[gnso-rpm-wg] Recommendation II for Question #8

[Kathy Kleiman]

All,
Question #8 has been very much before us in discussions online, 
questions to Deloitte, and at meetings. I greatly respect Paul McGrady's 
early submission, and of course, support it. But I think that the 
requirements of this process require a little more foundation and 
discussion of harm, and I see a slightly different scope of concern. 
Accordingly, this longer discussion is set out below (and attached as a 
PDF). This is a separate recommendation from that of Paul's, hence its 
title "Recommendation II for Question #8."

As before, I submit this recommendation in my capacity as a member of 
the Working Group, and not as a co-chair.

Tx you for your review,
Kathy
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*Recommendation for Question #8: Marks Protected by Statue or Treaty*

It is with considerable interest that the RPM WG has evaluated the 
question of Deloitte accepting into the TMCH database marks protected by 
statute or treaty. In our investigation we have found:

1.The wording that creates this subcategory of protected marks does not 
come from the recommendations adopted by the GNSO Council or ICANN Board;

2.Everyone who sees these rules interprets them differently:

oSome think it is solely to protect those marks expressly set out in 
treaty, e.g., “Olympics”

oOthers think it is to protect categories of organizations, such as 
International Governmental Organizations; and

oStill others think it is to protect such as geographical indications.

3.Deloitte will not explain how they interpret this section or what they 
are accepted into the TMCH database.

4.Acceptance of “marks protected by statute or treaty” appears to be a 
direct violation of the original intent and instructions of the rules 
adopted by the GNSO Council and ICANN Board.

Specifically, Item 1.1 of the TMCH rules adopted by the Council and 
Board provides for only acceptance of trademarks:

*“The name of the rights protection mechanism should be the ‘Trademark 
Clearinghouse’ to signify that only trademarks are to be included in the 
database.” *

Section 1. Name; 1.1 Trademark Clearinghouse; 
https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf

Second, by these adopted rules, _anything that is not a trademark cannot 
be entered into the main TMCH Database, but may be segregated into 
another “ancillary database”: _

*“The TC Service Provider should be required to maintain a separate TC 
database, and may not store any data in the TC database related to its 
provision of ancillary services, if any.” *

Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation 
of the Trademark Clearinghouse Database.

__

Finally, the limitations above were passed by “Unanimous consent” of all 
Stakeholder Groups in the STI, and then adopted unanimously by the GNSO 
Council and ICANN Board.

*/Accordingly, the rules adopted by the GNSO Council and ICANN Board are 
very clear: the Trademark Clearinghouse is for Trademarks./*

**

/Origin of Problem: /

The Applicant Guidebook appears to be the source of this odd expansion 
of subcategories for “marks” being accepted into the Trademark 
Clearinghouse database.In the Applicant Guidebook, Module 5, /Trademark 
Clearinghouse Section,/ we find:

*Section 3, /Criteria for Trademark Inclusion in Clearinghouse/:*

*“3.2 The standards for inclusion in the Clearinghouse are: *

*3.2.1 [Skipped]*

*3.2.2 [Skipped]*

*3.2.3 Any word mark protected by a statute or treaty in effect at the 
time the mark is submitted to the Clearinghouse for inclusion.*

*3.2.4 Other marks that constitute intellectual property.”*

https://newgtlds.icann.org/en/applicants/agb

**

It is not clear that 3.2.3 is only for trademarks (and clearly Deloitte 
does not interpret it so) or what 3.2.4 means or includes. In all 
events, neither of two subcategories were discussed or approved by the 
GNSO Council and ICANN Board.

Further, under the express rules adopted, any results of 3.2.3 and 3.2.4 
that are not trademarks would have to be entered into a *different 
database, not the main Trademark Clearinghouse database used for 
Community-Approved RPMs* (per STI Recommendations, Section 2, 
Functionality of the Trademark Clearinghouse, 2.3 Segregation of the 
Trademark Clearinghouse Database above).

Overall, we know that at least 75 terms have been approved by Deloitte 
under 3.2.3 without regard to their trademark status and are currently 
in the TMCH Database.

/Harm:/

The TMCH Database is growing beyond the rules established and set by the 
GNSO Council, ICANN Board or ICANN Community. This deeply harms the 
Multistakeholder Process. As discussed extensively on the RPM PDP WG 
list, the original GNSO committees worked long and hard and carefully 
balanced the rights of those seeking trademark protection and those 
seeking to register domain names in New gTLDs. Allowing into the 
Trademark Clearinghouse new types of entries is a decision for this 
Working Group, but not for Deloitte or ICANN Staff.

Second, these subsections allow a level of interpretation and discretion 
never intended for the Trademark Clearinghouse Provider. Through Section 
3.2.3 and 3.2.4, Deloitte is engaged in a new function of discretion, 
interpretation and choice – one without rules, guidance and oversight by 
ICANN and ICANN Community. Ultimately, we don’t even understand what is 
being accepted (and Deloitte would not tell us).

Third, these subsections (3.2.2 and 3.2.4) harm all of those seeking to 
register domain names, in good faith for their new groups, companies, 
goods, services, hobbies, speech, research and education. Absent a 
trademark right of precedence, all other domain names should be open and 
available to the world to register. That was the promise of the New gTLD 
Program.

/Action: /

The WG has an oversight obligation to ensure the rules adopted by the 
Community are followed. We can ensure that subcategories 3.2.3 and 3.2.4 
are allowed *only to the extent they are registered trademarks*. 
Alternatively, the Working Group *by consensus* may CHANGE the rules and 
present to the GNSO Council and the ICANN Board a new set of standards 
by which Deloitte (or any future TMCH provider) may review and accept 
these subcategories of marks.

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