[GNSO-RPM-WG] FW: [Gnso-rpm-trademark] Q#8

Wed Sep 25 03:35:39 UTC 2019

First, the good news: It seems like there is an emerging consensus on many of the individual propositions.  My comments go to where there are still apparently some dispute.

  1.  The TMCH is for trademarks: …

Claudio’s suggestion is to use the language “protected under a statute or treaty as a sign that functions as a trademark/source identifier.” I understand the spirit of this suggestion but it won’t perform any limiting function, because the statutes that don’t use the word “trademark” also don’t use the words “source identifier.” Given that countries may also protect, for example, the names of their monarchs by statute, the suggested language isn’t particularly useful compared to allowing an applicant to show that the statute treats their term as a trademark.  For example, national authorities might deem it to be a trademark even if the statute doesn’t use that word—this is often how US lawyers talk about the US protections for Smokey Bear, for example—or the standard for liability might be confusion as to source, sponsorship, etc. (a trademark standard).  (The Red Cross, by the way, possesses a number of live trademark registrations, so needs no help from us in this regard.)

Separately, there’s no need and some risk to add in a bunch of extra terms—“signs, words, or phrases” are either duplicative or expansionist, neither of which seems desirable here.

3. GIs, like other things that are not trademarks, can be the subject of ancillary services.  … Different providers should be able to compete to provide them if desired.

Claudio, I don’t understand your claim that no one can currently compete to provide ancillary database services. There may not be a market demand for it, but that is not something that we can fix with policy or should try to fix.  We certainly should not hand a new monopoly to Deloitte.

You say you’re basing your proposals on Mary’s statement that “the ancillary database service is registry-specific, meaning on a per new gTLD basis.”  But that claim is purely descriptive and does not establish the existence of any barrier: each registry gets to decide whether it wants to use an ancillary database.  That will always be the case as long as ancillary services are ancillary and not mandatory.  Since there are no such services operational that we’ve been informed of, it cannot be that “the current system doesn’t allow multiple new gTLD registries to connect with the same ancillary database.”  If Mary believes otherwise, it is past time for her to share the facts behind that belief.  I believe we also have some registry operators in the WG who might be able to shed light on whether they have been prevented from using the same ancillary service as another registry, if this is a real problem.

I don’t believe we should give “further guidance on the interplay between contracted parties, ICANN, the operator of the TMCH, and users of the system.”  We have not collected data on this.  We have no basis for making any findings about this.  We especially shouldn’t create GI/Appellation of Origin protections on the cheap, as you do when you propose to create a new Claims procedure for GIs/AOs. If there is registry demand for this, then we might have heard about it when we surveyed registry operators; I don’t think we did.

Separately, your proposal appears to put new obligations on the TMCH provider (“shall establish or create an ancillary database service, under appropriate terms of use”).  Perhaps staff can shed some light on what contractual renegotiations would be required for that.  But even if negotiations would be workable, there is still no evidence that the market can't handle voluntary ancillary databases. We have enough trouble with the mandatory RPMs.  Let's stick to them.

Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759

________________________________
From: claudio di gangi <ipcdigangi at gmail.com>
Sent: Tuesday, September 24, 2019 2:50 PM
To: BECKHAM, Brian <brian.beckham at wipo.int>
Cc: 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

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<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_uscode_text_18_706&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=vq5pBV3LyYL-VndOVC6QjVMW3aUEKSgGM7bUp5OoHnE&s=Ym_QM-NWjPKswY1enHdA-A36XE-H8WDRbn8bASA3V-E&e=>)

“...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<mailto: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<mailto: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<mailto:rtushnet at law.harvard.edu>>
Sent: Monday, September 23, 2019 3:53 PM
To: BECKHAM, Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; Ariel Liang <ariel.liang at icann.org<mailto:ariel.liang at icann.org>>; gnso-rpm-wg at icann.org<mailto: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<mailto:brian.beckham at wipo.int>>
Sent: Monday, September 23, 2019 5:14 AM
To: Tushnet, Rebecca <rtushnet at law.harvard.edu<mailto:rtushnet at law.harvard.edu>>; Ariel Liang <ariel.liang at icann.org<mailto:ariel.liang at icann.org>>; 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: 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<mailto: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<mailto:ariel.liang at icann.org>>; gnso-rpm-wg at icann.org<mailto: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<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Ariel Liang <ariel.liang at icann.org<mailto:ariel.liang at icann.org>>
Sent: Wednesday, September 18, 2019 1:47 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] 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<mailto:gnso-rpm-trademark-bounces at icann.org>> on behalf of claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>
Date: Wednesday, September 18, 2019 at 1:43 PM
To: "gnso-rpm-trademark at icann.org<mailto:gnso-rpm-trademark at icann.org>" <gnso-rpm-trademark at icann.org<mailto: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<mailto: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, <.???> 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<mailto: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<mailto: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<mailto:ipcdigangi at gmail.com>>; Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Q#8

?External Email? - From: gnso-rpm-wg-bounces at icann.org<mailto: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<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>
Sent: Tuesday, September 17, 2019 3:38 PM
To: Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>
Cc: 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: 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<mailto: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<mailto: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<mailto:kathy at kathykleiman.com>>
Cc: gnso-rpm-wg at icann.org<mailto: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<mailto: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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