[GNSO-RPM-WG] Q#15 Transparency for the TMCH

Mon Oct 14 20:03:26 UTC 2019

Michael

With all due respect not every country is listed in the WIPO database.  In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this.  Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside.  the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here

From: mkaranicolas at gmail.com
Sent: October 14, 2019 4:36 PM
To: gnso-rpm-wg at icann.org
Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi all,

A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://www3.wipo.int/branddb/en/ It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn.

Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim.

I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent.

Best,

Michael

On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>> wrote:
Good points, Marc.

And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of minimizing misuse of access.

As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction.

Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice.

If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration.

The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address.

Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain.

So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns.

http://www.circleid.com/posts/20120828_trademark_clearinghouse_secure_reliable_usable_pick_any_two/

"The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access."

Later in the article:

"But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems."

On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>> wrote:
Two reasons:

1. Trademark Claims only runs for 90 days after Sunrise; and

2. The claims notice does not pop up when a domain name is searched.  The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed

In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk  - i.e., if there is no TMCH entry the person would be charged for the registration.  This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate.

Best regards,

Marc H. Trachtenberg
Shareholder
Greenberg Traurig, LLP
77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
T +1 312.456.1020
trac at gtlaw.com<mailto:trac at gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> |  View GT Biography

-----Original Message-----
From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>] On Behalf Of Michael Karanicolas
Sent: Saturday, October 12, 2019 1:30 PM
To: Greg Shatan <gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

*EXTERNAL TO GT*

Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH?

On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>> wrote:
>
> Jason and all,
>
> This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.
>
> I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.
>
> I am not even aware of the use of the strategy as described in its totality.  I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.
>
> As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH.  These activities include:  Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.
>
> However, if I'm incorrect about any of this, I'm always happy to learn new facts.
>
> I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly.  Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware.  I can't speak to who or what type of applicant engages in even this limited practice.
>
> I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise.  The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.
>
> Best regards,
>
> Greg
>
> On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason at esqwire.com<mailto:jason at esqwire.com>> wrote:
>>
>> Hi All,
>>
>>
>>
>> Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile.  After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue.   It seems the opposition to an open/transparent TMCH have set forth the following rationale:
>>
>>
>>
>> Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.   For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.”   In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy.   Alternatively, there may also be a similar use case with a registration in the EU.  This is what I understand the opposition was presenting in the comments last week and again yesterday.
>>
>>
>>
>> This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic.   However, we are discussing this in the context of the TMCH.  How can these parties obtain Sunrise protection without proof of use?   This is even more challenging in the case of an EU registration that might not be based on actual use.
>>
>>
>>
>> If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy?  What is the POU and what is the declarant stating to the TMCH?  Is this the position that the opposition is proffering to block transparency of the TMCH?
>>
>>
>>
>> In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.
>>
>>
>>
>> Thanks,
>>
>>
>>
>> Jason
>>
>>
>>
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