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
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<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto: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
Agree with Jeff. Also, are these "trademark scholars" represented in the group? Are they invited in for discussion? Why is this letter any more important than any other public comment? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Mar 28, 2017, at 7:54 AM, Jeff Neuman <jeff.neuman@comlaude.com<mailto: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<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto: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> [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<mailto: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 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Hi Greg, You raise a good point. I'm not sure we have explored the issues and concerns on both sides - the problems of having the TMCH Database closed or the problems that may arise from opening it up. We also have not spent much time on how the TMCH database came to be closed in the first place (according to materials put together by our WG staff, confidentiality was not part of the "design specs" of the GNSO Council or Board for the TMCH database). Sounds like a fruitful area of future WG discussion! Best, Kathy On 3/28/2017 1:30 PM, Greg Shatan 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 <mailto:gregshatanipc@gmail.com>
On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas <michael@law-democracy.org <mailto: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 <mailto: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 <mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> > > T: +1.703.635.7514 <tel:%2B1.703.635.7514> > > M: +1.202.549.5079 <tel:%2B1.202.549.5079> > > @Jintlaw > > > > > > From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto: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 <mailto: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 <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 > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
We did discuss these issues in the F2F in Copenhagen -- but not exhaustively.... *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, Mar 28, 2017 at 1:41 PM, Kathy Kleiman <kathy@kathykleiman.com> wrote:
Hi Greg,
You raise a good point. I'm not sure we have explored the issues and concerns on both sides - the problems of having the TMCH Database closed or the problems that may arise from opening it up. We also have not spent much time on how the TMCH database came to be closed in the first place (according to materials put together by our WG staff, confidentiality was not part of the "design specs" of the GNSO Council or Board for the TMCH database).
Sounds like a fruitful area of future WG discussion!
Best, Kathy
On 3/28/2017 1:30 PM, Greg Shatan 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 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> 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@ic ann.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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing listgnso-rpm-wg@icann.orghttps://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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://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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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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://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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
!DSPAM:58daadf517162116020694!
Question.
solutions for the issues and concerns that have been mitigated by having the database be closed
Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be> wrote:
solutions for the issues and concerns that have been mitigated by having the database be closed
Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] 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 From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: solutions for the issues and concerns that have been mitigated by having the database be closed
+1 Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Tuesday, March 28, 2017 1:40 PM To: Paul Keating; Marie Pattullo 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 Importance: High Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] 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<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <paul@law.es<mailto:paul@law.es>> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>, Michael Karanicolas <michael@law-democracy.org<mailto:michael@law-democracy.org>> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: solutions for the issues and concerns that have been mitigated by having the database be closed __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.
I've not yet seen any such articulated reasons. Care to provide them? Sent from my iPad
On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com> wrote:
Paul:
I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change.
J. Scott
<image001.gif> 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
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
Question.
solutions for the issues and concerns that have been
mitigated by having the database be closed
Can someone please list the issues and concerns at issue here?
And, how has closing the database mitigated any of them?
Sent from my iPad
On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be> wrote:
solutions for the issues and concerns that have been mitigated by having the database be closed
Hello everyone, If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH. The attached document excerpts some text from the IAG’s final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <Paul@law.es> Date: Tuesday, March 28, 2017 at 23:08 To: "J. Scott Evans" <jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I've not yet seen any such articulated reasons. Care to provide them? Sent from my iPad On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott <image001.gif> 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<mailto:jsevans@adobe.com> www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ&c...> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <paul@law.es<mailto:paul@law.es>> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>, Michael Karanicolas <michael@law-democracy.org<mailto:michael@law-democracy.org>> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: solutions for the issues and concerns that have been mitigated by having the database be closed
I have yet to review this material, but I have been reaching out to STI Members. When the TMCH Database left the STI, GNSO Council, and ICANN Board acceptance it was an open database. I think we have an interesting issue to review. Best, Kathy On 3/29/2017 10:17 AM, Mary Wong wrote:
Hello everyone,
If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH.
The attached document excerpts some text from the IAG’s final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential.
Cheers
Mary
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <Paul@law.es> *Date: *Tuesday, March 28, 2017 at 23:08 *To: *"J. Scott Evans" <jsevans@adobe.com> *Cc: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org> *Subject: *Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
I've not yet seen any such articulated reasons. Care to provide them?
