[gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

Tue Mar 28 20:00:31 UTC 2017

And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them?
M

Sent from my iPhone, sorry for typos 

> On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
> 
> Unfortunately, "searching a TM registry" won't get the job done,
> because--as we've discussed before in other contexts--TMCH
> registrations are different. They provide claims no matter what the
> goods or services are.  No matter what I want to use "the" or "color"
> etc. for, they're in the TMCH.  That is different from any trademark
> registry (even most of the previous attempts to create "fame"
> registries required goods/services listings).
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
> 
> 
>> On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo at aim.be> wrote:
>> Thanks Rebecca.
>> If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing.
>> Marie
>> 
>> Sent from my iPhone, sorry for typos
>> 
>>> On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
>>> 
>>> I think the value of transparency has been articulated here several
>>> times, whether or not you agree: legitimate market entrants--who, not
>>> for nothing, are also likely to be trademark owners--may want to know
>>> what they can do.  People concerned with the integrity of the register
>>> want to know whether (as current data seem to indicate) many of the
>>> existing registrants and many existing claims notices are asserting
>>> control over domain names whose value is distinct from trademark value
>>> attributable to the registrant.  Those are the usual values of
>>> transparency: knowing what's going on so one can order one's own
>>> behavior accordingly, and/or advocate for change where change is
>>> desirable.
>>> 
>>> On the other side, I find persuasive the argument that cybersquatters
>>> generally don't need to consult any records to figure out what domains
>>> they want and thus I find it hard to identify the harm to be avoided.
>>> We are talking here about the marginal impact of transparency in the
>>> TMCH added to the public nature of registration (searchable online in
>>> many large nations) and the public nature of trademark fame (e.g.,
>>> Twentieth Century Fox, to take an example that's been discussed).  For
>>> me, transparency in the TMCH would provide a lot of TMCH-relevant
>>> information but has only a marginal effect on information about
>>> trademark values generally, arguing in favor of transparency.
>>> Rebecca Tushnet
>>> Georgetown Law
>>> 703 593 6759
>>> 
>>> 
>>>> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo at aim.be> wrote:
>>>> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer?
>>>> 
>>>> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No?
>>>> 
>>>> Marie
>>>> 
>>>> Sent from my iPhone, sorry for typos
>>>> 
>>>>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael at law-democracy.org> wrote:
>>>>> 
>>>>> Hi Greg,
>>>>> 
>>>>> If I had a perfect solution to prevent cybersquatting in my pocket I
>>>>> probably would have led with it :)
>>>>> 
>>>>> That said, my aim in drafting that was to try and help frame the
>>>>> discussion, rather than to try and close it. Look, my expertise is
>>>>> more on the transparency side than on the trademark side. But on the
>>>>> transparency side, we deal with potential harms all the time - be they
>>>>> for information involving national security, personal privacy - or
>>>>> legitimate commercial interests like trademark protection. And
>>>>> generally, we seek to find an avenue forward which provides adequate
>>>>> protection for these interests, while respecting the overarching
>>>>> interest in openness. This calculus shouldn't mean that openness is
>>>>> abandoned whenever a potential for harm is encountered. Indeed, if
>>>>> that were the case almost no information would end up being put out
>>>>> there. Rather, it means assessing the specific harms that would flow
>>>>> directly from the specific disclosures, weighing them against the
>>>>> public interest in disclosure, and seeking ways to work around those
>>>>> harms which also provide for maximum openness.
>>>>> 
>>>>> So, while I don't have a readymade solution to present, I do think we
>>>>> need to work together to find one. Reverting to secrecy is just not
>>>>> consistent with ICANN's broader mission, given that the entire model
>>>>> is based on public oversight and accountability.
>>>>> 
>>>>> Looking forward to engaging on this further.
>>>>> 
>>>>> Michael
>>>>> 
>>>>> P.S. I'm not sure why it's at all relevant who actually drafted the
>>>>> text of the EFF letter? As someone who's been involved in many similar
>>>>> efforts, they can be done fully collaboratively, or with one or two of
>>>>> the signatories taking the lead. Either way though, all of the names
>>>>> attached to it have approved and endorsed it. These are very senior
>>>>> and respected experts - they don't just throw their names on any
>>>>> document that's sent their way. If they signed the letter it means
>>>>> they support it - what does it matter who held the pen?
>>>>> 
>>>>> 
>>>>> 
>>>>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:
>>>>>> 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
>>>>>>>> 
>>>>>>>> 
>>>>>>>> _______________________________________________
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>>>>>>>> gnso-rpm-wg at icann.org
>>>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>>> 
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>>>>>> 
>>>>>> 
>>>>>> 
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>>>>> 
>>>>> 
>>>>> 
>>>> 
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