[gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Paul Keating
paul at law.es
Tue Apr 11 22:18:07 UTC 2017
And it wouldn't seem that a TMCH participant has a contract with the "databae provider"
Perhaps we are asking the wrong party here.
Who is the "database Provider"?
Let's find out and ask them.
Sent from my iPad
> On 11 Apr 2017, at 23:51, George Kirikos <icann at leap.com> wrote:
>
> I see nothing in the Privacy Policy of the TMCH that prevents us from
> seeing the data. Here is the relevant text:
>
> http://www.trademark-clearinghouse.com/content/privacy-notice
>
> "WHO RECEIVES YOUR PERSONAL DATA
>
> In order to perform the services we offer, we may have to disclose
> your Personal Data to theDatabase Provider, the party appointed by
> ICANN to operate and manage the central database for storage of
> Trademark Records that have achieved Activation (i.e. when we have
> determined that a Trademark Record meets the Eligibility Requirements
> as stated in the Trademark ClearinghouseGuidelines).
>
> We may disclose your Personal Data to ICANN, registries, registrars
> and domain name registrants in order to effectuate the purposes of the
> Trademark Clearinghouse.
>
> We may have to disclose your Personal Data in other situations, such
> as, but not limited to, to comply with legal or regulatory
> requirements or obligations in accordance with applicable law, a court
> order, administrative process or judicial process or subpoena.
>
> We will also disclose your Personal Data to a new provider of the
> Trademark Clearinghouse, or our successors and assigns in connection
> with a merger or sale of our assets.
> ...
> CHANGES TO THE PRIVACY STATEMENT
>
> We reserve the right to modify or amend this Privacy Notice at any
> time and for any reason. For this reason, we urge you to review this
> statement from time to time while you’re visiting our website. We will
> however bring explicitly to your attention any operational change that
> could impact on the choices you have made on our website regarding the
> processing of your Personal Data."
>
> I'm a registrant. They can disclose it to me. When they say "ICANN",
> do they mean "ICANN" the organization, or "ICANN" the community? I'l
> go for the latter definition, please. :-) Also, they can change the
> Privacy Notice at any time, for any reason.
>
> It doesn't sound like it's very confidential to me, given it can be
> disclosed "in other situations" ... "not limited to".
>
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
>> On Tue, Apr 11, 2017 at 5:44 PM, Paul Keating <paul at law.es> wrote:
>> Ok stop this.
>>
>> As you all know, to even start under the ACPA one need a registration of a
>> DISTINCTIVE MARK THAT PREDATES THE DOMAIN AT ISSUE.
>>
>> THEN you need to show relevant factors.
>>
>> The ACPA does NOT provide per-emptive rights.
>>
>> Your arguments are strawmen intended to distract from the ONLY Issue -
>> transparency of the TMCH database so we can all the. Do our jobs.
>>
>> Let's get back to work please.
>>
>> Sent from my iPad
>>
>> On 11 Apr 2017, at 22:58, J. Scott Evans via gnso-rpm-wg
>> <gnso-rpm-wg at icann.org> wrote:
>>
>> Yes, and Trademark Dilution under the Lanham Act does not take into
>> consideration the goods and services of the parties. Also, I believe “famous
>> and well-known marks” under 6bis of the Paris Convention do not require any
>> special association with goods and services. While I realize that both of
>> these theories concentrate on “famous marks”, it clearly shows a that
>> similarity in goods and services is not necessarily a prerequisite to
>> trademark protection. Paul’s example is even better because the ACPA applies
>> to all marks and does not require fame.
>>
>>
>>
>> All this to say that the “Trademark Scholars Letter” is better titled
>> “Trademark Professors with a Particular Viewpoint on the Scope of Trademark
>> Protection”, rather than a piece of scholarship that accurately sets forth
>> the law.
