[GNSO-RPM-WG] FW: [Gnso-rpm-trademark] Q#8
claudio di gangi
ipcdigangi at gmail.com
Tue Sep 24 18:50:22 UTC 2019
Rebecca, all,
Thanks again for your nicely constructed list and for working towards
building consensus on the issues.
Overall, it looks like we are on the same page in bringing the team
together on desired outcomes that are able to reach consensus. To continue
to move things forward, I believe we need some further confirmation or
clarification from staff on a small handful of issues, in order to ensure
that the WG is operating under a shared or common understanding of the
Clearinghouse functionality, and the associated rules which govern its
operations. This of course, has ramifications on how we advance the
current round of policy recommendations in the Initial Report.
For ease of reference, I have provided my comments below, as per your
numbered feedback, listed sequentially starting with item #1:
1. The (main) TMCH is for trademarks: those that are registered as
trademarks, confirmed by court decision as trademarks, or protected by
statute or treaty that specifies the trademarks covered (as opposed to, for
example, Lanham Act §43(a), which grants statutory protection to
unregistered marks but doesn’t specify the marks covered). What counts as
a trademark should be determined by national law, not by the TMCH.
CD comments: I fully understand your desired intent here, but w/r/t to the
wording that will form the basis of the policy recommendation, I think we
have to be especially careful because this is what led to the issue
arising in the first instance.
I understand you were not seeking to focus on finding the exact terminology
in your last note, and that it was drafted from a higher level. However,
for the sake of moving things forward, I wanted to clarify the text which
appears in your #1: "....those that are registered as trademarks....or
protected by statute or treaty *that specifies the trademarks
covered*" (*emphasis
added). *In short, I believe this wording reflects the struggle we were
all having during last week's meeting, because often the laws in
question do not identify specify the source identifiers (that we know are
trademarks) as "trademarks" per se.
Mary circulated some helpful language on this topic last week, when she
expressed/asked whether WG members agree: "for the category of “marks
protected by statute or treaty”, its scope ought to be limited to marks
(not otherwise eligible under 3.2.1) that are nevertheless protected under
a statute or treaty as a sign that functions as a *trademark/*source
identifier" (*emphasis added)*. I think Mary's language gets to the heart
of the issue, so I recommend working off her suggested text.
The issue is that the marks/signs (within these statute/treaties) which
function as source identifiers for particular goods/services are sometimes
are referred to as "insignia", "words", "phrases", or "signs"; these source
identifiers are *sui generis*, and have enhanced qualities under the law
that establish them as "strong" marks, e.g. may possess special
remedies that address infringement.
For example, see 18 U.S. Code, Section 706. Red Cross. (available at:
https://www.law.cornell.edu/uscode/text/18/706)
“...Whoever, whether a corporation, association, or person, other than the
American Red Cross and it’s duly authorized employees and agents and the
sanitary and hospital authorities of the armed forces of the United States,
uses the emblem of the Greek Red Cross on a white ground, or any sign or
insignia made or colored in imitation thereof or the words “Red Cross” or
“Geneva Cross” or any combination of these words -
Shall be fined under this title or imprisoned not more than six months, or
both....”
Since these marks are protected under special legislation or
treaty, a national Trademark Offices (for example the USPTO in the
U.S.) may not maintain the marks on their principle register of trademarks
(the list of registered marks issued and maintained by the office);
however, the USPTO maintains these marks on record to enable trademark
examiners to refuse the registration of other marks which are identical or
confusingly similar in form. And courts will issue rulings under the same
effect, so the legislation/treaties situates the marks within the trademark
system, at both the governmental agency and at the judicial level of
jurisprudence.
So on the basis that the consensus of the WG is that GIs/Appellations of
Origin shall not be included in the main TMCH database, then I suggest we
rely on Mary's proposed text, with an added disclaimer for specificity
purposes.
Section 3.2.3 - "Shall include marks, signs, words, or phrases, that are
specifically protected under Statute or Treaty, and which function as
source identifiers/marks for goods or services, but shall not include
marks, signs, words, or phrases that constitute Geographical Indications or
Appellations of Origin."
This will provide the TMCH operator with guidance on what the consensus
of WG members believe is the (original) intent of this provision.
3. GIs, like other things that are not trademarks, can be the subject of
ancillary services. These ancillary services are voluntary, not mandatory,
in new gTLDs. Different providers should be able to compete to provide them
if desired. There is no existing barrier to multiple registries using the
same ancillary service, nor should we impose any barriers to that
possibility.
