[gnso-rpm-wg] TMCH review objectives
Scott Austin
SAustin at vlplawgroup.com
Tue Sep 27 18:53:23 UTC 2016
+1 Greg Shatan. Well reasoned and articulated.
-------- Original Message --------
From: Greg Shatan <gregshatanipc at gmail.com>
Date: Tue, Sep 27, 2016, 11:19 AM
To: Mary Wong <mary.wong at icann.org>
CC: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] TMCH review objectives
I take from this the following:
* The TMCH database is NOT publicly available, in spite of claims to the contrary. A policy decision was made NOT to make the TMCH database publicly available, to avoid gaming and targeting of trademark owners. If it is "publicly available" through some channels, these are not authorized sources. It's reasonable to assume that these are either leaked or reverse engineered. I'm not sure what the "evil source" is -- there may be multiple evil sources.
* The DNL List, containing only the DNL field of the the TMCH database, is made available to New gTLD Registries, who are required to have it and update it daily.
* The sole purpose the DNL List is given to Registries is so they can check whether a requested domain name matches a domain name label of a pre-registered mark during the Trademark Claims Period. Any other use would be an unauthorized use.
* Neither the TMCH database or the DNL List is made available to Registrars. If a Registrar has either one of these, it has come from a source not authorized to share it (either a Registry which received it legally, or a third party who reverse engineered it) or the Registrar reverse engineered it. In either case, a Registrar is not authorized to either to have or to use the TMCH database or the DNL List.
* A Registry using the DNL list in order to set differentiated wholesale prices for particular domains and target particular trademark owners during the Sunrise Period (or for that matter during GA or any other period) is making an unauthorized and unintended use of the DNL list. J Scott has called this a "bad faith" use and I am inclined to agree, especially since it begins with "unclean hands." (Note: this is a different issue from a Registry setting a single high price for all trademark owners during Sunrise (or GA, etc.) This is also a problematic practice but not the one being discussed.)
* Registrars probably don't need the DNL List, since they can key retail prices off the wholesale prices (and each Registrar is free to decide their markup over the wholesale price) and can use "premium" lists set by the registries. However, if a Registrar has the DNL list (which they shouldn't) and uses it to set further differentiated prices for particular domains, that would be an unauthorized use of the DNL list. That would also be a "bad faith" use of the data, especially since the Registrar isn't even supposed to have the data.
These practices may violate both the law and ICANN policy. On the legal front, these may be violations of antitrust/competition laws, either under a price discrimination theory or under a wrongful exercise of monopoly power theory. Anti-price-gouging laws could also be implicated here. I have not conducted an analysis of these points, but it would be good to do so. (Similar issues may arise with across-the-board exorbitant prices in Sunrise Periods.) The possession and use of the DNL List for anything other than its intended purpose by its intended recipient could also violate data protection laws, and could be violations of the terms under which the DNL List is distributed.
On the policy front, these activities could be violations of the ICANN policies relating to the creation and purpose of the TMCH database and the Sunrise Periods. These could be more granular violations of particular policy points and/or a violation of the entire purpose of these policies.
On the latter point, these polices are Rights Protection Mechanisms. They were set up to protect the rights of trademark holders. They were certainly not set up to use those rights to victimize trademark owners, by singling them out and targeting them with exorbitant pricing schemes. These pricing schemes (whether differentiated or across-the-board) make a mockery of these rights protection mechanisms. Instead, they become "rights detection mechanisms," allowing those unfortunately detected to be charged extra-high prices solely based on their identity.
On a going-forward basis, we should make absolutely certain that (1) any use of the DNL List (or the TMCH database) by a Registry for any other purpose than sending Claims Notices is strictly prohibited and a violation of applicable terms and contracts; (2) any use or possession of the DNL List (or the TMCH database) by anyone other than a Registry is strictly prohibited and a violation of applicable terms and contracts (if these parties are subject to terms and/or contracts with ICANN).
