[GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019

Kathy Kleiman kathy at kathykleiman.com
Wed Oct 23 15:22:26 UTC 2019 

The Trademark Clearinghouse database -- as negotiated by the GNSO 
Council appointed group and approved unanimously by the GNSO Council and 
ICANN Board -- was *not* secret or confidential. It's openness was 
discussed, debated and agreed to as a monitoring and oversight 
mechanism, and additionally because so much of what was already within 
the TMCH would be public materials -- registered trademarks themselves.


Kathy (with my hat as member of the STI)


On 10/23/2019 10:52 AM, Marie Pattullo wrote:
>
> Thanks, Julie. I’m about to go into a call so apologies for the hit & 
> run response, but initial thoughts inline:
>
> Para one:
>
> The Working Group understands that, on the one hand, trademark owners 
> may register trademarks and enter them into the Trademark 
> Clearinghouse as part of a business-confidential strategy, including 
> for new products yet to enter the market. Access to the database would 
> allow misuse, including by bad actors and/or competitors. On the other 
> hand, some Working Group members have noted that it was not clear, 
> during the lead up to the launch of the 2012 New gTLD Program, that 
> the Trademark Clearinghouse database was intended to be a 
> non-publicly-accessible, confidential database. I wasn’t involved 
> then, but I thought Claudio said that it was always intended to be 
> confidential? I’ve never seen reference to it being considered as 
> being an open resources. In addition, some Working Group members 
> expressed concern that potential registrants may benefit from knowing 
> what marks are already in the Trademark Clearinghouse database prior 
> to attempting a registration, especially in view of the likelihood 
> (based on discussions the Working Group has held with the current 
> Trademark Clearinghouse validator) that some marks may consist of 
> generic words which potential registrants may legitimately wish to use 
> as a domain name. If it’s a legitimate use, then brand holders won’t 
> stop them.
>
> The Working Group agrees in principle that an audit of the Trademark 
> Clearinghouse database can be beneficial. I still have reservations 
> about this – I don’t think the potential harm, based on fact, is an 
> equal balance for the potential gain, based on supposition. 
> Accordingly, the Working Group recommends that, in order to inform the 
> next review of the Trademark Clearinghouse, a small group of community 
> volunteers be formed that will have limited, specifically-defined, 
> confidential access to the Trademark Clearinghouse database, for the 
> sole purpose of working with ICANN Org and any appointed third party 
> examiner on such review. The scope of such confidential access is to 
> be limited to oversight purposes only and must not violate any terms 
> of confidentiality that apply to trademark owners whose marks are 
> already in the Trademark Clearinghouse database at that time. Should 
> this be take forward, any trademark owners that have chosen to enter 
> their trademarks in the Trademark Clearinghouse must first be given 
> time to consider if they wish to remove them, and to do so, before 
> they are made known to any such community members, with appropriate 
> safeguards considered for the effect that this may have on such 
> trademark owners.
>
> *From:*GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of 
> *Tushnet, Rebecca
> *Sent:* Wednesday, October 23, 2019 3:15 PM
> *To:* Julie Hedlund <julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM 
> PDP WG Meeting 16 October 2019
>
> I asked this in the meeting but didn't directly address it to Staff: 
> Analysis Group reported on the top ten queried terms in the TMCH. Is 
> it Staff's understanding that this disclosure by AG breached a 
> confidentiality duty?
>
> The description "non-publicly-accessible, confidential database" is 
> not accurate, given that members of the public with no duties of 
> confidentiality can find out on a term-by-term basis by attempting to 
> register.  I would suggest something like "database that is 
> inaccessible to the public except through individual registration 
> attempts."
>
> More generally, I think the proposal needs to state ICANN's 
> understanding of the current rule.  Without a clear statement of the 
> current rule, I don't think this audit proposal is understandable--and 
> to the extent it suggests that disclosing anything, including a top 
> ten list, is a violation of confidentiality, that seems like a 
> worsening of the problem.
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
>
> ------------------------------------------------------------------------
>
> *From:*GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org 
> <mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Julie Hedlund 
> <julie.hedlund at icann.org <mailto:julie.hedlund at icann.org>>
> *Sent:* Wednesday, October 23, 2019 9:01 AM
> *To:* 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>>
> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP 
> WG Meeting 16 October 2019
>
> Dear WG members,
>
> Per the action item below to draft a new Q15 proposal relating to the 
> discussion during the meeting on 16 October, staff submits for your 
> consideration the following suggested text.  We very much look forward 
> to working with you on further revisions as needed, as well as to the 
> discussion on today’s call.
>
> Kind regards,
>
> Mary, Ariel, and Julie
>
> _Staff-suggested draft (based on Working Group discussions and 
> suggestions made on the Working Group call of 16 October)_:
>
