Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services
And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them? M Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Unfortunately, "searching a TM registry" won't get the job done, because--as we've discussed before in other contexts--TMCH registrations are different. They provide claims no matter what the goods or services are. No matter what I want to use "the" or "color" etc. for, they're in the TMCH. That is different from any trademark registry (even most of the previous attempts to create "fame" registries required goods/services listings). Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: Thanks Rebecca. If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. Marie
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
I think the value of transparency has been articulated here several times, whether or not you agree: legitimate market entrants--who, not for nothing, are also likely to be trademark owners--may want to know what they can do. People concerned with the integrity of the register want to know whether (as current data seem to indicate) many of the existing registrants and many existing claims notices are asserting control over domain names whose value is distinct from trademark value attributable to the registrant. Those are the usual values of transparency: knowing what's going on so one can order one's own behavior accordingly, and/or advocate for change where change is desirable.
On the other side, I find persuasive the argument that cybersquatters generally don't need to consult any records to figure out what domains they want and thus I find it hard to identify the harm to be avoided. We are talking here about the marginal impact of transparency in the TMCH added to the public nature of registration (searchable online in many large nations) and the public nature of trademark fame (e.g., Twentieth Century Fox, to take an example that's been discussed). For me, transparency in the TMCH would provide a lot of TMCH-relevant information but has only a marginal effect on information about trademark values generally, arguing in favor of transparency. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer?
No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No?
Marie
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@law-democracy.org> wrote:
Hi Greg,
If I had a perfect solution to prevent cybersquatting in my pocket I probably would have led with it :)
That said, my aim in drafting that was to try and help frame the discussion, rather than to try and close it. Look, my expertise is more on the transparency side than on the trademark side. But on the transparency side, we deal with potential harms all the time - be they for information involving national security, personal privacy - or legitimate commercial interests like trademark protection. And generally, we seek to find an avenue forward which provides adequate protection for these interests, while respecting the overarching interest in openness. This calculus shouldn't mean that openness is abandoned whenever a potential for harm is encountered. Indeed, if that were the case almost no information would end up being put out there. Rather, it means assessing the specific harms that would flow directly from the specific disclosures, weighing them against the public interest in disclosure, and seeking ways to work around those harms which also provide for maximum openness.
So, while I don't have a readymade solution to present, I do think we need to work together to find one. Reverting to secrecy is just not consistent with ICANN's broader mission, given that the entire model is based on public oversight and accountability.
Looking forward to engaging on this further.
Michael
P.S. I'm not sure why it's at all relevant who actually drafted the text of the EFF letter? As someone who's been involved in many similar efforts, they can be done fully collaboratively, or with one or two of the signatories taking the lead. Either way though, all of the names attached to it have approved and endorsed it. These are very senior and respected experts - they don't just throw their names on any document that's sent their way. If they signed the letter it means they support it - what does it matter who held the pen?
On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: Michael,
Do you have any solutions for the issues and concerns that have been mitigated by having the database be closed?
Thanks!
