[gnso-rpm-wg] [renamed] TMCH Charter Question #15 - Should TMCH Database remain confidential or become open?

Thu Apr 13 21:27:22 UTC 2017

Reg, thanks for that viewpoint.
J Scott, thanks for setting the record straight.

Greg

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com

On Thu, Apr 13, 2017 at 5:15 PM, Kiran Malancharuvil via gnso-rpm-wg <
gnso-rpm-wg at icann.org> wrote:

> +1
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Susan Payne
> *Sent:* Thursday, April 13, 2017 2:12 PM
> *To:* Reg Levy <reg at mmx.co>; J. Scott Evans <jsevans at adobe.com>
>
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] [renamed] TMCH Charter Question #15 - Should
> TMCH Database remain confidential or become open?
>
>
>
> Thanks Reg, that’s a really useful alternative take on the benefits of not
> having the TMCH records open
>
>
>
>
>
> *Susan Payne*
>
> *Head of Legal Policy* | *Valideus Ltd*
>
> 28-30 Little Russell Street
>
> London, WC1A 2HN, United Kingdom
>
>
>
> E: susan.payne at valideus.com
>
> D: +44 20 7421 8255 <+44%2020%207421%208255>
>
> T: +44 20 7421 8299 <+44%2020%207421%208299>
>
> M: +44 7971 661175 <+44%207971%20661175>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Reg Levy
> *Sent:* 13 April 2017 21:07
> *To:* J. Scott Evans <jsevans at adobe.com>
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] [renamed] TMCH Charter Question #15 - Should
> TMCH Database remain confidential or become open?
>
>
>
> Speaking as the compliance contact of a registry, it has been helpful for
> me in the past that the TMCH database *was* secret.
>
>
>
> My tech people had access to it and, where necessary (I believe I used
> this *once*, to confirm that a particular trademark existed in the
> database), I could reach out to them for certain things, but I have a hard
> enough time convincing sales that [trademark].vodka is *not* a premium
> name without giving them a list of delicious looking names. Forcing them to
> create their own master lists of premiums was annoying, time consuming, and
> expensive for the registry but saved more time and expense than allowing
> them to salivate over a list of trademarks.
>
>
>
> /R
>
>
>
> Reg Levy
> VP Compliance + Policy | Minds + Machines Group Limited
> C: +1-310-963-7135 <(310)%20963-7135>
> S: RegLevy2
>
> Current UTC offset: -7
>
>
>
> On 13 Apr 2017, at 12:56, J. Scott Evans via gnso-rpm-wg <
> gnso-rpm-wg at icann.org> wrote:
>
>
>
> Kathy:
>
>
>
> I want to address a few comments made in your note below. See my comments
> in red inline below.
>
>
>
> J. Scott
>
>
>
>
>
> <image001.gif>
>
> *J. Scott Evans*
>
> 408.536.5336 <(408)%20536-5336> (tel)
>
> 345 Park Avenue, Mail Stop W11-544
>
> Director, Associate General Counsel
>
> 408.709.6162 <(408)%20709-6162> (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 Kathy Kleiman <
> kathy at kathykleiman.com>
> *Date: *Thursday, April 13, 2017 at 12:47 PM
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *[gnso-rpm-wg] [renamed] TMCH Charter Question #15 - Should
> TMCH Database remain confidential or become open?
>
>
>
> All,
>
> Important arguments, issues and concerns have been made on both sides of
> this question. There are arguments in favor of the confidentiality of the
> TMCH Database. There are certainly arguments that been made in favor of the
> openness of the TMCH Database, including:
>
> - that it was originally open (that's what the GNSO Council and ICANN
> Board passed) I vehemently disagree. I was on the IRT and I remember
> Kristina Rosette being extremely vocal on the point of confidentiality
> during the IRT process and afterwards.
>
> - that a key rationale for keeping the TMCH database open and searchable
> by 3rd parties was to allow a level of self-policing by registrants -- to
> allow them to better understand the Trademark Claims notices they might be
> receiving I disagree. The reasoning for making the Claims Notice so wordy
> and voluminous was to give the applicant the information they might need to
> conduct an investigation on their own. There was never, in my memory, the
> idea of the TMCH database being a tool for applicants and/or registrants.
> The basic reasoning behind creation of the TMCH was to create a singular
> point for validation so that TRADEMARK owners would not need to comply with
