[GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

[claudio di gangi]

Michael,

>From my perspective, for any accounting company, especially a firm as large
and well-known as Deloitte, there are significant
business reputational equities when carrying out validation or
accounting functions properly. In part, this is how businesses build
goodwill and reputation in their marks for their goods and services.

For example, you mentioned Deloitte's revenue model. Rhetorical question:
what percentage of Deloitte's overall revenue would you estimate is
represented by managing the TMCH in comparison to the
firm's general revenue?

For general revenue, I just performed an online search and came across the
following for fiscal year ending in May 2018: US$43.2 billion. Overall,
there are approx. 45,000 trademark records and around 80 GIs (0.001%) in
the TMCH, along with a few ancillary services.

With that said, I think it would only be fair to invite the Clearinghouse
reps to join our call next week to provide them an opportunity to
respond to any of these expressed views as they may see appropriate.

Best regards,
Claudio

On Wed, Sep 11, 2019 at 7:03 PM Michael Karanicolas <mkaranicolas at gmail.com>
wrote:

> Also, this argument that Deloitte would rigorously enforce the rules
> for fear of losing their contract is predicated on there being some
> form of meaningful auditing or oversight process - which doesn't
> exist. The closest thing would be this working group - and we don't
> have any idea what's even in the TMCH!
>
> On the other hand, Deloitte's revenue model is explicitly tied to the
> volume of material they allow into the database. The more marks get
> registered, the more money they make, giving them a very direct
> incentive to take a lax approach.
>
> Given these incentive structures, it's hardly surprising to see
> Deloitte approaching their evaluation process the way they have.
>
> Michael Karanicolas
> Wikimedia Fellow
> Yale Law School
>
> On Wed, Sep 11, 2019 at 3:47 PM Tushnet, Rebecca
>
>
> <rtushnet at law.harvard.edu> wrote:
> >
> > Pretty clearly they don’t comply fully, though. Sunk costs work on both
> sides and ICANN will tolerate a lot of divergence (and probably should at
> least tell Deloitte to fix the problems rather than dumping it given those
> sunk costs).  No presumption of compliance is justified where serious
> questions have been raised and Deloitte has told us clearly that they’re
> taking anything they can.
> >
> > Continuing from the call:
> >
> > https://www.trademark-clearinghouse.com/content/registered-trademarks
> is what they tell people. Note that there’s no indication that “other IP”
> gets different treatment from registered marks for Sunrise/Claims purposes.
> The hypotheticals discussed on the call, even if possible, don’t seem to
> exist (assuming truthful advertising). If they are merely hypothetical at
> this point, it makes even more sense to keep them out of the TMCH to be
> separately implemented, by Deloitte or otherwise, if there is market demand.
> >
> >
> > Rebecca Tushnet
> > Frank Stanton Professor of First Amendment Law, Harvard Law School
> >
> > Sent from my phone. Apologies for terseness/typos.
> >
> > On Sep 11, 2019, at 3:04 PM, claudio di gangi <ipcdigangi at gmail.com>
> wrote:
> >
> > Michael,
> >
> > I believe they do have an absolute and important incentive to be in
> compliance with all the rules - so they can continue to manage the database
> going forward from an ICANN contractual perspective.
> >
> > Best,
> > Claudio
> >
> > On Wed, Sep 11, 2019 at 2:59 PM Michael Karanicolas <
> mkaranicolas at gmail.com> wrote:
> >>
> >> It should be noted that this is also completely in line with
> >> Deloitte's incentive structure. There's no direct benefit to careful
> >> scrutiny - so why would they apply a difficult test for admission?
> >>
> >> On Wed, Sep 11, 2019 at 3:38 PM Tushnet, Rebecca
> >> <rtushnet at law.harvard.edu> wrote:
> >> >
> >> > The answers from Deloitte don’t reflect this claim. They reflect a
> policy of putting in whatever can fit, extracting any text at all from any
> mark, disclaimed or not. That’s not indicative of any thought or policy
> based in substance.
> >> >
> >> > Rebecca Tushnet
> >> > Frank Stanton Professor of First Amendment Law, Harvard Law School
> >> >
> >> > Sent from my phone. Apologies for terseness/typos.
> >> >
> >> > On Sep 11, 2019, at 1:04 PM, Lori Schulman <lschulman at inta.org>
> wrote:
> >> >
> >> > I agree with that.  Deloitte has come up with guidelines and
