prevent. 

Claims do not have an impact on how domains are registered, so will have no impact on the same entity principle.

Reviewing slide 16 and 17, in respect of SAC 060 and Recommendation 10. There may have been a misunderstanding of how registries query the DNL. In reality, registries pull the list (e.g., once per day) and are able to use that as the reference list, so the downside of a large number of transactions is inaccurate. In addition, registries have different IDN tables, so the list of variants will be different for different TLDs.

Variant calculations belong with the Registry. Having the TMCH provider calculate variants would expand the role of the service and would potentially pass on costs to TM holders. Recs 10, 12, and 13 might be implicated, not just 10. However, 10 seemed the most relevant.

Note, these recommendations were made a point in time, so what has occurred since has simply superseded the recs.

Reviewing slides 18, 19, and 20, in respect of the RPMs PDP Phase 1 Final Report and relevant recommendations.

Question about Recommendation 4, which says that exact match rules must be maintained. Clarification that the recommendation is applicable to the TMCH provider, not necessarily the registry operator.

There are variants at 2 levels. Is there anything that needs to be addressed in respect of top-level variants for RPMs? It seems that existing rules would apply across variant TLDs. In addition, the TMCH operates against labels, not full domain names.

Assumption that the RPMs group would have looked at provision 4.1.3. A possibility for this group could be to point to work that took place in a different forum (e.g., affirmation).

Question about the scope of this EPDP Team’s remit: can it provide recs to the TMCH, or just contracted parties? Must also avoid expanding legal rights while also respecting variants. It seems that TMCH comes from policy recommendations, so policy recs needed to modify.

Returning to slide 13 and Section 4.1.3, it talks about TLD (singular). Would this apply across the variant set? The recommendation at the top-level says that there must be a single RA, so consideration might be needed. However, since each TLD and variants must adhere to the RA, we might already be covered. SubPro rec and SAC060 might also need to be considered.

Need to take a step back and take into consideration existing work (e.g., SubPro, SAC060, and RPMs) and see if all of these inputs are compatible with what this group wants to accomplish.

This EPDP Team may want to recommend that each TLD and any variants must have individual sunrise and claims periods. The Qualified Launch Period might facilitate the handling of variants as variant TLDs are launched.

It might be confusing if a registry were to roll out its TLD and variants at different times. This would be confusing to potential registrants. May want to have this question asked in the new gTLD application. Unclear how something like this could be evaluated.

This group has not agreed that variant TLDs must launch at different times. In fact, the group has agreed that this is not a requirement.

There seems to be agreement that each TLD and variants must comply with requirements, but may need to consider implications for all variants. 

For Sunrise/Claims, should avoid having them overlap. The RO should take this into account. The EPDP Team could make a recommendation in line with this. The overlapping Sunrise aspect is more problematic for the end of the period, but not a concern for a first-come-first-served model. 

Subsequent launches of variants shouldn’t seem to require additional Sunrise/Claims periods. Conceptually, it does not seem like it is a separate release of new names. TM may not have elected to register their domain names during Sunrise. Same might apply during Claims.

In fact, it is possible that there could be different variant TLDs since different languages could be targeted (e.g., Urdu versus Arabic). Agreement from others that it may be the case that TM holder only cares about a particular variant TLD.

Reminder that at the top-level, the EPDP Team recommended that SubPro timelines must be adhered to, but the registry may delegate at different times and in the sequence that makes sense for them.

A primary and its variants can be delegated with a large gap.

Slide 21: discussion questions. For question 1, it does not seem like the TMCH matching rules should be expanded, which is also in line with RPMs recommendations. For question 2, it seems that there is sufficient flexibility, but may be worthwhile to affirm what is captured in the registry agreement.

Note that the provisions apply if a Registry Operator implements a variant policy, which does not differentiate between blocked and allocatable. 

Agreements: 

• TMCH matching rules should not be expanded. 

• No issues with Sunrise.

• There might be changes for Claims, but this would be more procedural. There does not seem to be an impact for the same entity. 

• Affirm/confirm what the RPMs group agreed to, 

Potential open issue:

• Confirming what “implemented IDN registration policies” means, especially in reference to a team member’s concerns. 

• Whether or not overlap against Sunrise/Claims is problematic or not, and whether the group needs to do something.

Session 3

ACTION ITEMS

• Staff to draft text along the lines of the recap. Response to charter question F1 will be drafted (including rationale and group deliberations. Also, investigations based on the team member’s comments will be addressed and brought back to the group for review.

• Staff will create a separate recommendation that is specific where any transfers of domains that are part of the variant set, the consequences should be the same.

