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Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Marie Pattullo March 28, 2017

March 28, 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(a)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(a)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(a)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(a)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(a)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(a)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(a)gmail.com >>>>>> >>>>>> >>>>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>>>> <michael(a)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(a)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(a)valideus.com or jeff.neuman(a)comlaude.com >>>>>>>> >>>>>>>> T: +1.703.635.7514 >>>>>>>> >>>>>>>> M: +1.202.549.5079 >>>>>>>> >>>>>>>> @Jintlaw >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> From: gnso-rpm-wg-bounces(a)icann.org >>>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>>>>>> On Behalf Of Mary Wong >>>>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>>>> To: gnso-rpm-wg(a)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(a)icann.org >>>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>>> >>>>>>> _______________________________________________ >>>>>>> gnso-rpm-wg mailing list >>>>>>> gnso-rpm-wg(a)icann.org >>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>> >>>>>> >>>>>> >>>>>> _______________________________________________ >>>>>> gnso-rpm-wg mailing list >>>>>> gnso-rpm-wg(a)icann.org >>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg(a)icann.org >>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>> >>>>> >>>>> >>>>> >>>> >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> >>> >>> >>> >> > > !DSPAM:58dabffd17168279290674! > >

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Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Marie Pattullo March 28, 2017

March 28, 2017

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(a)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(a)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(a)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(a)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(a)gmail.com >>>> >>>> >>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>> <michael(a)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(a)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(a)valideus.com or jeff.neuman(a)comlaude.com >>>>>> >>>>>> T: +1.703.635.7514 >>>>>> >>>>>> M: +1.202.549.5079 >>>>>> >>>>>> @Jintlaw >>>>>> >>>>>> >>>>>> >>>>>> >>>>>> >>>>>> From: gnso-rpm-wg-bounces(a)icann.org >>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>>>> On Behalf Of Mary Wong >>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>> To: gnso-rpm-wg(a)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(a)icann.org >>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>> >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg(a)icann.org >>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>> >>>> >>>> >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> >>> >>> >>> >> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > !DSPAM:58dab77f17161052319515! > >

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Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Winterfeldt, Brian J. March 28, 2017

March 28, 2017

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<https://marksdb.org/tmdb/public/tandc>, 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<http://www.trademark-clearinghouse.com/dispute> (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(a)mayerbrown.com<mailto:bwinterfeldt@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(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Tuesday, March 28, 2017 2:45 PM To: Greg Shatan; Michael Karanicolas Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@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(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc(a)gmail.com<mailto:gregshatanipc@gmail.com>> Date: Tuesday, March 28, 2017 at 6:30 PM To: Michael Karanicolas <michael(a)law-democracy.org<mailto:michael@law-democracy.org>> Cc: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@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(a)gmail.com<mailto:gregshatanipc@gmail.com> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas <michael(a)law-democracy.org<mailto:michael@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(a)comlaude.com<mailto:jeff.neuman@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(a)valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman(a)comlaude.com<mailto:jeff.neuman@comlaude.com> > > T: +1.703.635.7514<tel:%2B1.703.635.7514> > > M: +1.202.549.5079<tel:%2B1.202.549.5079> > > @Jintlaw > > > > > > From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] > On Behalf Of Mary Wong > Sent: Tuesday, March 28, 2017 6:15 AM > To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.or…>. > > > > 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(a)icann.org<mailto:gnso-rpm-wg@icann.org> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.o…> __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.

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Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
by Kiran Malancharuvil March 28, 2017