> procedures that show that thought has been put into the process and they
> are not letting just anything in.  We can’t agree on our terminology, how
> can we expect them to do it?
> >> >
> >> >
> >> >
> >> > Lori S. Schulman
> >> >
> >> > Senior Director, Internet Policy
> >> >
> >> > International Trademark Association (INTA)
> >> >
> >> > +1-202-704-0408, Skype: lsschulman
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: BECKHAM, Brian <brian.beckham at wipo.int>
> >> > Sent: Wednesday, September 11, 2019 12:56 PM
> >> > To: Corwin, Philip <pcorwin at verisign.com>; Lori Schulman <
> lschulman at inta.org>; zak at muscovitch.com; julie.hedlund at icann.org;
> gnso-rpm-wg at icann.org
> >> > Subject: Re: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks
> >> >
> >> >
> >> >
> >> > Speaking personally, I’m not sure I agree with the supposition that
> “Deloitte accepts marks too readily” especially given the lack of clarity
> on an agreed definition of text only/standard character marks. In fact,
> that is the very core of the discusions around Kathy and Zak’s proposal.
> >> >
> >> >
> >> >
> >> > Thank!
> >> >
> >> >
> >> >
> >> > Brian
> >> >
> >> >
> >> >
> >> > Sent from my WIPO mobile
> >> >
> >> > On 11 September 2019 at 18:37:05 CEST, Corwin, Philip via GNSO-RPM-WG
> <gnso-rpm-wg at icann.org> wrote:
> >> >
> >> > Thanks Lori.
> >> >
> >> >
> >> >
> >> > We seem to be closing the gap. Given that there is general agreement
> within the WG  that Deloitte accepts design marks too readily, but some
> remaining disagreement about how to address that, this co-chair hopes that
> wide support can at least be found for those elements of a  response on
> which there is broad agreement.
> >> >
> >> >
> >> >
> >> > Philip S. Corwin
> >> >
> >> > Policy Counsel
> >> >
> >> > VeriSign, Inc.
> >> >
> >> > 12061 Bluemont Way
> >> > Reston, VA 20190
> >> >
> >> > 703-948-4648/Direct
> >> >
> >> > 571-342-7489/Cell
> >> >
> >> >
> >> >
> >> > "Luck is the residue of design" -- Branch Rickey
> >> >
> >> >
> >> >
> >> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Lori
> Schulman
> >> > Sent: Wednesday, September 11, 2019 12:06 PM
> >> > To: Zak Muscovitch <zak at muscovitch.com>; julie.hedlund at icann.org;
> gnso-rpm-wg at icann.org
> >> > Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Re; Updated Proposal re
> TMCH/Design Marks
> >> >
> >> >
> >> >
> >> > Dear All,
> >> >
> >> >
> >> >
> >> > We have had some side line conversations regarding the proposal
> below.  I informed Zak separately and wish to conveny that this is where
> the IPC currently stands:
> >> >
> >> > As per Greg’s proposal, where a design mark with words disclaims
> >>all<< words, it does not enter TMCH. – IPC agrees.
> >> >
> >> > As per Greg’s proposal, where a design mark with words disclaims
> >>some but not all words<< it does enters the TMCH.  – IPC agrees.
> >> >
> >> > Where a design mark with words is permitted into the TMCH, it
> entitles the mark holder to a Claims Notice, but not a Sunrise priority. –
> The IPC disagrees as this would undermine the purpose of registering with
> the TMCH to begin with.
> >> >
> >> > The Claims Notice would have to specify inter alia, that it is
> notifying prospective registrants of someone claiming to have rights
> corresponding to the domain name, but that not in all cases does having a
> design mark confer rights over the words inside, or something to that
> effect. – The IPC is willing to discuss this proposal.  We agree in
> principle that language that is not well understood or could frighten an
> unsophisticated applicant should be revised.  However, the notice should
> not be providing legal advice or any advice about effects of certain types
> of trademark registrations.
> >> >
> >> > Design marks consisting of a single letter, e.g. a stylized or
> graphical “i”, whether disclaimed or not, do not go into the TMCH. – The
> IPC does not agree as this outcome is contrary to trademark law.
> >> >
> >> > In general, it appears that Greg’s proposal addresses 3 and 5.  To
> what degree to people object?  We see the proposal as creating a solution
> for a small problem with significant, unintended consequences.
> >> >
> >> > There are objections procedures for domains registered during Sunrise
> period and we believe that these procedures should be highlighted as remedy
> for the concerns that registrant’s have regarding this issue.
> >> >
> >> >
> >> >
> >> > Thank you for opening the dialog and we look forward to more
> discussion where we can find compromise.
> >> >