CD comments: For ease of reference, I have split this statement
into two sub-parts below:
"Different providers should be able to compete to provide them if desired."
CD comments: As I understand the current functioning of the Clearinghouse
system, no option exists for other providers to come in and compete to
provide ancillary database services, i.e. the system operates under a
sole-source contract managed by the current operator of the TMCH, and the
current operator of the TMCH is the only entity afforded the ability to
create the ancillary database service(s) system, and this
is incorporated in the New gTLD Registry Agreement.
"There is no existing barrier to multiple registries using the same
ancillary service, nor should we impose any barriers to that possibility."
CD comments: I agree we that there is no reason to impose barriers on the
back-end of the system. However, under the current rules, I believe there
are some existing barriers or limitations that prevent multiple registries
to use the same ancillary service, so I have recommended text below to
remove these barriers.
I am basing this on the input we received from Mary, when she informed us
that the ancillary database service is registry-specific, meaning on a per
new gTLD basis. So if one organization operates multiple new gTLDs in the
same jurisdiction, each new gTLD is considered an individual
registry, and the current system doesn't allow multiple new gTLD registries
to connect with the same ancillary database.
In #6. "As long as the public-facing aspects of the RPMs operate properly,
we should be indifferent to the “back end”—whether ancillary databases are
in the “same database” or a “different database,” should Deloitte choose to
operate an ancillary database."
CD comments: I agree that we should be indifferent to the "back end" aspect
of this - and also agree with your point that it doesn't matter whether the
ancillary database is the "same database" or a "different database". This
approach fits in neatly with the point above, e.g. that there has been no
identified justification to impose barriers or other limitations on the
functioning of the back-end ancillary service database system.
Unfortunately, as noted supra, I believe there are some existing barriers
and limitations, which prevent multiple registries from connecting to the
"same database" and thereby preventing GIs/Appellations of Origin to be
recorded in the same database to be used across multiple registries.
To address this issue, I have drafted text below for inclusion as a policy
recommendation, with the objective of reducing unnecessary
red-tape/administrative burdens when a registry operator is simply seeking
to operationalize the rules of the new gTLD program.
Moreover, I believe the current system lacks clarity on how registries
are to establish the ancillary database service(s) for their new gTLD, so I
have included some further guidance on the interplay between contracted
parties, ICANN, the operator of the TMCH, and users of the system. This was
referenced in my earlier proposal, but I did not include the actual text
that sets forth the parameters. Hopefully, this will make the system work
better for contracted parties and users alike.
Here is the proposed text/policy guidance that is designed
to integrate your #3 to achieve what I believe is its intended effect:
"The operator of the TMCH, upon request of any new gTLD registry operator,
shall establish or create an ancillary database service, under appropriate
terms of use, which may be used for the recordation of Geographical
Indications and Appellations of Origin that are protected under local,
national, or international laws.
Upon establishment by the operator of the TMCH, the ancillary database
service shall have no limitations (express or otherwise) on the number
and/or type of new gTLD registries that shall be permitted to connect to,
or interface with, the ancillary database, unless the requesting Registry
Operator sets forth any desired limitations, upon creation of its ancillary
database service.
Registry Operator shall not be required to obtain independent authorization
or approval from ICANN to create or establish the ancillary database
service, but shall possess express authorization to direct performance by
the operator of the TMCH to establish or create the ancillary database
service, under the express terms of the registry operator's New gTLD
Registry Agreement with ICANN."
Finally, the last element of my proposal (which fits under the second
sub-part of #3 on your list), is to provide the ability or option for a new
gTLD registry to utilize the ancillary database to operate a Claims Notice
for the GIs/Appellations of Origin that are recorded in the ancillary
database.
"Under the sole discretion of the registry operator, or registry
operator(s), that interface with, or are connected to an ancillary database
service, such registry operator may elect to implement an additional
Claims period for Geographical Indications and Appellations of Origin that
are recorded in the ancillary database service; such Claims period shall
occur for either 60 or 90 days (or another period of time as set forth by
the registry operator) following the conclusion of the TM Claims service
notification period."
The benefit of this approach is to provide new gTLD registries
with options for utilizing the ancillary database service, instead of only
being able to use the Limited Registration Period, when domain names are
registered. Some registries may instead select the additional Claims
Notification period for GIs/Appellations of Origin (either instead of, or
in addition to, the Limited Registration Period), perhaps depending on
their local laws or jurisdiction.
