Hi, Thanks very much for forwarding this mail on. I think it's very helpful to this discussion to spell out the rationale for confidentiality. I wonder if someone from the pro-confidentiality side could spell out, in a bit more detail, why the first point is a problem. I understand, of course, why domain squatting is problematic, but I am not sure I fully understand how opening the TMCH database would facilitate that. More information along these lines would, I think, be helpful in trying to brainstorm out solutions or compromises which may facilitate transparency while protecting the interests that many here have expressed concern about. Best, Michael On Wed, Apr 12, 2017 at 5:46 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
Without commenting on the merits of either "side" among others, the attached email from Brian Winterfeldt (dated 28-Mar) seems to go to the question you were then, and are now still, asking.
Regards,
Brian
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, April 12, 2017 12:49 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Not once has anyone from "your side"given a factual and legal reason.
As to this prior discussion please let me know when it took place.
Sent from my iPad
On 12 Apr 2017, at 00:33, J. Scott Evans <jsevans@adobe.com> wrote:
We have been through this all before. You’ve made these points and the advocates for the confidentiality of the data have clearly argued why your position is faulty. I agree to disagree with your position. If this information were so easily obtained (it is all publicly available), you’d have it.
J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
On 4/11/17, 2:57 PM, "Paul Keating" <paul@law.es> wrote:
It says at most which domains it wants pre-emptiness and notice rights over.
Hardly a confidential business secret. The information is a public record. And, After all the Information is instantly public the minute one pre-emptive sunrise registration is undertaken. The notice right is completely a non secret.
And hardly sufficient to use to hide bad actors.
Sent from my iPad
On 11 Apr 2017, at 23:18, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
There is a big difference from a database that contains all a company’s registered marks and one that contains a culling for only those it deems most valuable for protection in the DNS. The former is clearly open for the public, the later is not.
J. Scott
J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
On 4/11/17, 2:03 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Jeremy Malcolm" <gnso-rpm-wg-bounces@icann.org on behalf of jmalcolm@eff.org> wrote:
On 11/4/17 9:43 am, J. Scott Evans via gnso-rpm-wg wrote:
George:
We have all followed this string. We understand that you and a few others believe there need to be wholesale changes to the Sunrise mechanism and the TMCH database (or at least the confidentiality of that data).
1. Do you have a suggestion for how to improve the Sunrise mechanism? 2. I see very little support for violating the confidentiality provisions of the TMCH contract.
FWIW I am also all for bringing the transparency of the TMCH database into line with those of national trademark registries so that its secrecy does not facilitate the kinds of abuses that George has uncovered. I have been an observer until now but I've just upgraded to member and plan to join the call tomorrow.
-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat... jmalcolm@eff.org
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---------- Forwarded message ---------- From: "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com> To: "'gnso-rpm-wg@icann.org'" <gnso-rpm-wg@icann.org> Cc: Bcc: Date: Tue, 28 Mar 2017 20:48:30 +0000 Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
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, 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 (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@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@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@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@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Tuesday, March 28, 2017 at 6:30 PM To: Michael Karanicolas <michael@law-democracy.org> Cc: "gnso-rpm-wg@icann.org" <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@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://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
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