[GNSO-RPM-WG] Q#15 Transparency for the TMCH

Mon Oct 14 20:09:20 UTC 2019

Thanks Georges - we have now come full circle to the "elaborate scenario"
which Jason first asked about, and which your colleagues disavowed earlier
in this very thread.

On Mon, Oct 14, 2019 at 4:03 PM Nahitchevansky, Georges <
ghn at kilpatricktownsend.com> wrote:

> Michael
>
> With all due respect not every country is listed in the WIPO database.  In
> fact there are a number of countries that are not listed or included there
> and that are not online. I am surprised you do not know this.  Most
> practitioners know this. The point is that you have do much research to
> figure out all of the marks filed by a brand owner. Perhaps you do not know
> this, but often brand owners file for different marks in different
> countries depending on local products, translation issues and other
> business reasons. But again this is an aside.  the real point is that the
> concern of brand owners of having an open TMCH registry is the likelihood
> that it will lead to more abuse. There does not seem to be a strong reason
> supported by real world evidence supporting a change here
>
> *From:* mkaranicolas at gmail.com
> *Sent:* October 14, 2019 4:36 PM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
>
> Hi all,
>
> A few points have been raised that warrant being addressed. First off - it
> wouldn't take "hours of painstaking searches" to find a trademark owner's
> full portfolio. WIPO has a wonderful tool which aggregates these databases
> together: https://www3.wipo.int/branddb/en/ It's a bit surprising to me
> that professionals working in this space are unfamiliar with this
> aggregated database... but live and learn.
>
> Regarding the technical challenges of findings a trademark owner's filings
> in the TMCH - while it is correct that the claims period only runs for 90
> days - the fact that there has been, and continues to be, a steady stream
> of new gTLD rollouts renders that relatively moot as an obstacle to access.
> I concede there might be some small financial risk to mining the data in
> this way (although I believe most credit cards allow for cancelled
> transactions within 24 hours or so) - but even so, it would be a relatively
> trivial amount of money in the context of corporate intelligence budgets.
> If the commercial value of this information doesn't exceed a few hundred
> dollars for a major brand, I would question whether it's as sensitive as
> people claim.
>
> I'm not going to engage in discussions about the original intent of the
> TMCH since I wasn't involved in ICANN at the time - except to note that
> there are those who were involved in the process who will argue vehemently
> that it was intended to be transparent.
>
> Best,
>
> Michael
>
>
> On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi at gmail.com>
> wrote:
>
>> Good points, Marc.
>>
>> And point #3 is what I expressed in my prior note, e.g. the mining of
>> TMCH data was an issue that was contemplated during TMCH implementation in
>> the content of *minimizing misuse of **access*.
>>
>> As some may recall, there was a major proposal (submitted by a group of
>> registries) designed to mitigate the misuse of access by decreasing the
>> coupling of certain technical functions of the TMCH from registry
>> interaction.
>>
>> Misuse of access was germane to these proposals. ICANN org ultimately
>> decided against implementing certain proposed control mechanisms - but not
>> for policy reasons based on the support/permission of data mining, but
>> because ICANN org deemed the control mechanisms to be ineffective in
>> practice.
>>
>> If anyone is interested in more background, please see the blog article
>> linked to below (from CircleID) which took place at this juncture of TMCH
>> implementation when the cited proposal was under consideration.
>>
>> The bottom line is the fact that someone can mine the TMCH data under
>> current procedures, and then turnaround and use that data to target brands
>> and register domain names abusively (in other TLDs) is, if anything, a
>> problem we should be working to address.
>>
>> Moreover, data mining is a real indication that the number of TM Claims
>> notices that were issued are not reflective of the true number of times an
>> actual registrant sought to register a domain.
>>
>> So while we could try to develop TMCH recommendations that mitigate the
>> practice of data mining, since that practice is inconsistent with the
>> intended purpose and functionality of the TMCH, at a minimum, such
>> harmful practices (which increase costs on all parties) do not
>> constitute valid arguments for TMCH transparency in my opinion, and are not
>> necessary for our team to build potential solutions for addressing
>> stakeholder concerns.
