[GNSO-RPM-WG] 3.2.4 transcript with ICANN General Counsel confirming status

[claudio di gangi]

All,

I am very happy that ICANN is transparent and transcribes is meetings,
which is particularly essential in this fluid and complex environment.

Since I was involved in the ICANN committee that developed the proposal for
the Trademark Clearinghouse, which was called the IP Clearinghouse, I have
known from the start that the concept of allowing other forms of IP in the
Clearinghouse was always part of the concept, because there was always
broad agreement that the ICANN-imposed Mandatory RPMs, were the ceiling and
not the floor.

The new gTLD Registry controls the allocation of all domain names within
its TLD, and can therefore establish voluntary mechanisms, consistent with
local laws, to protect consumers from confusion and harm from malicious
actors.

Since the Clearinghouse database is just an administrative tool to support
the implementation of these mechanisms, both mandatory and voluntary, there
was never a reason to exclude certain forms of IP in the Clearinghouse for
the sole purpose of supporting the voluntary RPMS that a specific Registry
may adopt.

We have reached consensus on this point, in particular through the
ancillary database concept, but have gotten snagged on the wording of
particular provisions, including 3.2.3 and 3.2.4

Section 3.2.4 currently states: "Other marks that constitute intellectual
property" - and this category: 3.2.4 - is NOT for the mandatory Sunrise or
Claims period, but for voluntary registry-specific RPMs.

I located the transcript from the ICANN meeting when the Applicant
Guidebook was essentially completed; it had reach the near final stage.

3.2.4 was specifically discussing during this meeting; the confusion with
the language was identified (and it was even predicted that it was going to
cause confusion) and ICANN staff and General Counsel agreed that 3.2.4
extended to other forms of IP beyond trademarks. In other words, we have
been confused on this clause simply because of imprecise drafting of this
provision.

Please see the transcript here: https://archive.icann.org/en/
meetings/singapore2011/bitcache/Trademark%20Clearinghouse%20Implementation%20Plan-vid=26005&disposition=attachment&op=download.txt

I am quoting the relevant section:

"J. Scott Evans: Another comment to Amy. Amy, I think that the guidebook's
use of "other marks" confusing, and that needs to be changed to "other
indicia," because we're already talking about marks in trademarks, and if
you just make that
one change, because I think the idea is there are other indicia other than
trademarks that might be protected by the local registry, and we just need
to make that clear.  Because I think there's some confusion, well, if
trademarks are here, what are other marks.

>>AMY STATHOS:  Right.  And with respect to the assignment issue, sometimes
the database that has the assignment documents may be different than the
actual database that has the actual registration, so looks like it's
something that --

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So 3.2.4. was always intended to allow other forms of IP to be recorded in
the main TMCH database for implementation of voluntary Registry-specific
voluntary RPMs. I hope this closes the debate on 3.2.4. and here is my
proposed modification to bring clarity to its meaning:

"3.2.4 Other Signs or Indicia that constitute intellectual property"

Best regards,
Claudio
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