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas <michael@law-democracy.org> wrote: > > Hi all, > > Just building on the discussion around transparency, after hearing the > conversation at ICANN 58 I drafted my own short note setting out my > thoughts on the issue, which I'm attaching here. > > I want to be mindful of the conversation on inputs which is ongoing > now - so hopefully it isn't out of place or inappropriate to submit my > thoughts via this method. > > I very much look forward to further discussions on this issue. > > Best wishes, > > Michael Karanicolas > > On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman@comlaude.com> > wrote: >> Thanks Mary. >> >> >> >> Co-Chairs, >> >> >> >> Can I assume that with respect to the EFF letter, the only items we >> would be >> discussing from that letter at this point are their comments with >> respect to >> design marks and the transparency of the TMCH database? >> >> I am not saying the other comments are not important, but with respect >> to >> this Working Group at this time, we are not yet addressing those other >> issues. >> >> >> >> I would strongly urge that we not engage yet in the other discussion >> around >> the other comments at this point (namely, trademark rights in general), >> as I >> think that could lead us down a large rabbit hole and considerably slow >> down >> out work. >> >> >> Thanks. >> >> >> >> Jeffrey J. Neuman >> >> Senior Vice President |Valideus USA | Com Laude USA >> >> 1751 Pinnacle Drive, Suite 600 >> >> Mclean, VA 22102, United States >> >> E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com >> >> T: +1.703.635.7514 >> >> M: +1.202.549.5079 >> >> @Jintlaw >> >> >> >> >> >> From: gnso-rpm-wg-bounces@icann.org >> [mailto:gnso-rpm-wg-bounces@icann.org] >> On Behalf Of Mary Wong >> Sent: Tuesday, March 28, 2017 6:15 AM >> To: gnso-rpm-wg@icann.org >> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >> and >> information on Deloitte Ancillary Services >> >> >> >> Dear all, >> >> >> >> During the ICANN58 Working Group sessions in Copenhagen, the following >> two >> matters came up for which staff is now following up with the requested >> document (for #1) and information (for #2). >> >> >> >> Item #1: Letter of 10 March 2017 from some trademark scholars and >> practitioners to our Working Group co-chairs expressing concerns with >> certain aspects of the TMCH: >> >> https://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
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Marie, Sorry but I don't understand your questions. The notice is intended to remove the ignorance defense of the registrant. It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue. In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something . One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice). Sent from my iPad
On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo@aim.be> wrote:
And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them? M
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Unfortunately, "searching a TM registry" won't get the job done, because--as we've discussed before in other contexts--TMCH registrations are different. They provide claims no matter what the goods or services are. No matter what I want to use "the" or "color" etc. for, they're in the TMCH. That is different from any trademark registry (even most of the previous attempts to create "fame" registries required goods/services listings). Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: Thanks Rebecca. If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. Marie
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
I think the value of transparency has been articulated here several times, whether or not you agree: legitimate market entrants--who, not for nothing, are also likely to be trademark owners--may want to know what they can do. People concerned with the integrity of the register want to know whether (as current data seem to indicate) many of the existing registrants and many existing claims notices are asserting control over domain names whose value is distinct from trademark value attributable to the registrant. Those are the usual values of transparency: knowing what's going on so one can order one's own behavior accordingly, and/or advocate for change where change is desirable.
On the other side, I find persuasive the argument that cybersquatters generally don't need to consult any records to figure out what domains they want and thus I find it hard to identify the harm to be avoided. We are talking here about the marginal impact of transparency in the TMCH added to the public nature of registration (searchable online in many large nations) and the public nature of trademark fame (e.g., Twentieth Century Fox, to take an example that's been discussed). For me, transparency in the TMCH would provide a lot of TMCH-relevant information but has only a marginal effect on information about trademark values generally, arguing in favor of transparency. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer?
No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No?
Marie
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@law-democracy.org> wrote:
Hi Greg,
If I had a perfect solution to prevent cybersquatting in my pocket I probably would have led with it :)
That said, my aim in drafting that was to try and help frame the discussion, rather than to try and close it. Look, my expertise is more on the transparency side than on the trademark side. But on the transparency side, we deal with potential harms all the time - be they for information involving national security, personal privacy - or legitimate commercial interests like trademark protection. And generally, we seek to find an avenue forward which provides adequate protection for these interests, while respecting the overarching interest in openness. This calculus shouldn't mean that openness is abandoned whenever a potential for harm is encountered. Indeed, if that were the case almost no information would end up being put out there. Rather, it means assessing the specific harms that would flow directly from the specific disclosures, weighing them against the public interest in disclosure, and seeking ways to work around those harms which also provide for maximum openness.
So, while I don't have a readymade solution to present, I do think we need to work together to find one. Reverting to secrecy is just not consistent with ICANN's broader mission, given that the entire model is based on public oversight and accountability.
Looking forward to engaging on this further.
