[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Paul Keating Paul at law.es
Thu Apr 13 17:57:39 UTC 2017


Jscott,

As I have noted, it would seem all that is needed is the following:

The mark
The basis for inclusion (obviously not the reg. number).

I do not think we would need other information.

And, even if we did I cannot find any prohibition against disclosure to this
WG based upon the summary files Mary sent today.

Regards,

Paul

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of "J. Scott Evans via
gnso-rpm-wg" <gnso-rpm-wg at icann.org>
Reply-To:  "J. Scott Evans" <jsevans at adobe.com>
Date:  Thursday, April 13, 2017 at 5:52 PM
To:  Greg Shatan <gregshatanipc at gmail.com>, Marie Pattullo
<marie.pattullo at aim.be>, Michael Karanicolas <mkaranicolas at gmail.com>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
Group call held earlier today

> I think we can safely assume in ICANN-land that there is gaming going on. I am
> also sure that in some cases there may be overreaching going on. That said,
> given the number of domains registered in new gTLDs and the relatively low
> number of Sunrise registrations being registered. I am not sure this as big a
> problem as everyone is making it out to be. There are ways to mitigate this
> gaming and abuse without having to reveal the confidential information in the
> database. I have several ideas. I will put together some thoughts.
>  
> J. Scott
>  
>  
> 
> J. Scott Evans408.536.5336 (tel)345 Park Avenue, Mail Stop W11-544
> Director, Associate General Counsel408.709.6162 (cell)San Jose, CA, 95110, USA
> Adobe. Make It an Experience.jsevans at adobe.comwww.adobe.com
>  
>  
>  
>  
> 
> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan
> <gregshatanipc at gmail.com>
> Date: Thursday, April 13, 2017 at 8:35 AM
> To: Marie Pattullo <marie.pattullo at aim.be>, Michael Karanicolas
> <mkaranicolas at gmail.com>
> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
> Group call held earlier today
> 
>  
> 
> We need to agree on definitions of "abuse" or "gaming" before we "investigate"
> anything.  
> 
>  
> 
> If "abuse" refers to an entity that is getting TM registrations solely to gain
> sunrise access, and not because they have an ongoing business providing goods
> or services using the brand, then I'm not sure what a list of marks alone
> would contribute.
> 
>  
> 
> On the other hand, the idea that a list of marks alone would be helpful in
> finding "abuse" seems to point to a position that "abuse" relates to the
> word(s) in the mark, even though the mark is used in an ongoing business in
> connection with providing goods or services and the mark has a valid trademark
> registration.
> 
>  
> 
> There may be other proposed definitions besides the above.  Let's focus on
> getting this out on the table so we can decide what constitutes
> "abuse"/"gaming".
> 
>  
> 
> Until we get clarity on this point, any discussion of investigation of "abuse"
> is premature.
> 
>  
> 
> Greg
> 
>  
> 
>  
> 
> On Thu, Apr 13, 2017 at 11:17 AM Michael Karanicolas <mkaranicolas at gmail.com>
> wrote:
>> Ok. I appreciate your response. I think it's very helpful to
>> understand the concerns as clearly as possible, so I guess my question
>> would be how sensitive that information is if we're talking about one
>> brand SMEs. I can understand if we're talking about a major company
>> with lots of different brands, looking at their prioritization would
>> give an insight into their future strategies, but if there's only one
>> brand, there's not much of a marketing insight you could get from