• Staff will clarify in the text the definition for variant set. Expanding upon the previously stated definition that it is determined by the primary or source domain will allow the definition to better sync with the Subpro definition

• Staff should ask WIPO or other experts how they would interpret the current UDRP and other policies.

• Staff should double check whether the team confirmed earlier that if they are allowed to change the primary then they should be able to without enforcing deletion.

NOTES

Staff recapping previous two morning sessions - all in agreement

Action Item: Staff to draft text along the lines of the recap. Response to charter question F1 will be drafted (including rationale and group deliberations. Also, investigations based on a team member’s comments will be addressed and brought back to the group for review.

New topic: Charter Question D6a

Re: activated vs. allocated - should staff use a different word? (terminology question) - will be brought back for group discussion. 

Question to Group: Does the group believe Prelim. Rec. 7 is enough to address the Charter Question?

The Rec. before is more general regarding transfers, and here is specific about UDRP. Phase 2 of RPM WG is ongoing and will be discussing RPM, so the team should have something to say about it which can be provided as input to the UDRP.

If UDRP doesn’t change, then the same entity principle should apply and the entire set should be transferred by default. Staff should state clearly that the principle of IDN variants is important for the security and stability portion. It shouldn’t be deferred to a panel without specialized input (RZG panel, etc.).

In all standard cases, even UDRP - those variants should not be separated and the same entity principle should always be upheld.

ACTION: There should be a separate recommendation that is specific where any transfers of domains that are part of the variant set, the consequences should be the same.

Potential Issue:

• UDRP is a registrar process (registries don’t interfere in it.) The domain is transferred to the winning party if it was a complainant. If not, it returns to the previous. There can be strange consequences. Two parties can have the rights for the same set of primary strings and its variants in different situations. To understand who’s going to win and why is difficult. The team needs to consider the option of inherited domains not being treated under this rule until the situation is resolved and one party has control.

In the case of disputes in UDRP, it’s resolved against the other person. It’s important to know which applicant is successful.

Whoever owns the TLD will have the IDN table, but the registrar holds the name - that’s where the disagreement is. The consequence of the UDRP being successful is that the registrar has to transfer that name accordingly. Therefore, the IDN table might not be a consideration.

To Clarify: The registry holds the table, and the registrar implements it. The domain name is transferred between registrars (and stays between TLDs) - the same TLD, but the 2nd level is controlled by the registrars which are transferred.

Note in chat: For a registry it is URS, but it works differently (the situation is frozen with NS servers directing to a website saying that the domain was lost in URS. IDN tables are held by a registry with a copy on the IANA website.

In terms of UDRP, it can be a transfer but it can also be a delete. 

There are things the team should think about: 

• A scenario can exist where a cybersquatter registers a name with intent to hold variant and hold a mark holder ransom. Current UDRP might not be able to handle this, though in future they should be able to recognize a variant is in a variant set - in those cases the transfer may happen (the entire set) and may be updated to a different primary leading to a different language tag and set of variants.

• The set of variants will remain the same if harmonized; but in a case like this, the RZ LGR can play a role in the consideration of the UDRP and also how the transfer happens (what may or not be done immediately after the transfer).

The question is about: If the outcome of the UDPR is a transfer, what’s the treatment? 

Team members requesting an overview of the UDRP for more information (Staff providing overview)

Is there IDN specific data among the UDRP stats? Would be helpful to know.

The current UDRP process is unaware of variants. Will this add variants into this process? Some complaints are acknowledged that the complainants are right, so what happens in those cases?

The text is discussing the result of the UDRP and not necessarily the process - it’s an individual domain name and doesn’t account for variants. It’s not within our remit, but the question is if it’s about only one specific domain, then some variants are in use and not an issue. If the same entity principle applies, then it will all go to whoever won the despite, even if there are no problems.

Two possible outcomes:

• Cancellation: no problem here because we’re talking about 2nd level. The other variants can still exist.

Note: That’s an assumption and not sure if it’s the right or wrong one.

• Transfer of the domain (more difficult). One is transferred, but what about the others? We’re exploiting the concept of the same entity, so if it is intended to keep the same entity, then why is it that one registrant gets one variant and not the others.

• The team agreed on harmonized IDN tables, so don’t think this is an issue.

Re: Cancellations:

• When the cancellation occurs, it’s up to the registry policy to determine whether the whole set is deleted with the variant or if they allow the already activated variants to continue to exist (if so, to change the primary if needed) - the same situation if the registrant wants to delete one of its domains within a variant set, and it’s up to the registry.

