[council] Fwd: [GAC] For GAC: Draft Report of the Independent Review of the Trademark Clearinghouse Available for Public Comment

Fri Oct 14 23:34:03 UTC 2016

Councilors —

I was copied on the attached email from Mark Carvell, the GAC representative from the UK.  I’m forwarding to you as a heads up on an issue the GAC will likely seek to put on the agenda for the council’s joint meeting with the GAC in Hyderabad.

Please let me know if you’d like me to return any information or concerns to Mark.  I’m happy to do so.

Mason

> Begin forwarded message:
> 
> From: Mark Carvell <mark.carvell at culture.gov.uk>
> Subject: Re: [GAC] For GAC: Draft Report of the Independent Review of the Trademark Clearinghouse Available for Public Comment
> Date: October 7, 2016 at 12:29:02 PM PDT
> To: "gac at icann.org" <gac at icann.org>
> Cc: Mason Cole <mason at donuts.co>, "Thomas.Schneider at bakom.admin.ch" <thomas.schneider at bakom.admin.ch>, Tom Dale <tom at acig.com.au>
> 
> Dear GAC colleagues
> 
> As aide memoire I'm resending my e-mail of 14 August below which set out proposed action by the GAC on the draft report of the review of the Trade Mark Clearing House (TMCH) which has been undertaken in response to a GAC proposal before the launch of the current new gTLD application round in view of the criticality of the TMCH as a rights protection mechanism (RPM). 
> 
> Responses received from stakeholders to the consultation on the draft report of the TMCH review are accessible at https://www.icann.org/public-comments/tmch-review-2016-07-25-en <https://www.icann.org/public-comments/tmch-review-2016-07-25-en>  
> 
> The GAC has a session in Hyderabad on the TMCH review scheduled for 6 November and it is possible that one of the authors of the report will be able to attend. I encourage colleagues therefore in the remaining time available before travelling to Hyderabad to familiarise themselves with this RPM, to review the responses to the draft review report and if necessary to seek comments and advice from intellectual property policy experts in your administrations.
> 
> Kind regards
> 
> Mark 
> 
> Mark Carvell
> 
> Representative of the United Kingdom and its Overseas Territories on the Governmental Advisory Committee of ICANN
> 
> GAC Vice-Chair candidate for 2017  
> 
> Global Internet Governance Policy
> Department for Culture, Media and Sport
> mark.carvell at culture.gov.uk <mailto:mark.carvell at culture.gov.uk>
> tel +44 (0) 20 7211 6062
> 
> On 14 August 2016 at 17:11, Mark Carvell <mark.carvell at culture.gov.uk <mailto:mark.carvell at culture.gov.uk>> wrote:
> Dear GAC colleagues
> 
> One of the key parts of the new gTLD Applicant Guidebook as it was being written in 2009-11 that came under scrutiny by the GAC in its "scorecard" progressive review of the proposals was that relating to intellectual rights protection. This was  in order to mitigate what was perceived to be a substantial risk of escalation of the cybersquatting problem of bad faith registration of trade mark names in order to extort money from brand-owners if there were to be a significant expansion in the number of top level domains. Cybersquatting costs business over a billion dollars annually.
> 
> The level of public policy concern relating to how the rights protection mechanisms (RPMs) were being developed to address this risk, is indicated in the detailed exchanges on rights protection at the time of the inter-sessional GAC meeting with the Board in Brussels on 28 February-1 March 2011 - see for example: https://gacweb.icann.org/display/gacweb/ICANN+Board-GAC+Consultation+Brussels+28+Feb-1+Mar+2011?preview=/27131966/27198027/GACID_20110309-GAC_replies_to_ICANN_rights_protection_questions.pdf <https://gacweb.icann.org/display/gacweb/ICANN+Board-GAC+Consultation+Brussels+28+Feb-1+Mar+2011?preview=/27131966/27198027/GACID_20110309-GAC_replies_to_ICANN_rights_protection_questions.pdf>  
> 
> There is also the statement of comments on the guidebook that issued on 25 May:  https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf <https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf> which in how it addresses issues such as community-based applications is a very interesting document from the archives, when read in the light of the experience of the new gTLDs round. 
> 
> The key safeguard mechanism that emerged from these discussions is the "Trademark Clearinghouse" which is essentially a database of registered marks to which registrars need to refer when receiving registration enquiries and requests. This has been operational since the roll out of the new gTLD programme started in late 2013; the size of the database is described on pp5-6 of the draft review report.  
