[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Michael Karanicolas
mkaranicolas at gmail.com
Wed Apr 12 12:22:18 UTC 2017
Hi,
Thanks very much for forwarding this mail on. I think it's very
helpful to this discussion to spell out the rationale for
confidentiality. I wonder if someone from the pro-confidentiality side
could spell out, in a bit more detail, why the first point is a
problem. I understand, of course, why domain squatting is problematic,
but I am not sure I fully understand how opening the TMCH database
would facilitate that. More information along these lines would, I
think, be helpful in trying to brainstorm out solutions or compromises
which may facilitate transparency while protecting the interests that
many here have expressed concern about.
Best,
Michael
On Wed, Apr 12, 2017 at 5:46 AM, Beckham, Brian <brian.beckham at wipo.int> wrote:
> Paul,
>
> Without commenting on the merits of either "side" among others, the attached email from Brian Winterfeldt (dated 28-Mar) seems to go to the question you were then, and are now still, asking.
>
> Regards,
>
> Brian
>
> -----Original Message-----
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
> Sent: Wednesday, April 12, 2017 12:49 AM
> To: J. Scott Evans
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
>
> Not once has anyone from "your side"given a factual and legal reason.
>
> As to this prior discussion please let me know when it took place.
>
> Sent from my iPad
>
>> On 12 Apr 2017, at 00:33, J. Scott Evans <jsevans at adobe.com> wrote:
>>
>> We have been through this all before. You’ve made these points and the advocates for the confidentiality of the data have clearly argued why your position is faulty. I agree to disagree with your position. If this information were so easily obtained (it is all publicly available), you’d have it.
>>
>>
>>
>>
>> J. Scott Evans
>> 408.536.5336 (tel)
>> 345 Park Avenue, Mail Stop W11-544
>> Director, Associate General Counsel
>> 408.709.6162 (cell)
>> San Jose, CA, 95110, USA
>> Adobe. Make It an Experience.
>> jsevans at adobe.com
>> www.adobe.com
>>
>>
>>
>>
>> On 4/11/17, 2:57 PM, "Paul Keating" <paul at law.es> wrote:
>>
>> It says at most which domains it wants pre-emptiness and notice rights over.
>>
>> Hardly a confidential business secret. The information is a public record. And, After all the Information is instantly public the minute one pre-emptive sunrise registration is undertaken. The notice right is completely a non secret.
>>
>> And hardly sufficient to use to hide bad actors.
>>
>>
>>
>> Sent from my iPad
>>
>>> On 11 Apr 2017, at 23:18, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org> wrote:
>>>
>>> There is a big difference from a database that contains all a company’s registered marks and one that contains a culling for only those it deems most valuable for protection in the DNS. The former is clearly open for the public, the later is not.
>>>
>>> J. Scott
>>>
>>>
>>> J. Scott Evans
>>> 408.536.5336 (tel)
>>> 345 Park Avenue, Mail Stop W11-544
>>> Director, Associate General Counsel
>>> 408.709.6162 (cell)
>>> San Jose, CA, 95110, USA
>>> Adobe. Make It an Experience.
>>> jsevans at adobe.com
>>> www.adobe.com
>>>
>>>
>>>
>>>
>>> On 4/11/17, 2:03 PM, "gnso-rpm-wg-bounces at icann.org on behalf of Jeremy Malcolm" <gnso-rpm-wg-bounces at icann.org on behalf of jmalcolm at eff.org> wrote:
>>>
>>> On 11/4/17 9:43 am, J. Scott Evans via gnso-rpm-wg wrote:
>>>> George:
>>>>
>>>> We have all followed this string. We understand that you and a few others believe there need to be wholesale changes to the Sunrise mechanism and the TMCH database (or at least the confidentiality of that data).
>>>>
>>>> 1. Do you have a suggestion for how to improve the Sunrise mechanism?
>>>> 2. I see very little support for violating the confidentiality provisions of the TMCH contract.
