[GNSO-RPM-WG] Q#8

[claudio di gangi]

Very good questions, Rebecca.

On your main substantive question, i.e. the second one: because as I
understand Mary’s intervention on Wednesday, the ancillary database concept
is registry-specific (Mary kindly correct me if I am mistaken), so each new
gTLD registry would have to establish and maintain their own separate
ancillary database through Deloitte, each potentially with their own
varying rules for inclusion and operation.

The main purpose of the Clearinghouse is to have a centralized repository
of verified rights under uniform standards. In previous rounds of new
gTLDs, each registry operated their own Sunrise, etc. and marks had to be
validated/recorded/processed by each registry operator along with the
validating agency they contracted with to perform this function, each under
their own separate set of instructions.

For example, when .EU launched, this led to a scenario where if the
paperclip on the supporting paperwork submitted by the IP owner was
misapplied, it led to validation issues.

As you can imagine, this created substantial administrative burdens,
difficulties, and costs on the parties - costs which we know are often
eventually passed down to the consumer and/or registrant. This happened in
an environment when we saw 7 new gTLDs launch per round, with each gTLD
launching virtually in isolation from one another.

In light of the new gTLD program, the benefit and value of the
Clearinghouse is to have one streamlined location where IP rights can be
recorded, validated, and used to support the RPMs, whether they are
mandatory or voluntary in nature.

So this is the main reason to have them recorded in a unified location, and
not across multiple independent ancillary databases.

In terms of the process of their protection, the Applicant Guidebook has an
existing registration period that takes place prior to General Availability
such as GIs can be protected. So my proposal really changes nothing in that
substantive regard. It’s based on the premise to function under the
existing RPM policy rules (as described above).

One element, as you note, that may require some form of modification, lies
on a technical level - which is managed by IBM. I do not see this type of
minor modification being of such a non-trivial degree that a company like
IBM couldn’t handle it based on the skills, capacity, and resources we know
that company possesses.

On the other hand, there is evidence of the need to protect these source
identifiers, because they are easily registered as domain names in certain
countries to confuse consumers and commit fraud.

For this reason, the ICANN registry agreement was designed to allow the
protection of this form of IP, so what we are simply discussing is the most
practical, efficient and cost effective means of doing so, in order to help
prevent consumer harm in the new gTLD environment.

With that said, it’s vital we do not create unnecessary complexities and
processes, which may defeat the purpose of having these systems and
protections in place in the first instance.

Finally, having Deloitte on the call was something I requested last week to
discuss potential changes that we may decide to recommend going forward, so
I trust that point was taken into consideration when the decision was made
to formally invite them on the next call.

Best regards,
Claudio

On Tuesday, September 17, 2019, Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:

