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

March 28, 2017

      +1

Best regards,

Marc H. Trachtenberg
Shareholder 
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.1020 
Mobile 773.677.3305
trachtenbergm@gtlaw.com | www.gtlaw.com

-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin
Sent: Tuesday, March 28, 2017 3:15 PM
To: gnso-rpm-wg@icann.org
Subject: [gnso-rpm-wg] FW: FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

Meant to send this to the whole list.

-----Original Message-----

From: Phil Corwin 

Sent: Tuesday, March 28, 2017 3:59 PM

To: 'Kiran Malancharuvil'; Marie Pattullo; Michael Karanicolas

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

Speaking personally, we have had a very thorough and spirited discussion of the confidentiality of the marks in the TMCH within this WG, especially during the 3 hour F2F in Copenhagen.

I have heard good and strong arguments on both sides of the question. I understand the heartfelt concerns of those who want to maintain confidentiality. If we were to vote on it I would probably favor public disclosure of the marks in the database as being consistent with ICANN's principles of transparency, and also because the bad actors who might wish to know the prioritization of marks by a particular rights holder can readily reverse engineer the TMCH during the TM Claims generation period of any new gTLD.

However, as I've remarked before, unless consensus for a particular proposed change can be achieved within the WG the default position is that the RPMs continue unchanged. I'm not sure we can reach a consensus on an issue like this, where the choice seems to be a binary one. If someone sees a middle ground position on this matter that can gain consensus support let's hear it. Otherwise I would prefer to focus our time on improvements and rebalancing that can achieve consensus.

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

-----Original Message-----

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kiran Malancharuvil via gnso-rpm-wg

Sent: Tuesday, March 28, 2017 3:40 PM

To: Marie Pattullo; Michael Karanicolas

Cc: gnso-rpm-wg@icann.org

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

+1 Marie.  

Personally I'm confused by the demands for disclosure.  Trademark Clearinghouse recordals are based on rights that are public record and therefore accessible elsewhere.  The ONLY thing that can be gained from opening the Trademark Clearinghouse is an understanding of what a brand owners domain name registration and protection strategy is.  No one has the right to that information.  