>>
>>
>> http://www.circleid.com/posts/20120828_trademark_clearinghouse_secure_reliable_usable_pick_any_two/
>>
>> "The discussions focused on a fundamental contradiction in the TMCH
>> specifications that are mandated by the Applicant Guidebook. During the
>> development of the AGB, rights holders made it clear that a major concern
>> for them was the risk of data mining if the database was released into the
>> public domain: being able to identify new products being developed by
>> global corporations (by tracking their registered trade marks) could
>> threaten multi-billion dollar product development plans. This means
>> restrictions on the distribution of the database, to minimise the chances
>> of unauthorised access."
>>
>> Later in the article:
>>
>> "But the fundamental problems with the TMCH are much more serious: rights
>> holder protection was probably the most controversial issue surrounding the
>> programme, and if the protection mechanisms devised should fail, then it
>> would be a significant blow to the credibility of ICANN as a corporation
>> and as a community (as Kurt Pritz made clear in Brussels). Some very
>> smart minds are now paying close attention to this issue, trying to resolve
>> the problems."
>>
>>
>> On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG <
>> gnso-rpm-wg at icann.org> wrote:
>>
>>> Two reasons:
>>>
>>> 1. Trademark Claims only runs for 90 days after Sunrise; and
>>>
>>> 2. The claims notice does not pop up when a domain name is searched.
>>> The person must actually attempt to register the domain name before a
>>> Claims Notice will be generated and displayed
>>>
>>> In other words, it would take a significant amount of time and effort to
>>> try and circumvent the existing confidentiality and there would also be
>>> some measure of financial risk  - i.e., if there is no TMCH entry the
>>> person would be charged for the registration.  This might not cost so much
>>> on a one-off basis, but could quickly get expensive in the aggregate.
>>>
>>> Best regards,
>>>
>>> Marc H. Trachtenberg
>>> Shareholder
>>> Greenberg Traurig, LLP
>>> 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
>>> T +1 312.456.1020
>>> trac at gtlaw.com | www.gtlaw.com | View GT Biography
>>>
>>>
>>>
>>> -----Original Message-----
>>> From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
>>> Michael Karanicolas
>>> Sent: Saturday, October 12, 2019 1:30 PM
>>> To: Greg Shatan <gregshatanipc at gmail.com>
>>> Cc: gnso-rpm-wg at icann.org
>>> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
>>>
>>> *EXTERNAL TO GT*
>>>
>>> Thanks Greg. Now can you explain to me why a person who wanted to know
>>> this "confidential strategy" wouldn't just go to any registrar, search for
>>> domains corresponding to the trademarks that an entity has registered, and
>>> see when a claims notification pops up, to get an accurate and complete
>>> picture of which marks they have chosen to put into the TMCH?
>>>
>>> On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc at gmail.com>
>>> wrote:
>>> >
>>> > Jason and all,
>>> >
>>> > This "elaborate scenario" (filing "in “remote” jurisdictions with
>>> non-searchable DBs to gain a priority date") is not at all the rationale
>>> that was put forth by those in favor of a closed TMCH database.
>>> >
>>> > I believe it's incorrect to say that this scenario was raised (in the
>>> chat, by John McElwaine, or otherwise) introduced this concept as part of
>>> an argument in favor of a closed TMCH database.
>>> >
>>> > I am not even aware of the use of the strategy as described in its
>>> totality.  I think this may be an unfortunate misunderstanding or
>>> mis-recollection of the earlier discussions and the surrounding facts.