March 28, 2017

Many of the signatories aren't members of the working group. When input/comment is received by an ICANN working group by outside parties, the working group often invites those people to attend a meeting to facilitate the discussion so that there can be meaningful dialogue and a better common understanding of the issues raised. There is a prescribed time in the icann policy development process for solicitation of comments, as well as review and consideration of public comment. My question (for staff, to be clear) is why we are considering this public comment out of turn. Why does it have elevated importance? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. > On Mar 28, 2017, at 8:33 AM, Rebecca Tushnet <Rebecca.Tushnet(a)law.georgetown.edu> wrote: > > (1) Yes. (2) Invited by whom? (3) It's my understanding that all > comments should be considered; are you aware of any we're ignoring? > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Tue, Mar 28, 2017 at 11:30 AM, Kiran Malancharuvil via gnso-rpm-wg > <gnso-rpm-wg(a)icann.org> wrote: >> Agree with Jeff. >> >> Also, are these "trademark scholars" represented in the group? Are they invited in for discussion? Why is this letter any more important than any other public comment? >> >> Thanks, >> >> Kiran >> >> Kiran Malancharuvil >> Policy Counselor >> MarkMonitor >> 415-419-9138 (m) >> >> Sent from my mobile, please excuse any typos. >> >> On Mar 28, 2017, at 7:54 AM, Jeff Neuman <jeff.neuman(a)comlaude.com<mailto:jeff.neuman@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(a)valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman(a)comlaude.com<mailto:jeff.neuman@comlaude.com> >> T: +1.703.635.7514 >> M: +1.202.549.5079 >> @Jintlaw >> >> >> From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong >> Sent: Tuesday, March 28, 2017 6:15 AM >> To: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@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(a)icann.org<mailto:gnso-rpm-wg@icann.org> >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Agenda and documents for RPM Working Group call this week
by Mary Wong March 28, 2017

March 28, 2017

Dear all, Please find below the proposed agenda for the next Working Group call, scheduled for Wednesday 29 March at 1600 UTC for 90 minutes: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Follow up from ICANN58 discussions: (a) discuss co-chairs’ proposals regarding completion of TMCH Charter questions (see attached table); (b) call for requests for additional follow up on Deloitte’s data as presented at ICANN58 and on any other matters arising from ICANN58 (see Deloitte’s report, attached) 3. Review proposed updated Work Plan (see attached) and formation of Sub Teams for Sunrise and Claims Charter questions refinement 4. Agree on duration (call times) for meetings in April and May 2017 5. Confirm the appropriate day of the week for 4th rotational meeting time of 0300 UTC The following were the ACTION ITEMS noted by staff from the Working Group’s Copenhagen sessions, along with notes on their status: · Increase Working Group call durations to 90 or 120 minutes to keep up with projected schedule (NOTE: FOR DISCUSSION THIS WEEK; SEE ALSO UPDATED DRAFT WORK PLAN) · Circulate EFF and trademark scholars’ letter on the TMCH, and information on current Ancillary Services offered by the TMCH, to the mailing list (NOTE: CIRCULATED TODAY) · Co-chairs to consider adjusting work plan to accommodate for absence of Contracted Parties participants from the 17 May call (date conflicts with the Global Domains Division Summit) (NOTE: SEE UPDATED DRAFT WORK PLAN) · Call for Sub Teams to propose refinements to Charter questions for Sunrise and Claims (NOTE: FOR DISCUSSION THIS WEEK) Please note that, at the co-chairs’ request, staff has reached out to Greg Rafert of the Analysis Group to invite him to join the call next week (5 April), to discuss the Revised Report on the TMCH. Thanks and cheers Mary

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FOR DISCUSSION: Materials for 29 March Working Group call
by Mary Wong March 24, 2017

March 24, 2017

Dear all, As you’ll have seen, the first post-ICANN58 Working Group call scheduled for this coming Wednesday, 29 March, will be a 90-minute call. In preparation, and pending a final agenda that we hope to send by Tuesday, please review the following materials for the call: (1) updated data from Deloitte (presented at the Working Group face-to-face meeting at ICANN58); and (2) the revised report from the Analysis Group on an Independent Review of the TMCH. Both documents are attached, and have also been uploaded to this Working Group wiki page: https://community.icann.org/x/_pHRAw. It may also be helpful for those Working Group members who were not able to attend the ICANN58 sessions, either remotely or in person, to review the recordings and transcripts from the two sessions we held there: · 3-hour Working Group face-to-face session on Saturday 11 March: http://sched.co/9npP · Open community session on Wednesday 15 March: http://sched.co/9npd Thanks and cheers Mary

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Useful RPM WG Wiki page
by Kathy Kleiman March 23, 2017

