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

March 28, 2017

      Hi Mark,

Thank you for the response.

I'm sorry I was not able to participate in Copenhagen.

I see your comment as:

1.  The TMCH would provide a more efficient source of information than looking in all public registries.

2.  The trademark holders must pay the be in the TMCH

3.  The TMCH seemingly overcharges rights holders by assessing a per jurisdiction charge for pre-registration claims notices. 

Honestly I don't see why this supports keeping the list secret.  

1.  The greater search efficiency is true.  However, many online databases exist that will tell me the jurisdictions in which your client holds registered trademarks.  Also, the rights holders benefit from pre-emptive registrations and the claims notice (albeit at greater cost).  Is this not a counter balance?

2.  Rights holders always have to pay for the benefits of registrations.

3.  The claims notice cost differential issue is one I have objected to.  There is no variable cost to TMCH (or CHIP) based on the jurisdiction at issue.  They already have the jurisdiction information relative to the trademark and the registration actually arranges for notice delivery using information provided by the registrant to the registrar.   The true benefit of the claims notice is of course  to remove the ignorance defense (put the registrant on actual notice).  Where the registrant and rights holder are located is irrelevant for USRP/URS purposes.  The price should be nominal. However, that there is a cost doesn't speak in favor of keeping the TMCH private.  

Sent from my iPad
...
On 28 Mar 2017, at 22:22, <trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com> wrote:
Paul,
To answer your second question " How does a TMCH registration differ from any trademark registration database such as the USPTO?" - it is very different.  First, not every jurisdiction in the world makes their trademark register publicly available online or at all.  Second, even if they did. There is no free public resource available that would enable a person to quickly check every register.  It would take a significant amount of time and effort and multilingual capability.  So while technically some of these registers may be "public", from a practical perspective they are not all equally accessible, particularly with respect to seeing what trademarks any particular trademark owner has registered worldwide.
The TMCH on the other hand, could potentially provide this information quickly and at no cost.  Importantly, and something many on this list apparently are not aware of, is that you do not just enter a trademark into the TMCH.  You have to submit, and pay for, each separate registration for each separate country that you want to have coverage in.  While it is  true that a single registration gives a trademark owner the ability to utilize sunrise registration, to the extent that a potential registrant gets a claim notice, the notice would only indicate coverage in that one jurisdiction.  If the potential registrant is not located in that jurisdiction, the notice is irrelevant to them and also not useful to the trademark owner as evidence that the registrant was on notice of its trademark rights.  Access to which countries the trademark owner submitted registrations to the TMCH could be used to determine which jurisdictions are more important to the trademark owner, and also where there are gaps in protection or the trademark owner is less likely to enforce its rights.  This is information that is for the most part only useful to an infringe.
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 Paul Keating
Sent: Tuesday, March 28, 2017 2:55 PM
To: Kiran Malancharuvil
Cc: gnso-rpm-wg@icann.org; Michael Karanicolas
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
Kiran,
How is a strategy of domain registrations discoverable fro the TMCH?
How does a TMCH registration differ from any trademark registration database such as the USPTO?
If public the only information a cybersquatter would know is what marks were registered with the TMCH.  The cybersquatter. Outdoor not register the domain at issue unless the trademark holder opted not to do so.  If the cybersquatter were to register a conflicting domain it would have received a notice.  The purpose of the notice is to dispel the ignorance defense.
So please explain how this is an issue and why it would overcome the need for transparency.
Sent from my iPad
...
...
On 28 Mar 2017, at 21:40, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
...
+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
...
...
...
On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@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@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@gmail.com
...
...
...
...
...
...
...
...
...
On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas
...
...
...
<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@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@valideus.com or jeff.neuman@comlaude.com
...
...
...
...
...
...
...
...
...
...
T: +1.703.635.7514
...
...
...
...
...
...
...
...
...
...
M: +1.202.549.5079
...
...
...
...
...
...
...
...
...
...
@Jintlaw
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
From: 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@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://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_files_2017_... .
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
...
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@icann.org
...
...
...
...
...
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
...
...
...
...
...
...
...
...
_______________________________________________
...
...
...
...
gnso-rpm-wg mailing list
...
...
...
...
gnso-rpm-wg@icann.org
...
...
...
...
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
...
...
...
...
...
...
...
...
...
...
...
...
_______________________________________________
...
...
...
gnso-rpm-wg mailing list
...
...
...
gnso-rpm-wg@icann.org
...
...
...
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
...
...
_______________________________________________
...
...
gnso-rpm-wg mailing list
...
...
gnso-rpm-wg@icann.org
...
...
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
...
...
...
...
!DSPAM:58daadf517162116020694!
...
...
...
...
...
...
_______________________________________________
...
gnso-rpm-wg mailing list
...
gnso-rpm-wg@icann.org
...
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
...
_______________________________________________
...
gnso-rpm-wg mailing list
...
gnso-rpm-wg@icann.org
...
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
----------------------------------------------------------------------
If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.