[GNSO-RPM-WG] Q#8

Wed Sep 18 17:08:18 UTC 2019

I know there have been a lot of email floating around, so I understand the
confusion, but there nothing new of substance in what I expressed today
- it is completely consistent with the highlighted text that Phil
circulated yesterday.

The only element that I included was to clarify there can be separate
voluntary Claims notice (which is already permitted) supported by the
database.

Best,
Claudio

On Wed, Sep 18, 2019 at 12:40 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:

> I agree with Kathy.  That seems like a completely new proposal. Among
> other things, John’s language doesn’t deal with GIs/“statute or treaty.”
>
> I also think you are overreading Mary’s comment since none of these
> ancillary databases appear to exist. There is presently no prohibition on
> creating a new one that could serve multiple registries. I don’t think we
> should direct Deloitte to do so.
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
>
> Sent from my phone. Apologies for terseness/typos.
>
> On Sep 18, 2019, at 12:34 PM, Kathy Kleiman <kathy at kathykleiman.com>
> wrote:
>
> Claudio and All,
>
> For those who may not be able to follow all of the messages, could you
> send a full set of what you are thinking of for new language/Q#8?  At least
> two Pauls have commented, so I am not sure what you are referencing. Having
> it all in one place would be useful.
>
> Tx, Kathy
>
>
> <<Rebecca, all,
>
>
> I support John's proposal below as the simplest approach, with Paul's
> language about 3.2.4 being the qualifying text for the inclusion of
> GIs, along with a provision this IP database will be centralized for all
> new gTLD registries.
>
> Rebecca - you asked about the supporting rationale in a recent note, so I
> would like to address your question.
>
> The purpose is to avoid creating a scenario of having 300 (or pick some
> number) of ancillary databases, each requiring separate submissions and
> validations. Again, I say this because Mary confirmed that currently the
> ancillary database concept is registry-specific. The main TMCH is not
> registry-specific, all new gTLD registries connect to the database in a
> unified manner.
>
> For the sake of providing examples, <.tea> launches as a new gTLD in the
> next round; that registry will need to expend time and resources to
> collaborate with Deloitte to establish a new ancillary database, and the
> regional authority/producers of DARJEELING TEA, (under the current model)
> would be required to submit the GI registration to the ancillary database
> of <.tea> and have it validated at that time.
>
> In the same round, <.चाय> launches ("tea" in the Hindi script - a language
> spoken in India, as an IDN), the current model requires this same (or
> different) registry operator to create another new ancillary database,
> with new submissions of registrations, additional validations, etc.
>
> <.drinks>, <.beverages>, <.web>, <.internet>, etc.. the list goes on and
> on, for every new gTLD there has to be separate ancillary databases. Each
> registry and registrar will then have to allocate resources to promote the
> registry-specific database to IP owners around the world, and connect to
> the database from a technical level. I can only imagine the confusion and
> unnecessary costs that this approach would impose on contracted parties and
> the public.
>
> It would also defeat the purpose and benefit of a having a centralized,
> unified system that simplifies recordation and validation from both an
> administrative and technical basis for all parties.
>
> The Limited Registration Period is an existing RPM that functions similar
> to Sunrise, but takes place after the Sunrise Period, during which
> time these 3.2.4. marks can be protected. Since it is already permitted, I
> propose that we specify there is a voluntary option for a IP Claims notice
> for these 3.2.4 marks (identical to the TM Claims notice, i.e. using the
> same language).
>
> These are completely voluntary RPMs for contracted parties - especially,
> for those that operate in jurisdictions where GIs are protected under local
> laws, and/or for those which decide to take proactive measures to prevent
> abusive registrations in their TLD(s) to have a safe namespace for
> their users. Since registries are already allowed to create voluntary RPMs,
> the proposal is based on improving things from a technical and
> administrative basis, in a manner that is fully consistent with the law,
> and with the overall goal of protecting consumers and promoting trust in
> new gTLDs.
>
> Finally, as Brian noted there is an existing database of GIs, managed by
> OriGin, which Deloitte/IBM can interface with to help simplify the process,
> which is an idea we can include for public comment in association with the
> main recommendation.
>
> All we need to do is agree that this approach makes sense from a policy
> perspective, and the IRT that follows this PDP can develop the appropriate
> implementation procedures to put everything into place.
>
> Please let me know of any questions.
>
> Best regards,
> Claudio
>
>
>
> On Tue, Sep 17, 2019 at 5:23 PM John McElwaine <
> john.mcelwaine at nelsonmullins.com> wrote:
>
>> I would propose simplifying this a bit.  The issue that we have is that
>> Deloitte should not be placing “other marks that constitute intellectual
>> property” in the “Clearinghouse”.  The Trademark Clearinghouse is more than
>> just to service Sunrise and Claims services.  See AGB TMCH Section 1.2
>> (“The Clearinghouse will be required to separate its two primary functions:
>> (i) authentication and validation of the trademarks in the Clearinghouse;
>> and (ii) serving as a database to provide information to the new gTLD
>> registries to support pre-launch Sunrise or Trademark Claims Services.
>> Whether the same provider could serve both functions or whether two
>> providers will be determined in the tender process.”)    Unfortunately,
>> Section 3.2 muddies the waters and lists “other marks” as being capable of
>> inclusion “in the Clearinghouse”.
>>
>>
>>
>> However, the purpose behind Section 3.2.2 is provided a bit more light in
>> Section 3.6:  “Data supporting entry into the Clearinghouse of marks that
>> constitute intellectual property of types other than those set forth in
>> sections 3.2.1-3.2.3 above shall be determined by the registry operator and
>> the Clearinghouse based on the services any given registry operator chooses
>> to provide.”  With respect to such other IP, the “Trademark Clearinghouse
>> Service Provider may provide ancillary services, as long as those services
>> and *any data used for those services are kept separate from the
>> Clearinghouse database*.”
>>
>>
>>
>> Thus, as I mentioned on the call, a simple solution is that we recommend
>> “other marks that constitute intellectual property (under 3.2.2 and 3.6)”
>> currently in the Trademark Clearinghouse must be placed into a separate
>> ancillary database by the operator and not in the Trademark Clearinghouse.
>>
>>
>>
>> John
>>
>>
>>
>>
>>
>>
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Tushnet,
>> Rebecca
>> *Sent:* Tuesday, September 17, 2019 4:24 PM
>> *To:* claudio di gangi <ipcdigangi at gmail.com>; Corwin, Philip <
>> pcorwin at verisign.com>
>> *Cc:* gnso-rpm-wg at icann.org
>> *Subject:* Re: [GNSO-RPM-WG] Q#8
>>
>>
>>
>> *◄External Email►* - From: gnso-rpm-wg-bounces at icann.org
>>
>>
>>
>> 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
>> 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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>>
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