From ipcdigangi at gmail.com Wed Sep 18 17:42:18 2019 From: ipcdigangi at gmail.com (claudio di gangi) Date: Wed, 18 Sep 2019 13:42:18 -0400 Subject: [Gnso-rpm-trademark] [GNSO-RPM-WG] Q#8 In-Reply-To: References: <5a173762-b108-f395-e421-c8e10e368696@kathykleiman.com> <3cc9ecd6ff904683a338ca963a0eecda@verisign.com>

Message-ID: Here is my compromise proposal consolidated/clarified in one location: *1) Going forward, GI may be accepted in the Clearinghouse (and recorded separately as such within the database to distinguish them from TM records) under "3.2.4 - other marks that constitute intellectual property" OR** shall be permitted to be recorded in one ancillary GI database, e.g. "the unitary, ancillary GI Database", that all registries/registrars may voluntarily connect with;* *2) GIs shall NOT be protected during the Sunrise or TM Claims period, unless they are also registered as trademarks and otherwise meet the qualifying criteria for such trademarks;* *3) the protection of GIs (those that are not also registered as trademarks) shall NOT be considered a mandatory RPM* * for any new gTLD registry;* *4) for new gTLD registries that desire or choose to protect GIs (as permitted by the current rules) based on local laws and/or for other consumer protection reasons, GIs may be protected and registered as domain names during the Limited Registration Period, and/or by the issuance of a GI Claims Notice, and which shall be supported by the unitary, **ancillary** GI database.* On Wed, Sep 18, 2019 at 12:34 PM Kathy Kleiman wrote: > Claudio and All, > > For those who may not be able to follow all of the messages, could you > send a full set of what you are thinking of for new language/Q#8? At least > two Pauls have commented, so I am not sure what you are referencing. Having > it all in one place would be useful. > > Tx, Kathy > > > < > > I support John's proposal below as the simplest approach, with Paul's > language about 3.2.4 being the qualifying text for the inclusion of > GIs, along with a provision this IP database will be centralized for all > new gTLD registries. > > Rebecca - you asked about the supporting rationale in a recent note, so I > would like to address your question. > > The purpose is to avoid creating a scenario of having 300 (or pick some > number) of ancillary databases, each requiring separate submissions and > validations. Again, I say this because Mary confirmed that currently the > ancillary database concept is registry-specific. The main TMCH is not > registry-specific, all new gTLD registries connect to the database in a > unified manner. > > For the sake of providing examples, <.tea> launches as a new gTLD in the > next round; that registry will need to expend time and resources to > collaborate with Deloitte to establish a new ancillary database, and the > regional authority/producers of DARJEELING TEA, (under the current model) > would be required to submit the GI registration to the ancillary database > of <.tea> and have it validated at that time. > > In the same round, <.???> launches ("tea" in the Hindi script - a language > spoken in India, as an IDN), the current model requires this same (or > different) registry operator to create another new ancillary database, > with new submissions of registrations, additional validations, etc. > > <.drinks>, <.beverages>, <.web>, <.internet>, etc.. the list goes on and > on, for every new gTLD there has to be separate ancillary databases. Each > registry and registrar will then have to allocate resources to promote the > registry-specific database to IP owners around the world, and connect to > the database from a technical level. I can only imagine the confusion and > unnecessary costs that this approach would impose on contracted parties and > the public. > > It would also defeat the purpose and benefit of a having a centralized, > unified system that simplifies recordation and validation from both an > administrative and technical basis for all parties. > > The Limited Registration Period is an existing RPM that functions similar > to Sunrise, but takes place after the Sunrise Period, during which > time these 3.2.4. marks can be protected. Since it is already permitted, I > propose that we specify there is a voluntary option for a IP Claims notice > for these 3.2.4 marks (identical to the TM Claims notice, i.e. using the > same language). > > These are completely voluntary RPMs for contracted parties - especially, > for those that operate in jurisdictions where GIs are protected under local > laws, and/or for those which decide to take proactive measures to prevent > abusive registrations in their TLD(s) to have a safe namespace for > their users. Since registries are already allowed to create voluntary RPMs, > the proposal is