Re: Transfers:

• It’s clear that in the UDRP outcome, if the domain name needs to be transferred to another registrant, then the entire set needs to be transferred as well. The potential problem would only be if there are two UDRP cases (1 case regarding one, another regarding a variant, and if the losing entity starts a case with another variant that was transferred in a similar situation and they win the case) - the whole set would need to be transferred or else it’d be opened again. Separation of variants might be required then, if by law those variants have to belong to different entities.

If the decision is to transfer, the whole set would be transferred, but if there is entity A and entity B (and entity A won a case and now needs to acquire the domain name) and entity B holds the primary and another variant; then A needs to transfer to B and B won. 

In terms of variants, they are looked at differently. It is possible to have a variant that infringed on an existing right and another that didn’t. The UDRP then was giving a judgment on one variant only - how does that work with the splitting?

Question: It’s not up to the registrant to make a decision, so what would happen if there is a judgment on one and the registrant says they will delete the others?

Answer: If the UDRP says one domain has to be deleted, then the registrar will have to delete it and it’s up to the registry policy and needs to be determined if the entire set of activated variants are deleted at the same time, or a single domain and other variants may remain existing. Can also occur without UDRP and should behave the same.

Question: If it’s a variant, and the primary is deleted, what happens to the variant?

Answer: It depends on the registry. If they allow primary domains to be deleted then the variants can keep existing and another primary must be selected. But if the registry says no (variant attributes model - variants are just attributes of existing primary domain names) and if the primary is deleted then the whole set is removed.

There couldn’t be a situation whereby a panel could award a splitting because we’re talking about only one registration. If the registrant is considered to be abusive, then the current UDRP has to mean that the entire set is transferred. If in the future there may be a different situation and the policy should warn registrants as they go through that UDRP situation.

Important Note: 

• Terminology about delete or cancellation of the name is critical. It is possible to deactivate a primary domain, but if you delete the entire registration the entire package should go. If you deactivate the primary, you have to put another in place. (You can’t calculate what other activated variants could be).

• The primary may be deleted and if the UDRP allows such a nuance, then you can deactivate the current primary and reactivate a new one, but it’s currently not in the UDRP process.

ACTION: The team should ask WIPO or other experts how they would interpret the current UDRP and other policies.

Comment: The charter question is very specific - about what happens in a transfer situation in the result of a UDRP and the applicability of the same-entity principle. The team has to draw a line on this thread and it can be picked up in the future.

When UDRP makes a decision of transfer, it’s because of 1 of 3 things:

1. Domain is identical or confusingly similar to trademark

2. Respondent has no legitimate interest

3. Bad faith

If a decision has been made in regard to a variant due to one of those 3, then it makes sense that this applies to the full set. There is nothing in the UDRP that says so (the problem).

Question: If the primary domain is deleted then the whole set must go. Has the team decided on if a primary domain name must be active? (Discussed it to be open to the registry to say that a registrant may register variant domain names, but have the primary domain name not activated). Unclear about it and want to confirm. 

Answer: Primary means it’s been registered, so if the primary is deleted, it’s hard to pick a primary from the variant set.

ACTION: Staff should double check whether the team confirmed earlier that if they are allowed to change the primary then they should be able to without enforcing deletion.

Clarifying:

• WIPO says respondents can file a lawsuit if not satisfied with the result.

• There may be external factors that may prevent a registrar to transfer a domain all together (i.e: a court order).

It’s fair to mention something that is non-negotiable for us. Whether or not the team will consult an expert, concerns should still be explicitly laid out. If something has been in place for 20 years, it might not be relevant and the team should flag it.

Note: 

• A court order may not technically allow a registry to register different domain names because the activations are tied up in a single/same registration (not feasible). Wondering whether in the rational, something like that should be noted, depending on the registry’s technical set up.

Comment: Registries/registrars are entities of certain jurisdictions so they have to comply with their jurisdictions. If they don’t they will be breaking the law and must do what the courts say they have to do. They don’t care about variant sets, and it will take a long time for the idea to propagate the practice. If the court forces one of the registrars to do something with a domain, then they will do it and local laws always prevail - must be careful.

If a variant exists through an EPP update, a split won’t be possible, but if it’s existing with an EPP create, then it will be possible (though not very related to this conversation).

Summary of Action:

• The same entity applies to a transfer if there’s a UDRP decision that says the name must be transferred. And as part of the transfer, the same entity principle applies, and the set goes where the contested domain has to go. However, the team recognizes there is a shortcoming in the UDRP itself because it doesn’t account for variants and the team will make a suggestion in the report that this should be addressed. Not how, but just flagged.

Question: When the text says variants it includes variants at both the 2nd and Top level right?

Answer: Only using it at the 2nd level.

Follow-up: The same-entity requirement goes beyond just the 2nd level and into variant TLDs as well though.

