[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 21:08:14 UTC 2017
The truth is that the Notice was originally designed by Neustar in lieu of the Sunrise. However, in an effort to offer a broad array of options, the TMCH data was tied to 2 possible RPMs. The original notice designed by the IRT was simply a notice of prior rights. Concerned that the IRT suggested notice was too simple, the STI (in response to urging from Kathy and like-minded others) was to create the (IMHO) overly complex notice we have now.
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, 2:01 PM, "Paul Keating" <paul at law.es> wrote:
J.Scott,
With all respect,
The notice process was requested by trademark holders in order to establish actual notice. Constructive notice was not then accepted by UDRP panels.
Sent from my iPad
> On 28 Mar 2017, at 22:49, J. Scott Evans <jsevans at adobe.com> wrote:
>
> Paul:
>
> Always taking the most negative view. The notice serves to warn a party that there could be an issue so that purchaser can make an informed decision before proceeding.
>
>
> 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, 1:14 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:
>
> 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://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%7C4b131d4e9eca410ffbee08d4761716ae%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636263288918966688&sdata=Hauy9Ot2Y6ym%2Bvt3ke%2BzRe0SrK%2Bb6upkKVZyGY6oRmA%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
>>>>>>>>>>
>>>>>>>>>>
>>>>>>>>>> _______________________________________________
>>>>>>>>>> gnso-rpm-wg mailing list
>>>>>>>>>> gnso-rpm-wg at icann.org
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>>>>>>>>>
>>>>>>>>> _______________________________________________
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>>>>>>>>
>>>>>>>>
>>>>>>>>
>>>>>>>> _______________________________________________
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>>>>>>>
>>>>>>>
>>>>>>>
>>>>>>>
>>>>>>
>>>>>> _______________________________________________
>>>>>> gnso-rpm-wg mailing list
>>>>>> gnso-rpm-wg at icann.org
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>>>>>
>>>>>
>>>>>
>>>>>
>>>>
>>>
>>> !DSPAM:58dabffd17168279290674!
>>>
>>>
>>
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