March 23, 2017

All, In preparation for our upcoming discussion this Wednesday, I want to share the link to one of our Working Group's wiki pages that I find particularly useful. It's our /TMCH: Working Group Drafts, Summaries, Input /page and holds the links to documents we discuss in our calls and meetings, including: - Deloitte questions and answers (we are still waiting on the second round of written answers) and - Two sets of tables prepared for our TMCH Charter questions, #1-16 (Categories 1-6) The link is: https://community.icann.org/display/RARPMRIAGPWG/TMCH%3A+Working+Group+Draf… It is nice to have so much information in one place - tx you to Mary and Amr! Best, Kathy ------------------------------------------------------------------------------------------------------------------------------------------------------------------------------ On 3/23/2017 2:34 PM, ICANN Policy Calendar wrote: > > Dear All, > > The call for the Review of all Rights Protection Mechanisms (RPMs) in > all gTLDs PDP Working Group is scheduled for *Wednesday, **29 March > 2017at 16:00* UTC for 90 minutes. > > 09:00 PDT, 12:00 EDT, 17:00 London 18:00 CET > > For other times: **http://tinyurl.com/k7ktfmu** > > Adobe Connect LINK WITH AUDIO enabled: > https://participate.icann.org/gnso-rpm > > For those of you using the Adobe Connect audio, you may do so by > activating your computer microphone via the Adobe room (Using a > headset is preferable here). > > *Make sure your speakers and microphone are _not_ on mute. > > *- Select the TELEPHONE ICON at the top of the AC toolbar and choose > CONNECT MY AUDIO (only option). > - Select USING COMPUTER twice > - Select ALLOW access to the ICANN Adobe room > - the TELEPHONE ICON at the top of the toolbar should then have > changed into a MICROPHONE ICON > - You may click on this MICROPHONE ICON to mute yourself (Icon will > then have a line through it) and to unmute yourself (Line disappears) > > Participants must ALWAYS have their microphone or telephone on MUTE as > default setting. You are requested to RAISE YOUR HAND if you wish to > participate to avoid disruption. > > Dial-in details are below. > > *Please confirm your apology or dial-out requests to GNSO Secretariats > *gnso-secs(a)icann.org <mailto:gnso-secs@icann.org> > > ______________________________________________________________________ > > Participant passcode: RPM MEMBER > > *For security reasons, the passcode will be required to join the > conference.* > > > *Dial in numbers:* > > *Country* > > > > > > *Toll Numbers* > > > > *Freephone/ > Toll Free Number* > > > > > > > ARGENTINA > > > > > > > > 0800-777-0519 > > AUSTRALIA > > > > ADELAIDE: > > > > 61-8-8121-4842 > > > > 1-800-657-260 > > AUSTRALIA > > > > BRISBANE: > > > > 61-7-3102-0944 > > > > 1-800-657-260 > > AUSTRALIA > > > > CANBERRA: > > > > 61-2-6100-1944 > > > > 1-800-657-260 > > AUSTRALIA > > > > MELBOURNE: > > > > 61-3-9010-7713 > > > > 1-800-657-260 > > AUSTRALIA > > > > PERTH: > > > > 61-8-9467-5223 > > > > 1-800-657-260 > > AUSTRALIA > > > > SYDNEY: > > > > 61-2-8205-8129 > > > > 1-800-657-260 > > AUSTRIA > > > > > > 43-1-92-81-113 > > > > 0800-005-259 > > BELGIUM > > > > > > 32-2-400-9861 > > > > 0800-3-8795 > > BRAZIL > > > > RIO DE JANEIRO: > > > > 55-21-40421490 > > > > 0800-7610651 > > BRAZIL > > > > SAO PAULO: > > > > 55-11-3958-0779 > > > > 0800-7610651 > > CHILE > > > > > > > > 1230-020-2863 > > CHINA > > > > CHINA A: > > > > 86-400-810-4789 > > > > 10800-712-1670 > > CHINA > > > > CHINA B: > > > > 86-400-810-4789 > > > > 10800-120-1670 > > COLOMBIA > > > > > > > > 01800-9-156474 > > CROATIA > > > > > > > > 080-08-06-309 > > CZECH REPUBLIC > > > > > > 420-2-25-98-56-64 > > > > 800-700-177 > > DENMARK > > > > > > 45-7014-0284 > > > > 8088-8324 > > EGYPT > > > > > > > > 0800000-9029 > > ESTONIA > > > > > > > > 800-011-1093 > > FINLAND > > > > > > 358-9-5424-7162 > > > > 0-800-9-14610 > > FRANCE > > > > LYON: > > > > 33-4-26-69-12-85 > > > > 080-511-1496 > > FRANCE > > > > MARSEILLE: > > > > 33-4-86-06-00-85 > > > > 080-511-1496 > > FRANCE > > > > PARIS: > > > > 33-1-70-70-60-72 > > > > 080-511-1496 > > GERMANY > > > > > > 49-69-2222-20362 > > > > 0800-664-4247 > > GREECE > > > > > > 30-80-1-100-0687 > > > > 00800-12-7312 > > HONG KONG > > > > > > 852-3001-3863 > > > > 800-962-856 > > HUNGARY > > > > > > 36-1-700-8856 > > > > 06-800-12755 > > INDIA > > > > INDIA A: > > > > > > 000-800-852-1268 > > INDIA > > > > INDIA B: > > > > > > 000-800-001-6305 > > INDIA > > > > INDIA C: > > > > > > 1800-300-00491 > > INDONESIA > > > > > > > > 001-803-011-3982 > > IRELAND > > > > > > 353-1-246-7646 > > > > 1800-992-368 > > ISRAEL > > > > > > > > 1-80-9216162 > > ITALY > > > > MILAN: > > > > 39-02-3600-6007 > > > > 800-986-383 > > ITALY > > > > ROME: > > > > 39-06-8751-6018 > > > > 800-986-383 > > ITALY > > > > TORINO: > > > > 39-011-510-0118 > > > > 800-986-383 > > JAPAN > > > > OSAKA: > > > > 81-6-7878-2631 > > > > 0066-33-132439 > > JAPAN > > > > TOKYO: > > > > 81-3-6868-2631 > > > > 0066-33-132439 > > LATVIA > > > > > > > > 8000-3185 > > LUXEMBOURG > > > > > > 352-27-000-1364 > > > > 8002-9246 > > MALAYSIA > > > > > > > > 1-800-81-3065 > > MEXICO > > > > GUADALAJARA (JAL): > > > > 52-33-3208-7310 > > > > 001-866-376-9696 > > MEXICO > > > > MEXICO CITY: > > > > 52-55-5062-9110 > > > > 001-866-376-9696 > > MEXICO > > > > MONTERREY: > > > > 52-81-2482-0610 > > > > 001-866-376-9696 > > NETHERLANDS > > > > > > 31-20-718-8588 > > > > 0800-023-4378 > > NEW ZEALAND > > > > > > 64-9-970-4771 > > > > 0800-447-722 > > NORWAY > > > > > > 47-21-590-062 > > > > 800-15157 > > PANAMA > > > > > > > > 011-001-800-5072065 > > PERU > > > > > > > > 0800-53713 > > PHILIPPINES > > > > > > 63-2-858-3716 > > > > 1800-111-42453 > > POLAND > > > > > > > > 00-800-1212572 > > PORTUGAL > > > > > > 351-2-10054705 > > > > 8008-14052 > > ROMANIA > > > > > > 40-31-630-01-79 > > > > RUSSIA > > > > > > > > 8-10-8002-0144011 > > SAUDI ARABIA > > > > > > > > 800-8-110087 > > SINGAPORE > > > > > > 65-6883-9230 > > > > 800-120-4663 > > SLOVAK REPUBLIC > > > > > > 421-2-322-422-25 > > > > 0800-002066 > > SOUTH AFRICA > > > > > > > > 080-09-80414 > > SOUTH KOREA > > > > > > 82-2-6744-1083 > > > > 00798-14800-7352 > > SPAIN > > > > > > 34-91-414-25-33 > > > > 800-300-053 > > SWEDEN > > > > > > 46-8-566-19-348 > > > > 0200-884-622 > > SWITZERLAND > > > > > > 41-44-580-6398 > > > > 0800-120-032 > > TAIWAN > > > > > > 886-2-2795-7379 > > > > 00801-137-797 > > THAILAND > > > > > > > > 001-800-1206-66056 > > TURKEY > > > > > > > > 00-800-151-0516 > > UNITED ARAB EMIRATES > > > > > > > > 8000-35702370 > > UNITED KINGDOM > > > > BIRMINGHAM: > > > > 44-121-210-9025 > > > > 0808-238-6029 > > UNITED KINGDOM > > > > GLASGOW: > > > > 44-141-202-3225 > > > > 0808-238-6029 > > UNITED KINGDOM > > > > LEEDS: > > > > 44-113-301-2125 > > > > 0808-238-6029 > > UNITED KINGDOM > > > > LONDON: > > > > 44-20-7108-6370 > > > > 0808-238-6029 > > UNITED KINGDOM > > > > MANCHESTER: > > > > 44-161-601-1425 > > > > 0808-238-6029 > > URUGUAY > > > > > > > > 000-413-598-3421 > > USA > > > > > > 1-517-345-9004 > > > > 866-692-5726 > > VENEZUELA > > > > > > > > 0800-1-00-3702 > > VIETNAM > > > > > > > > 120-11751 > > Thank you. > > Kind regards, > > Terri > > > > _______________________________________________ > ntfy-gnso-rpm-wg mailing list > ntfy-gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/ntfy-gnso-rpm-wg