Sent from my iPad
On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com <mailto:jsevans@adobe.com>> wrote:
Paul:
I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change.
J. Scott
<image001.gif>
*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 <mailto:jsevans@adobe.com>
www.adobe.com[adobe.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ&c...>
*From: *<gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <paul@law.es <mailto:paul@law.es>> *Date: *Tuesday, March 28, 2017 at 12:21 PM *To: *Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be>> *Cc: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>>, Michael Karanicolas <michael@law-democracy.org <mailto:michael@law-democracy.org>> *Subject: *Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
Question.
solutions for the issues and concerns that have been
mitigated by having the database be closed
Can someone please list the issues and concerns at issue here?
And, how has closing the database mitigated any of them?
Sent from my iPad
On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be>> wrote:
solutions for the issues and concerns that have been
mitigated by having the database be closed
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
All, I have tried my best to catch up on this thread, and would like to offer the following observations before our call: It seems that one of the leading reasons advanced (of those articulated at least) for requesting the public release of certain TMCH data is a desire to address gaming of Sunrises (occasioned by what may well be challengeable trademark registrations) by registrants obtaining priority on domain names corresponding to dictionary terms -- ostensibly to be considerably monetized in various fashions. This speculative market practice should not be mistaken for the purpose behind Sunrises: trademark owners defensively registering domain names as part of a rights protection strategy. To the extent there is such (appropriately evidenced) gaming, aside from the rather obvious possibility of challenging the underlying trademark registration inappropriately invoked for a Sunrise, there is already a challenge process contemplated for such disputes amongst speculators. See 1.2 (2 and 3) at: www.trademark-clearinghouse.com/dispute<http://www.trademark-clearinghouse.com/dispute>. Moreover, the reasons articulated in Brian Winterfeldt's (Mayer Brown team's) email (attached for ease of reference) merit consideration as a good starting point as to the issue of publicity of TMCH data. Bona fide trademark owners should not be penalized for abuse by speculators who are abusing trademark registration systems and Sunrise processes to obtain a certain subset of (dictionary term) domain name registrations. Finally, regarding the topic of data transparency, building on the points raised by Paul Keating and J Scott Evans, this Working Group may want to consider the extent to which this principle may be appropriate to apply to WhoIs (as to accuracy, as much as to transparency). As was stated in the Report of the First WIPO Internet Domain Name Process (www.wipo.int/amc/en/processes/process1/report/finalreport.html<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html>): "322. The lack of reliable contact details often is highlighted as a major obstacle in the resolution of [cybersquatting cases]." In the nearly two decades since the publication of that Report, it seems this issue may not yet have been adequately considered or addressed. Kind regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, March 29, 2017 5:14 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I have yet to review this material, but I have been reaching out to STI Members. When the TMCH Database left the STI, GNSO Council, and ICANN Board acceptance it was an open database. I think we have an interesting issue to review. Best, Kathy On 3/29/2017 10:17 AM, Mary Wong wrote: Hello everyone, If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH. The attached document excerpts some text from the IAG's final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <Paul@law.es><mailto:Paul@law.es> Date: Tuesday, March 28, 2017 at 23:08 To: "J. Scott Evans" <jsevans@adobe.com><mailto:jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org"<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org><mailto:michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I've not yet seen any such articulated reasons. Care to provide them? Sent from my iPad On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott <image001.gif> 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<mailto:jsevans@adobe.com> www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ&c...> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <paul@law.es<mailto:paul@law.es>> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>, Michael Karanicolas <michael@law-democracy.org<mailto:michael@law-democracy.org>> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: solutions for the issues and concerns that have been mitigated by having the database be closed _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Hi Brian, I wanted to add something too. The open Whois is notorious for bad information because it is public and not consistently verified. INTA supports an open, verifiable and contactable whois. However, we could support gated access if the information could be guaranteed to be more reliable than what we currently have in the open whois. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: Wednesday, March 29, 2017 11:58 AM To: Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services All, I have tried my best to catch up on this thread, and would like to offer the following observations before our call: It seems that one of the leading reasons advanced (of those articulated at least) for requesting the public release of certain TMCH data is a desire to address gaming of Sunrises (occasioned by what may well be challengeable trademark registrations) by registrants obtaining priority on domain names corresponding to dictionary terms -- ostensibly to be considerably monetized in various fashions. This speculative market practice should not be mistaken for the purpose behind Sunrises: trademark owners defensively registering domain names as part of a rights protection strategy. To the extent there is such (appropriately evidenced) gaming, aside from the rather obvious possibility of challenging the underlying trademark registration inappropriately invoked for a Sunrise, there is already a challenge process contemplated for such disputes amongst speculators. See 1.2 (2 and 3) at: www.trademark-clearinghouse.com/dispute<http://www.trademark-clearinghouse.com/dispute>. Moreover, the reasons articulated in Brian Winterfeldt's (Mayer Brown team's) email (attached for ease of reference) merit consideration as a good starting point as to the issue of publicity of TMCH data. Bona fide trademark owners should not be penalized for abuse by speculators who are abusing trademark registration systems and Sunrise processes to obtain a certain subset of (dictionary term) domain name registrations. Finally, regarding the topic of data transparency, building on the points raised by Paul Keating and J Scott Evans, this Working Group may want to consider the extent to which this principle may be appropriate to apply to WhoIs (as to accuracy, as much as to transparency). As was stated in the Report of the First WIPO Internet Domain Name Process (www.wipo.int/amc/en/processes/process1/report/finalreport.html<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html>): "322. The lack of reliable contact details often is highlighted as a major obstacle in the resolution of [cybersquatting cases]." In the nearly two decades since the publication of that Report, it seems this issue may not yet have been adequately considered or addressed. Kind regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, March 29, 2017 5:14 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I have yet to review this material, but I have been reaching out to STI Members. When the TMCH Database left the STI, GNSO Council, and ICANN Board acceptance it was an open database. I think we have an interesting issue to review. Best, Kathy On 3/29/2017 10:17 AM, Mary Wong wrote: Hello everyone, If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH. The attached document excerpts some text from the IAG's final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <Paul@law.es><mailto:Paul@law.es> Date: Tuesday, March 28, 2017 at 23:08 To: "J. Scott Evans" <jsevans@adobe.com><mailto:jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org"<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org><mailto:michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I've not yet seen any such articulated reasons. Care to provide them? Sent from my iPad On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott <image001.gif> 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<mailto:jsevans@adobe.com> www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ&c...> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <paul@law.es<mailto:paul@law.es>> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>, Michael Karanicolas <michael@law-democracy.org<mailto:michael@law-democracy.org>> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: solutions for the issues and concerns that have been mitigated by having the database be closed _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. ________________________________
Kathy, You may be correct as to what it existing when it left the STI, but then the IAG was formed (thank Mary for finding that). I was a member of the IAG as were others. Just like the STI made recommendations on how to deal with the IRT report, the IAG made recommendations on how to implement the STI's recommendations. Best regards, 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<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto: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 Kathy Kleiman Sent: Wednesday, March 29, 2017 11:14 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I have yet to review this material, but I have been reaching out to STI Members. When the TMCH Database left the STI, GNSO Council, and ICANN Board acceptance it was an open database. I think we have an interesting issue to review. Best, Kathy On 3/29/2017 10:17 AM, Mary Wong wrote: Hello everyone, If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH. The attached document excerpts some text from the IAG's final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <Paul@law.es><mailto:Paul@law.es> Date: Tuesday, March 28, 2017 at 23:08 To: "J. Scott Evans" <jsevans@adobe.com><mailto:jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org"<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org>, Michael Karanicolas <michael@law-democracy.org><mailto:michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I've not yet seen any such articulated reasons. Care to provide them? Sent from my iPad On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott <image001.gif> 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<mailto:jsevans@adobe.com> www.adobe.com[adobe.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ&c...> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Keating <paul@law.es<mailto:paul@law.es>> Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>, Michael Karanicolas <michael@law-democracy.org<mailto:michael@law-democracy.org>> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: solutions for the issues and concerns that have been mitigated by having the database be closed _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Thanks Kathy. Are there STI record showing that it was affirmatively open? It may have been simply not discussed and each side assumed their own view? I admit to not recalling, but I think we need to check the STI records to confirm one way or another (if possible). Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, March 29, 2017 10:14 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I have yet to review this material, but I have been reaching out to STI Members. When the TMCH Database left the STI, GNSO Council, and ICANN Board acceptance it was an open database. I think we have an interesting issue to review. Best, Kathy On 3/29/2017 10:17 AM, Mary Wong wrote: Hello everyone, If it will help, the need to maintain the confidentiality of the TMCH Database (TMDB) was discussed by the Implementation Assistance Group (IAG), working between October 2011 and May 2012 and consisting of community volunteers. The IAG was convened to develop and recommend business requirements around specific issues in the provision of Sunrise and Claims Notification services through the TMCH. The attached document excerpts some text from the IAG's final report that seems to indicate that the IAG considered the question as to whether and why the TMDB was to be a confidential database. Please note that staff is providing this text purely for informational purposes, and takes no position as to whether or not the TMDB should continue to remain confidential. Cheers Mary From: <mailto:gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <mailto:Paul@law.es> <Paul@law.es> Date: Tuesday, March 28, 2017 at 23:08 To: "J. Scott Evans" <mailto:jsevans@adobe.com> <jsevans@adobe.com> Cc: <mailto:gnso-rpm-wg@icann.org> "gnso-rpm-wg@icann.org" <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org>, Michael Karanicolas <mailto:michael@law-democracy.org> <michael@law-democracy.org> Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services I've not yet seen any such articulated reasons. Care to provide them? Sent from my iPad On 28 Mar 2017, at 22:40, J. Scott Evans <jsevans@adobe.com <mailto:jsevans@adobe.com> > wrote: Paul: I think the proponents of the closed database have repeatedly articulated the benefits they see in a closed database. That is the status quo. In order to change the status quo, it is the proponents for an open system that need to articulate (persuasively) an overriding need or benefit for such a change. J. Scott <image001.gif> 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 <mailto:jsevans@adobe.com> www.adobe.com[adobe.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DwMCaQ& c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl 7xb5cjS_7sB4h6Y&m=xzS0_a7gh_CbP93HDCn4gCiEPf61PKMba02eWelzxC0&s=QGu3yeTOdbOc CfjnVYkndyNSP8JSD3FM3-F3Icw1jYE&e=> From: <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>
on behalf of Paul Keating <paul@law.es <mailto:paul@law.es> > Date: Tuesday, March 28, 2017 at 12:21 PM To: Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be> > Cc: "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> " <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >, Michael Karanicolas <michael@law-democracy.org <mailto:michael@law-democracy.org> > Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
Question. solutions for the issues and concerns that have been mitigated by having the database be closed Can someone please list the issues and concerns at issue here? And, how has closing the database mitigated any of them? Sent from my iPad On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be> > wrote: solutions for the issues and concerns that have been mitigated by having the database be closed _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+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://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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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://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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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...
_______________________________________________
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https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
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https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
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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
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---------------------------------------------------------------------- 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.
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
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://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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
!DSPAM:58daadf517162116020694!
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+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
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...
_______________________________________________
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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...
_______________________________________________
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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.
All this talk of transparency, do we require registrars and registries to disclose their code or their customer lists? 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, 1:15 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Phil Corwin" <gnso-rpm-wg-bounces@icann.org on behalf of psc@vlaw-dc.com> wrote: 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 > 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... > > !DSPAM:58daadf517162116020694! > > _______________________________________________ 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...
They do. It's called WHOIS. Sent from my iPad
On 28 Mar 2017, at 22:51, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
All this talk of transparency, do we require registrars and registries to disclose their code or their customer lists?
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, 1:15 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Phil Corwin" <gnso-rpm-wg-bounces@icann.org on behalf of psc@vlaw-dc.com> wrote:
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
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...
!DSPAM:58daadf517162116020694!
