[gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
J. Scott Evans
jsevans at adobe.com
Tue Mar 28 20:43:26 UTC 2017
With all due respect Rebecca, any person or entity that wants a domain can and should run a trademark search. They don’t need the Clearinghouse for that.
J. Scott Evans
408.536.5336 (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 (cell)
San Jose, CA, 95110, USA
Adobe. Make It an Experience.
jsevans at adobe.com
www.adobe.com
On 3/28/17, 12:52 PM, "gnso-rpm-wg-bounces at icann.org on behalf of Marie Pattullo" <gnso-rpm-wg-bounces at icann.org on behalf of 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2017%2F03%2F10%2Ftm_scholars_letter_to_icann_final.pdf&data=02%7C01%7C%7C01dfa19d34ed48f5349408d47613f6b9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636263275517185713&sdata=cyzUw49X7IgjS4ZoM%2BiQ6uBUefv68SHEUxIe6pohDo0%3D&reserved=0.
>>>>>>
>>>>>>
>>>>>>
>>>>>> 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
>>>>>>
>>>>>>
>>>>>> _______________________________________________
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>>>>>
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