based on improving things from a technical and > administrative basis, in a manner that is fully consistent with the law, > and with the overall goal of protecting consumers and promoting trust in > new gTLDs. > > Finally, as Brian noted there is an existing database of GIs, managed by > OriGin, which Deloitte/IBM can interface with to help simplify the process, > which is an idea we can include for public comment in association with the > main recommendation. > > All we need to do is agree that this approach makes sense from a policy > perspective, and the IRT that follows this PDP can develop the appropriate > implementation procedures to put everything into place. > > Please let me know of any questions. > > Best regards, > Claudio > > > > On Tue, Sep 17, 2019 at 5:23 PM John McElwaine < > john.mcelwaine at nelsonmullins.com> wrote: > >> I would propose simplifying this a bit. The issue that we have is that >> Deloitte should not be placing ?other marks that constitute intellectual >> property? in the ?Clearinghouse?. The Trademark Clearinghouse is more than >> just to service Sunrise and Claims services. See AGB TMCH Section 1.2 >> (?The Clearinghouse will be required to separate its two primary functions: >> (i) authentication and validation of the trademarks in the Clearinghouse; >> and (ii) serving as a database to provide information to the new gTLD >> registries to support pre-launch Sunrise or Trademark Claims Services. >> Whether the same provider could serve both functions or whether two >> providers will be determined in the tender process.?) Unfortunately, >> Section 3.2 muddies the waters and lists ?other marks? as being capable of >> inclusion ?in the Clearinghouse?. >> >> >> >> However, the purpose behind Section 3.2.2 is provided a bit more light in >> Section 3.6: ?Data supporting entry into the Clearinghouse of marks that >> constitute intellectual property of types other than those set forth in >> sections 3.2.1-3.2.3 above shall be determined by the registry operator and >> the Clearinghouse based on the services any given registry operator chooses >> to provide.? With respect to such other IP, the ?Trademark Clearinghouse >> Service Provider may provide ancillary services, as long as those services >> and *any data used for those services are kept separate from the >> Clearinghouse database*.? >> >> >> >> Thus, as I mentioned on the call, a simple solution is that we recommend >> ?other marks that constitute intellectual property (under 3.2.2 and 3.6)? >> currently in the Trademark Clearinghouse must be placed into a separate >> ancillary database by the operator and not in the Trademark Clearinghouse. >> >> >> >> John >> >> >> >> >> >> >> >> *From:* GNSO-RPM-WG * On Behalf Of *Tushnet, >> Rebecca >> *Sent:* Tuesday, September 17, 2019 4:24 PM >> *To:* claudio di gangi ; Corwin, Philip < >> pcorwin at verisign.com> >> *Cc:* gnso-rpm-wg at icann.org >> *Subject:* Re: [GNSO-RPM-WG] Q#8 >> >> >> >> *?External Email?* - From: gnso-rpm-wg-bounces at icann.org >> >> >> >> I'm still quite factually confused by this proposal. "Accepted in the >> Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise >> upon proof of use." It appears to me that this is proposing a nontrivial >> technical change (at the very least the implementation of a new coding >> category, which will have to be retrofitted to existing entries), without >> evidence either of its need or its feasibility. >> >> >> >> Relatedly: If GIs are to be treated so differently, why put them in the >> Clearinghouse, given that there is consensus that they shouldn't be used >> for Claims or Sunrise? Kathy's clarifying language allows for registries >> etc. to adopt various business models and for Deloitte and other operators >> to run systems that facilitate those business models, including the ones >> Claudio hypothesizes. (And I'm not sure we should hand Deloitte an extra >> business that would make competition in the market for providing additional >> services less likely.) >> >> >> >> >> >> Rebecca Tushnet >> >> Frank Stanton Professor of First Amendment Law, Harvard Law School >> 703 593 6759 >> ------------------------------ >> >> *From:* GNSO-RPM-WG on behalf of claudio >> di gangi >> *Sent:* Tuesday, September 17, 2019 3:38 PM >> *To:* Corwin, Philip >> *Cc:* gnso-rpm-wg at icann.org >> *Subject:* Re: [GNSO-RPM-WG] Q#8 >> >> >> >> thanks, Phil. Very helpful as always. >> >> >> >> I see your point that proposal #1 and #2 overlap, in the sense that they >> both deal with whether GIs should be recorded in the TMCH. My proposal (#3) >> integrates the other two proposals. >> >> >> >> My concern during the call was that I felt a premature signal being >> expressed that agreement was being quickly being reached >> after several