>>
>>
>>
>> J. Scott
>>
>>
>>
>> <image001.gif>
>>
>> J. Scott Evans
>>
>> 408.536.5336 (tel)
>>
>> 345 Park Avenue, Mail Stop W11-544
>>
>> Director, Associate General Counsel
>>
>> 408.709.6162 (cell)
>>
>> San Jose, CA, 95110, USA
>>
>> Adobe. Make It an Experience.
>>
>> jsevans at adobe.com
>>
>> www.adobe.com
>>
>>
>>
>>
>>
>>
>>
>>
>>
>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Paul McGrady
>> <policy at paulmcgrady.com>
>> Date: Tuesday, April 11, 2017 at 1:50 PM
>> To: 'Phil Corwin' <psc at vlaw-dc.com>, 'Greg Shatan' <gregshatanipc at gmail.com>
>> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and
>> documents for Wednesday Working Group meeting (12 April)
>>
>>
>>
>> STRICTLY IN MY PERSONAL CAPACITY
>>
>>
>>
>> Hi Phil,
>>
>>
>>
>> Thanks for your note. The “Trademark Scholars Letter” you reference seems
>> to imply that the TMCH is “recently demanded by trademark owners.” Quite
>> the opposite – it is an implemented RPM that has been out there for years
>> now and is up for review. With due respect to the contribution made by the
>> “Trademark Scholars Letter”, it does not appear to be keeping pace with the
>> facts on the ground. It also conflates the TMCH itself with the Sunrise and
>> Claims which draw upon data from the TMCH. The TMCH is a database, not an
>> RPM. While it is used in conjunction with the Sunrise and Claims RPM, so
>> are all sorts of other technologies (email, as an example) and that doesn’t
>> make those other technologies an RPM. Also, the ““Trademark Scholars
>> Letter” doesn’t cite to authorities supporting many of the claims it makes
>> (which is odd for a letter seeking special status as ‘scholarship.”).
>> Lastly, the “Trademark Scholars Letter” contains statements which are
>> questionable at best. For example, the claim that “Under U.S. and most
>> other countries’ trademark laws, ordinarily a trademark right only exists
>> within a distinct class of goods or services” which is exactly the opposite
>> of what the ACPA states about trademark rights as applied in the
>> cybersquatting context namely that the analysis is “without regard to the
>> goods or services of the parties.”
>>
>>
>>
>> Like you, I’m a great advocate of rigor and accuracy, and as such I am not
>> hanging too many hats on the “Trademark Scholars Letter.”
>>
>>
>>
>> Best,
>>
>> Paul
>>
>>
>>
>>
>>
>>
>>
>>
>>
>> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
>> On Behalf Of Phil Corwin
>> Sent: Tuesday, April 11, 2017 2:12 PM
>> To: Greg Shatan <gregshatanipc at gmail.com>
>> Cc: gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and
>> documents for Wednesday Working Group meeting (12 April)
>>
>>
>>
>> Greg:
>>
>>
>>
>> To clarify, I was referencing significant TMCH issues that can be addressed,
>> if a WG member or members wish to, by the submission of specific proposals
>> over the coming weeks as we strive to conclude, to the full extent possible,
>> our consideration of TMCH matters and move on to Sunrise Registrations and
>> TM Claims Notices. I was not restricting examples to what is on our agenda
>> for this Wednesday and I was not trying to be inflammatory.
>>
>>
>>
>> I am frankly quite surprised at your statement, “I am at a loss to see how
>> the TMCH database itself gives unfair advantage to TM owners, nor do I
>> believe I have seen any suggestion to that effect. “
>>
>>
>>
>> The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively
>> on this list discussed makes precisely that point:
>>
>> We are concerned that the expansive protections recently
>> demanded by trademark owners
>>
>> are inconsistent with basic propositions of trademark law.
