Michael, Via two separate emails, I have responded to your question about someone mining the TMCH in order to ascertain an organization’s brand portfolio and online protection strategy. This practice of data mining is not consistent with the purpose or functionality of the TMCH, and various solutions were proposed and seriously considered during the implementation phase to mitigate against this type of abusive practice taking place post-launch; ICANN Org (not the community) deemed the proposed control measures to mitigate against this harmful practice to be ineffective. ICANN’s decision on the lack of effective control mechanisms to prevent data mining does not lead to a conclusion that data mining is appropriate: yet your appear to be drawing this very inference and basing your argument for transparency on a loophole in the rules that can be exploited for nefarious purposes. As we’ve noted, this activity can be used to defraud and harm consumers. There should be adequate safeguards to protect against this abuse of access. I encourage you to consider this line of reasoning and reply to these points directly to help move the ball forward in this discussion. Cheers, Claudio On Monday, October 14, 2019, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi Greg. I think we're talking past each other with regard to Jason's original comment. I don't think it was attempting to accuse anyone of anything shady with regard to registering different things in different jurisdictions - which I know is standard practice. It was, I think, a genuine attempt to understand the substance of the opposition.
I asked you earlier in the thread why someone who wanted to find out a brand's digital strategy wouldn't simply go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up.
So I understand - your point is that there are some national systems which are not included in WIPO's database (even though Canada and the US, and from what I can see virtually every other major market are included), and so there will be some countries where full trademark registration information is not immediately available, and thus information obtained by trawling through the system on a trial-and-error basis using just WIPO's database would be (slightly) incomplete.
Is that an accurate representation of the substance of your position here?
On Mon, Oct 14, 2019 at 4:47 PM Greg Shatan <gregshatanipc@gmail.com> wrote:
Michael,
What Marc said.
To make it clearer, a company will file for different marks in Country A vs. Country B because they use a different subset of their total brand portfolio in each country.
Even moving between the USA and Canada, you must have noticed products available in one country but not the other, even though the parent company does business in both countries. Just try to buy a Coffee Crisp in the States. (Due to a failed attempt to introduce Coffee Crisp several years back, the TM may be registered here, but you get the point.)
Let’s put the “elaborate scenario” to rest and move on (unless there is transcript or email evidence that this position was actually put forth as an argument in favor of a closed database).
The explanation given by Marie has been the primary stated concern since the beginning — I can remember Susan Kawaguchi stating this about 3 years ago.
Greg
On Mon, Oct 14, 2019 at 4:26 PM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:
Michael,
How exactly does this come full circle to the elaborate scenario that Jason first asked about? Jason asked about a practice where “Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.” I am not sure where he is getting his information from, particularly the part about the large brand owners “liking” this ability. I am not aware of this practice being widespread and Jason has presented no facts or evidence that this strategy regularly occurs other than his bald and conclusory allegation of such.
Irrespective of whether this practice is prevalent (which its not), Georges’ point that often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons in no way connects or supports Jason’s conspiracy theory.
That leaves us with Georges’ other point, which is that there does not seem to be a strong reason supported by real world evidence supporting opening up the TMCH while there is ample evidence of trademark and brand abuse which supports keeping the database closed.
Best regards,
*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 <https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+C...> Tel 312.456.1020
Mobile 773.677.3305
trachtenbergm@gtlaw.com | www.gtlaw.com
[image: Greenberg Traurig]
*From:* GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Michael Karanicolas *Sent:* Monday, October 14, 2019 3:09 PM *To:* Nahitchevansky, Georges <ghn@kilpatricktownsend.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
Thanks Georges - we have now come full circle to the "elaborate scenario" which Jason first asked about, and which your colleagues disavowed earlier in this very thread.
On Mon, Oct 14, 2019 at 4:03 PM Nahitchevansky, Georges < ghn@kilpatricktownsend.com> wrote:
Michael
With all due respect not every country is listed in the WIPO database. In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this. Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside. the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here
*From:* mkaranicolas@gmail.com
*Sent:* October 14, 2019 4:36 PM
*To:* gnso-rpm-wg@icann.org
*Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
Hi all,
A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://www3.wipo.int/branddb/en/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__www3.wipo.int_branddb_e...> It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn.
Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim.
I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent.
Best,
Michael
On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Good points, Marc.
And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of *minimizing misuse of access*.
As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction.
Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice.
If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration.
The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address.
Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain.
So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns.
http://www.circleid.com/posts/20120828_trademark_ clearinghouse_secure_reliable_usable_pick_any_two/ <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_2...>
"The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access."
Later in the article:
"But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems."
On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:
Two reasons:
1. Trademark Claims only runs for 90 days after Sunrise; and
2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed
In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 <https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+C...> T +1 312.456.1020 trac@gtlaw.com | www.gtlaw.com | View GT Biography
-----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
*EXTERNAL TO GT*
Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH?
On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com> wrote:
Jason and all,
This "elaborate scenario" (filing "in “remote” jurisdictions with
non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.
I believe it's incorrect to say that this scenario was raised (in the
chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.
I am not even aware of the use of the strategy as described in its
totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.
As I recall, the rationale is much more straightforward: A brand
owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.
However, if I'm incorrect about any of this, I'm always happy to learn
new facts.
I am aware that some applicants may choose to file in jurisdictions
where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.
I do recall that one or a few people or entities have used some
aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.
Best regards,
Greg
On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com>
wrote:
Hi All,
Sorry for not being able to address this on yesterday’s call – I was
bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:
Large brand owners like the ability to file in “remote” jurisdictions
with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.
This use of the “secret TM priority” filing method is one thing, and
I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.
If the project is top secret and subject to heightened secrecy, how
can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?
In addition, if I am correctly capturing how the method is employed
in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.
Thanks,
Jason
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