Michael
P.S. I'm not sure why it's at all relevant who actually drafted the text of the EFF letter? As someone who's been involved in many similar efforts, they can be done fully collaboratively, or with one or two of the signatories taking the lead. Either way though, all of the names attached to it have approved and endorsed it. These are very senior and respected experts - they don't just throw their names on any document that's sent their way. If they signed the letter it means they support it - what does it matter who held the pen?
> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: > Michael, > > Do you have any solutions for the issues and concerns that have been > mitigated by having the database be closed? > > Thanks! > > Greg > > Greg Shatan > C: 917-816-6428 > S: gsshatan > Phone-to-Skype: 646-845-9428 > gregshatanipc@gmail.com > > > On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas > <michael@law-democracy.org> wrote: >> >> Hi all, >> >> Just building on the discussion around transparency, after hearing the >> conversation at ICANN 58 I drafted my own short note setting out my >> thoughts on the issue, which I'm attaching here. >> >> I want to be mindful of the conversation on inputs which is ongoing >> now - so hopefully it isn't out of place or inappropriate to submit my >> thoughts via this method. >> >> I very much look forward to further discussions on this issue. >> >> Best wishes, >> >> Michael Karanicolas >> >> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman@comlaude.com> >> wrote: >>> Thanks Mary. >>> >>> >>> >>> Co-Chairs, >>> >>> >>> >>> Can I assume that with respect to the EFF letter, the only items we >>> would be >>> discussing from that letter at this point are their comments with >>> respect to >>> design marks and the transparency of the TMCH database? >>> >>> I am not saying the other comments are not important, but with respect >>> to >>> this Working Group at this time, we are not yet addressing those other >>> issues. >>> >>> >>> >>> I would strongly urge that we not engage yet in the other discussion >>> around >>> the other comments at this point (namely, trademark rights in general), >>> as I >>> think that could lead us down a large rabbit hole and considerably slow >>> down >>> out work. >>> >>> >>> Thanks. >>> >>> >>> >>> Jeffrey J. Neuman >>> >>> Senior Vice President |Valideus USA | Com Laude USA >>> >>> 1751 Pinnacle Drive, Suite 600 >>> >>> Mclean, VA 22102, United States >>> >>> E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com >>> >>> T: +1.703.635.7514 >>> >>> M: +1.202.549.5079 >>> >>> @Jintlaw >>> >>> >>> >>> >>> >>> From: gnso-rpm-wg-bounces@icann.org >>> [mailto:gnso-rpm-wg-bounces@icann.org] >>> On Behalf Of Mary Wong >>> Sent: Tuesday, March 28, 2017 6:15 AM >>> To: gnso-rpm-wg@icann.org >>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>> and >>> information on Deloitte Ancillary Services >>> >>> >>> >>> Dear all, >>> >>> >>> >>> During the ICANN58 Working Group sessions in Copenhagen, the following >>> two >>> matters came up for which staff is now following up with the requested >>> document (for #1) and information (for #2). >>> >>> >>> >>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>> practitioners to our Working Group co-chairs expressing concerns with >>> certain aspects of the TMCH: >>> >>> https://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
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Paul: Always taking the most negative view. The notice serves to warn a party that there could be an issue so that purchaser can make an informed decision before proceeding. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 3/28/17, 1:14 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote: Marie, Sorry but I don't understand your questions. The notice is intended to remove the ignorance defense of the registrant. It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue. In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something . One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice). Sent from my iPad > On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo@aim.be> wrote: > > And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them? > M > > Sent from my iPhone, sorry for typos > >> On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >> >> Unfortunately, "searching a TM registry" won't get the job done, >> because--as we've discussed before in other contexts--TMCH >> registrations are different. They provide