Kiran

-----Original Message-----

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Marie Pattullo

Sent: Tuesday, March 28, 2017 12:07 PM

To: Michael Karanicolas <michael@law-democracy.org>

Cc: gnso-rpm-wg@icann.org

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

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
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On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@law-democracy.org> wrote:
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Hi Greg,
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If I had a perfect solution to prevent cybersquatting in my pocket I
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probably would have led with it :)
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That said, my aim in drafting that was to try and help frame the
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discussion, rather than to try and close it. Look, my expertise is
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more on the transparency side than on the trademark side. But on the
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transparency side, we deal with potential harms all the time - be they
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for information involving national security, personal privacy - or
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legitimate commercial interests like trademark protection. And
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generally, we seek to find an avenue forward which provides adequate
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protection for these interests, while respecting the overarching
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interest in openness. This calculus shouldn't mean that openness is
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abandoned whenever a potential for harm is encountered. Indeed, if
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that were the case almost no information would end up being put out
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there. Rather, it means assessing the specific harms that would flow
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directly from the specific disclosures, weighing them against the
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public interest in disclosure, and seeking ways to work around those
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harms which also provide for maximum openness.
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So, while I don't have a readymade solution to present, I do think we
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need to work together to find one. Reverting to secrecy is just not
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consistent with ICANN's broader mission, given that the entire model
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is based on public oversight and accountability.
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Looking forward to engaging on this further.
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Michael
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P.S. I'm not sure why it's at all relevant who actually drafted the
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text of the EFF letter? As someone who's been involved in many similar
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efforts, they can be done fully collaboratively, or with one or two of
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the signatories taking the lead. Either way though, all of the names
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attached to it have approved and endorsed it. These are very senior
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and respected experts - they don't just throw their names on any
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document that's sent their way. If they signed the letter it means
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they support it - what does it matter who held the pen?
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On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
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Michael,
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Do you have any solutions for the issues and concerns that have been
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mitigated by having the database be closed?
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Thanks!
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Greg
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Greg Shatan
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C: 917-816-6428
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S: gsshatan
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Phone-to-Skype: 646-845-9428
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gregshatanipc@gmail.com
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On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas
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<michael@law-democracy.org> wrote:
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Hi all,
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Just building on the discussion around transparency, after hearing
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the conversation at ICANN 58 I drafted my own short note setting out
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my thoughts on the issue, which I'm attaching here.
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I want to be mindful of the conversation on inputs which is ongoing
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now - so hopefully it isn't out of place or inappropriate to submit
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my thoughts via this method.
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I very much look forward to further discussions on this issue.
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Best wishes,
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Michael Karanicolas
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On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman
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<jeff.neuman@comlaude.com>
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wrote:
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Thanks Mary.
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Co-Chairs,
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Can I assume that with respect to the EFF letter, the only items we
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would be discussing from that letter at this point are their
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comments with respect to design marks and the transparency of the
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TMCH database?
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I am not saying the other comments are not important, but with
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respect to this Working Group at this time, we are not yet
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addressing those other issues.
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I would strongly urge that we not engage yet in the other
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discussion around the other comments at this point (namely,
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trademark rights in general), as I think that could lead us down a
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large rabbit hole and considerably slow down out work.
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Thanks.
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Jeffrey J. Neuman
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Senior Vice President |Valideus USA | Com Laude USA
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1751 Pinnacle Drive, Suite 600
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Mclean, VA 22102, United States
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E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com
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T: +1.703.635.7514
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M: +1.202.549.5079
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@Jintlaw
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From: gnso-rpm-wg-bounces@icann.org
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[mailto:gnso-rpm-wg-bounces@icann.org]
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On Behalf Of Mary Wong
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Sent: Tuesday, March 28, 2017 6:15 AM
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To: gnso-rpm-wg@icann.org
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Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark
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scholars and information on Deloitte Ancillary Services
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Dear all,
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During the ICANN58 Working Group sessions in Copenhagen, the
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following two matters came up for which staff is now following up
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with the requested document (for #1) and information (for #2).
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Item #1: Letter of 10 March 2017 from some trademark scholars and
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practitioners to our Working Group co-chairs expressing concerns
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with certain aspects of the TMCH:
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https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_files_2017_... .
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Item #2: Question regarding the Ancillary Services that Deloitte is
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permitted to provide under its Validation Agreement with ICANN,
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subject to ICANN’s authorization.
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Currently, two Ancillary Services have been approved by ICANN:
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1.       Extended Claims Services
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The extended claims services provide the Trademark Holder or
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Trademark Agent, as applicable, with an electronic notification
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when a domain name registered in an Eligible TLD matches one or
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more of such party’s recorded labels with the TMCH.  The extended
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claims services does not include a domain name pre-registration
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notification (i.e. a notification to the potential registrant of a
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domain name that the domain name such registrant intends to
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register matches a label recorded with the Trademark
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Clearinghouse).
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2.       Audit Report
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Deloitte may offer an audit report service for Trademark Holders
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and Trademark Agents with active Trademark Records recorded in the
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Trademark Clearinghouse.  Such audit reports shall consist
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primarily of a listing of matches between their recorded labels
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within the Trademark Clearinghouse and domain names registered in
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an Eligible TLD.
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FYI, Deloitte’s contract with ICANN is for an initial period
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expiring on the fifth anniversary of ICANN’s entry into a Registry
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Agreement under the New gTLD Program, with consecutive one-year
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renewals thereafter. Although Deloitte currently serves as the sole
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TMCH validator, ICANN may appoint additional validators once ten
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Qualified Sunrise Periods have been completed under the New gTLD
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Program.
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Thanks and cheers
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Mary
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_______________________________________________
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Re: [gnso-rpm-wg] FW: FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

trachtenbergm＠gtlaw.com