>>> >
>>> > As I recall, the rationale is much more straightforward: A brand
>>> owner's choice of the subset of their trademarks to put in the TMCH is a
>>> confidential strategy. Giving third parties knowledge of this strategy
>>> allows these third parties to engage in activities that would harm TMCH
>>> registrants, which in turn would discourage use of the TMCH.  These
>>> activities include:  Targeting the brand owner's marks not in the TMCH for
>>> domain name registrations that can then be exploited in various ways;
>>> Developing a counter-strategy for TMCH registration (either by registering
>>> the same marks in the TMCH to enable contested Sunrises, or by registering
>>> the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH
>>> marks for counterfeiting, knock-offs, etc. (on the theory that the brand
>>> owner is less likely to put resources into policing and enforcing these
>>> less important marks), etc.
>>> >
>>> > However, if I'm incorrect about any of this, I'm always happy to learn
>>> new facts.
>>> >
>>> > I am aware that some applicants may choose to file in jurisdictions
>>> where registrations issue more quickly.  Even this limited scenario is not
>>> the practice of any brand owners I have represented or of which I'm
>>> specifically aware.  I can't speak to who or what type of applicant engages
>>> in even this limited practice.
>>> >
>>> > I do recall that one or a few people or entities have used some
>>> aspects of this strategy or something similar to try to "game" Sunrise.
>>> The specific concern about gaming the TMCH and Sunrise is one that I
>>> believe we need to deal with. I believe we should do this in a targeted
>>> fashion, both to get to consensus in the WG and to avoid disadvantaging
>>> legitimate TMCH registrants.
>>> >
>>> > Best regards,
>>> >
>>> > Greg
>>> >
>>> > On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason at esqwire.com>
>>> wrote:
>>> >>
>>> >> Hi All,
>>> >>
>>> >>
>>> >>
>>> >> Sorry for not being able to address this on yesterday’s call – I was
>>> bounced from the Zoom and couldn’t reconnect from my mobile.  After much
>>> consideration of the chat comments and statements during the past two calls
>>> I’ve parsed together the following strategy concerns that might be at
>>> issue.   It seems the opposition to an open/transparent TMCH have set forth
>>> the following rationale:
>>> >>
>>> >>
>>> >>
>>> >> Large brand owners like the ability to file in “remote” jurisdictions
>>> with non-searchable DBs to gain a priority date that can later be used for
>>> priority presumably in the US under a Section 44 application under the
>>> Paris Convention.   For example, Party A could “secretly” register in say
>>> Mauritius or Jamaica (jurisdictions that I believe do not have searchable
>>> DBs), and then file a Section 44 with the USPTO when ready to “go public.”
>>>  In this scenario, large brand owner obtains the earlier priority date in
>>> the US without having disclosed its “secret” brand plans or strategy.
>>>  Alternatively, there may also be a similar use case with a registration in
>>> the EU.  This is what I understand the opposition was presenting in the
>>> comments last week and again yesterday.
>>> >>
>>> >>
>>> >>
>>> >> This use of the “secret TM priority” filing method is one thing, and
>>> I understand the ostensible business intelligence concerns to require such
>>> a tactic.   However, we are discussing this in the context of the TMCH.
>>> How can these parties obtain Sunrise protection without proof of use?
>>>  This is even more challenging in the case of an EU registration that might
>>> not be based on actual use.
>>> >>
>>> >>
>>> >>
>>> >> If the project is top secret and subject to heightened secrecy, how
>>> can the party then show legitimate use of the mark and obtain TMCH
>>> protection while maintaining its purported heightened secrecy?  What is the
>>> POU and what is the declarant stating to the TMCH?  Is this the position
>>> that the opposition is proffering to block transparency of the TMCH?
>>> >>
>>> >>
>>> >>
>>> >> In addition, if I am correctly capturing how the method is employed
>>> in practice, it would be helpful to know if this practice is really in
>>> widespread use or rather an outlier, because I’m not yet seeing an
>>> important justification that outweighs the important benefits of an open
>>> TMCH.
>>> >>
>>> >>
>>> >>
>>> >> Thanks,
>>> >>
>>> >>
>>> >>
>>> >> Jason
>>> >>
>>> >>
>>> >>
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