[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 18:09:17 UTC 2017 

Georges and Marie,

I'm Sorry but you are rather missing the point.

The point is not to see who filed marks with the TMCH.

The point is to see what marks were registered with the TMCH and the basis
for acceptance.

The list clearly shows the type of marks included and the basis for their
inclusion.  This in turn allows a determination as to whether or not the
corresponding domain was registered in sunrise or not.  This in turn allows
the WG to find out the extent to which the TMCH is being abused so as to
allow sunrise registrations that should not be permitted.  It can also be
cross-referenced against theist-sunrise  notifications.

Again, our task is to assess whether what exists is fit for purpose or not.
If not, we are able to provide recommendations.  It is possible that the
TMCH is being abused and that as it stands is not fit for purpose.  I am not
so prejudiced to presume that there is no gaming.   However, I am not
predisposed to find abuse or to request changes to the existing system.  I
DO want to know.  And, I am suspicious of those who resist a reasonable
claim for transparency.

I also understand that while some have argued that the information is
confidential, I have not seen any contractual or legal provision granting it
that status.  Argument is not evidence.  If the information was submitted
per contract that did not protect confidentiality then there is frankly no
basis to make such an argument now ­ has it not been waived? .  And, of
course, I don¹t think we need all of the data points on the list.

Regards,


From:  Georges Nahitchevansky <ghn at kilpatricktownsend.com>
Date:  Thursday, April 13, 2017 at 5:50 PM
To:  Marie Pattullo <marie.pattullo at aim.be>, Paul Keating <paul at law.es>,
'Brian Scarpelli' <BScarpelli at actonline.org>
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

> +1  GN
>  
> 
> 
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of Marie Pattullo
> Sent: Thursday, April 13, 2017 10:42 AM
> To: 'Paul Keating'; '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
>  
> 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 <tel:517-507-1446>  | bscarpelli at actonline.org
>> <mailto: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 <mailto: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 <mailto: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 <mailto:ghn at kilpatricktownsend.com>  |
>>> https://linkprotect.cudasvc.com/url?a=https://www.kilpatricktownsend.com&c=E
>>> ,1,kgJUlMQkaC7zcn6Rs66Ti2At9D_Ui1TtDyL3pG1zG__KTS7tVBHLK8dmlR-Js0Y7uaJnKxz_Z
>>> kc5RY8ItO8pCAXh9h_yFUPJgf2JB9nUCVpnQzK0&typo=1
>>> <https://linkprotect.cudasvc.com/url?a=https://www.kilpatricktownsend.com&c=
>>> E,1,kgJUlMQkaC7zcn6Rs66Ti2At9D_Ui1TtDyL3pG1zG__KTS7tVBHLK8dmlR-Js0Y7uaJnKxz_
>>> Zkc5RY8ItO8pCAXh9h_yFUPJgf2JB9nUCVpnQzK0&typo=1>
>>> > 
>>> > 
>>> > 
>>> > -----Original Message-----
>>> > From: gnso-rpm-wg-bounces at icann.org <mailto: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 Paul Keating
>>> > Sent: Tuesday, April 11, 2017 5:58 PM
>>> > To: J. Scott Evans
>>> > Cc: gnso-rpm-wg at icann.org <mailto: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 <mailto: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 <mailto: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 
>>>> <mailto:gnso-rpm-wg-bounces at icann.org%20on%20behalf%20of%20Jeremy%20Malcolm
>>>> > " <gnso-rpm-wg-bounces at icann.org on behalf of jmalcolm at eff.org
>>>> <mailto:gnso-rpm-wg-bounces at icann.org%20on%20behalf%20of%20jmalcolm 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&da
>>>> ta=02%7C01%7C%7C2528000b02f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c1
>>>> 78decee1%7C0%7C0%7C636275414221363260&sdata=FLU88IUnUq0DTixWIhDAELHUtjhYZgx
>>>> qHGr8ihACkQ8%3D&reserved=0
>>>> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&d
>>>> ata=02%7C01%7C%7C2528000b02f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c
>>>> 178decee1%7C0%7C0%7C636275414221363260&sdata=FLU88IUnUq0DTixWIhDAELHUtjhYZg
>>>> xqHGr8ihACkQ8%3D&reserved=0>
>>>> >> jmalcolm at eff.org <mailto: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.or
>>>> g%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2528000b02f
>>>> 744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627541
>>>> 4221373268&sdata=GzYW9x04IhxeW3HTyWRedWTpbiQQOrfZfflAKXdh04M%3D&reserved=0
>>>> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.o
>>>> rg%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2528000b02
>>>> f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C6362754
>>>> 
14221373268&sdata=GzYW9x04IhxeW3HTyWRedWTpbiQQOrfZfflAKXdh04M%3D&reserved=0>
>>>> >> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
>>>> >> 
>>>> >> 
>>>> >> 
>>>> >> 
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