>>>
>>> FWIW I am also all for bringing the transparency of the TMCH database
>>> into line with those of national trademark registries so that its
>>> secrecy does not facilitate the kinds of abuses that George has
>>> uncovered. I have been an observer until now but I've just upgraded to
>>> member and plan to join the call tomorrow.
>>>
>>> --
>>> Jeremy Malcolm
>>> Senior Global Policy Analyst
>>> Electronic Frontier Foundation
>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C2528000b02f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636275414221363260&sdata=FLU88IUnUq0DTixWIhDAELHUtjhYZgxqHGr8ihACkQ8%3D&reserved=0
>>> jmalcolm at eff.org
>>>
>>> Tel: 415.436.9333 ext 161
>>>
>>> :: Defending Your Rights in the Digital World ::
>>>
>>> Public key: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2528000b02f744c8d69a08d4811e3b81%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636275414221373268&sdata=GzYW9x04IhxeW3HTyWRedWTpbiQQOrfZfflAKXdh04M%3D&reserved=0
>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
>>>
>>>
>>>
>>>
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C296d98f57a63425938bb08d48125ce45%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636275446755327947&sdata=BuFfHTCTaIyWcG9zDTvNDHvsKEWyeN9gd6owtaGkRkA%3D&reserved=0
>>
>>
> _______________________________________________
> gnso-rpm-wg mailing list
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> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
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>
> ---------- Forwarded message ----------
> From: "Winterfeldt, Brian J." <BWinterfeldt at mayerbrown.com>
> To: "'gnso-rpm-wg at icann.org'" <gnso-rpm-wg at icann.org>
> Cc:
> Bcc:
> Date: Tue, 28 Mar 2017 20:48:30 +0000
> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
>
> Hi all,
>
>
>
> We are hesitant to weigh in at this time, and would have preferred to wait until we actually reached substantive discussion of TMCH Charter Question 15 in our Work Plan/meeting agenda. However, in light of prior interventions, we felt it appropriate to provide some initial comments regarding an open versus closed TMCH database.
>
>
>
> A number of very valid reasons have previously been put forward as to why the TMCH database should remain confidential, which we attempt to summarize below:
>
>
>
> · Making the TMCH database fully open would simply encourage gaming by parties who may wish to use this data in bad faith (e.g. cybersquatters looking to capitalize on gaps in TMCH records by various brand owners), and facilitate gaming by contracted parties around premium names, reserved names, and potentially other abusive practices that would harm brand owners;
>
> · The content within the TMDB arguably constitutes trade secret information under applicable local law, confirming the most-highly valued and fervently protected brands belonging to each TMCH record holder. Publication of that content would impermissibly disclose proprietary trademark enforcement and defensive domain name registration strategies, enabling a variety of bad actors to assess which trademarks the trademark owner believes are highly valued and necessary to protect in the TMCH, and which brands are missing (possibly as a result of budgetary constraints or other practical considerations) and provide a roadmap to target perceived vulnerabilities;
>
> · Distribution of the TMDB content would violate the TMDB Terms of Service insomuch as TMCH record holders provide a license to that content, which explicitly prohibits any distribution, display or performance. See TMDB Terms and Conditions, Article 5.5. This contractual prohibition against disclosure can be considered to constitute a reasonable measure taken to ensure the confidentiality of the aforementioned proprietary trademark enforcement and defensive domain name registration strategies.
>
> · There is no clear need to open the TMCH database for public access, as Trademark Claims notices provide individual notice/information on an as-needed basis (at least during the Trademark Claims period for each new gTLD); and
>
> · There is no clear need to open the TMCH database for public access, as underlying trademarks can continue to be searched in the various national/regional trademark databases for purposes of conducting domain name registration due diligence (as several, on both sides of the debate, have highlighted).
>
>
>
> We appreciate comments that maintaining confidentiality of this database appears, on first blush, contrary to overall efforts to improve ICANN transparency. But this information is not ICANN information or documents produced by ICANN – it is information provided by individual private parties in order to participate in the RPMs. This is a key difference.