>> seeing what they've taken, is there?
>> 
>> 
>> 
>> On Thu, Apr 13, 2017 at 11:55 AM, Marie Pattullo <marie.pattullo at aim.be>
>> wrote:
>>> > Thanks Michael - but that's not really a flyer for TMs that are easily
>>> recognisable (and thus attributable to an owner). Worse, what about the
>>> one-brand SME?
>>> >
>>> > -----Original Message-----
>>> > From: Michael Karanicolas [mailto:mkaranicolas at gmail.com]
>>> > Sent: jeudi 13 avril 2017 16:52
>>> > To: Marie Pattullo
>>> > Cc: Paul Keating; Brian Scarpelli; gnso-rpm-wg at icann.org
>>> > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
>>> Group call held earlier today
>>> >
>>> > Hi - I understand the objection. So what if the identity of the
>>> registering party was scrubbed from the data before it was delivered?
>>> > That way, readers wouldn't be able to tie the registrations to any broader
>>> brand strategy, because they wouldn't be able to develop a comprehensive
>>> list of brands registered by any particular party. All you would see is a
>>> list of what's been taken.
>>> >
>>> > Would that resolve the concern about confidentiality?
>>> >
>>> > On Thu, Apr 13, 2017 at 11:41 AM, Marie Pattullo <marie.pattullo at aim.be>
>>> wrote:
>>>> >> Brand holders have repeatedly explained why the data in the TMCH is
>>>> >> confidential, Paul. Access to that data won¹t show you the ³abuse² you
>>>> >> believe you may find: it will simply show you a list of the marks that
>>>> >> a brand owner has paid to record in the TMCH. Why do you want to know
>>>> >> that, please? That list doesn¹t show you any form of abusive, or
>>>> >> benign, behaviour ­ it¹s a list.
>>>> >>
>>>> >>
>>>> >>
>>>> >> The (small) Sunrise take-up provides no evidence of mass abusive
>>>> >> registration. So that leaves ³abuse² in the Claims Notices, but those
>>>> >> Notices don¹t allow the TM owner to be abusive either ­ they¹re just a
>>>> >> heads up.
>>>> >>
>>>> >>
>>>> >>
>>>> >> So with respect, I simply don¹t understand your repeated claims that
>>>> >> you need access to this data to find ³abuse². In cases where there are
>>>> >> questionable base marks, there are cancellation proceedings before IPOs.
>>>> >> There are means to dispute a Sunrise allocation. Receiving a Claims
>>>> >> Notice doesn¹t stop you registering a DN. And taking a case in bad
>>>> >> faith, or against bad faith, is always an option.
>>>> >>
>>>> >>
>>>> >>
>>>> >> It is of course your right to believe that you should have access to
>>>> >> the commercial strategy of brand holders; you¹ll forgive me for
>>>> >> believing the contrary.
>>>> >>
>>>> >>
>>>> >>
>>>> >> Kind regards
>>>> >>
>>>> >>
>>>> >>
>>>> >> Marie
>>>> >>
>>>> >>
>>>> >>
>>>> >> From: gnso-rpm-wg-bounces at icann.org
>>>> >> [mailto:gnso-rpm-wg-bounces at icann.org]
>>>> >> On Behalf Of Paul Keating
>>>> >> Sent: jeudi 13 avril 2017 16:22
>>>> >> To: Brian Scarpelli
>>>> >>
>>>> >>
>>>> >> Cc: gnso-rpm-wg at icann.org
>>>> >> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
>>>> >> Working Group call held earlier today
>>>> >>
>>>> >>
>>>> >>
>>>> >> George and Brian,
>>>> >>
>>>> >>
>>>> >>
>>>> >> You seem to have an agenda.   And thou protest too much.
>>>> >>
>>>> >>
>>>> >>
>>>> >> Our collective task is to investigate and make recommendations. It
>>>> >> isn't possible to do either if denied access to I formation.
>>>> >>
>>>> >>
>>>> >>
>>>> >> Regarding TMCH I only ask for a list of the mark's under registration.
>>>> >> This is to see IF there has been abuse and IF SO then whether it