> I'm still quite factually confused by this proposal.  "Accepted in the
> Clearinghouse" until now has meant "gets Claims and is eligible for Sunrise
> upon proof of use." It appears to me that this is proposing a nontrivial
> technical change (at the very least the implementation of a new coding
> category, which will have to be retrofitted to existing entries), without
> evidence either of its need or its feasibility.
>
> Relatedly: If GIs are to be treated so differently, why put them in the
> Clearinghouse,  given that there is consensus that they shouldn't be used
> for Claims or Sunrise?  Kathy's clarifying language allows for registries
> etc. to adopt various business models and for Deloitte and other operators
> to run systems that facilitate those business models, including the ones
> Claudio hypothesizes.  (And I'm not sure we should hand Deloitte an extra
> business that would make competition in the market for providing additional
> services less likely.)
>
>
> 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> on behalf of claudio
> di gangi <ipcdigangi at gmail.com>
> *Sent:* Tuesday, September 17, 2019 3:38 PM
> *To:* Corwin, Philip <pcorwin at verisign.com>
> *Cc:* gnso-rpm-wg at icann.org <gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Q#8
>
> thanks, Phil. Very helpful as always.
>
> I see your point that proposal #1 and #2 overlap, in the sense that they
> both deal with whether GIs should be recorded in the TMCH. My proposal (#3)
> integrates the other two proposals.
>
> My concern during the call was that I felt a premature signal being
> expressed that agreement was being quickly being reached
> after several members spoke (and I was one of them), while several other
> members asked clarifying questions. I may be mistaken, but don't recall
> Jason or Rebecca objecting to the thoughts I expressed during discussion on
> proposal #1.
>
> If I am mistaken, and there was a meaningfully larger list of proponents
> for proposal #1 expressed on the call, I am happy to be corrected - please
> let me know.
>
> From my perspective, the majority of members did not express a position
> while the discussion was taking place, so I was left confused under what
> basis that statement that consensus was reached was based upon.
>
> This is also why I recently expressed not having the benefit of the
> informal poll that you conducted two weeks ago. Can we please do this
> tomorrow to get a better sense of where folks stand?
>
> On this same line of reasoning, I was concerned that we did not have full
> participation on the last week's call (where any registries and registrars
> on the call?). Moreover, I indicated last week that I had off-line
> discussions with WG members who expressed support for my suggested
> approach, but were not able to join the call, so I was hoping to hear from
> them on the list prior to Wednesday.
>
> The transcript and recording were posted by Julie on Friday, 13 Sept. so
> members did not really have much time (Friday and Monday) to reply with
> input before things (I personally feel) got somewhat short-cut this morning
> with the posting that expressed here is the consensus view of the WG, along
> with the associated implementation text.
>
> My concern when this occurs is it changes the dynamic about how members
> feel about weighing-in and 'going against the thread' so to speak, and also
> may create confusion about the accurate state of play.
>
> In terms of substance and to clarify, my proposal is based on finding
> common ground and compromise that integrates the two proposals, as per the
> following:
>
> 1) Going forward, GI are accepted in the Clearinghouse or ONE main
> ancillary database that all registries/registrars can connect to (which
> potentially can be integrated with the main external GI database that
> exists, with Deloitte performing validations);
>
> 2) GIs are NOT protected during the Sunrise or Claims period, which remain
> for trademarks; which was something that we established during the review
> of Sunrise and Claims.
>
> 3) the protection of GIs are NOT mandatory for any new gTLD registry
>
> 4) for new gTLD registries that choose and desire to protect GIs (as the
> current rules permit) because of local laws and/or other reasons, they are
> protected during the Limited Registration Period, to help prevent abusive
> registrations before General Availability.
>
> The rationale for this approach is that GIs are one of the three major
> forms of IP (patents, trademarks, and GIs) and function as source
> identifiers for goods and services in a manner that is similar
> to trademarks (and can be registered as domains in the same manner). For
> example, GIs are protected in the United States (under the TRIPS agreement)
> as collective or certification marks, think FLORIDA ORANGES or IDAHO
> POTATOES.
>
> But in other countries, outside of the United States, they are protected
> under local laws that place them on a separate registry, apart from the
> trademark register.
>
> Hope this helps clarify status, and thanks for everyone's ongoing
> contributions.
>
> Best regards,
> Claudio
>
>
>
>
>
>
>
>
>
>
>
>
>
>
>
> On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin at verisign.com>
> wrote:
>
> Claudio—
>
>
>
> This message reflects the views of the co-chairs.
>
>
>
> Q8 and all of its related proposals were extensively discussed on the
> September 4th call. The meeting on 11 September was a continued