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Date/time of next RPM WG call?
by George Kirikos March 22, 2017

March 22, 2017

Hi folks, Assuming there's no call today, is there a date/time scheduled for our next call? Thanks in advance, George Kirikos 416-588-0269 http://www.leap.com/

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Fwd: IP professionals hit back after new call to rethink online trademark protection mechanisms - Blog - World Trademark Review
by Phil Corwin March 17, 2017

March 17, 2017

FYI Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VLawDC "Luck is the residue of design" -- Branch Rickey Sent from my iPad Begin forwarded message: From: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: March 17, 2017 at 12:00:08 AM GMT+1 To: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Subject: IP professionals hit back after new call to rethink online trademark protection mechanisms - Blog - World Trademark Review http://www.worldtrademarkreview.com/Blog/Detail.aspx?g=a5341b20-548f-4f19-a… Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" --- Branch Rickey

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TMCH followup
by George Kirikos March 12, 2017

March 12, 2017

Hi folks, After yesterday's call, I did some additional research on some of the issues that were raised. Here's what I found (long message ahead, but it'll be worth it): 1. Several times it's been argued that if there was competition for Deloitte, or if Deloitte was replaced entirely with a less expensive provider, that might entail compensation to Deloitte for intellectual property, etc. It turns out that argument is not correct. When ICANN entered into agreements with IBM and Deloitte, Fadi Chehade blogged about it, see: https://www.icann.org/news/blog/concluding-the-series-of-trademark-clearing… That page was hard to find (and I don't think was part of our working groups's institutional memory) given that it has moved from where it used to be; see contemporaneous reporting at: http://domainincite.com/11309-deloitte-confirmed-as-first-trademark-clearin… http://www.ebrandservices.com/icann-signs-tmca-with-deloitte-as.html and I don't believe appears in our PDP wiki. In particular, the announcement clearly states that "ICANN retains all intellectual property rights in the Trademark Clearinghouse data. (Note this is as between ICANN and Deloitte….)." This fact handles that argument. 2. In the same ICANN link as above, it was specifically stated that "Deloitte’s validation services are to be non-exclusive. ICANN may add additional validators after a threshold of minimum stability is met." I think it's clear, after 3+ years, that there's stability. Additional validators should be added, to drive down costs and fees, if the TMCH is retained (it might turn out that the TMCH is eliminated, due to our work; that's an open question). 3. In the same ICANN link as above, most crucially, it stated "ICANN may audit Deloitte’s performance (and revenues/costs) to confirm that the costs and fees for validation services are reasonable." Obviously, this should be done, if it hasn't been done already, and with immediacy, to inform our work and recommendations. This is a multi-million dollar per year contract, with apparently limited or no oversight, and my calculations (see below) suggest it can be replicated for multi-hundreds of thousands of dollars, at most. 4. Yesterday, it was brought up whether "costs" of the TMCH were even a complaint. The actual independent TMCH review should have been brought up, see: https://newgtlds.icann.org/en/reviews/tmch/revised-services-review-22feb17-… where the survey responses were clear, see page 64 (bottom): "Fees and costs: Most registries and trademark owners felt that fees and the costs associated with working with the TMCH are too high." This is what the community has told us. We should not ignore it. Why are we paying for surveys, and not utilizing the results in followup work? I'm not an advocate for trademark holders, however I am an advocate for economic efficiency and eliminating waste and excess fees. This is low hanging fruit. 5. This is a question for the registry operators -- on page 45, it mentions that there's a one-time for of $5,000 per TLD to access the TMCH. Is that fee being paid to Deloitte, or is it being paid to IBM, or … ? (affects the calculations of what is "reasonable") With 1000+ new gTLDs, clearly this is another multi-million dollar cost, for a function which is mostly automated --- huge potential for cost savings. It's unclear if the actual cost is $5,000, by the way. I believe somewhere else I might have seen a figure of $7,000 per TLD, although perhaps that's an outdated fee. If someone has the definitive number, please post. 6. Unrelated to costs (but central to our work), on page 9 of the independent TMCH review, the top ten most frequently downloaded trademark strings are published, along with the trademark holders: 1. smart 15,198 Smart Communications, Daimler AG 2. forex 14,823 Forex Bank AB 3. hotel 14,690 Hotel Top Level Domain GMBH 4. one 14,205 American Acedemy of