claims no matter what the >> goods or services are. No matter what I want to use "the" or "color" >> etc. for, they're in the TMCH. That is different from any trademark >> registry (even most of the previous attempts to create "fame" >> registries required goods/services listings). >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >>> On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: >>> Thanks Rebecca. >>> If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. >>> Marie >>> >>> Sent from my iPhone, sorry for typos >>> >>>> On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >>>> >>>> I think the value of transparency has been articulated here several >>>> times, whether or not you agree: legitimate market entrants--who, not >>>> for nothing, are also likely to be trademark owners--may want to know >>>> what they can do. People concerned with the integrity of the register >>>> want to know whether (as current data seem to indicate) many of the >>>> existing registrants and many existing claims notices are asserting >>>> control over domain names whose value is distinct from trademark value >>>> attributable to the registrant. Those are the usual values of >>>> transparency: knowing what's going on so one can order one's own >>>> behavior accordingly, and/or advocate for change where change is >>>> desirable. >>>> >>>> On the other side, I find persuasive the argument that cybersquatters >>>> generally don't need to consult any records to figure out what domains >>>> they want and thus I find it hard to identify the harm to be avoided. >>>> We are talking here about the marginal impact of transparency in the >>>> TMCH added to the public nature of registration (searchable online in >>>> many large nations) and the public nature of trademark fame (e.g., >>>> Twentieth Century Fox, to take an example that's been discussed). For >>>> me, transparency in the TMCH would provide a lot of TMCH-relevant >>>> information but has only a marginal effect on information about >>>> trademark values generally, arguing in favor of transparency. >>>> Rebecca Tushnet >>>> Georgetown Law >>>> 703 593 6759 >>>> >>>> >>>>> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: >>>>> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer? >>>>> >>>>> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No? >>>>> >>>>> Marie >>>>> >>>>> Sent from my iPhone, sorry for typos >>>>> >>>>>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@law-democracy.org> wrote: >>>>>> >>>>>> Hi Greg, >>>>>> >>>>>> If I had a perfect solution to prevent cybersquatting in my pocket I >>>>>> probably would have led with it :) >>>>>> >>>>>> That said, my aim in drafting that was to try and help frame the >>>>>> discussion, rather than to try and close it. Look, my expertise is >>>>>> more on the transparency side than on the trademark side. But on the >>>>>> transparency side, we deal with potential harms all the time - be they >>>>>> for information involving national security, personal privacy - or >>>>>> legitimate commercial interests like trademark protection. And >>>>>> generally, we seek to find an avenue forward which provides adequate >>>>>> protection for these interests, while respecting the overarching >>>>>> interest in openness. This calculus shouldn't mean that openness is >>>>>> abandoned whenever a potential for harm is encountered. Indeed, if >>>>>> that were the case almost no information would end up being put out >>>>>> there. Rather, it means assessing the specific harms that would flow >>>>>> directly from the specific disclosures, weighing them against the >>>>>> public interest in disclosure, and seeking ways to work around those >>>>>> harms which also provide for maximum openness. >>>>>> >>>>>> So, while I don't have a readymade solution to present, I do think we >>>>>> need to work together to find one. Reverting to secrecy is just not >>>>>> consistent with ICANN's broader mission, given that the entire model >>>>>> is based on public oversight and accountability. >>>>>> >>>>>> Looking forward to engaging on this further. >>>>>> >>>>>> Michael >>>>>> >>>>>> P.S. I'm not sure why it's at all relevant who actually drafted the >>>>>> text of the EFF letter? As someone who's been involved in many similar >>>>>> efforts, they can be done fully collaboratively, or with one or two of >>>>>> the signatories taking the lead. Either way though, all of the names >>>>>> attached to it have approved and endorsed it. These are very senior >>>>>> and