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

Tue Mar 28 20:49:18 UTC 2017

Paul:

Always taking the most negative view. The notice serves to warn a party that there could be an issue so that purchaser can make an informed decision before proceeding.

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 3/28/17, 1:14 PM, "gnso-rpm-wg-bounces at icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces at icann.org on behalf of paul at law.es> wrote:

    Marie,

    Sorry but I don't understand your questions.

    The notice is intended to remove the ignorance defense of the registrant.  It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue.  In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something .

    One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice).  

    Sent from my iPad

    > On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo at aim.be> wrote:
    > 
    > 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2017%2F03%2F10%2Ftm_scholars_letter_to_icann_final.pdf&data=02%7C01%7C%7C4b131d4e9eca410ffbee08d4761716ae%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636263288918966688&sdata=Hauy9Ot2Y6ym%2Bvt3ke%2BzRe0SrK%2Bb6upkKVZyGY6oRmA%3D&reserved=0.
    >>>>>>>>> 
    >>>>>>>>> 
    >>>>>>>>> 
    >>>>>>>>> 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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    >>>>>> 
    >>>>>> 
    >>>>>> 
    >>>>>> 
    >>>>> 
    >>>>> _______________________________________________
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    >>>> 
    >>>> 
    >>>> 
    >>>> 
    >>> 
    >> 
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    >> 
    >> 
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