> 
> The message to corporate brand-owners was that they needed to develop strategies to prepare for this rapidly growing TLD landscape and use the clearing house as the one-stop-solution for protecting their brand in the era of the massively expanded new gTLD system. 
> 
> For its part the GAC after some of its recommendations and proposals had not been fully accepted, ultimately recommended in the 25 May 2011 statement that a comprehensive independent review of the TMCH be conducted that would be triggered at the one year point after the launch of the 75th new gTLD in the round. We are now at that point. 
> 
> As the topic lead of the RPMs at the time of the inter-sessional meeting with the Board, the GAC leadership has asked me to coordinate the GAC's interaction and response to the review report. I now propose to do this with a view to presenting a GAC statement of position at our next meeting in Hyderabad. By the time of that meeting in November, we and the GNSO will have had the opportunity to review the stakeholder responses to the current public consultation which concludes on 3 September and it is likely that the planned revised report taking into account the responses will have issued. 
> 
> The ICANN announcement summarises very succinctly the main conclusions of the draft report -  including relating to few specific critical questions raised back in 2011 about TMCH not dealing with non-exact matches of trademarks (which had been rejected by the Board) and not handling notifications after 60 days limit - but not exclusively so as this should be a comprehensive evaluation of the TMCH's effectiveness including how unforeseen problems have been dealt with. 
> 
> For further information and key links, Tom Dale has provided the attached GAC Secretariat briefing note.
> 
> My proposed way forward for the GAC in preparing its response to the Independent Review of TMCH Services:
> 
> 1. Colleagues familiarise themselves with the draft report and its preliminary conclusions in preparation for consideration of the stakeholder consultation responses in September.  We should bear in mind what the GAC required of this comprehensive review in 2011. In particular we should question whether all the relevant issues relating to mitigating the cybersquatting risk have been covered in the draft report and whether all the emerging issues from the experience since the roll-out of new gTLDs commenced. have been taken into account.  
> 
> Timeline: send me your initial responses to the draft report by 9 September prior to my launch the main GAC exercise which is to review the stakeholder responses (with the help of ICANN staff) in the second half of September and first week of October. 
>  
> How can you contribute? 
> 
> Few of us on the GAC are IPR experts. Back in 2011 several GAC members (including the UK) actively consulted their intellectual property policy expert leads in the respective ministries and agencies, for direction as to the position that the GAC should take on enhancing rights protection while also balancing the opportunity for new stakeholders in the domain name system. So I recommend at this time of the TCMH services review, that colleagues likewise consider engaging their intellectual property policy colleagues - especially those familiar with the cybersquatting risk and complaints and so who would be in contact with brand-owners in particular - in order to develop your inputs into the GAC deliberations on the TMCH, well in advance of the Hyderabad.
> 
> 2. At the Hyderabad meeting, I propose I chair a substantive discussion with the aim of formulating a GAC statement of position on the TMCH services and the revised review report. and as appropriate recommend adjustments both for the current round and the subsequent mechanisms should there be a community decision to extend further the domain name system with more gTLDs.. 
> 
> 3. The TMCH services review will quite possibly be an issue for discussion with the GNSO in Hyderabad (I'm copying in our liaison Mason Cole so that he is aware). One further option for colleagues to consider is the potential value of inviting the review authors (Jiariu Liu of the Stamford Law School, Greg Rafert of Analysis Group, and Katja Seim of the Warton School Pennsylvania University) to present their findings to the GAC and take questions in open session. Let me know what you think of that option in due course.
> 
>  I'm away on summer leave for the rest of August but will be happy to take questions and comments on the above proposed way forward on the Trademark Clearinghouse Services review, when I return to the office on 2 September.    