I hope this helps build upon on the progress being made on question #8.
Please do not hesitate to let me know of any questions or comments.
Best regards,
Claudio
On Mon, Sep 23, 2019 at 3:31 PM claudio di gangi <ipcdigangi at gmail.com>
wrote:
> Rebecca, all,
>
> I join Brian in thanking you for expressing your views so clearly here.
>
> With the benefit of having a little more time, I will reply to your note
> - and to the helpful feedback that Mary recently contributed on the list,
> prior to our upcoming call on Wednesday.
>
> Thank you.
>
> Cheers,
> Claudio
>
> On Mon, Sep 23, 2019 at 11:31 AM BECKHAM, Brian <brian.beckham at wipo.int>
> wrote:
>
>> Thanks Rebecca for the clarification (especially on 1 and 4)!
>>
>>
>>
>> Claudio, others – any reaction?
>>
>>
>>
>> Brian
>>
>>
>>
>> *From:* Tushnet, Rebecca <rtushnet at law.harvard.edu>
>> *Sent:* Monday, September 23, 2019 3:53 PM
>> *To:* BECKHAM, Brian <brian.beckham at wipo.int>; Ariel Liang <
>> ariel.liang at icann.org>; gnso-rpm-wg at icann.org
>> *Subject:* Re: [GNSO-RPM-WG] FW: [Gnso-rpm-trademark] Q#8
>>
>>
>>
>> Thanks. Yes, I did intend to incorporate the broad definition of
>> trademarks (where the term is shorthand for trademarks, service marks,
>> collective marks, and certification marks).
>>
>>
>>
>> For #4, I attempted to be clear that it is not about mandating *or *foreclosing
>> other programs that might voluntarily be adopted for specific registries,
>> but only about what should happen under the existing RPMs.
>>
>>
>>
>> In terms of labeling, I deliberately did not characterize Deloitte's
>> practices. I believe #5 is purely descriptive of Deloitte's practices.
>> However, aside from GIs, my understanding of our discussion is that there
>> is consensus that "other IP" was supposed to refer only to ancillary
>> services and thus that Deloitte's current advertising of it as equal to
>> registrations, etc. in terms of eligibility for Claims/Notice is not
>> consistent with the AGB.
>>
>>
>>
>> Rebecca Tushnet
>>
>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>> 703 593 6759
>> ------------------------------
>>
>> *From:* BECKHAM, Brian <brian.beckham at wipo.int>
>> *Sent:* Monday, September 23, 2019 5:14 AM
>> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; Ariel Liang <
>> ariel.liang at icann.org>; gnso-rpm-wg at icann.org <gnso-rpm-wg at icann.org>
>> *Subject:* RE: [GNSO-RPM-WG] FW: [Gnso-rpm-trademark] Q#8
>>
>>
>>
>> Thanks Rebecca for the attempt at bringing this together.
>>
>>
>>
>> I would encourage Claudio and other proponents of related proposals to
>> weigh in.
>>
>>
>>
>> Rebecca, can you clarify whether No. 4 below is intended to specifically
>> foreclose use of any entry in an ancillary database for registry-adopted
>> programs such as a founder’s program (i.e., not an “existing RPM”) which
>> may have a similar early-allocation effect as a sunrise.
>>
>>
>>
>> Also, for No. 1, can you clarify if this is intended to also capture
>> Kathy’s email of last Tuesday noting a proposed definition for trademarks:
>> “By "trademarks," the WG means "trademarks, service marks, certification
>> marks and collective marks.”?
>>
>>
>>
>> As we constructively attempt to produce a consensus recommendation on
>> this topic, noting the preamble below, I do want to remind the WG however
>> of an email from April 2017 expressing concerns about labeling Deloitte’s
>> actions (especially given the possibility of differing reasonable
>> interpretations about the “other marks” clause):
>> https://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001722.html
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DApril_001722.html&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=et_H2dFB0D2ttCTefu6tqaN59DJqm5SX6UhatgAapdg&s=Yiut4ybvRqo3pqM55_6q-RnltcK2NrmzcrvQ38LJc1Q&e=>
>> .