ACTION: Staff has to talk about variant set definition. The text previously said it’s determined by the primary or source domain name (the team defined per domain name, but haven’t fleshed out when a primary has a variant, what is the set?)

Comment: SubPro suggests that S1/T1 and S1/T1V1 have to be the same entity. If there is a transfer S1/T1, then S1/T1V1 has to be transferred as well.

Restatement: Staff will clarify in the text the definition for variant set. Expanding upon the previously stated definition that it is determined by the primary or source domain will allow the definition to better sync with the Subpro definition

For this purpose then, variant set means top level and second level and all variations.

Suggestion on Terminology:

• IDN variant domain set (includes TLD) IDN variant domain label set (can be just the 2LDs)

[Staff providing overview of URS]

A single proceeding could be for a pack of domains - 15 domains at once - if the other party is the same for all of those (potentially across many as it’s not written).

Note in chat: 2.2 Complaints listing fifteen (15) or more disputed domain names registered by the same registrant will be subject to a Response Fee which will be refundable to the prevailing

party. Under no circumstances shall the Response Fee exceed the fee charged to the

Complainant.

General Question to Consider for Group: Do you believe what was written for Rec. 6 and the Rationale are already covered in Rec. 7 or should the team create a separate recommendation to clarify for URS?

Question: What happens to a domain if it’s locked?

Answer: When the domain is locked, it continues to behave the same way as it used to. But when suspended, it still resolves, but the name servers change to a predefined name server that shows the domain is suspended (other services such as emails will stop working as the original zone file is not active in the DNS anymore).

Question: Do other variants have the same content or should the team not refer to the reason for which the switch happens?

The UDRP approach can be very similar, the whole principle for URS is to suspend the domain - it’s clear that the registrant has been acting abusively with registration. Without nuance in the URS system, the default should be to suspend the entire set. When/if they review, they should consider this and if they want to do more nuanced changes, they should consider all of our conversations.

The use of the URS is when someone puts forward a registration (in either bad faith or good faith) and they infringe on someone’s rights, and that has to be suspended. If the registrant has registered more than just this variant, then not all of the variants are infringing on the rights of the others.

Comment:

• During URS suspension, the name server is redirected to the website and says “this domain was lost to URS” and nothing more. There is a misconception that URS is a cheap replacement of UDRP; however there has been a situation where a large company had their name frozen for more than a year due to not realizing that it’s a bad idea to gain control of a domain through suspension. Also URS rules define only one registration process. Could be 15 but within the same TLD.

• Rights cannot be granted for something for which a 3rd party doesn’t have trademark rights.

Clarifying:

• Only the domain which has the URS case should be suspended and not the whole set? The entity starting the URS has the opportunity to put the variants also into the URS case because they can have multiple domain names - if they don’t think it’s just related to a single domain, then they can add all variants to that and test the whole set. This may be problematic if the variant set of allocated domains are larger than 15, but in that case, they might have to create a new URS related to that.

Session 4

ACTION ITEMS

1. Staff will add Implementation Guidance that - 

1. The burden is on the complainant, so they will have to include all the names they wanted to suspend. The complainant should take the variant set into full consideration when filing the complaint. 

2. Leave it open to RO if they want to suspend only the domain names in question or all variant labels in the set, depending on the RO’s policy and implementation

• Staff to draft the text for WG members to review for question F2

NOTES

Question D7a: Should the suspensions ordered by the Uniform Rapid Suspension System (URS) or any other dispute resolution mechanisms be treated the same way to follow the “same entity” requirement?

• Option1: suspend only the domain names in questions. 

• Option2: all domain names in the variant set are suspended. 

Points supporting option1: 

• This is a rapid process and the compliant file for specific domain names, therefore, it should only affect the compliant domain names. 

• Other variant labels may not be registered or activated, therefore, not technically possible to suspend. 

Points supporting Option2:

• URS means there is some infringement engagement with clear evidence, therefore, it should be suspended the entire set by default. 

Conclusion: Option1, only affects the domain names in question. Compliant responsible to file the complaint for all domain names required to be suspended.

Action Items: 

• Add the Implementation Guidance that - 

  1. The burden is on the complainant, so they will have to include all the names they wanted to suspend. The complainant should take the variant set into full consideration when filing the complaint. 

  2. Leave it open to RO if they want to suspend only the domain names in question or all variant labels in the set, depending on the RO’s policy and implementation. 

Questions F2: In order to ensure that the “same entity” principle is maintained, what are the additional operational and legal impacts to the following RPMs that are not considered in the above charter questions, which mostly concern the outcomes or remedies of dispute resolution procedures or trademark protection mechanisms? 

• TMCH and its Sunrise and Trademark Claims services