> hundreds of different validation methodologies for the Sunrise periods that
> have been available in all new gTLD rollouts.
>
> - that for noncommercial organizations and SMEs trying to name new groups,
> services and products, the ability to search the TMCH Database entries *ahead
> of time *to know what goods and services those trademarks protect is part
> of a due diligence, good faith search Responsible parties already have
> this ability. Its called conducting a trademark search.
>
> - that there might be gaming in the Sunrise Period, the TM Claims and
> Private Protections using the TMCH Database in ways it was not intended for
> purposes and protections it was not intended to provide. I have not seen
> a systems yet in the DNS that someone, somewhere has not found a way to
> game for their advantage.
>
> We have decided to table this question -- Question #15 -- until *after*
> the RPM evaluation. That time period should allow us to evaluate the range
> of issues, questions, options and alternatives being discussed very quickly
> on this list.
>
> Quick note that the time will allow our wonderful Staff to summarize the
> questions, issues, options, alternatives and resolutions being shared so
> rapidly on this list for Question #15 -- so that all Members and Observers
> of this WG have the time to evaluate and provide input.
>
> Best, Kathy
>
>
>
> On 4/13/2017 10:41 AM, Marie Pattullo wrote:
>
> Brand holders have repeatedly explained why the data in the TMCH is
> confidential, Paul. Access to that data won’t show you the “abuse” 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 doesn’t show you any form of abusive, or benign,
> behaviour – it’s a lis, .
>
>
>
> The (small) Sunrise take-up provides no evidence of mass abusive
> registration. So that leaves “abuse” in the Claims Notices, but those
> Notices don’t allow the TM owner to be abusive either – they’re just a
> heads up.
>
>
>
> So with respect, I simply don’t understand your repeated claims that you
> need access to this data to find “abuse”. 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
> doesn’t 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; you’ll forgive me for believing the
> contrary.
>
>
>
> Kind regards
>
>
>
> Marie
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <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@
> icann.org <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 <(212)%20775-8720> | fax 212 775 8820
> <(212)%20775-8820>
> > ghn at kilpatricktownsend.com | https://linkprotect.cudasvc.
> com/url?a=https://www.kilpatricktownsend.com&c=E,1,
> kgJUlMQkaC7zcn6Rs66Ti2At9D_Ui1TtDyL3pG1zG__KTS7tVBHLK8dmlR-Js0Y7uaJnKxz_
> Zkc5RY8ItO8pCAXh9h_yFUPJgf2JB9nUCVpnQzK0&typo=1
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Flinkprotect.cudasvc.com%2Furl%3Fa%3Dhttps%3A%2F%2Fwww.kilpatricktownsend.com%26c%3DE%2C1%2CkgJUlMQkaC7zcn6Rs66Ti2At9D_Ui1TtDyL3pG1zG__KTS7tVBHLK8dmlR-Js0Y7uaJnKxz_Zkc5RY8ItO8pCAXh9h_yFUPJgf2JB9nUCVpnQzK0%26typo%3D1&data=02%7C01%7C%7C30e5ff8984c44d2d353108d482a60b25%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277097040327053&sdata=0sjADnWg0DXYUKMkxlUag4Zv8k%2Fy%2FTFsch%2BgVnNAuE8%3D&reserved=0>
> >
> >
> >
> > -----Original Message-----
> > From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <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 company’s
> 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 <(408)%20536-5336> (tel)
> >> 345 Park Avenue, Mail Stop W11-544
> >> Director, Associate General Counsel
> >> 408.709.6162 <(408)%20709-6162> (cell)
> >> San Jose, CA, 95110, USA
> >> Adobe. Make It an Experience.
> >> jsevans at adobe.com
> >> 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
> <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&data=02%7C01%7C%7C2528000b02f744c8d69a08d4811e3b81%
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> FLU88IUnUq0DTixWIhDAELHUtjhYZgxqHGr8ihACkQ8%3D&reserved=0
> >> jmalcolm at eff.org
> >>
> >> Tel: 415.436.9333 ext 161 <(415)%20436-9333>
> >>
> >> :: 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%7C2528000b02f744c8d69a08d4811e3b81%
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> >> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
> >>
> >>
> >>
> >>
> >> _______________________________________________
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