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

Wed Mar 29 16:03:54 UTC 2017

Hi Brian,

I wanted to add something too. The open Whois is notorious for bad information because it is public and not consistently verified.   INTA supports an open, verifiable and contactable whois.  However, we could support gated access if the information could be guaranteed to be more reliable than what we currently have in the open whois.

Lori

Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman

[cid:image005.jpg at 01D270D2.1801CD20]

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Beckham, Brian
Sent: Wednesday, March 29, 2017 11:58 AM
To: Kathy Kleiman <kathy at kathykleiman.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

All,

I have tried my best to catch up on this thread, and would like to offer the following observations before our call:

It seems that one of the leading reasons advanced (of those articulated at least) for requesting the public release of certain TMCH data is a desire to address gaming of Sunrises (occasioned by what may well be challengeable trademark registrations) by registrants obtaining priority on domain names corresponding to dictionary terms -- ostensibly to be considerably monetized in various fashions.  This speculative market practice should not be mistaken for the purpose behind Sunrises:  trademark owners defensively registering domain names as part of a rights protection strategy.

To the extent there is such (appropriately evidenced) gaming, aside from the rather obvious possibility of challenging the underlying trademark registration inappropriately invoked for a Sunrise, there is already a challenge process contemplated for such disputes amongst speculators.
See 1.2 (2 and 3) at: www.trademark-clearinghouse.com/dispute<http://www.trademark-clearinghouse.com/dispute>.

Moreover, the reasons articulated in Brian Winterfeldt's (Mayer Brown team's) email (attached for ease of reference) merit consideration as a good starting point as to the issue of publicity of TMCH data.  Bona fide trademark owners should not be penalized for abuse by speculators who are abusing trademark registration systems and Sunrise processes to obtain a certain subset of (dictionary term) domain name registrations.

Finally, regarding the topic of data transparency, building on the points raised by Paul Keating and J Scott Evans, this Working Group may want to consider the extent to which this principle may be appropriate to apply to WhoIs (as to accuracy, as much as to transparency).  As was stated in the Report of the First WIPO Internet Domain Name Process (www.wipo.int/amc/en/processes/process1/report/finalreport.html<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html>):

"322.  The lack of reliable contact details often is highlighted as a major obstacle in the resolution of [cybersquatting cases]."

In the nearly two decades since the publication of that Report, it seems this issue may not yet have been adequately considered or addressed.

Kind regards,

Brian

Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center
34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham at wipo.int<mailto:brian.beckham at wipo.int> | www.wipo.int<http://www.wipo.int/>

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 Kathy Kleiman
Sent: Wednesday, March 29, 2017 5:14 PM
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

I have yet to review this material, but I have been reaching out to STI Members. When the TMCH Database left the STI, GNSO Council, and ICANN Board acceptance it was an open database.

I think we have an interesting issue to review.

Best, Kathy

On 3/29/2017 10:17 AM, Mary Wong wrote:
Hello everyone,

If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH.

The attached document excerpts some text from the IAG's final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential.

Cheers
Mary

From: <gnso-rpm-wg-bounces at icann.org><mailto:gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating <Paul at law.es><mailto:Paul at law.es>
Date: Tuesday, March 28, 2017 at 23:08
To: "J. Scott Evans" <jsevans at adobe.com><mailto:jsevans at adobe.com>
Cc: "gnso-rpm-wg at icann.org"<mailto:gnso-rpm-wg at icann.org> <gnso-rpm-wg at icann.org><mailto:gnso-rpm-wg at icann.org>, Michael Karanicolas <michael at law-democracy.org><mailto:michael at law-democracy.org>
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

I've not yet seen any such articulated reasons.  Care to provide them?

Sent from my iPad

On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>> wrote:
Paul:

I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change.

J. Scott

<image001.gif>

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<mailto:jsevans at adobe.com>

www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=xzS0_a7gh_CbP93HDCn4gCiEPf61PKMba02eWelzxC0&s=QGu3yeTOdbOcCfjnVYkndyNSP8JSD3FM3-F3Icw1jYE&e=>

From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Paul Keating <paul at law.es<mailto:paul at law.es>>
Date: Tuesday, March 28, 2017 at 12:21 PM
To: Marie Pattullo <marie.pattullo at aim.be<mailto:marie.pattullo at aim.be>>
Cc: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>, Michael Karanicolas <michael at law-democracy.org<mailto:michael at law-democracy.org>>
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

Question.

solutions for the issues and concerns that have been

mitigated by having the database be closed

Can someone please list the issues and concerns at issue here?

And, how has closing the database mitigated any of them?

Sent from my iPad

On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo at aim.be<mailto:marie.pattullo at aim.be>> wrote:
solutions for the issues and concerns that have been
mitigated by having the database be closed

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