>>
>> A case in point is the Trademark Clearinghouse, a mechanism established for
>> the new
>>
>> gTLDs that gives trademark owners special rights to prevent the registration
>> of domain
>>
>> names that contain their trademarks. Those registered in the Trademark
>> Clearinghouse have
>>
>> access to a sunrise period that gives them priority access to domain names
>> in a new gTLD,
>>
>> and to a trademark claims process that gives them early warning when domains
>> the contain
>>
>> their trademarks are registered.
>>
>>
>>
>> I do not presently subscribe to the view that the TMCH is inconsistent with
>> TM law and should be eliminated, but I wouldn’t be at all surprised to see a
>> proposal to that end presented by a WG member given statements that have
>> been made on this list.
>>
>>
>>
>> Likewise, I am well aware that the TMCH is supportive database and not an
>> RPM in itself, which is why my email used the term “placement in the TMCH
>> database”. I’m also very aware that TM+50 terms are eligible for TMCH
>> registration, as well as terms protected by statute or treaty (which your
>> response neglected to mention), but didn’t think I needed to put all of that
>> in an example relating to possible proposals to expand eligible terms by
>> making trademark+additional word or typographical variations of trademarks
>> into the TMCH for this well-versed audience of WG members.
>>
>>
>>
>> Lastly I will differ to some extent with your concern about “an unfortunate
>> tendency to roll the TMCH (which is a database) together with Sunrise and
>> Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise
>> and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated.
>> If there was no TMCH then there would be no foundation for the associated
>> RPMs, and if we contract or expand the terms eligible for placement in the
>> TMCH then the associated RPMs will contract or expand accordingly.
>>
>>
>>
>> I’m a great advocate of rigor and accuracy, especially when we get to
>> actually debating specific proposals. But I hope the members of this WG will
>> remember that the voluntary co-chairs of this WG are devoting a great deal
>> of effort to trying to keep it moving a long and on track and, cut us a
>> little sympathetic slack when we employ some verbal shorthand on the
>> assumption that sophisticated WG members will know the additional nuances
>> and need not have them repeatedly pointed out.
>>
>>
>>
>> Thank you and best regards,
>>
>> Philip
>>
>>
>>
>>
>>
>>
>>
>> Philip S. Corwin, Founding Principal
>>
>> Virtualaw LLC
>>
>> 1155 F Street, NW
>>
>> Suite 1050
>>
>> Washington, DC 20004
>>
>> 202-559-8597/Direct
>>
>> 202-559-8750/Fax
>>
>> 202-255-6172/Cell
>>
>>
>>
>> Twitter: @VlawDC
>>
>>
>>
>> "Luck is the residue of design" -- Branch Rickey
>>
>>
>>
>> From: Greg Shatan [mailto:gregshatanipc at gmail.com]
>> Sent: Tuesday, April 11, 2017 2:33 PM
>> To: Phil Corwin
>> Cc: George Kirikos; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and
>> documents for Wednesday Working Group meeting (12 April)
>>
>>
>>
>> I have some problems with the examples given here:
>>
>>
>>
>>
>>
>> That means that if you are of a view that the TMCH should be eliminated
>> because you believe it gives unfair advantage to TM owners you will have a
>> chance to present a proposal to that effect.
>>
>>
>>
>> Likewise, if you are of the view that additional terms besides registered
>> trademarks should be eligible for placement in the TMCH database you will
>> also have a chance to make your case and seek consensus support.
>>
>>
>>
>> In the first example, the first problem is that it is outside the four
>> topics that Phil indicated were open for discussion in his follow-up email
>> (design marks, G.I.s, “identical match” and TMDB confidentiality). So it
>> seems inappropriate (and a bit inflammatory) to suggest that this could be a
>> submission in response to Mary's email. Second, this seems to be yet
>> another example of an unfortunate tendency to roll the TMCH (which is a
>> database) together with Sunrise and Claims (which are RPMs). I am at a loss
>> to see how the TMCH database itself gives unfair advantage to TM owners, nor
>> do I believe I have seen any suggestion to that effect. TMCH on its own
>> does nothing for trademark owners (other than take their money). There
>> have, of course, been suggestions that the RPMs that use the database
>> (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that
>> I agree, of course). So, it would seem that this example is in fact related
>> to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly
>> framed and premature (were it rewritten to refer to Sunrise and/or Claims
>> rather than "the TMCH"). We need to be much more careful in keeping these
>> concepts separate.