Opthamology 5. love 13,912 Cartier International AG, The Conde Nast Publications 6. cloud 13,821 individual 7. nyc 13,622 City of New York, NYC & Company 8. london 13,343 London & Partners 9. abc 13,331 LV Insurance Management Limited 10. luxury 13,125 ILUX Holdings While the EFF highlighted the example of "THE" in their excellent submission, I think the above data makes it clear that there are a lot of commonly used phrases that are generating notices, and/or being used in sunrise periods. In particular, none of the top 10 above are famous or fanciful marks like Verizon, Exxon, Google or Lego, or marks that are routinely subject of cybersquatting complaints. Rather, they are commonly used terms that should be open to many potential registrants. If there is a "deterrent" effect on registrants, it's clear that commonly used terms are ones that actual registrants are interested in, and not terms like "facebook" or "google" or "Verizon", given the stats above. Since the independent review has already crunched the numbers, and there were apparently no issues of confidentiality, our working group should be given access to the much larger set of top queries, perhaps the top 100 or even the top 500 or 1000, and not just the top 10. If we are to properly and deliberately weigh and consider the costs and benefits of the TMCH, measuring the "chilling effect" on commonly used terms, it makes sense to see which terms are generating the most claims notices. ICANN didn't have this data before the new gTLD program was launched. We do have it now, and this should affect our policymaking. Scaremongering about "what might happen" should be set aside, since we have facts as to what *did* happen, through experience. We can then also compare those top queries against sunrise registrations, and against the relevant marks themselves to check for 'gaming' behaviour, and thus measure the deleterious effects on other prospective registrants. Let's take a look at one of the above. The most obvious and striking example seems to be #3, "hotel" Using TMView (searching by Applicant Name), I see multiple registrations, some figurative and some word marks for that applicant, for hotel/hotels (singular/plural). (although, conceivably they could be using a registration in a country not part of TMView, so the below analysis could be open to challenge. But, stay with me...). Some of those marks include either the word "dot" or a "." in the marks. The TMCH criteria clearly state that: http://www.trademark-clearinghouse.com/content/registered-trademarks they won't accept marks that include a dot. Thus, the only remaining possibility from TMView is EM 007502891, which is a figurative mark: https://www.tmdn.org/tmview/get-detail?st13=EM500000007502891 Using the automated translation, into English, it's for: "Class 35: On line advertising on a computer network; Class 38: Provision of information relating to telecommunications., Class 45: Registration of domain names (legal services)." You'll notice the original proprietor details, Dirk Krischenowski, no stranger to the ICANN community. https://icannwiki.org/Dirk_Krischenowski http://domainincite.com/18613-berlin-ceo-prime-suspect-in-icann-data-breach Who, ironically, is a critic of the TMCH! https://www.thedomains.com/2014/03/31/berlin-dirk-krischenowski-blasts-ican… Using DomainTools paid version (NB: my paid subscription is running out soon, and I likely won't renew given egregious price increases -- perhaps ICANN or this working group should compensate those putting in the work for for their future research costs), I can see: a) hotel.black, registered currently by "Hotdom GMBH" listed for sale on Sedo for 2990 Euros: https://sedo.com/search/details/?language=us&domain=hotel.black Doesn't look like a "defensive" registration to prevent cybersquatting to me. HotDomain GMBH also owns hotelregistry.org, although the historical WHOIS for that shows "Hotel Top-Level-Domain GMBH" too, on the same street in Berlin. The page at: http://dotzon.com/dotzon/team/ shows both "Katrin Ohlmer" (currently listed for HotDom GMBH) and (here's a shocker) Dirk Krischenowski! The oldest archived WHOIS record for hotel.black is from 2014-08-15 (2 days after the creation date), and it's in the name of (wait for it….) Dirk Krischenowski (shocker, I know!). This was clearly registered in the Sunrise period, which began July 22, 2014: http://www.circleid.com/posts/20140625_afilias_announces_start_of_black_sun… b) hotel.domains: Current registrant -- here's a shocker, it's (drum roll) Dirk Krischenowski !! And if you visit that website: https://hotel.domains/ you'll see a list of domains for sale: hotel.cologne EUR 15,000 hotel.partners $3,000 hotel.black $4,000 (remember, current registrant in WHOIS is slightly different, from above) and dozens more (singular and plural). I've posted screenshots (multiple, in order to make sure all the domains were visible) at: http://www.loffs.com/images/hoteldomains/ (ICANN staff might want to put them on our Wiki, so they're part of the record of this group) I leave it as an exercise to the reader to check how many of them were obtained via sunrise (grunt work at DomainTools), although the answer is likely very obvious to everyone, without even having to check. I argue, and stand with the EFF on this, that this is not consistent with the intended purpose of the TMCH, and demonstrates how it's wide open for abuse and gaming. The entire TMCH database, if it is to be retained, should be public and transparent, and dubious records should be able to be challenged easily. 