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

Thu Apr 20 13:15:04 UTC 2017

As with Trademarks, another good reason why all TMCH marks should be
subject to proof of use not just those opting in to Sunrise.

On Thu, Apr 20, 2017 at 1:38 PM, Phil Corwin <psc at vlaw-dc.com> wrote:

> In regard to this:
>
>                 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.
>
>
>
> While I’m not sure how Deloitte handles TMCH applications submitted by
> IGOs for their names or acronyms, I note (in my capacity as Co-Chair of the
> WG on CRP for IGOs) that numerous parties, including the IPC, recently
> submitted comments to the effect that notification to WIPO of 6ter rights
> did not establish anything equivalent to a trademark, and at best might
> constitute evidence of common law TM rights. In addition the US government
> asserted that some IGOs that have submitted 6ter notification are not
> authentic IGOs, and referred our WG to the IGO list compiled by the GAC as
> being definitive.
>
>
>
> So if IGOs are being granted the ability to register names or acronyms ion
> the TMCH based merely upon 6ter notification that would appear to be a
> problem based upon the feedback the CRP WG has received.
>
>
>
>
>
> *Philip S. Corwin, Founding Principal*
>
> *Virtualaw LLC*
>
> *1155 F Street, NW*
>
> *Suite 1050*
>
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>
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>
> *202-559-8750 <(202)%20559-8750>/Fax*
>
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>
>
>
> *Twitter: @VlawDC*
>
>
>
> *"Luck is the residue of design" -- Branch Rickey*
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Paul Tattersfield
> *Sent:* Thursday, April 20, 2017 5:31 AM
> *To:* Kathy Kleiman
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Recommendation II for Question #8
>
>
>
> 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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