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

Marie Pattullo marie.pattullo at aim.be
Tue Mar 28 19:52:22 UTC 2017


Thanks Rebecca. 
If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. 
Marie

Sent from my iPhone, sorry for typos 

> On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
> 
> I think the value of transparency has been articulated here several
> times, whether or not you agree: legitimate market entrants--who, not
> for nothing, are also likely to be trademark owners--may want to know
> what they can do.  People concerned with the integrity of the register
> want to know whether (as current data seem to indicate) many of the
> existing registrants and many existing claims notices are asserting
> control over domain names whose value is distinct from trademark value
> attributable to the registrant.  Those are the usual values of
> transparency: knowing what's going on so one can order one's own
> behavior accordingly, and/or advocate for change where change is
> desirable.
> 
> On the other side, I find persuasive the argument that cybersquatters
> generally don't need to consult any records to figure out what domains
> they want and thus I find it hard to identify the harm to be avoided.
> We are talking here about the marginal impact of transparency in the
> TMCH added to the public nature of registration (searchable online in
> many large nations) and the public nature of trademark fame (e.g.,
> Twentieth Century Fox, to take an example that's been discussed).  For
> me, transparency in the TMCH would provide a lot of TMCH-relevant
> information but has only a marginal effect on information about
> trademark values generally, arguing in favor of transparency.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
> 
> 
>> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo at aim.be> wrote:
>> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer?
>> 
>> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No?
>> 
>> Marie
>> 
>> Sent from my iPhone, sorry for typos
>> 
>>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael at law-democracy.org> wrote:
>>> 
>>> Hi Greg,
>>> 
>>> If I had a perfect solution to prevent cybersquatting in my pocket I
>>> probably would have led with it :)
>>> 
>>> That said, my aim in drafting that was to try and help frame the
>>> discussion, rather than to try and close it. Look, my expertise is
>>> more on the transparency side than on the trademark side. But on the
>>> transparency side, we deal with potential harms all the time - be they
>>> for information involving national security, personal privacy - or
>>> legitimate commercial interests like trademark protection. And
>>> generally, we seek to find an avenue forward which provides adequate
>>> protection for these interests, while respecting the overarching
>>> interest in openness. This calculus shouldn't mean that openness is
>>> abandoned whenever a potential for harm is encountered. Indeed, if
>>> that were the case almost no information would end up being put out
>>> there. Rather, it means assessing the specific harms that would flow
>>> directly from the specific disclosures, weighing them against the
>>> public interest in disclosure, and seeking ways to work around those
>>> harms which also provide for maximum openness.
>>> 
>>> So, while I don't have a readymade solution to present, I do think we
>>> need to work together to find one. Reverting to secrecy is just not
>>> consistent with ICANN's broader mission, given that the entire model
>>> is based on public oversight and accountability.
>>> 
>>> Looking forward to engaging on this further.
>>> 
>>> Michael
>>> 
>>> P.S. I'm not sure why it's at all relevant who actually drafted the
>>> text of the EFF letter? As someone who's been involved in many similar
>>> efforts, they can be done fully collaboratively, or with one or two of
>>> the signatories taking the lead. Either way though, all of the names
>>> attached to it have approved and endorsed it. These are very senior
>>> and respected experts - they don't just throw their names on any
>>> document that's sent their way. If they signed the letter it means
>>> they support it - what does it matter who held the pen?
>>> 
>>> 
>>> 
>>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:
>>>> 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
>>>> 
>>>> 
>>>> 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
>>>>>> 
>>>>>> M: +1.202.549.5079
>>>>>> 
>>>>>> @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
>>>>>> ICANN’s 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 party’s
>>>>>> 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, Deloitte’s contract with ICANN is for an initial period expiring on
>>>>>> the
>>>>>> fifth anniversary of ICANN’s 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
>>>>> 
>>>>> _______________________________________________
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>>>> 
>>>> 
>>>> 
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>>> 
>>> 
>> 
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