Greg
On Tue, Sep 27, 2016 at 1:12 AM, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:
Dear all, in response to Paul’s request, here is some information that we hope is helpful.
First, the TMCH Technical Requirements and Functional Specifications have certain criteria and requirements for Registries in terms of the data they can fetch from the TMCH (the Technical Requirements can be found at https://newgtlds.icann.org/en/about/trademark-clearinghouse/rpm-requirements-14may14-en.pdf and the Functional Specifications at http://tools.ietf.org/html/draft-lozano-tmch-func-spec). For example:
• REQUIREMENT - Registries must refresh the latest version of the SMD Revocation List at least once every 24 hours.
NOTES:
- The SMD (Signed Mark Data) Revocation List is the list of SMDs that have been revoked, maintained by the TMCH database. It contains all the revoked SMDs present in the TMCH database at the date and time it is generated. The SMD Revocation List is used during the Sunrise Period to validate SMDs received. During the Sunrise Period the Registry fetches the most recent SMD Revocation List from the TMCH database at regular intervals.
- As noted during the Sunrise Overview WG discussion a couple of weeks ago, after a successful registration of a mark, the TMCH validator returns an SMD File to the TM holder. A SMD is a cryptographically signed token issued by the TMCH validator to the TM holder, to be used in the Sunrise Period to apply for a domain name matching a domain name label of a mark that has been pre-registered with the TMCH.
• REQUIREMENT - Registries must download and refresh the latest version of the DNL List at least once every 24 hours.
NOTES:
- The DNL List contains every Domain Name Label (DNL) that matches a pre-registered mark present in the TMCH database at the date and time it is generated. The list is maintained by the TMCH database. Registries use the DNL List during the Trademark Claims Period to check whether a requested domain name matches a domain name label of a pre-registered mark.
Secondly, the TMCH provides public monthly reports on TMCH trademark validation and dispute resolution activity, which are posted by ICANN here: https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-registrars/reports.
Thirdly, the TMCH publishes regularly on its own website statistics about TMCH records, including number of marks submitted and number of Claims Notices issued; for example: http://www.trademark-clearinghouse.com/content/tmch-stats-april-20th.
Finally, ICANN maintains a page containing the dates of all the Sunrise, Claims and related pre-launch RPMs offered by each New gTLD registry operator: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods.
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong at icann.org<mailto:mary.wong at icann.org>
Telephone: +1-603-5744889<tel:%2B1-603-5744889>
From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of "Paul at law.es<mailto:Paul at law.es> ZIMBRA" <paul at law.es<mailto:paul at law.es>>
Date: Monday, September 26, 2016 at 16:39
To: "J. Scott Evans" <jsevans at adobe.com<mailto:jsevans at adobe.com>>
Cc: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH review objectives
I apologize for the name error.
As for use of data, I believe the same data is publicly available from any number of non-TMCH data. In that regard can staff please publish the data points that TMCH does publish to registries?
Paul Keating
On 26 Sep 2016, at 11:54 PM, J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>> wrote:
Paul:
First, we can agree to disagree. Also, my name is “J. Scott” (kind of my trademark) :-).
Second, I am not talking about regulating a price. However, I do think pricing is relevant if the “data” is being used for a purpose (targeting trademarks for increased pricing) for which it was not intended and that is against the interest of the parties who the TMCH was designed to assist in handling the explosion of new gTLDs.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing |
Adobe
345 Park Avenue
San Jose, CA 95110
408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell)
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From: "Paul at law.es<mailto:Paul at law.es> ZIMBRA" <paul at law.es<mailto:paul at law.es>>
Date: Monday, September 26, 2016 at 1:22 PM
To: "J. Scott Evans" <jsevans at adobe.com<mailto:jsevans at adobe.com>>
Cc: Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>>, Rebecca Tushnet <rlt26 at law.georgetown.edu<mailto:rlt26 at law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver at timewarner.com<mailto:Bradley.Silver at timewarner.com>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH review objectives
Scott,
I strongly disagree.