>>
>>
>>
>> The second example does seem to relate to an extent to one of the four open
>> topics (G.I.s) but the example is factually inaccurate, since additional
>> terms besides registered trademarks are already eligible for placement in
>> the TMCH (TM+50 and "marks protected by statute or treaty"). It's not
>> helpful to give the impression that the TMCH database is currently limited
>> to registered trademarks (I would hope that most of us know that already,
>> but that's not the point). The discussion around G.I.s would more
>> accurately be framed as whether terms that are not trademarks or previously
>> abused strings containing trademarks should be eligible for the TMCH
>> database.
>>
>>
>>
>> A little more rigor and accuracy will help us all, as we drink from the WG
>> firehose....
>>
>>
>>
>> Greg
>>
>>
>>
>>
>>
>>
>> Greg Shatan
>> C: 917-816-6428
>> S: gsshatan
>> Phone-to-Skype: 646-845-9428
>> gregshatanipc at gmail.com
>>
>>
>>
>> On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc at vlaw-dc.com> wrote:
>>
>> George:
>>
>> I am consulting with other co-chairs and support staff in regard to what
>> procedure we will follow when any member of this WG asserts that
>> insufficient data has been obtained to resolve a proposed RPM modification
>> on an informed basis, and that such data exists and can be accessed within a
>> reasonable time. We'll get back to the full WG on that.
>>
>> In the interim I would point out that the deadline of 19 April was proposed
>> only in relation to the 4 questions on the structure and operations of the
>> TMCH which the WG had agreed were still open (design marks, G.I.s,
>> “identical match” and TMDB confidentiality). Some other questions have been
>> closed for the time being, a few are being tabled for further discussion
>> following WG work on Sunrise and Claims. These 4 questions have been
>> discussed extensively for some time. Data needs were identified and sought.
>> To the extent that a decision on any proposal on any of these 4 TMCH-related
>> questions may be contingent on further data, it will be helpful if the type
>> of data and (if possible) suggested source(s) can be indicated in the
>> proposal.
>>
>> Also remember that we have always been clear that all decisions by the WG
>> are not final and are subject to being revisited up until the submission of
>> our Phase 1 Finales Report and recommendations, if intervening decisions and
>> new information justifies such revisiting.
>>
>> So we are not trying to cut off any discussion prematurely. But this is not
>> a debating society but a WG charged with making decisions and forwarding
>> recommendations, and we do have a timeline we are trying to adhere to. That
>> is why the co-chairs are now actively urging that we move the TMCH
>> discussions away from open-ended discussions and toward focused debate on
>> specific proposals.
>>
>> Finally --and this is solely a personal observation -- I think there are
>> likely some issues where no amount of data will bring about consensus due to
>> substantial differences in perspective.
>>
>> Thanks and best regards,
>> Philip
>>
>> Philip S. Corwin, Founding Principal
>> Virtualaw LLC
>> 1155 F Street, NW
>> Suite 1050
>> Washington, DC 20004
>> 202-559-8597/Direct
>> 202-559-8750/Fax
>> 202-255-6172/Cell
>>
>> Twitter: @VlawDC
>>
>> "Luck is the residue of design" -- Branch Rickey
>>
>> -----Original Message-----
>> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
>> On Behalf Of George Kirikos
>> Sent: Tuesday, April 11, 2017 12:33 PM
>> To: gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and
>> documents for Wednesday Working Group meeting (12 April)
>>
>> Phil:
>>
>> With respect, this timeline is too short, given that we've not even had
>> answers/data to this working group's questions returned from Deloitte. e.g.