7. I promised above to explore what the TMCH should cost. Here are some rough back of the envelope calculations and ideas. (a) if the audit of Deloitte's TMCH (which ICANN is allowed to do) was to be done properly, besides simply looking at accounting records, costs and revenues (which can be manipulated), one should look at how much time it takes to review each application. A proper audit would look at the date of submissions, and the date of approvasl, so that Deloitte can't "fudge" the numbers, and then also look at the volume of applications. This would then allow one to accurately gauge the time a human being spent to review each application (e.g. if 100 applications were reviewed in one day, by one human, one can then do the math and see how many minutes each one took, etc.) With a proper audit, this can't be gamed, since one can look for peak dates of applications, e.g. 1000 applications one day, all approved within 3 days later, to measure the peak rate of approvals. (b) Considering the nature of the application itself (there's a Youtube video at https://www.youtube.com/watch?v=aL0n_pNTVgE showing the process, and what's collected -- it's really not that much). I estimate that a reviewer would spend on average 5 minutes per application. That'd be 12 applications per hour, or 84 applications per 7 hour work day, or 420 per week, or 20,160 per 48 week year. For one person. We see from Deloitte's report, they've had approximately 28,549 applications. My rough calculations suggest that one or two people could easily handle the job. In fact, Deloitte's own website, where they list their team: http://trademark-clearinghouse.com/content/clearinghouse-team shows a very lean team, with only 3 validation experts, so that's the correct order of magnitude. Let's be generous, and pay these people $50/hour. If they can manage even just 5 applications per hour, then the actual verification costs are $10 each. And, to be clear, this is relatively "easy" grunt work that could done at lower cost with skilled workers from India, Russia, or other less expensive countries, instead of in Belgium. Of course, Deloitte's team includes a bunch of well compensated managers and overhead of that nature. In an efficient operation, those are eliminated. But, let's say the costs are tripled (that would include "real" costs like computers and justifiable overhead --- 6 or 7 figure salaries for managers doing very little don't count). That still makes it $30/each. If you look at the rest of their "team", they list 5 people handling invoicing??!?? That's shocking, and it's unclear why they have more people handling invoicing than are handling actual validation (the true "work" ICANN is looking for). Perhaps these are people doing invoicing for many other companies, and not just dedicated to the TMCH. Anyhow, I'll add 5% for invoicing/billing (really a part of overhead), given cloud invoicing tools these days. That'd take us to $31.50 (with generous assumptions to date). Note, many applications are for multiple years! It's clear that the validation/review costs are being generated year after year. Those essentially happen once at the beginning. So, this would reduce actual costs even more, to perhaps $10 to $15/year. Why are trademark owners paying $95 to $150 per years? Because they're dealing with a monopoly without oversight, and the monopolist is maximizing profits as any business would do in those circumstances. This cries out for competition, if the TMCH is even retained (unclear at this point, an open question). As I said above, I'm not an advocate for trademark holders, but it seems like they (and perhaps the registry operators too, if their fees are going to Deloitte) are getting a raw deal. We saw with competitive tenders that Neustar lost their numbers contract: https://www.bloomberg.com/news/articles/2015-03-26/neustar-loses-and-ericss… For domain names, with new entrants, the cost of domain name registrations went from $35/yr at Network Solutions (monopoly) to under $10/yr these days for a .com at GoDaddy, etc. Afilias stuck with PIR for the .org backend after a tender process, but certainly at a much better cost: http://domainnamewire.com/2016/11/14/org-sticks-afilias-backend/ These are basic things that any business would do to save money, so it's unclear to me why some people within the ICANN community and/or this working group believe that $95 or $150 is a reasonable price for the TMCH, without even exploring alternative providers through a rebid process, or allowing multiple providers. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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