[GNSO-RPM-WG] 3.2.4 transcript with ICANN General Counsel confirming status

[Paul Tattersfield]

Claudio, Thank you for the archive link. Under Rebecca’s and your
proposal, including these latest thoughts on section 3.2.4, which
section do you feel a mark like UNHCR would be entered in under the
proposal/recommendation?

On 10/16/19, claudio di gangi <ipcdigangi at gmail.com> wrote:
> All,
>
> I am very happy that ICANN is transparent and transcribes is meetings,
> which is particularly essential in this fluid and complex environment.
>
> Since I was involved in the ICANN committee that developed the proposal for
> the Trademark Clearinghouse, which was called the IP Clearinghouse, I have
> known from the start that the concept of allowing other forms of IP in the
> Clearinghouse was always part of the concept, because there was always
> broad agreement that the ICANN-imposed Mandatory RPMs, were the ceiling and
> not the floor.
>
> The new gTLD Registry controls the allocation of all domain names within
> its TLD, and can therefore establish voluntary mechanisms, consistent with
> local laws, to protect consumers from confusion and harm from malicious
> actors.
>
> Since the Clearinghouse database is just an administrative tool to support
> the implementation of these mechanisms, both mandatory and voluntary, there
> was never a reason to exclude certain forms of IP in the Clearinghouse for
> the sole purpose of supporting the voluntary RPMS that a specific Registry
> may adopt.
>
> We have reached consensus on this point, in particular through the
> ancillary database concept, but have gotten snagged on the wording of
> particular provisions, including 3.2.3 and 3.2.4
>
> Section 3.2.4 currently states: "Other marks that constitute intellectual
> property" - and this category: 3.2.4 - is NOT for the mandatory Sunrise or
> Claims period, but for voluntary registry-specific RPMs.
>
> I located the transcript from the ICANN meeting when the Applicant
> Guidebook was essentially completed; it had reach the near final stage.
>
> 3.2.4 was specifically discussing during this meeting; the confusion with
> the language was identified (and it was even predicted that it was going to
> cause confusion) and ICANN staff and General Counsel agreed that 3.2.4
> extended to other forms of IP beyond trademarks. In other words, we have
> been confused on this clause simply because of imprecise drafting of this
> provision.
>
> Please see the transcript here: https://archive.icann.org/en/
> meetings/singapore2011/bitcache/Trademark%20Clearinghouse%20Implementation%20Plan-vid=26005&disposition=attachment&op=download.txt
>
> I am quoting the relevant section:
>
> "J. Scott Evans: Another comment to Amy. Amy, I think that the guidebook's
> use of "other marks" confusing, and that needs to be changed to "other
> indicia," because we're already talking about marks in trademarks, and if
> you just make that
> one change, because I think the idea is there are other indicia other than
> trademarks that might be protected by the local registry, and we just need
> to make that clear.  Because I think there's some confusion, well, if
> trademarks are here, what are other marks.
>
>>>AMY STATHOS:  Right.  And with respect to the assignment issue, sometimes
> the database that has the assignment documents may be different than the
> actual database that has the actual registration, so looks like it's
> something that --
>
> -------
>
> So 3.2.4. was always intended to allow other forms of IP to be recorded in
> the main TMCH database for implementation of voluntary Registry-specific
> voluntary RPMs. I hope this closes the debate on 3.2.4. and here is my
> proposed modification to bring clarity to its meaning:
>
> "3.2.4 Other Signs or Indicia that constitute intellectual property"
>
> Best regards,
> Claudio
>