>> just last week I specifically asked for the top 500 terms (not just the top
>> 10), and I had asked for that prior to last week (i.e. during the Copenhagen
>> calls in March). Other answers/data have not been provided, either (e.g.
>> ICANN has the right to audit Deloitte's financials, to see if the fees to
>> TMCH applicants/registries are reasonable, etc.), or the entire table of
>> questions, etc. that was prepared that sought out relevant data.
>>
>> Proper order is: Data first, then analysis of the data, then proposals for
>> changes, then conclusions.
>>
>> We can't go straight to proposals and then conclusions, without having
>> received back all the data that this working group's members have requested.
>>
>> At some point, this PDP will have public comment periods, and the public
>> comments will be able to say "you didn't do the work, didn't collect the
>> data, refused to look for data, refused to analyze the data, refused to
>> accept the conclusions that flowed from the data", etc. This PDP should be
>> sensitive to that, and actually do the work, instead of pretending to do the
>> work to support a predetermined
>> (rigged) outcome of "no change to the status quo" that some people seem to
>> feel should happen, despite evidence identifying numerous problems.
>>
>> This is probably going to be one of the most scrutinized PDPs in ICANN's
>> history --- let's do the work so that its reports/conclusions can stand up
>> to scrutiny.
>>
>> Sincerely,
>>
>> George Kirikos
>> 416-588-0269
>> http://www.leap.com/
>>
>>
>>
>>
>>> On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc at vlaw-dc.com> wrote:
>>> WG members:
>>>
>>>
>>>
>>> We have been having some very lively and occasionally heated
>>> discussions on TMCH-related matters. However, these discussions have
>>> been somewhat amorphous as they have not been focused on any specific
>>> proposal for altering the TMCH. That is about to change, as the time
>>> for discussion of TMCH matters is closing and the time for decisions is
>>> fast approaching..
>>>
>>>
>>>
>>> In that regard, please take special note of this portion of the email
>>> sent by Mary---
>>>
>>>
>>>
>>> For Agenda Item #2, please note the following:
>>>
>>> As these questions have already been the subject of substantial
>>> Working Group discussion, the aim at this meeting is to allow Working
>>> Group members who wish to propose recommendations for the full Working
>>> Group to consider to do so. Any such proposals or recommendations
>>> should be specific, include a list of the benefits and costs,
>>> advantages and disadvantages, and be sent to the Working Group mailing
>>> list no later than 7 days following the call this week (i.e. 19 April).
>>>
>>>
>>>
>>> In other words, starting tomorrow we are both soliciting, and will
>>> soon be setting a final deadline, for the presentation of proposals to
>>> alter the current policy concerning the TMCH and its implementation,
>>> with such proposals relating to specific TMCH questions.
>>>
>>>
>>>
>>> That means that if you are of a view that the TMCH should be
>>> eliminated because you believe it gives unfair advantage to TM owners
>>> you will have a chance to present a proposal to that effect.
>>>
>>>
>>>
>>> Likewise, if you are of the view that additional terms besides
>>> registered trademarks should be eligible for placement in the TMCH
>>> database you will also have a chance to make your case and seek consensus
>>> support.
>>>
>>>
>>>
>>> The above two examples are merely illustrative and by no means
>>> intended to limit anyone’s ability to advocate any question-specific
>>> response.
>>>
>>>
>>>
>>> In an April 9th email I laid out my expectations for how proposals
>>> would be presented -- Since then the co-chairs have engaged in a
>>> conference call and concurred on this approach, and that is reflected
>>> in Mary’s advisory--
>>>
>>>
>>>
>>> Here’s how this co-chair would hope our internal decision process
>>> plays out on this or any other policy/implementation matter:
>>>
>>> · A proponent of making a change to present policy and practice
>>> should articulate the rationale for the proposal and the benefits
>>> expected to flow from its adoption.