>>>> >> reaches to the level of requiring corrective action.
>>>> >>
>>>> >>
>>>> >>
>>>> >> I am not certain if anything beyond the mark's is necessary.
>>>> >>
>>>> >>
>>>> >>
>>>> >> I repeatedly hear that the TMCH is confidential. I have not seen
>>>> >> anything to support such a claim.  The terms provided by George showed
>>>> >> no basis for a privacy expectation.
>>>> >>
>>>> >>
>>>> >>
>>>> >> If the list of the mark's in the TMCH database shows no abuse I will
>>>> >> join the obvious majority to recommend no corrective action. For you
>>>> >> surely cannot believe that this group would support changes in the
>>>> >> absence of abuse.
>>>> >>
>>>> >>
>>>> >>
>>>> >> Conversely if abuse is shown and the abuse is serious enough to
>>>> >> warrant corrective action I trust you will join with me I crafting an
>>>> >> appropriate solution.
>>>> >>
>>>> >>
>>>> >>
>>>> >> What is required is a list of marks and the basis for submission. I am
>>>> >> not at all sure how the registrant ID would be relevant. Hence I have
>>>> >> no understanding how it could be confidential.  Thus I have no idea
>>>> >> what you are trying so hard to hide. But will tell you that the harder
>>>> >> you try the more I will be interested in investigating.
>>>> >>
>>>> >>
>>>> >>
>>>> >> Whois is a completely separate issue with vastly different privacy
>>>> concerns.
>>>> >> I am happy to address the WHOIS and the TMCH issues within their
>>>> >> respective WGs.
>>>> >>
>>>> >>
>>>> >>
>>>> >>
>>>> >> Sincerely,
>>>> >>
>>>> >> Paul Keating, Esq.
>>>> >>
>>>> >>
>>>> >> On Apr 13, 2017, at 1:26 PM, Brian Scarpelli
>>>> >> <BScarpelli at actonline.org>
>>>> >> wrote:
>>>> >>
>>>> >> +1, I also agree.
>>>> >>
>>>> >>
>>>> >>
>>>> >> Brian Scarpelli
>>>> >> Senior Policy Counsel
>>>> >> 517-507-1446 | bscarpelli at actonline.org ACT | The App Association
>>>> >>
>>>> >>
>>>> >>
>>>> >> From: gnso-rpm-wg-bounces at icann.org
>>>> [mailto:gnso-rpm-wg-bounces at icann.org]
>>>> >> On Behalf Of Scott Austin
>>>> >> Sent: Wednesday, April 12, 2017 12:46 PM
>>>> >> To: Nahitchevansky, Georges <ghn at kilpatricktownsend.com>; Paul Keating
>>>> >> <paul at law.es>
>>>> >> Cc: gnso-rpm-wg at icann.org
>>>> >> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
>>>> Working
>>>> >> Group call held earlier today
>>>> >>
>>>> >>
>>>> >>
>>>> >> +1 Georges. Opacity, well put. Transparency as subterfuge, what a
>>>> concept.
>>>> >>
>>>> >> -------- Original Message --------
>>>> >> From: "Nahitchevansky, Georges" <ghn at kilpatricktownsend.com>
>>>> >> Date: Wed, Apr 12, 2017, 8:08 AM
>>>> >> To: Paul Keating <paul at law.es>
>>>> >> CC: gnso-rpm-wg at icann.org
>>>> >> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
>>>> Working
>>>> >> Group call held earlier today
>>>> >>
>>>> >> Actually it touches on the point here. If you are going to make various
>>>> >> arguments of alleged abuse in support of claimed transparency, then it
>>>> would
>>>> >> it is relevant to know whether you are supporting a lack of transparency
in
>>>> >> the whois side of things where abuse has been rampant. While the TMCH
>>>> and
>>>> >> Whois are different animals a number of the arguments being made here to
>>>> >> support transparency have actually been mirrored in the other context
>>>> and
>>>> >> rejected by those seeking opacity.  And one major difference between
>>>> the
>>>> >> two situations is that there is widespread evidence of abuse of the
>>>> whois
>>>> >> system whereas here in the TMCH context you do not have evidence of a
