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

Thu Apr 20 09:31:04 UTC 2017

Sorry Kathy, but I believe your thinking on this is fundamentally flawed.
There is nothing in STI Principle 1.1 that requires the ‘registration’ of a
trademark or service mark.

The registration of trademarks simply evidences the existence of marks of
the underlying goods and services. 6ter evidences Governmental & IGO marks
in a similar way.

In order to have their mark infringed a Government or IGO has to offer a
service i.e. be known by that mark, this is sufficient under TMCH.

There is therefore no need to change the existing rules and I beleive this
proposal should be withdrawn.

Paul

On Thu, Apr 20, 2017 at 1:35 AM, Kathy Kleiman <kathy at kathykleiman.com>
wrote:

> 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
> ------------------------------------------------------------
> --------------------------------------------------------------------------
>
> *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:
>
>
>
> o   Some think it is solely to protect those marks expressly set out in
> treaty, e.g., “Olympics”
>
> o   Others think it is to protect categories of organizations, such as
> International Governmental Organizations; and
>
> o   Still 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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>
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