Paul: Always taking the most negative view. The notice serves to warn a party that there could be an issue so that purchaser can make an informed decision before proceeding. 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 3/28/17, 1:14 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote: Marie, Sorry but I don't understand your questions. The notice is intended to remove the ignorance defense of the registrant. It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue. In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something . One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice). Sent from my iPad > On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo@aim.be> wrote: > > 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@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@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@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@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@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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org.... >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>>> >>>>>>>> _______________________________________________ >>>>>>>> gnso-rpm-wg mailing list >>>>>>>> gnso-rpm-wg@icann.org >>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>> >>>>>>> >>>>>>> >>>>>>> _______________________________________________ >>>>>>> gnso-rpm-wg mailing list >>>>>>> gnso-rpm-wg@icann.org >>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>> _______________________________________________ >>>>>> gnso-rpm-wg mailing list >>>>>> gnso-rpm-wg@icann.org >>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>> >>>>>> >>>>>> >>>>>> >>>>> >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>> >>>> >>>> >>>> >>> >> >> !DSPAM:58dabffd17168279290674! >> >> > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...