members spoke (and I was one of them), while several other >> members asked clarifying questions. I may be mistaken, but don't recall >> Jason or Rebecca objecting to the thoughts I expressed during discussion on >> proposal #1. >> >> >> >> If I am mistaken, and there was a meaningfully larger list of proponents >> for proposal #1 expressed on the call, I am happy to be corrected - please >> let me know. >> >> >> >> From my perspective, the majority of members did not express a position >> while the discussion was taking place, so I was left confused under what >> basis that statement that consensus was reached was based upon. >> >> >> >> This is also why I recently expressed not having the benefit of the >> informal poll that you conducted two weeks ago. Can we please do this >> tomorrow to get a better sense of where folks stand? >> >> >> >> On this same line of reasoning, I was concerned that we did not have full >> participation on the last week's call (where any registries and registrars >> on the call?). Moreover, I indicated last week that I had off-line >> discussions with WG members who expressed support for my suggested >> approach, but were not able to join the call, so I was hoping to hear from >> them on the list prior to Wednesday. >> >> >> >> The transcript and recording were posted by Julie on Friday, 13 Sept. so >> members did not really have much time (Friday and Monday) to reply with >> input before things (I personally feel) got somewhat short-cut this morning >> with the posting that expressed here is the consensus view of the WG, along >> with the associated implementation text. >> >> >> >> My concern when this occurs is it changes the dynamic about how members >> feel about weighing-in and 'going against the thread' so to speak, and also >> may create confusion about the accurate state of play. >> >> >> >> In terms of substance and to clarify, my proposal is based on finding >> common ground and compromise that integrates the two proposals, as per the >> following: >> >> >> >> 1) Going forward, GI are accepted in the Clearinghouse or ONE main >> ancillary database that all registries/registrars can connect to (which >> potentially can be integrated with the main external GI database that >> exists, with Deloitte performing validations); >> >> >> >> 2) GIs are NOT protected during the Sunrise or Claims period, which >> remain for trademarks; which was something that we established during the >> review of Sunrise and Claims. >> >> >> >> 3) the protection of GIs are NOT mandatory for any new gTLD registry >> >> >> >> 4) for new gTLD registries that choose and desire to protect GIs (as the >> current rules permit) because of local laws and/or other reasons, they are >> protected during the Limited Registration Period, to help prevent abusive >> registrations before General Availability. >> >> >> >> The rationale for this approach is that GIs are one of the three major >> forms of IP (patents, trademarks, and GIs) and function as source >> identifiers for goods and services in a manner that is similar >> to trademarks (and can be registered as domains in the same manner). For >> example, GIs are protected in the United States (under the TRIPS agreement) >> as collective or certification marks, think FLORIDA ORANGES or IDAHO >> POTATOES. >> >> >> >> But in other countries, outside of the United States, they are protected >> under local laws that place them on a separate registry, apart from the >> trademark register. >> >> >> >> Hope this helps clarify status, and thanks for everyone's ongoing >> contributions. >> >> >> >> Best regards, >> >> Claudio >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> >> On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip >> wrote: >> >> Claudio? >> >> >> >> This message reflects the views of the co-chairs. >> >> >> >> Q8 and all of its related proposals were extensively discussed on the >> September 4th call. The meeting on 11 September was a continued >> discussion on Q8 and Q7 in case there were further proposals, and the major >> focus was on Q7 as we had run out of time on the prior call and a new >> modified proposal had been submitted for discussion. >> >> >> >> As regards Q 8, all of the first three proposals converge in that they >> would limit the registration of GIs in the TMCH to ?marks? of some sort, >> whether trademarks or collective marks or certification marks; there also >> seemed to be some recognition and agreement that GIs that did not >> constitute ?marks? could be recorded in an ancillary database for the >> purpose of assisting certain new gTLDs that recognized and provided some >> additional consideration to them. It appeared to the co-chairs that >> restricting TMCH recordation of GIs to those that constituted ?marks? had >> fairly broad support among WG members participating on the calls. >> >> >> >> In regard to your fourth proposal -- ?