>>>
>>> · The proponent should also be candid about what costs or burdens
>>> might be imposed on various parties if it is adopted and explain why
>>> those costs are outweighed by the envisioned benefits.
>>>
>>> · If an adopted change would not be self-executing but would
>>> require
>>> significant implementation details then the proponent should at least
>>> explain the basics how that would be practically effected.
>>>
>>>
>>>
>>> I believe that if proponents of making a change follow those
>>> suggestions it will set the stage for at least a fully informed debate
>>> and subsequent decision-making.
>>>
>>>
>>>
>>> The co-chairs have also agreed that when the WG is presented with a
>>> specific proposal we shall, after some reasonable time for discussion,
>>> take a straw poll of WG members participating in the meeting in which
>>> it is raised to ROUGHLY gauge the level of support/opposition for it.
>>> However, that straw poll will not be binding and whether or not
>>> consensus exists for a particular proposal will be determined by
>>> polling the entire membership of the WG.
>>>
>>>
>>>
>>> If you have any concerns or questions about this approach please let
>>> us know. Again, the main message is that, so far as the TMCH is
>>> concerned, the time for concluding talk and making decisions is fast
>>> approaching.
>>>
>>>
>>>
>>> Thank you and best regards,
>>>
>>> Philip
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> Philip S. Corwin, Founding Principal
>>>
>>> Virtualaw LLC
>>>
>>> 1155 F Street, NW
>>>
>>> Suite 1050
>>>
>>> Washington, DC 20004
>>>
>>> 202-559-8597/Direct
>>>
>>> 202-559-8750/Fax
>>>
>>> 202-255-6172/Cell
>>>
>>>
>>>
>>> Twitter: @VlawDC
>>>
>>>
>>>
>>> "Luck is the residue of design" -- Branch Rickey
>>>
>>>
>>>
>>> From: gnso-rpm-wg-bounces at icann.org
>>> [mailto:gnso-rpm-wg-bounces at icann.org]
>>> On Behalf Of Mary Wong
>>> Sent: Monday, April 10, 2017 5:56 PM
>>> To: gnso-rpm-wg at icann.org
>>> Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working
>>> Group meeting (12 April)
>>>
>>>
>>>
>>> Dear all,
>>>
>>>
>>>
>>> The proposed agenda for our call this Wednesday (12 April), which is
>>> scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
>>>
>>>
>>>
>>> 1. Roll call (via Adobe Connect and phone bridge only); updates to
>>> Statements of Interest
>>>
>>> 2. Discuss remaining open TMCH Charter questions (see attached table
>>> and notes, below)
>>>
>>> 3. Overview by Co-Chairs on preliminary recommendations related to
>>> RPMs from the Competition, Consumer Protection & Consumer Trust Review
>>> Team
>>> (CCT-RT) (see attached document)
>>>
>>> 4. Administrative details: e.g. Working Group & Sub Team meeting
>>> dates
>>> for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th
>>> rotating
>>> (0300 UTC) Working Group call
>>>
>>> 5. Next steps/next meeting
>>>
>>>
>>>
>>> For Agenda Item #2, please note the following:
>>>
>>> As these questions have already been the subject of substantial
>>> Working Group discussion, the aim at this meeting is to allow Working
>>> Group members who wish to propose recommendations for the full Working
>>> Group to consider to do so. Any such proposals or recommendations
>>> should be specific, include a list of the benefits and costs,
>>> advantages and disadvantages, and be sent to the Working Group mailing
>>> list no later than 7 days following the call this week (i.e. 19 April).
>>>
>>>
>>>
>>> Thanks and cheers
>>>
>>> Mary
>>>
>>> ________________________________
>>>
>>> No virus found in this message.
>>> Checked by AVG - www.avg.com
>>> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date:
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>>>
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> _______________________________________________
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