_______________________________________________ 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...
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The WHOIS database discloses this information in the same way that the online trademark databases provide you with the information trademark owners. I want a quick, easy to use one stop shop for all this information. That is what you’re seeking, correct? 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, 1:57 PM, "Paul Keating" <paul@law.es> wrote: They do. It's called WHOIS. Sent from my iPad > On 28 Mar 2017, at 22:51, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: > > All this talk of transparency, do we require registrars and registries to disclose their code or their customer lists? > > > 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, 1:15 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Phil Corwin" <gnso-rpm-wg-bounces@icann.org on behalf of psc@vlaw-dc.com> wrote: > > > > 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 > >> 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... >> >> !DSPAM:58daadf517162116020694! >> >> > > _______________________________________________ > 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...
Whois is public. I can obtain a complete list of all Whois records for every registered domain. I can obtain a list of all domains registered in your name or to anyone using your address, phone number, emails, etc. TMCH is not. I have yet to see one reason that supports confidentiality as opposed to it being public. Sent from my iPad
On 28 Mar 2017, at 22:59, J. Scott Evans <jsevans@adobe.com> wrote:
The WHOIS database discloses this information in the same way that the online trademark databases provide you with the information trademark owners. I want a quick, easy to use one stop shop for all this information. That is what you’re seeking, correct?
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, 1:57 PM, "Paul Keating" <paul@law.es> wrote:
They do. It's called WHOIS.
Sent from my iPad
On 28 Mar 2017, at 22:51, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
All this talk of transparency, do we require registrars and registries to disclose their code or their customer lists?
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, 1:15 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Phil Corwin" <gnso-rpm-wg-bounces@icann.org on behalf of psc@vlaw-dc.com> wrote:
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
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...
!DSPAM:58daadf517162116020694!
_______________________________________________ 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...
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You are missing my point. Yes, I agree the WHOIS to domains what the various trademark registries are for trademark owners. These offer a great amount of publicly available information. It just so time consuming to assimilate all this date. The TMCH, in contrast, is a centralized database the contains information that provides information on which trademarks an owner believes are most valuable. Very different from the WHOIS. I want a centralized database that gives me the information on the biggest clients, the clients who’ve had the most UDRPs filed against them. The client s that get pricing breaks. I mean, its all about transparency, right? 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, 2:05 PM, "Paul Keating" <paul@law.es> wrote: Whois is public. I can obtain a complete list of all Whois records for every registered domain. I can obtain a list of all domains registered in your name or to anyone using your address, phone number, emails, etc. TMCH is not. I have yet to see one reason that supports confidentiality as opposed to it being public. Sent from my iPad > On 28 Mar 2017, at 22:59, J. Scott Evans <jsevans@adobe.com> wrote: > > The WHOIS database discloses this information in the same way that the online trademark databases provide you with the information trademark owners. I want a quick, easy to use one stop shop for all this information. That is what you’re seeking, correct? > > > > > 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, 1:57 PM, "Paul Keating" <paul@law.es> wrote: > > They do. It's called WHOIS. > > Sent from my iPad > >> On 28 Mar 2017, at 22:51, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: >> >> All this talk of transparency, do we require registrars and registries to disclose their code or their customer lists? >> >> >> 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, 1:15 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Phil Corwin" <gnso-rpm-wg-bounces@icann.org on behalf of psc@vlaw-dc.com> wrote: >> >> >> >> 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 >> >>> 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... >>> >>> !DSPAM:58daadf517162116020694! >>> >>> >> >> _______________________________________________ >> 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... > >
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, The first step is to understand that others may have a different idea of "a clean space", "commercial growth" and "common good". You don't of course have to agree with their versions of these concepts but you need to understand that yours (and mine) is not the only understanding of these concepts. If is dangerous to presume that those taking a contrary view are (a) against trademark interests or (b) promoting cybersquatting. There are many other principles at stake here. Sent from my iPad
On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be> wrote:
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?
Thanks Paul. I don't assume everyone is a bad actor. I'm too much of an optimist for that. And I don't think it's just cyber squatting (premium pricing...?). And I still come down to a balance of what we are trying to achieve, babies and their bath water included. If you want to know what TMs are registered - check a TM Registry. If you believe the Claims Notice doesn't apply to what you are intending to do with your DN, don't be worried. M Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:48, Paul Keating <paul@law.es> wrote:
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,
The first step is to understand that others may have a different idea of "a clean space", "commercial growth" and "common good". You don't of course have to agree with their versions of these concepts but you need to understand that yours (and mine) is not the only understanding of these concepts.