(1) Add the consideration of GIs to >> the policy review of the Sunrise and Claims services; and (2) withhold >> final consideration of the current TMCH proposals relating to GIs, until we >> conclude the policy review of the new gTLD RPMs (as described in the >> Charter).? ? the Sunrise and Claims reviews have been concluded, and we are >> now wrapping up (concluding) our review of the new gTLD RPMs. So this >> proposal no longer seems timely or relevant; but if you wish to amend it >> and make a specific proposal for the treatment of GIs in the TMCH, tomorrow >> is the time to make it. >> >> >> >> Finally, as regards your proposal that we withhold a decision until >> Deloitte participated in a call on this subject, we see no reason to do so >> as there is no indication that Deloitte has changed its practice in regard >> to GI recordation since it wrote to the WG two years ago. >> >> >> >> In conclusion, we intend to finish the WG?s consideration of Q8 tomorrow >> but will facilitate discussion of an amended proposal from you if you wish >> to offer one. >> >> >> >> Regards, >> >> Brian >> >> Philip >> >> Kathy >> >> >> >> >> >> 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 *On Behalf Of *claudio >> di gangi >> *Sent:* Tuesday, September 17, 2019 11:22 AM >> *To:* Kathy Kleiman >> *Cc:* gnso-rpm-wg at icann.org >> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8 >> >> >> >> Kathy, all, >> >> >> >> Last week, we spent the first full hour of the call discussing the first >> Question 8 proposal, and zero minutes on the second proposal on Question #8 >> (In comparison we spent much time discussing both proposals for question >> #7). >> >> >> >> I am aware that some members spoke in support of the first proposal (I >> was on audio only), but do not know how many, while some others did not >> speak in support, and that we agreed to spend this full week to solicit WG >> members views on the list before moving forward. This week has not yet >> concluded (we have through today), yet new language is being posted below >> now for consideration. >> >> >> >> A few additional points, the week prior Phil conducted an informal poll >> using the Zoom room functionality, which helped provide transparency on WG >> members views for consensus building, which was not done last week on >> Question #8. >> >> >> >> Nor has there been an effort to bring the various proponents together to >> reach a compromise position, which we recently did in the sprint of the >> consensus-building process on Question #7, the design mark topic. So I?m >> not sure why question #8 is being treated so differently in all these >> various ways (as described above) compared to Question #7. >> >> >> >> Can someone kindly shed some light on this disparity in treatment between >> the way we are approaching question 7 and question 8? >> >> >> >> Thanks! >> >> >> >> Best regards, >> >> Claudio >> >> >> >> >> >> On Tuesday, September 17, 2019, Kathy Kleiman >> wrote: >> >> All, >> >> Last week we found considerable overlap and common ground on Q#8. I >> promised to circulate language sharing that agreement and slightly refining >> existing proposals. >> >> Q#8: >> >> 3.2 The standards for inclusion in the Clearinghouse are: >> >> 3.2.1 Nationally or regionally registered word marks from all >> jurisdictions. >> >> 3.2.2 Any word mark that has been validated through a court of law or >> other judicial proceeding. >> >> 3.2.3 Any word marks specified in and protected by a statute or treaty *as >> trademarks *[1] in effect at the time the mark is submitted to the >> Clearinghouse for inclusion. >> >> 3.2.4 Other marks that constitute intellectual property. [see below] >> >> 3.2.5 Protections afforded to trademark registrations do not extend to >> applications for registrations, marks. >> >> [1] *By "trademarks," the WG means "trademarks, service marks, >> certification marks and collective marks."* >> >> For purposes of clarity, separate or ancillary databases of the Trademark >> Clearinghouse Provider (or another provider) may include other marks, but >> those databases should not be used for Sunrise or Trademark Claims Notices >> under the RPMs. Registries may use those separate or ancillary databases to >> provide additional services but are not required to do so under the RPMs. >> >> (Appropriate corresponding changes will be percolated across the *Trademark >> Clearinghouse* Applicant Guidebook) >> >> ----------------- >> >> Best, Kathy >> >> >> Confidentiality Notice >> >> This message is intended exclusively for the individual or entity to >> which it is addressed. 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