>
>
>
> If an individual registrant encounters a TMCH record (via a Trademark Claims notice) that it believes should not be recorded in the TMCH, then it can file a challenge pursuant to the mechanism outlined in the TMCH Dispute Resolution Procedures (Section 3.3). If a prospective registrant encounters a Sunrise domain name registration it believes should not exist, then it can file a challenge pursuant to the Sunrise Dispute Resolution Policy of the applicable registry operator. Most importantly, the individual can also challenge the underlying trademark record in the relevant national/regional trademark office or a court of competent jurisdiction. Again, all of the marks in the TMCH are already publicly available in national/regional trademark registers/databases (or in publicly-available statutes or court decisions, if those happen to be the bases for the mark’s inclusion in the TMCH).
>
>
>
> On balance, it seems the actual need to preserve confidentiality of the overall TMCH database outweighs the alleged need for general public access to the database.
>
>
>
> Again, we hope to discuss this issue further at the appropriate time, and appreciate the Working Group’s consideration of these initial thoughts.
>
>
>
> Best regards,
>
>
>
> Brian, Sarah, Phil and Griffin
>
>
>
> Brian J. Winterfeldt
>
> Co-Head of Global Brand Management and Internet Practice
>
> Mayer Brown LLP
>
> bwinterfeldt at mayerbrown.com
>
> 1999 K Street, NW
>
> Washington, DC 20006-1101
>
> 202.263.3284 direct dial
>
> 202.830.0330 fax
>
>
>
> 1221 Avenue of the Americas
>
> New York, New York 10020-1001
>
> 212.506.2345 direct dial
>
>
>
>
>
>
>
>
>
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
> Sent: Tuesday, March 28, 2017 2:45 PM
> To: Greg Shatan; Michael Karanicolas
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
>
>
>
> Personally I have yet to hear a valid reason for having the database closed:
>
>
>
> 1. All underlying trademarks are public record
>
> 2. All TMCH registrants have the right to secure the relevant domain names during sunrise (or simply freeze them per Donuts)
>
> 3. The TMCH has a notice provision should # 2 not be selected but the mark holder or the domain is an “equal” to the TMCH entry
>
> 4. The URS exists
>
> 5. The UDRP exists
>
> 6. The Courts exist.
>
>
>
> The only concern I have heard is that cybersquatters may register the actual mark or around the mark. This is not a real issue:
>
>
>
> A. The mark holder can register
>
> B. The mark holder can exclude (via Donuts)
>
> C. The mark holder can issue a notice
>
> D. The mark holder can use the URS
>
> E. The mark holder can use the UDRP
>
> F. The mark holder can use the judicial system
>
>
>
> HOWEVER, on the flip side, we keep hearing about all of these TMCH entries that would cause your grandmother to roll in her grave. This COULD be perceived as an attempt by the mark holders to keep quiet about THEIR land grab based on claims that are entirely generic (JSCOTT – sorry) and have no business being included in a preemptive preclusion that if used against our own personal interests would be deemed offensive.
>
>
>
>
>
> SHOW ME THE LIST (drain the swamp), however you want to say it. Get it out in the open. Look at it. If there is no issue then ignore it. The more you try to keep something hidden the more people want to see it – distrusting the reasons for keeping it hidden in the first place.
>
>
>
> My 2C.
>
>
>
> Paul Keating
>
>
>
> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan <gregshatanipc at gmail.com>
> Date: Tuesday, March 28, 2017 at 6:30 PM
> To: Michael Karanicolas <michael at law-democracy.org>
> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
>
>
>
> Michael,
>
>
>
> Do you have any solutions for the issues and concerns that have been mitigated by having the database be closed?
>
>
>
> Thanks!
>
>
>
> Greg
>
>
> Greg Shatan
> C: 917-816-6428
> S: gsshatan
> Phone-to-Skype: 646-845-9428
> gregshatanipc at gmail.com
>
>
>
> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas <michael at law-democracy.org> wrote:
>
> Hi all,
>
> Just building on the discussion around transparency, after hearing the
> conversation at ICANN 58 I drafted my own short note setting out my
> thoughts on the issue, which I'm attaching here.