If is dangerous to presume that those taking a contrary view are (a) against trademark interests or (b) promoting cybersquatting. There are many other principles at stake here.
Sent from my iPad
On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be> wrote:
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?
!DSPAM:58dabe0217161772916593!
That only part of the issue. It raises a chilling issue. The other issue is the pre-emptive registrations based on TMCH entries. Sent from my iPad
On 28 Mar 2017, at 21:59, Marie Pattullo <marie.pattullo@aim.be> wrote:
Thanks Paul. I don't assume everyone is a bad actor. I'm too much of an optimist for that. And I don't think it's just cyber squatting (premium pricing...?). And I still come down to a balance of what we are trying to achieve, babies and their bath water included. If you want to know what TMs are registered - check a TM Registry. If you believe the Claims Notice doesn't apply to what you are intending to do with your DN, don't be worried. M
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:48, Paul Keating <paul@law.es> wrote:
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,
The first step is to understand that others may have a different idea of "a clean space", "commercial growth" and "common good". You don't of course have to agree with their versions of these concepts but you need to understand that yours (and mine) is not the only understanding of these concepts.
If is dangerous to presume that those taking a contrary view are (a) against trademark interests or (b) promoting cybersquatting. There are many other principles at stake here.
Sent from my iPad
On 28 Mar 2017, at 21:07, Marie Pattullo <marie.pattullo@aim.be> wrote:
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?
!DSPAM:58dabe0217161772916593!
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 ³equal² 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 <mailto: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 <tel:%2B1.703.635.7514>
M: +1.202.549.5079 <tel:%2B1.202.549.5079>
@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 ICANN¹s 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 party¹s 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, Deloitte¹s contract with ICANN is for an initial period expiring on the fifth anniversary of ICANN¹s 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Jeff: Replying in my capacity as co-chair, although not having consulted collectively with the other co-chairs on this matter: · I agree that we should consider the views contained in the letter relevant to our current work and set the other views aside for now and reference them when they become relevant. · I welcome the input of the signatories of the letter and would hope that they – as well as all others with an interest in our work, regardless of their POV – will participate in our WG going forward. · I do not think we should set an agenda that is focused on reviewing the letter from this group, as that would set a precedent whereby we might be obliged to do the same for every other group that wished to convey collective views to our WG at any point in the future. · I do not think it is particularly relevant who authored the letter as my past experience with such letters is that they are modified substantially in the course of obtaining signatures. In any event, once someone has signed such a letter they have bound themselves to all the views and assertions contained within. Finally, after having just reviewed the letter again, this strikes me as the most important clause: Given these developments, we urge ICANN to reevaluate the premises of many of its existing rights protection mechanisms to ensure that they do not exceed the purposeful boundaries of trademark rights. Such a review is appropriately within the scope of the Review of all Rights Protection Mechanisms PDP Working Group. We respectfully request that this review be undertaken. Until such a review is undertaken, any further expansion of the rights provided by the Trademark Clearinghouse to domains that it does not already cover, including legacy domains, would be premature. I have often stated the view that ICANN has an absolute responsibility to respect and uphold existing legal rights, but also has absolutely no authority to create claims or mechanisms that go beyond existing law. I do not believe we need to conduct a separate review “to reevaluate the premises of many of its existing rights protection mechanisms to ensure that they do not exceed the purposeful boundaries of trademark rights” because I believe that we have been making such evaluations in the regular course of our work. Again, given their strong views on this subject, I would urge the signatories to the letter to consider joining in our work as that is the best and proper means of assuring that their concerns are raised and considered by the entire WG. Best to all, Philip 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 From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Tuesday, March 28, 2017 10:54 AM To: Mary Wong; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services 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<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto: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> [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<mailto: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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4756/14147 - Release Date: 03/19/17 Internal Virus Database is out of date.
participants (15)
-
Beckham, Brian -
Greg Shatan -
J. Scott Evans -
Jeff Neuman -
Kathy Kleiman -
Kiran Malancharuvil -
Lori Schulman -
Marie Pattullo -
Mary Wong -
Michael Karanicolas -
Paul Keating -
Paul McGrady -
Phil Corwin -
trachtenbergm＠gtlaw.com -
Winterfeldt, Brian J.