>>>> >> widespread abuse of the TMCH by brand owners. Nevertheless, you and
>>>> others
>>>> >> persist on wanting to conduct a fishing expedition under the guise of so
>>>> >> called "transparency" to try and find some alleged widespread harm that
>>>> >> simply does not exist. To many folks on the other side of the aisle, it
>>>> >> appears that this is not about transparency but more about some effort
to
>>>> >> gut existing protections and to obtain the release of confidential
>>>> >> information of brand owners as to what they did or did not register.
>>>> >> Perhaps this may not be the intent, but we all know that once that
>>>> >> information is out the gaming will really begin. Again, perhaps there
>>>> are
>>>> >> tweeks that could be made to improve the current system, but there is no
>>>> >> real basis for undertaking the broad review that is being sought and
>>>> >> certainly not for undoing the entire existing system.
>>>> >>
>>>> >> 
>>>> >>   Original Message
>>>> >> From: Paul Keating
>>>> >> Sent: Tuesday, April 11, 2017 6:33 PM
>>>> >> To: Nahitchevansky, Georges
>>>> >> Cc: J. Scott Evans; gnso-rpm-wg at icann.org
>>>> >> Subject: Re: Action Items,      Slides and Notes from the Working Group
>>>> call
>>>> >> held earlier today
>>>> >>
>>>> >> George,
>>>> >>
>>>> >> You can always quote me. I say what I have said. I only ask that you
>>>> quote
>>>> >> me accurately. The discussion here is the TMCH database. Please let's
>>>> stay
>>>> >> on topic.
>>>> >>
>>>> >> Happy to discuss Whois separately.
>>>> >>
>>>> >>
>>>> >> Sent from my iPad
>>>> >>
>>>>> >>> On 12 Apr 2017, at 00:18, Nahitchevansky, Georges
>>>>> >>> <ghn at kilpatricktownsend.com> wrote:
>>>>> >>>
>>>>> >>> Can I quote you in this on having an open and robust whois so we can
>>>>> have
>>>>> >>> across the board actual and real information on the parties
>>>>> registering
>>>>> >>> domain names and know who the bad actors are
>>>>> >>>
>>>>> >>> Georges Nahitchevansky
>>>>> >>> Kilpatrick Townsend & Stockton LLP
>>>>> >>> The Grace Building | 1114 Avenue of the Americas | New York, NY
>>>>> 10036-7703
>>>>> >>> office 212 775 8720 | fax 212 775 8820
>>>>> >>> ghn at kilpatricktownsend.com |
>>>>> >>> 
>>>>> https://linkprotect.cudasvc.com/url?a=https://www.kilpatricktownsend.com&c
>>>>> =E,1,kgJUlMQkaC7zcn6Rs66Ti2At9D_Ui1TtDyL3pG1zG__KTS7tVBHLK8dmlR-Js0Y7uaJnK
>>>>> xz_Zkc5RY8ItO8pCAXh9h_yFUPJgf2JB9nUCVpnQzK0&typo=1
>>>>> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Flinkprot
>>>>> ect.cudasvc.com%2Furl%3Fa%3Dhttps%3A%2F%2Fwww.kilpatricktownsend.com%26c%3
>>>>> DE%2C1%2CkgJUlMQkaC7zcn6Rs66Ti2At9D_Ui1TtDyL3pG1zG__KTS7tVBHLK8dmlR-Js0Y7u
>>>>> aJnKxz_Zkc5RY8ItO8pCAXh9h_yFUPJgf2JB9nUCVpnQzK0%26typo%3D1&data=02%7C01%7C
>>>>> %7C7f0d096cdf824770bd6b08d48282dd12%7Cfa7b1b5a7b34438794aed2c178decee1%7C0
>>>>> %7C0%7C636276945959842606&sdata=KQqypwUZScDzyOXWePOjQWLwG9dUTfh5YDvVew2fKk
>>>>> I%3D&reserved=0>
>>>>> >>>
>>>>> >>>
>>>>> >>>
>>>>> >>> -----Original Message-----
>>>>> >>> From: gnso-rpm-wg-bounces at icann.org
>>>>> [mailto:gnso-rpm-wg-bounces at icann.org]
>>>>> >>> On Behalf Of Paul Keating
>>>>> >>> Sent: Tuesday, April 11, 2017 5:58 PM
>>>>> >>> To: J. Scott Evans
>>>>> >>> Cc: gnso-rpm-wg at icann.org
>>>>> >>> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
>>>>> Working
>>>>> >>> Group call held earlier today
>>>>> >>>
>>>>> >>> It says at most which domains it wants pre-emptiness and notice rights
>>>>> >>> over.
>>>>> >>>
>>>>> >>> Hardly a confidential business secret. The information is a public
>>>>> record.