> The Working Group understands that, on the one hand, trademark owners 
> may register trademarks and enter them into the Trademark 
> Clearinghouse as part of a business-confidential strategy, including 
> for new products yet to enter the market. On the other hand, some 
> Working Group members have noted that it was not clear, during the 
> lead up to the launch of the 2012 New gTLD Program, that the Trademark 
> Clearinghouse database was intended to be a non-publicly-accessible, 
> confidential database. In addition, some Working Group members 
> expressed concern that potential registrants may benefit from knowing 
> what marks are already in the Trademark Clearinghouse database prior 
> to attempting a registration, especially in view of the likelihood 
> (based on discussions the Working Group has held with the current 
> Trademark Clearinghouse validator) that some marks may consist of 
> generic words which potential registrants may legitimately wish to use 
> as a domain name.
>
> The Working Group agrees in principle that an audit of the Trademark 
> Clearinghouse database can be beneficial. Accordingly, the Working 
> Group recommends that, in order to inform the next review of the 
> Trademark Clearinghouse, a small group of community volunteers be 
> formed that will have limited, specifically-defined, confidential 
> access to the Trademark Clearinghouse database, for the sole purpose 
> of working with ICANN Org and any appointed third party examiner on 
> such review. The scope of such confidential access is to be limited to 
> oversight purposes only and must not violate any terms of 
> confidentiality that apply to trademark owners whose marks are already 
> in the Trademark Clearinghouse database at that time.
>
> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org 
> <mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Julie Hedlund 
> <julie.hedlund at icann.org <mailto:julie.hedlund at icann.org>>
> *Date: *Wednesday, October 16, 2019 at 3:27 PM
> *To: *"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>>
> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 
> October 2019
>
> Dear All,
>
> Please see below the action items captured by staff from theRPM PDP 
> Working Groupcall held on 16 October 2019 at 17:00 UTC.  Staff will 
> postthese to the wiki space. */Please note that these 
> /**/arehigh-level notes and are not meant as a substitute for the 
> recording, chat room, or transcript/*/./ The recording, Zoom chat, 
> transcriptand attendance records are posted on the wikiat: 
> https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG 
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. 
>
>
> Best Regards,
>
> Julie
>
> Julie Hedlund, Policy Director
>
> ==
>
> *NOTES & ACTION ITEMS*
>
> *Actions:*
>
> *Open and Deferred TMCH Questions:*
>
> _Q7 Design Marks_: ACTION: WG agrees to publish Kleiman/Muscovitch and 
> Shatan proposals in the Initial Report for Public Comment.
>
> _Q8 GIs: ACTION_: WG agrees to publish Tushnet proposal in the Initial 
> Report for Public Comment.
>
> _Q12_: ACTION: Staff will work with Maxim to revise the proposal to 
> include context and background, and make it more formal.  Make it 
> clear that this is an implementation recommendation, not policy.  
> Publish to the WG email list for review.
>
> _Q15_: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the 
> Initial Report for Public Comment. 2) ACTION: Staff to draft a new 
> proposal based on suggestions and circulate it to interested WG 
> members and the Co-Chairs.
>
> _Q2_: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to 
> revise the proposal with assistance of other WG members and circulate 
> it on the WG email list for review. 2) Staff will check to see if 
> either party to the contract can seek modifications.
>
> *Discussion of whether individual URS proposals should be revisited by 
> the WG, and methodology for doing so: *ACTION: WG members are 
> requested to continue discussion on the email list. See the draft 
> survey at: survey [forms.gle] 
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq69wN9&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=adDIs0WEx_lLwFfrsdovxTYY8GkRHo5ibc8SR3Npdh8&m=36glY4CKyg4JCvpnCKFaXpx9PW_r5RObgdpcO0mtVM8&s=pEK5aTpdV-IIoTgVC0PHNGEZ969HY26RoiVzAAphdcw&e=>.
>
> *Notes:*
>
> 1.  Updates to Statements of Interest: No updates provided.
>
> 2. Status of Questions Q7, Q8, Q12, and Q15:
>
> Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and 
> Shatan proposals in the Initial Report for Public Comment.
>
> Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial 
> Report for Public Comment.
>
> Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
>
> -- Need to improve redundancy and availability of the TMCH.
>
> -- Question: Are you referring to the TM database, run by IBM?  
> Deloitte is the validator and IBM is the maintainer of the database.  
> Answer: Relates to the provision of the database.  Or could be a issue 
> with the design, it’s hard to say.  Need to review how it works. Might 
> not be limited to software functions.  Could be dataflow design.
>
> -- Need to get background on the cases reported to GDD colleagues.  
> The validation function is kept separate from the database function.  
> If the WG wishes to investigate this further this is probably an issue 
> with implementation as to SLA (there are applicable SLAs). Need also 
> to go back and look at the deliberations concerning the original 
> design of the TMCH and database.
>
> -- Information about the SOW with IBM (and for that matter the SLAs 
> with Deloitte) on this Working Group wiki page, under TMCH 
> Contracting: 
> https://community.icann.org/pages/viewpage.action?pageId=61606864