> >> >
> >> >
> >> > Lori S. Schulman
> >> >
> >> > Senior Director, Internet Policy
> >> >
> >> > International Trademark Association (INTA)
> >> >
> >> > +1-202-704-0408, Skype: lsschulman
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak
> Muscovitch
> >> > Sent: Tuesday, September 10, 2019 1:36 PM
> >> > To: Zak Muscovitch <zak at muscovitch.com>; julie.hedlund at icann.org;
> gnso-rpm-wg at icann.org
> >> > Subject: [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks
> >> >
> >> >
> >> >
> >> > Dear Co-chairs, Staff and WG members, please see below a revised
> proposal regarding Question #7 (TMCH/Design Marks):
> >> >
> >> > As per Greg’s proposal, where a design mark with words disclaims
> >>all<< words, it does not enter TMCH.
> >> >
> >> > As per Greg’s proposal, where a design mark with words disclaims
> >>some but not all words<< it does enters the TMCH.
> >> >
> >> > Where a design mark with words is permitted into the TMCH, it
> entitles the mark holder to a Claims Notice, but not a Sunrise priority.
> >> >
> >> > The Claims Notice would have to specify inter alia, that it is
> notifying prospective registrants of someone claiming to have rights
> corresponding to the domain name, but that not in all cases does having a
> design mark confer rights over the words inside, or something to that
> effect.
> >> >
> >> > Design marks consisting of a single letter, e.g. a stylized or
> graphical “i”, whether disclaimed or not, do not go into the TMCH.
> >> >
> >> > This proposal has been circulated amongst some stakeholders for
> feedback (with mixed results), however I am now sharing it with the entire
> Working Group.
> >> >
> >> >
> >> > Zak Muscovitch
> >> >
> >> > General Counsel, ICA
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > Muscovitch Law P.C.
> >> >
> >> > zak at muscovitch.com
> >> >
> >> > 1-866-654-7129
> >> >
> >> > 416-924-5084
> >> >
> >> > http://www.trademarks-canada.com/
> >> >
> >> > https://www.muscovitch.com/
> >> >
> >> > https://dnattorney.com/
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak
> Muscovitch
> >> > Sent: September-04-19 1:07 PM
> >> > To: Lori Schulman <lschulman at inta.org>; Corwin, Philip <
> pcorwin at verisign.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
> >> > Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Attached is the redline version. Apologies for only sending it now.
> >> >
> >> >
> >> >
> >> > Zak
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > Muscovitch Law P.C.
> >> >
> >> > zak at muscovitch.com
> >> >
> >> > 1-866-654-7129
> >> >
> >> > 416-924-5084
> >> >
> >> > http://www.trademarks-canada.com/
> >> >
> >> > https://www.muscovitch.com/
> >> >
> >> > https://dnattorney.com/
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: Lori Schulman <lschulman at inta.org>
> >> > Sent: September-04-19 12:48 PM
> >> > To: Corwin, Philip <pcorwin at verisign.com>; Zak Muscovitch <
> zak at muscovitch.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
> >> > Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Hi,
> >> >
> >> >
> >> >
> >> > Support Phil’s suggestion and a post call redline per my earlier
> message.
> >> >
> >> >
> >> >
> >> > Thank you.
> >> >
> >> >
> >> >
> >> > Lori S. Schulman
> >> >
> >> > Senior Director, Internet Policy
> >> >
> >> > International Trademark Association (INTA)
> >> >
> >> > +1-202-704-0408, Skype: lsschulman
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: Corwin, Philip <pcorwin at verisign.com>
> >> > Sent: Wednesday, September 04, 2019 12:39 PM
> >> > To: zak at muscovitch.com; Lori Schulman <lschulman at inta.org>;
> julie.hedlund at icann.org; gnso-rpm-wg at icann.org
> >> > Subject: RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Zak:
> >> >
> >> >
> >> >
> >> > As we reviewed all the proposals last week, I would suggest that you
> focus in your presentation on what changes you and Kathy have made to the
> original and the rationale for doing so.
> >> >
> >> >
> >> >
> >> > Philip
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > Philip S. Corwin
> >> >
> >> > Policy Counsel
> >> >
> >> > VeriSign, Inc.
> >> >
> >> > 12061 Bluemont Way
> >> > Reston, VA 20190
> >> >
> >> > 703-948-4648/Direct
> >> >
> >> > 571-342-7489/Cell
> >> >
> >> >
> >> >
> >> > "Luck is the residue of design" -- Branch Rickey
> >> >
> >> >
> >> >
> >> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak
> Muscovitch
> >> > Sent: Wednesday, September 04, 2019 12:36 PM
> >> > To: Lori Schulman <lschulman at inta.org>; Julie Hedlund <
> julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> >> > Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting
> on 04 September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Lori, I'm trying to get one together, not sure I will be able to
> unfortunately.
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > Muscovitch Law P.C.
> >> >
> >> > zak at muscovitch.com
> >> >
> >> > 1-866-654-7129
> >> >
> >> > 416-924-5084
> >> >
> >> > http://www.trademarks-canada.com/
> >> >
> >> > https://www.muscovitch.com/
> >> >
> >> > https://dnattorney.com/
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: Lori Schulman <lschulman at inta.org>
> >> > Sent: September-04-19 12:08 PM
> >> > To: Zak Muscovitch <zak at muscovitch.com>; Julie Hedlund <
> julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> >> > Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Hi,
> >> >
> >> >
> >> >
> >> > Thank you for this. As this is so close to the call, do you have a
> redline so we can compare the changes quickly? It would be most helpful to
> be prepared on a quick notice.
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > Lori S. Schulman
> >> >
> >> > Senior Director, Internet Policy
> >> >
> >> > International Trademark Association (INTA)
> >> >
> >> > +1-202-704-0408, Skype: lsschulman
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak
> Muscovitch
> >> > Sent: Wednesday, September 04, 2019 11:45 AM
> >> > To: Julie Hedlund <julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> >> > Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Dear Co-Chairs, Working Group Members, and Staff,
> >> >
> >> >
> >> >
> >> > Further to the call last week and further to the below Agenda for
> today's call, please see the attached updated proposal re: Question #7,
> from Kathy Kleiman and myself.
> >> >
> >> >
> >> >
> >> > You will note therein, that the revised proposal contains some
> revised language, some revised rationale, and a potential alternative to
> the existing rule for discussion purposes.
> >> >
> >> >
> >> >
> >> > Zak Muscovitch
> >> >
> >> > General Counsel, ICA
> >> >
> >> > Muscovitch Law P.C.
> >> >
> >> > zak at muscovitch.com
> >> >
> >> > 1-866-654-7129
> >> >
> >> > 416-924-5084
> >> >
> >> > http://www.trademarks-canada.com/
> >> >
> >> > https://www.muscovitch.com/
> >> >
> >> > https://dnattorney.com/
> >> >
> >> >
> >> >
> >> >
> >> >
> >> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Julie
> Hedlund
> >> > Sent: September-03-19 1:02 PM
> >> > To: gnso-rpm-wg at icann.org
> >> > Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
> >> >
> >> >
> >> >
> >> > Dear RPM WG members,
> >> >
> >> >
> >> >
> >> > Please find the agenda and materials for the WG meeting tomorrow,
> Wednesday, 04 September at 17:00-18:30 UTC.
> >> >
> >> >
> >> >
> >> > Please note the following actions captured from last week's meeting
> and sent to the list last week:
> >> >
> >> >
> >> >
> >> > Actions:
> >> >
> >> > 1. Revision of Existing Proposals: For consideration at the meeting
> on Wednesday, 04 September, RPM PDP WG members who had previously submitted
> proposals relating to the Open TMCH Questions (see attached) may offer
> revised proposals that take into consideration the work completed by the WG
> since the proposals were originally submitted.
> >> > 2. New Proposals: For consideration at the meeting on Wednesday, 04
> September, RPM PDP WG members may submit new proposals relating to Charter
> questions 7, 8, and 10.
> >> >
> >> >
> >> >
> >> > Please send suggested revisions or new proposals by COB today, 03
> September, if at all possible.
> >> >
> >> >
> >> >
> >> > Proposed Agenda:
> >> >
> >> > 1. Review Agenda and Updates to Statements of Interest
> >> > 2. Proposals relating to Open TMCH Charter Questions (see attached
> Summary document. It is the same as the May 2017 version but with
> formatting for readability and text from relevant TMCH and AGB references):
> >> >
> >> > * Question 7 - Proposals from Kathy Kleiman and Greg Shatan
> >> > * Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan
> Agmon, and Claudio di Gangi
> >> > * If Time Permits: Question 10 - Proposal from Michael Graham
> >> >
> >> > 3. AOB
> >> >
> >> >
> >> >
> >> > Best Regards,
> >> >
> >> > Mary, Julie, Ariel
> >> >
> >> > <ATT00001.txt>
> >> >
> >> >
> >> >
> >> > World Intellectual Property Organization Disclaimer: This electronic
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> >> >
> >> > _______________________________________________
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