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

Tue Mar 28 20:50:44 UTC 2017

Jeff:

Replying in my capacity as co-chair, although not having consulted collectively with the other co-chairs on this matter:

·         I agree that we should consider the views contained in the letter relevant to our current work and set the other views aside for now and reference them when they become relevant.

·         I welcome the input of the signatories of the letter and would hope that they – as well as all others with an interest in our work, regardless of their POV – will participate in our WG going forward.

·         I do not think we should set an agenda that is focused on reviewing the letter from this group, as that would set a  precedent whereby we might be obliged to do the same for every other group that wished to convey collective views to our WG at any point in the future.

·         I do not think it is particularly relevant who authored the letter as my past experience with such letters is that they are modified substantially in the course of obtaining signatures. In any event, once someone has signed such a letter they have bound themselves to all the views and assertions contained within.

Finally, after having just reviewed the letter again, this strikes me as the most important clause:
Given these developments, we urge ICANN to reevaluate the premises of many of its existing rights protection mechanisms to ensure that they do not exceed the purposeful boundaries of trademark rights. Such a review is appropriately within the scope of the Review of all Rights Protection Mechanisms PDP Working Group. We respectfully request that this review be undertaken. Until such a review is undertaken, any further expansion of the rights provided by the Trademark Clearinghouse to domains that it does not already cover, including legacy domains, would be premature.

I have often stated the view that ICANN has an absolute responsibility to respect and uphold existing legal rights, but also has absolutely no authority to create claims or mechanisms that go beyond existing law. I do not believe we need to conduct a separate review “to reevaluate the premises of many of its existing rights protection mechanisms to ensure that they do not exceed the purposeful boundaries of trademark rights” because I believe that we have been making such evaluations in the regular course of our work.

Again, given their strong views on this subject, I would urge the signatories to the letter to consider joining in our work as that is the best and proper means of assuring that their concerns are raised and considered by the entire WG.

Best to all, Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
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Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Jeff Neuman
Sent: Tuesday, March 28, 2017 10:54 AM
To: Mary Wong; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto: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> [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<mailto: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
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