[gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

[Paul Keating]

Personally I have yet to hear a valid reason for having the database closed:

1. All underlying trademarks are public record
2. All TMCH registrants have the right to secure the relevant domain names
during sunrise (or simply freeze them per Donuts)
3. The TMCH has a notice provision should # 2 not be selected but the mark
holder or the domain is an ³equal² to the TMCH entry
4. The URS exists
5. The UDRP exists
6. The Courts exist.

The only concern I have heard is that cybersquatters may register the actual
mark or around the mark.  This is not a real issue:

A. The mark holder can register
B. The mark holder can exclude (via Donuts)
C. The mark holder can issue a notice
D. The mark holder can use the URS
E. The mark holder can use the UDRP
F. The mark holder can use the judicial system

HOWEVER, on the flip side, we keep hearing about all of these TMCH entries
that would cause your grandmother to roll in her grave.  This COULD be
perceived as an attempt by the mark holders to keep quiet about THEIR land
grab based on claims that are entirely generic (JSCOTT ­ sorry) and have no
business being included in a preemptive preclusion that if used against our
own personal interests would be deemed offensive.


SHOW ME THE LIST (drain the swamp), however you want to say it.  Get it out
in the open. Look at it.  If there is no issue then ignore it.  The more you
try to keep something hidden the more people want to see it ­ distrusting
the reasons for keeping it hidden in the first place.

My 2C.

Paul Keating

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan
<gregshatanipc at gmail.com>
Date:  Tuesday, March 28, 2017 at 6:30 PM
To:  Michael Karanicolas <michael at law-democracy.org>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars
and information on Deloitte Ancillary Services

> Michael,
> 
> Do you have any solutions for the issues and concerns that have been mitigated
> by having the database be closed?
> 
> Thanks!
> 
> Greg
> 
> Greg Shatan
> C: 917-816-6428
> S: gsshatan
> Phone-to-Skype: 646-845-9428
> gregshatanipc at gmail.com <mailto:gregshatanipc at gmail.com>
> 
> 
> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas
> <michael at law-democracy.org> wrote:
>> Hi all,
>> 
>> Just building on the discussion around transparency, after hearing the
>> conversation at ICANN 58 I drafted my own short note setting out my
>> thoughts on the issue, which I'm attaching here.
>> 
>> I want to be mindful of the conversation on inputs which is ongoing
>> now - so hopefully it isn't out of place or inappropriate to submit my
>> thoughts via this method.
>> 
>> I very much look forward to further discussions on this issue.
>> 
>> Best wishes,
>> 
>> Michael Karanicolas
>> 
>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman at comlaude.com>
>> wrote:
>>> > Thanks Mary.
>>> >
>>> >
>>> >
>>> > Co-Chairs,
>>> >
>>> >
>>> >
>>> > Can I assume that with respect to the EFF letter, the only items we would
>>> be
>>> > discussing from that letter at this point are their comments with respect
>>> to
>>> > design marks and the transparency of the TMCH database?
>>> >
>>> > I am not saying the other comments are not important, but with respect to
>>> > this Working Group at this time, we are not yet addressing those other
>>> > issues.
>>> >
>>> >
>>> >
>>> > I would strongly urge that we not engage yet in the other discussion
>>> around
>>> > the other comments at this point (namely, trademark rights in general), as
I
>>> > think that could lead us down a large rabbit hole and considerably slow
>>> down
>>> > out work.
>>> >
>>> >
>>> > Thanks.
>>> >
>>> >
>>> >
>>> > Jeffrey J. Neuman
>>> >
>>> > Senior Vice President |Valideus USA | Com Laude USA
>>> >
>>> > 1751 Pinnacle Drive, Suite 600
>>> >
>>> > Mclean, VA 22102, United States
>>> >
>>> > E: jeff.neuman at valideus.com or jeff.neuman at comlaude.com
>>> >
>>> > T: +1.703.635.7514 <tel:%2B1.703.635.7514>
>>> >
>>> > M: +1.202.549.5079 <tel:%2B1.202.549.5079>
>>> >
>>> > @Jintlaw
>>> >
>>> >
>>> >
>>> >
>>> >
>>> > From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
>>> > On Behalf Of Mary Wong
>>> > Sent: Tuesday, March 28, 2017 6:15 AM
>>> > To: gnso-rpm-wg at icann.org
>>> > Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and
>>> > information on Deloitte Ancillary Services
>>> >
>>> >
>>> >
>>> > Dear all,
>>> >
>>> >
>>> >
>>> > During the ICANN58 Working Group sessions in Copenhagen, the following two
>>> > matters came up for which staff is now following up with the requested
>>> > document (for #1) and information (for #2).
>>> >
>>> >
>>> >
>>> > Item #1: Letter of 10 March 2017 from some trademark scholars and
>>> > practitioners to our Working Group co-chairs expressing concerns with
>>> > certain aspects of the TMCH:
>>> > 
>>> https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf.
>>> >
>>> >
>>> >
>>> > Item #2: Question regarding the Ancillary Services that Deloitte is
>>> > permitted to provide under its Validation Agreement with ICANN, subject to
>>> > ICANN¹s authorization.
>>> >
>>> >
>>> >
>>> > Currently, two Ancillary Services have been approved by ICANN:
>>> >
>>> > 1.       Extended Claims Services
>>> >
>>> > The extended claims services provide the Trademark Holder or Trademark
>>> > Agent, as applicable, with an electronic notification when a domain name
>>> > registered in an Eligible TLD matches one or more of such party¹s recorded
>>> > labels with the TMCH.  The extended claims services does not include a
>>> > domain name pre-registration notification (i.e. a notification to the
>>> > potential registrant of a domain name that the domain name such registrant
>>> > intends to register matches a label recorded with the Trademark
>>> > Clearinghouse).
>>> >
>>> >
>>> >
>>> > 2.       Audit Report
>>> >
>>> > Deloitte may offer an audit report service for Trademark Holders and
>>> > Trademark Agents with active Trademark Records recorded in the Trademark
>>> > Clearinghouse.  Such audit reports shall consist primarily of a listing of
>>> > matches between their recorded labels within the Trademark Clearinghouse
>>> and
>>> > domain names registered in an Eligible TLD.
>>> >
>>> >
>>> >
>>> > FYI, Deloitte¹s contract with ICANN is for an initial period expiring on
>>> the
>>> > fifth anniversary of ICANN¹s entry into a Registry Agreement under the New
>>> > gTLD Program, with consecutive one-year renewals thereafter. Although
>>> > Deloitte currently serves as the sole TMCH validator, ICANN may appoint
>>> > additional validators once ten Qualified Sunrise Periods have been
>>> completed
>>> > under the New gTLD Program.
>>> >
>>> >
>>> >
>>> > Thanks and cheers
>>> >
>>> > Mary
>>> >
>>> >
>>> > _______________________________________________
>>> > gnso-rpm-wg mailing list
>>> > gnso-rpm-wg at icann.org
>>> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> 
>> _______________________________________________
>> gnso-rpm-wg mailing list
>> gnso-rpm-wg at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> 
> _______________________________________________ gnso-rpm-wg mailing list
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