>>
>>
>>
>> Brian
>>
>>
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Tushnet,
>> Rebecca
>> *Sent:* Monday, September 23, 2019 3:28 AM
>> *To:* Ariel Liang <ariel.liang at icann.org>; gnso-rpm-wg at icann.org
>> *Subject:* Re: [GNSO-RPM-WG] FW: [Gnso-rpm-trademark] Q#8
>>
>>
>>
>> I understand that we’re trying to get some results out the door for
>> public comment, and I would suggest that don't need exact wording right
>> now, but we do need to clarify that Deloitte is doing the wrong thing. I
>> think we may be able to reach consensus about several different things:
>>
>> 1. The TMCH is for trademarks: those that are registered as
>> trademarks, confirmed by court decision as trademarks, or protected by
>> statute or treaty that specifies the trademarks covered (as opposed to, for
>> example, Lanham Act §43(a), which grants statutory protection to
>> unregistered marks but doesn’t specify the marks covered). What counts as
>> a trademark should be determined by national law, not by the TMCH.
>> 2. Specifically, GIs (that do not also fall under (1)) are not
>> trademarks.
>> 3. GIs, like other things that are not trademarks, can be the subject
>> of ancillary services. These ancillary services are voluntary, not
>> mandatory, in new gTLDs. Different providers should be able to compete to
>> provide them if desired. There is no existing barrier to multiple
>> registries using the same ancillary service, nor should we impose any
>> barriers to that possibility.
>> 4. GIs and other subject matter of ancillary services should not be
>> subject to Sunrise or Notice under the existing RPMs.
>> 5. Deloitte is (a) registering GIs under the theory that they are
>> covered by "statute/treaty," and (b) indicating to TMCH potential
>> registrants that "other IP" is eligible for Claims and Notice in the TMCH
>> by grouping “other IP” with registrations, court-confirmed marks, and marks
>> protected by statute or treaty in its public-facing materials. Both of
>> these practices should stop.
>> 6. As long as the public-facing aspects of the RPMs operate properly,
>> we should be indifferent to the “back end”—whether ancillary databases are
>> in the “same database” or a “different database,” should Deloitte choose to
>> operate an ancillary database.
>>
>> My hope is that, although there may not be universal agreement to each
>> one of these statements, we can approach consensus on each individually.
>>
>>
>>
>>
>>
>>
>>
>> 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 Ariel
>> Liang <ariel.liang at icann.org>
>> *Sent:* Wednesday, September 18, 2019 1:47 PM
>> *To:* gnso-rpm-wg at icann.org <gnso-rpm-wg at icann.org>
>> *Subject:* [GNSO-RPM-WG] FW: [Gnso-rpm-trademark] Q#8
>>
>>
>>
>> Forwarding Claudio’s proposal, which was originally sent to the TM Claims
>> Sub Team mailing list.
>>
>>
>>
>> Best,
>>
>> Ariel
>>
>>
>>
>> *From: *Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> on
>> behalf of claudio di gangi <ipcdigangi at gmail.com>
>> *Date: *Wednesday, September 18, 2019 at 1:43 PM
>> *To: *"gnso-rpm-trademark at icann.org" <gnso-rpm-trademark at icann.org>
>> *Subject: *Re: [Gnso-rpm-trademark] [GNSO-RPM-WG] Q#8
>>
>>
>>
>> Here is my compromise proposal consolidated/clarified in one location:
>>
>>
>>
>> *1) Going forward, GI may be accepted in the Clearinghouse (and recorded
>> separately as such within the database to distinguish them from TM
>> records) under "3.2.4 - other marks that constitute intellectual
>> property" OR shall be permitted to be recorded in one ancillary GI
>> database, e.g. "the unitary, ancillary GI Database", that all
>> registries/registrars may voluntarily connect with;*
>>
>>
>>
>> *2) GIs shall NOT be protected during the Sunrise or TM Claims period,
>> unless they are also registered as trademarks and otherwise meet the
>> qualifying criteria for such trademarks;*
>>
>>
>>
>> *3) the protection of GIs (those that are not also registered as
>> trademarks) shall NOT be considered a mandatory RPM*
>>
>> * for any new gTLD registry;*
>>
>>
>>
>> *4) for new gTLD registries that desire or choose to protect GIs (as
>> permitted by the current rules) based on local laws and/or for other
>> consumer protection reasons, GIs may be protected and registered as domain
>> names during the Limited Registration Period, and/or by the issuance of a
>> GI Claims Notice, and which shall be supported by the unitary, ancillary GI
>> database.*
>>
>>
>>
>>
>>
>> On Wed, 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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