>>>>> >>> And, After all the Information is instantly public the minute one
>>>>> >>> pre-emptive sunrise registration is undertaken. The notice right is
>>>>> >>> completely a non secret.
>>>>> >>>
>>>>> >>> And hardly sufficient to use to hide bad actors.
>>>>> >>>
>>>>> >>>
>>>>> >>>
>>>>> >>> Sent from my iPad
>>>>> >>>
>>>>>> >>>> On 11 Apr 2017, at 23:18, J. Scott Evans via gnso-rpm-wg
>>>>>> >>>> <gnso-rpm-wg at icann.org> wrote:
>>>>>> >>>>
>>>>>> >>>> There is a big difference from a database that contains all a
>>>>>> company¹s
>>>>>> >>>> registered marks and one that contains a culling for only those it
>>>>>> deems
>>>>>> >>>> most valuable for protection in the DNS. The former is clearly open
>>>>>> for the
>>>>>> >>>> public, the later is not.
>>>>>> >>>>
>>>>>> >>>> J. Scott
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>> 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 <http://www.adobe.com>
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>> On 4/11/17, 2:03 PM, "gnso-rpm-wg-bounces at icann.org on behalf of
>>>>>> Jeremy
>>>>>> >>>> Malcolm" <gnso-rpm-wg-bounces at icann.org on behalf of
>>>>>> jmalcolm at eff.org>
>>>>>> >>>> wrote:
>>>>>> >>>>
>>>>>> >>>> On 11/4/17 9:43 am, J. Scott Evans via gnso-rpm-wg wrote:
>>>>>>> >>>>> George:
>>>>>>> >>>>>
>>>>>>> >>>>> We have all followed this string. We understand that you and a few
>>>>>>> >>>>> others believe there need to be wholesale changes to the Sunrise
>>>>>>> mechanism
>>>>>>> >>>>> and the TMCH database (or at least the confidentiality of that
>>>>>>> data).
>>>>>>> >>>>>
>>>>>>> >>>>> 1. Do you have a suggestion for how to improve the Sunrise
>>>>>>> mechanism?
>>>>>>> >>>>> 2. I see very little support for violating the confidentiality
>>>>>>> >>>>> provisions of the TMCH contract.
>>>>>> >>>>
>>>>>> >>>> FWIW I am also all for bringing the transparency of the TMCH
>>>>>> database
>>>>>> >>>> into line with those of national trademark registries so that its
>>>>>> >>>> secrecy does not facilitate the kinds of abuses that George has
>>>>>> >>>> uncovered. I have been an observer until now but I've just upgraded
to
>>>>>> >>>> member and plan to join the call tomorrow.
>>>>>> >>>>
>>>>>> >>>> --
>>>>>> >>>> Jeremy Malcolm
>>>>>> >>>> Senior Global Policy Analyst
>>>>>> >>>> Electronic Frontier Foundation
>>>>>> >>>>
>>>>>> >>>> 
>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&
>>>>>> data=02%7C01%7C%7C2528000b02f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794ae
>>>>>> d2c178decee1%7C0%7C0%7C636275414221363260&sdata=FLU88IUnUq0DTixWIhDAELHUt
>>>>>> jhYZgxqHGr8ihACkQ8%3D&reserved=0
>>>>>> >>>> jmalcolm at eff.org
>>>>>> >>>>
>>>>>> >>>> Tel: 415.436.9333 ext 161
>>>>>> >>>>
>>>>>> >>>> :: Defending Your Rights in the Digital World ::
>>>>>> >>>>
>>>>>> >>>> Public key:
>>>>>> >>>> 
>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.
>>>>>> org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2528000
>>>>>> b02f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63
>>>>>> 6275414221373268&sdata=GzYW9x04IhxeW3HTyWRedWTpbiQQOrfZfflAKXdh04M%3D&res
>>>>>> erved=0
>>>>>> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>>
>>>>>> >>>> _______________________________________________
>>>>>> >>>> gnso-rpm-wg mailing list
>>>>>> >>>> gnso-rpm-wg at icann.org
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959852615&sdata=YSCOkL8CBUshRMSvjPbH2%2BQnbggsEpz7NCmbTVKqZVg%3D&reserved=0>
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> 
> -- 
> 
> Greg Shatan
> C: 917-816-6428
> S: gsshatan
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