>
> I want to be mindful of the conversation on inputs which is ongoing
> now - so hopefully it isn't out of place or inappropriate to submit my
> thoughts via this method.
>
> I very much look forward to further discussions on this issue.
>
> Best wishes,
>
> Michael Karanicolas
>
>
> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman at comlaude.com> wrote:
>> Thanks Mary.
>>
>>
>>
>> Co-Chairs,
>>
>>
>>
>> Can I assume that with respect to the EFF letter, the only items we would be
>> discussing from that letter at this point are their comments with respect to
>> design marks and the transparency of the TMCH database?
>>
>> I am not saying the other comments are not important, but with respect to
>> this Working Group at this time, we are not yet addressing those other
>> issues.
>>
>>
>>
>> I would strongly urge that we not engage yet in the other discussion around
>> the other comments at this point (namely, trademark rights in general), as I
>> think that could lead us down a large rabbit hole and considerably slow down
>> out work.
>>
>>
>> Thanks.
>>
>>
>>
>> Jeffrey J. Neuman
>>
>> Senior Vice President |Valideus USA | Com Laude USA
>>
>> 1751 Pinnacle Drive, Suite 600
>>
>> Mclean, VA 22102, United States
>>
>> E: jeff.neuman at valideus.com or jeff.neuman at comlaude.com
>>
>> T: +1.703.635.7514
>>
>> M: +1.202.549.5079
>>
>> @Jintlaw
>>
>>
>>
>>
>>
>> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
>> On Behalf Of Mary Wong
>> Sent: Tuesday, March 28, 2017 6:15 AM
>> To: gnso-rpm-wg at icann.org
>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and
>> information on Deloitte Ancillary Services
>>
>>
>>
>> Dear all,
>>
>>
>>
>> During the ICANN58 Working Group sessions in Copenhagen, the following two
>> matters came up for which staff is now following up with the requested
>> document (for #1) and information (for #2).
>>
>>
>>
>> Item #1: Letter of 10 March 2017 from some trademark scholars and
>> practitioners to our Working Group co-chairs expressing concerns with
>> certain aspects of the TMCH:
>> https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf.
>>
>>
>>
>> Item #2: Question regarding the Ancillary Services that Deloitte is
>> permitted to provide under its Validation Agreement with ICANN, subject to
>> ICANN’s authorization.
>>
>>
>>
>> Currently, two Ancillary Services have been approved by ICANN:
>>
>> 1. Extended Claims Services
>>
>> The extended claims services provide the Trademark Holder or Trademark
>> Agent, as applicable, with an electronic notification when a domain name
>> registered in an Eligible TLD matches one or more of such party’s recorded
>> labels with the TMCH. The extended claims services does not include a
>> domain name pre-registration notification (i.e. a notification to the
>> potential registrant of a domain name that the domain name such registrant
>> intends to register matches a label recorded with the Trademark
>> Clearinghouse).
>>
>>
>>
>> 2. Audit Report
>>
>> Deloitte may offer an audit report service for Trademark Holders and
>> Trademark Agents with active Trademark Records recorded in the Trademark
>> Clearinghouse. Such audit reports shall consist primarily of a listing of
>> matches between their recorded labels within the Trademark Clearinghouse and
>> domain names registered in an Eligible TLD.
>>
>>
>>
>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on the
>> fifth anniversary of ICANN’s entry into a Registry Agreement under the New
>> gTLD Program, with consecutive one-year renewals thereafter. Although
>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint
>> additional validators once ten Qualified Sunrise Periods have been completed
>> under the New gTLD Program.
>>
>>
>>
>> Thanks and cheers
>>
>> Mary
>>
>>
>
>> _______________________________________________
>> gnso-rpm-wg mailing list
>> gnso-rpm-wg at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
>
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>
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