[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 20:47:42 UTC 2017
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, 1:09 PM, "gnso-rpm-wg-bounces at icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces at icann.org on behalf of paul at law.es> wrote:
This is not just an issue between cybersquatter and trademark holders.
There are many commonly used words in the TMCH that give the trademark holder the exclusive global right to a domain name. Because the word(s) at issue are not inherently distinctive and can be used for many many other purposes - including their definitional purpose, this exclusivity offends me. It precludes anyone from having the chance to use the same word or phrase in a perfectly legitimate manner. JSE _ THAT IS A GROSS OVER STATEMENT. REGISTRATION IN THE CLEARINGHOUSE GIVES YOU NO RIGHT. THE VALIDATE TRADEMARK RIGHTS GIVE YOU THE ABILITY TO PROACTIVELY PROTECT YOUR RIGHTS SHOULD A PARTY CHOOSE TO PURCHASE A SUNRISE REGISTRATION. ADOBE RARELY PURCHASES SUNRISE REGISTRATIONS.
Why?
Are there not enough other protective mechanisms in place to protect trademark holders? NOT COST EFFECTIVE MECHANISMS.
Yes, there will be cybersquatter who abuse domain registrations. This is true. There are also many criminals who will abuse knives, cars, etc. however the ability to misuse is not accepted as a reason to engage in pre-emptive restrictions. Those exceptions are limited to situations in which there is no legitimate use (e.g. Automatic weapons, etc).
To investigate this issue we need access to the lists. I see no reason why the list cannot and should not be made public. If the registrations are legitimate and have been used in a fair and honest manner there should be no objection to transparency.
Sent from my iPad
> On 28 Mar 2017, at 21:52, 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://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%7Caa97b31b1c894417d7c908d476166133%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636263285864564585&sdata=psQCyqDHjoxqYLdoMnDSqdz4Xws0vVZkM7YDqZfMXd8%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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