> discussion on Q8 and Q7 in case there were further proposals, and the major
> focus was on Q7 as we had run out of time on the prior call and a new
> modified proposal had been submitted for discussion.
>
>
>
> As regards Q 8, all of the first three proposals converge in that they
> would limit the registration of GIs in the TMCH to “marks” of some sort,
> whether trademarks or collective marks or certification marks; there also
> seemed to be some recognition and agreement that GIs that did not
> constitute “marks” could be recorded in an ancillary database for the
> purpose of assisting certain new gTLDs that recognized and provided some
> additional consideration to them. It appeared to the co-chairs that
> restricting TMCH  recordation of GIs to those that constituted “marks” had
> fairly broad support among WG members participating on the calls.
>
>
>
> In regard to your fourth proposal -- “(1) Add the consideration of GIs to
> the policy review of the Sunrise and Claims services; and (2) withhold
> final consideration of the current TMCH proposals relating to GIs, until we
> conclude the policy review of the new gTLD RPMs (as described in the
> Charter).” – the Sunrise and Claims reviews have been concluded, and we are
> now wrapping up (concluding) our review of the new gTLD RPMs. So this
> proposal no longer seems timely or relevant; but if you wish to amend it
> and make a specific proposal for the treatment of GIs in the TMCH, tomorrow
> is the time to make it.
>
>
>
> Finally, as regards your proposal that we withhold a decision until
> Deloitte participated in a call on this subject, we see no reason to do so
> as there is no indication that Deloitte has changed its practice in regard
> to GI recordation since it wrote to the WG two years ago.
>
>
>
> In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow
> but will facilitate discussion of an amended proposal from you if you wish
> to offer one.
>
>
>
> Regards,
>
> Brian
>
> Philip
>
> Kathy
>
>
>
>
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> <https://www.google.com/maps/search/12061+Bluemont+Way+%0D%0AReston,+VA+20190?entry=gmail&source=g>
> 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 *claudio
> di gangi
> *Sent:* Tuesday, September 17, 2019 11:22 AM
> *To:* Kathy Kleiman <kathy at kathykleiman.com>
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8
>
>
>
> Kathy, all,
>
>
>
> Last week, we spent the first full hour of the call discussing the first
> Question 8 proposal, and zero minutes on the second proposal on Question #8
> (In comparison we spent much time discussing both proposals for question
> #7).
>
>
>
> I am aware that some members spoke in support of the first proposal (I was
> on audio only), but do not know how many, while some others did not speak
> in support, and that we agreed to spend this full week to solicit WG
> members views on the list before moving forward. This week has not yet
> concluded (we have through today), yet new language is being posted below
> now for consideration.
>
>
>
> A few additional points, the week prior Phil conducted an informal poll
> using the Zoom room functionality, which helped provide transparency on WG
> members views for consensus building, which was not done last week on
> Question #8.
>
>
>
> Nor has there been an effort to bring the various proponents together to
> reach a compromise position, which we recently did in the sprint of the
> consensus-building process on Question #7, the design mark topic. So I’m
> not sure why question #8 is being treated so differently in all these
> various ways (as described above) compared to Question #7.
>
>
>
> Can someone kindly shed some light on this disparity in treatment between
> the way we are approaching question 7 and question 8?
>
>
>
> Thanks!
>
>
>
> Best regards,
>
> Claudio
>
>
>
>
>
> On Tuesday, September 17, 2019, Kathy Kleiman <kathy at kathykleiman.com>
> wrote:
>
> All,
>
> Last week we found considerable overlap and common ground on Q#8.  I
> promised to circulate language sharing that agreement and slightly refining
> existing proposals.
>
> Q#8:
>
> 3.2 The standards for inclusion in the Clearinghouse are:
>
> 3.2.1 Nationally or regionally registered word marks from all
> jurisdictions.
>
> 3.2.2 Any word mark that has been validated through a court of law or
> other judicial proceeding.
>
> 3.2.3 Any word marks specified in and protected by a statute or treaty *as
> trademarks *[1] in effect at the time the mark is submitted to the
> Clearinghouse for inclusion.
>
> 3.2.4 Other marks that constitute intellectual property.  [see below]
>
> 3.2.5 Protections afforded to trademark registrations do not extend to
> applications for registrations, marks.
>
> [1]  *By "trademarks," the WG means "trademarks, service marks,
> certification marks and collective marks."*
>
> For purposes of clarity, separate or ancillary databases of the Trademark
> Clearinghouse Provider (or another provider) may include other marks, but
> those databases should not be used for Sunrise or Trademark Claims Notices
> under the RPMs. Registries may use those separate or ancillary databases to
> provide additional services but are not required to do so under the RPMs.
>
> (Appropriate corresponding changes will be percolated across the *Trademark
> Clearinghouse* Applicant Guidebook)
>
> -----------------
>
> Best, Kathy
>
>
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