[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
    >>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C4b131d4e9eca410ffbee08d4761716ae%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636263288918966688&sdata=H2cbheIJLyR5FqBy%2F0X4wRyoQb1YYNHl6lrFxF2Ejq0%3D&reserved=0
    >>>>>>>>> 
    >>>>>>>>> _______________________________________________
    >>>>>>>>> gnso-rpm-wg mailing list
    >>>>>>>>> gnso-rpm-wg at icann.org
    >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C4b131d4e9eca410ffbee08d4761716ae%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636263288918966688&sdata=H2cbheIJLyR5FqBy%2F0X4wRyoQb1YYNHl6lrFxF2Ejq0%3D&reserved=0
    >>>>>>>> 
    >>>>>>>> 
    >>>>>>>> 
    >>>>>>>> _______________________________________________
    >>>>>>>> gnso-rpm-wg mailing list
    >>>>>>>> gnso-rpm-wg at icann.org
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    >>>>>>> _______________________________________________
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    >>>>>>> 
    >>>>>>> 
    >>>>>>> 
    >>>>>>> 
    >>>>>> 
    >>>>>> _______________________________________________
    >>>>>> gnso-rpm-wg mailing list
    >>>>>> gnso-rpm-wg at icann.org
    >>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C4b131d4e9eca410ffbee08d4761716ae%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636263288918966688&sdata=H2cbheIJLyR5FqBy%2F0X4wRyoQb1YYNHl6lrFxF2Ejq0%3D&reserved=0
    >>>>> 
    >>>>> 
    >>>>> 
    >>>>> 
    >>>> 
    >>> 
    >>> !DSPAM:58dabffd17168279290674!
    >>> 
    >>> 
    >> 
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