> 
> Kind regards
> 
> Mark
> 
> Mark Carvell
> United Kingdom Representative on the Governmental Advisory Committee of ICANN
> 
> Global Internet Governance Policy
> Department for Culture, Media and Sport
> mark.carvell at culture.gov.uk <mailto:mark.carvell at culture.gov.uk>
> tel +44 (0) 20 7211 6062 <tel:%2B44%20%280%29%2020%207211%206062>
> On 26 July 2016 at 06:44, Tom Dale <tom at acig.com.au <mailto:tom at acig.com.au>> wrote:
> Dear GAC
> 
> Please see the news alert from ICANN, below, advising that the draft report of the Review of the Trademark Clearinghouse has been released for public comment. The deadline for comment is 3 September 2016.
> 
> This review is based on a GAC recommendation of May 2011 for a comprehensive post-launch independent review of the Clearinghouse to be conducted one year after the launch of the 75th new gTLD in the round. 
> 
> Further briefing will be provided in the near future.
> 
> Regards
> 
> 
> Tom Dale
> ACIG GAC Secretariat
> 
> 
> From: ICANN News Alert <no-reply at external.icann.org <mailto:no-reply at external.icann.org>>
> Reply-To: "no-reply at external.icann.org <mailto:no-reply at external.icann.org>" <no-reply at external.icann.org <mailto:no-reply at external.icann.org>>
> Date: Tuesday, 26 July 2016 at 2:16 AM
> To: Thomas Dale <tom at acig.com.au <mailto:tom at acig.com.au>>
> Subject: ICANN News Alert -- Draft Report of the Independent Review of the Trademark Clearinghouse Available for Public Comment
> 
>  <http://www.icann.org/>News Alert
> 
> https://www.icann.org/news/announcement-2016-07-25-en <https://www.icann.org/news/announcement-2016-07-25-en>
> Draft Report of the Independent Review of the Trademark Clearinghouse Available for Public Comment
> 25 July 2016
> 25 July 2016 – ICANN today announced the publication of the Draft Report of the Independent Review of the Trademark Clearinghouse. Specific considerations related to the matching criteria, Trademark Claims service and Sunrise period are assessed in the review, conducted by Analysis Group.
> 
> Read the report <https://newgtlds.icann.org/en/reviews/tmch/draft-services-review-25jul16-en.pdf> [PDF, 1.15 MB].
> 
> The report is available for public comment through 3 September 2016. Feedback will be incorporated into a revised report.
> 
> Comment on the Draft Report of the Independent Review of the Trademark Clearinghouse <https://www.icann.org/public-comments/tmch-review-2016-07-25-en>.
> 
> Key Findings:
> 
> Expanding Matching Criteria to include non-exact matches may be of limited benefit: The dispute rate of completed registrations that are variations of trademark strings is very low.
> 
> Extending the Trademark Claims Service may have diminishing value: Registrations of names matching trademarks decline after the required 90-day Claims service period ends.
> 
> Few trademark holders utilize the Sunrise period: Most users of the Trademark Clearinghouse submit proof of use to gain access to the Sunrise period. However, across eligible trademark holders, fewer than 20 percent have used the Sunrise period to date.
> 
> Additional Information
> 
> An independent review of the Trademark Clearinghouse was recommended <https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf> [PDF, 110 KB] by the GAC in May 2011 to be completed after the launch of the New gTLD Program. The review is informed by an analysis of Trademark Clearinghouse and third-party data sources, including data collected from stakeholders via interviews and surveys.
> 
> About ICANN
> 
> ICANN's mission is to help ensure a stable, secure and unified global Internet. To reach another person on the Internet, you have to type an address into your computer - a name or a number. That address has to be unique so computers know where to find each other. ICANN helps coordinate and support these unique identifiers across the world. ICANN was formed in 1998 as a not-for-profit public-benefit corporation and a community with participants from all over the world. ICANN and its community help keep the Internet secure, stable and interoperable. It also promotes competition and develops policy for the top-level of the Internet's naming system and facilitates the use of other unique Internet identifiers. For more information please visit: www.icann.org <https://www.icann.org/>.
> 
> 
> 
> This message was sent to tom at acig.com.au <mailto:tom at acig.com.au> from:
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Mason Cole 
VP Communications & Industry Relations
Donuts Inc.
…………………………………………
mason at donuts.email
Ofc +1 503 908 7623
Cell +1 503 407 2555

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