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

Paul Keating paul at law.es
Tue Mar 28 20:14:46 UTC 2017


Marie,

Sorry but I don't understand your questions.

The notice is intended to remove the ignorance defense of the registrant.  It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue.  In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something .

One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice).  


Sent from my iPad

> On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo at aim.be> wrote:
> 
> And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them?
> M
> 
> Sent from my iPhone, sorry for typos 
> 
>> On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
>> 
>> Unfortunately, "searching a TM registry" won't get the job done,
>> because--as we've discussed before in other contexts--TMCH
>> registrations are different. They provide claims no matter what the
>> goods or services are.  No matter what I want to use "the" or "color"
>> etc. for, they're in the TMCH.  That is different from any trademark
>> registry (even most of the previous attempts to create "fame"
>> registries required goods/services listings).
>> Rebecca Tushnet
>> Georgetown Law
>> 703 593 6759
>> 
>> 
>>> On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo at aim.be> wrote:
>>> 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
>>>>>>>> 
>>>>>>>> _______________________________________________
>>>>>>>> gnso-rpm-wg mailing list
>>>>>>>> gnso-rpm-wg at icann.org
>>>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>>> 
>>>>>>> 
>>>>>>> 
>>>>>>> _______________________________________________
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>>>>>> _______________________________________________
>>>>>> gnso-rpm-wg mailing list
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>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>> 
>>>>>> 
>>>>>> 
>>>>>> 
>>>>> 
>>>>> _______________________________________________
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>>>> 
>>>> 
>>>> 
>>>> 
>>> 
>> 
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>> 
> 
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