First I don't think it is bad faith and certainly not per se so as to warrant a global pricing restriction.
The fact that there are potential buyers who may value a domain at a higher price is nothing but applying traditional market principles applied in virtually every other form of business. Domains are not utilities to be regulated in such manner. Nor do I see any basis to guaranty pricing for the benefit of trademark holders.
Second, given that the same "TMCH data" is publicly available I don't understand the basis for focusing on TMCH as the evil source.
Paul Keating
On 26 Sep 2016, at 9:26 PM, J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>> wrote:
Paul:
Respectfully, I think you are missing some of the point here. I agree the market should operate as a free market. However, using the data in the TMCH to create lists of “premium” domains in the hope of having trademark owners pay exorbitant prices to acquire their marks is a bad faith practice that should be halted.
J Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing |
Adobe
345 Park Avenue
San Jose, CA 95110
408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell)
jsevans at adobe.com<mailto:jsevans at adobe.com>
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From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Paul Keating <Paul at law.es<mailto:Paul at law.es>>
Date: Friday, September 23, 2016 at 9:04 AM
To: Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>>, Rebecca Tushnet <rlt26 at law.georgetown.edu<mailto:rlt26 at law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver at timewarner.com<mailto:Bradley.Silver at timewarner.com>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH review objectives
Phil,
In furtherance to my last email responding to Mr. Levy, even an unreasonably priced domain is not infringing. It is important that we not mix up the concepts at issue. We are discussing both “preventative rights: and “curative rights”. The preventative rights mechanism should be severely limited because it acts as a restraint of market tendencies in the absence of actual infringement. Imposing preventative measures is akin to imposing a “prior restraint” which (certainly in the area of speech) is disfavored as a matter of public policy. The curative rights mechanism is the 2nd tool which permits rights holders to rectify an infringement that has actually occurred.
Rights holders already have the ability to pursue legal claims against a registry who is intentionally targeting them by restricting access to domains other than by way of exorbitant pricing. The hurdles that the rights holders must overcome to succeed on such claims are understandably high – just as they are with any other claimant faced with a similar situation in a non-domain-related situation. However, such is life. It is not our place to alter the legal environment and create contractually-based claims that do not already exist in the law.
I believe this was the import of the comment made during the last call asking to differentiate economic costs from “rights”.
Sincerely,
Paul Raynor Keating, Esq.
Law.es[law.es]<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=KIFna-qoWWOSGEvjDtb1t_47kx-6hWlYcVZJcs1n2iE&s=P_8OUyIYYwMESIUb0Sn5KIoY-pOZzog05pJ4uBUZ5JU&e=>
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From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>>
Date: Friday, September 23, 2016 at 5:39 PM
To: Rebecca Tushnet <rlt26 at law.georgetown.edu<mailto:rlt26 at law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver at timewarner.com<mailto:Bradley.Silver at timewarner.com>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH review objectives
I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public.
This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis.
Philip S. Corwin, Founding Principal
Virtualaw LLC
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Suite 1050
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From:gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Rebecca Tushnet
Sent: Friday, September 23, 2016 11:10 AM
To: Silver, Bradley; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] TMCH review objectives
TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall?
Rebecca Tushnet
Georgetown Law
703 593 6759<tel:703%20593%206759>
From: Silver, Bradley [mailto:Bradley.Silver at timewarner.com]
Sent: Friday, September 23, 2016 11:00 AM
To: Rebecca Tushnet; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: RE: TMCH review objectives
I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders.
From:gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Rebecca Tushnet
Sent: Friday, September 23, 2016 10:26 AM
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] TMCH review objectives
Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others.
Yours,
Rebecca Tushnet
Rebecca Tushnet
Georgetown Law
703 593 6759<tel:703%20593%206759>
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