>
> ACTION: Staff will work with Maxim to revise the proposal to include 
> context and background, and make it more formal.  Make it clear that 
> this is an implementation recommendation, not policy.  Publish to the 
> WG email list for review.
>
> Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial 
> Report for Public Comment.
>
> -- Hoped that we could get consensus.
>
> -- Could allow a limited group to access the data, perhaps a future 
> review team?  Can’t just open up now when those who participate have 
> been assured of confidentiality.
>
> -- Question - is there a way for the WG to reach agreement on how to 
> ensure there is some kind of specific, limited access to the data in 
> the TMDB for oversight purposes only (including future reviews)?
>
> ACTION: Staff to draft a new proposal based on suggestions and 
> circulate it to interested WG members and the Co-Chairs.
>
> 3. Remaining Deferred Charter Questions (see the attached Status of WG 
> Discussions on Agreed TMCH Charter Questions):
>
> *//*
>
> */a. Close Discussion:/*TMCH Category 6: Balance: Charter Question 16: 
> Close discussion.
>
> */b. Discussion:/*TMCH Category 1: Education: Charter Questions 1, 2, 
> and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_109482780_Martin-2520Pablo-2520Silva-2520Valent-2520-2D-2520Q2.pdf-3Fversion-3D1-26modificationDate-3D1569963225000-26api-3Dv2&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=PKnCPcJaP-hGDv7k41qSJp4G-vUa7kFbgWNfm3FAImo&e=>) 
>
>
> *//*
>
> Q1: Close discussion.
>
> Q2: Proposal from Martin Pablo Silva Valent:
>
> -- TMCH should educate rights holders; it is already doing outreach 
> and should do more.
>
> -- Needs to be revised to be in the form of a recommendation.
>
> -- Amendment: this effort would work in conjunction with whatever 
> marketing ICANN is doing to support knowledge around new gTLD program 
> in general and the TMCH.
>
> -- Not clear as drafting what is the remit of Deloitte and what falls 
> elsewhere.  Some of this should be done at an ICANN level.
>
> -- Not sure involving ICANN at this level is required.
>
> -- ICANN is not involved in marketing gTLDs.
>
> -- Needs to be some definition/scope.  Don’t see TMCH providing 
> education on RPMs.  We also need to clarify what is meant by 
> “education.” Is this essentially “awareness” or is something more 
> contemplated?
>
> -- In the end we need much more in terms of education.  If it’s not in 
> the current contract then it’s worth considering in future discussion.
>
> -- Need to be careful how to express this.
>
> -- From staff: ICANN Org does not have control over the TMCH 
> provider’s website and information.  The contract was an initial 
> 5-year term that expired on the first anniversary of the entering into 
> force of the new gTLD program, and followed by consecutive 1-year 
> renewal terms unless there’s a 180 day notice of termination. See: 
> https://community.icann.org/pages/viewpage.action?pageId=61606864 
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> 
> . We are in the 1-year renewal term.
>
> -- Should look at what Deloitte already provides on their website.
>
> -- There's a lot of talk about what should be done - but no-one 
> identifying anything actually glaringly missing.
>
> -- Maybe it’s more of an outreach question, if the education already 
> exists.
>
> -- We should be identifying what’s not being done. Otherwise, we’re 
> just endorsing education conceptually, or providing a generic roadmap 
> for what could be done that will include many things that are already 
> being done.
>
> ACTION: Martin to revise the proposal with assistance of other WG 
> members and circulate it on the WG email list for review.
>
> ACTION: Staff will check to see if either party to the contract can 
> seek modifications.
>
> 4. Discussion of whether individual URS proposals should be revisited 
> by the WG, and methodology for doing so.  See the draft survey at: 
> survey [forms.gle] 
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq69wN9&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=adDIs0WEx_lLwFfrsdovxTYY8GkRHo5ibc8SR3Npdh8&m=36glY4CKyg4JCvpnCKFaXpx9PW_r5RObgdpcO0mtVM8&s=pEK5aTpdV-IIoTgVC0PHNGEZ969HY26RoiVzAAphdcw&e=>:
>
> -- Survey does not designate which proposals go into the Initial 
> Report – that will be decided via WG discussion.
>
> -- WG members should consider whether or not names and affiliations 
> should be included, although the survey is not a poll.
>
> -- WG members will decide what to do with the data.
>
> -- Co-Chairs suggest allowing WG members to take the survey as a way 
> to inform, but not direct, WG discussions.
>
> ACTION: WG members are requested to continue discussion on the email 
> list.
>
>
> _______________________________________________
> GNSO-RPM-WG mailing list
> GNSO-RPM-WG at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20191023/2c5a5de8/attachment-0001.html>

More information about the GNSO-RPM-WG mailing list