respected experts - they don't just throw their names on any >>>>>> document that's sent their way. If they signed the letter it means >>>>>> they support it - what does it matter who held the pen? >>>>>> >>>>>> >>>>>> >>>>>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: >>>>>>> Michael, >>>>>>> >>>>>>> Do you have any solutions for the issues and concerns that have been >>>>>>> mitigated by having the database be closed? >>>>>>> >>>>>>> Thanks! >>>>>>> >>>>>>> Greg >>>>>>> >>>>>>> Greg Shatan >>>>>>> C: 917-816-6428 >>>>>>> S: gsshatan >>>>>>> Phone-to-Skype: 646-845-9428 >>>>>>> gregshatanipc@gmail.com >>>>>>> >>>>>>> >>>>>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>>>>> <michael@law-democracy.org> wrote: >>>>>>>> >>>>>>>> Hi all, >>>>>>>> >>>>>>>> Just building on the discussion around transparency, after hearing the >>>>>>>> conversation at ICANN 58 I drafted my own short note setting out my >>>>>>>> thoughts on the issue, which I'm attaching here. >>>>>>>> >>>>>>>> I want to be mindful of the conversation on inputs which is ongoing >>>>>>>> now - so hopefully it isn't out of place or inappropriate to submit my >>>>>>>> thoughts via this method. >>>>>>>> >>>>>>>> I very much look forward to further discussions on this issue. >>>>>>>> >>>>>>>> Best wishes, >>>>>>>> >>>>>>>> Michael Karanicolas >>>>>>>> >>>>>>>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman@comlaude.com> >>>>>>>> wrote: >>>>>>>>> Thanks Mary. >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Co-Chairs, >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Can I assume that with respect to the EFF letter, the only items we >>>>>>>>> would be >>>>>>>>> discussing from that letter at this point are their comments with >>>>>>>>> respect to >>>>>>>>> design marks and the transparency of the TMCH database? >>>>>>>>> >>>>>>>>> I am not saying the other comments are not important, but with respect >>>>>>>>> to >>>>>>>>> this Working Group at this time, we are not yet addressing those other >>>>>>>>> issues. >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> I would strongly urge that we not engage yet in the other discussion >>>>>>>>> around >>>>>>>>> the other comments at this point (namely, trademark rights in general), >>>>>>>>> as I >>>>>>>>> think that could lead us down a large rabbit hole and considerably slow >>>>>>>>> down >>>>>>>>> out work. >>>>>>>>> >>>>>>>>> >>>>>>>>> Thanks. >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Jeffrey J. Neuman >>>>>>>>> >>>>>>>>> Senior Vice President |Valideus USA | Com Laude USA >>>>>>>>> >>>>>>>>> 1751 Pinnacle Drive, Suite 600 >>>>>>>>> >>>>>>>>> Mclean, VA 22102, United States >>>>>>>>> >>>>>>>>> E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com >>>>>>>>> >>>>>>>>> T: +1.703.635.7514 >>>>>>>>> >>>>>>>>> M: +1.202.549.5079 >>>>>>>>> >>>>>>>>> @Jintlaw >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> From: gnso-rpm-wg-bounces@icann.org >>>>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>>>>>>> On Behalf Of Mary Wong >>>>>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>>>>> To: gnso-rpm-wg@icann.org >>>>>>>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>>>>>>>> and >>>>>>>>> information on Deloitte Ancillary Services >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Dear all, >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> During the ICANN58 Working Group sessions in Copenhagen, the following >>>>>>>>> two >>>>>>>>> matters came up for which staff is now following up with the requested >>>>>>>>> document (for #1) and information (for #2). >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>>>>>>>> practitioners to our Working Group co-chairs expressing concerns with >>>>>>>>> certain aspects of the TMCH: >>>>>>>>> >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org.... >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Item #2: Question regarding the Ancillary Services that Deloitte is >>>>>>>>> permitted to provide under its Validation Agreement with ICANN, subject >>>>>>>>> to >>>>>>>>> ICANN’s authorization. >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Currently, two Ancillary Services have been approved by ICANN: >>>>>>>>> >>>>>>>>> 1. Extended Claims Services >>>>>>>>> >>>>>>>>> The extended claims services provide the Trademark Holder or Trademark >>>>>>>>> Agent, as applicable, with an electronic notification when a domain name >>>>>>>>> registered in an Eligible TLD matches one or more of such party’s >>>>>>>>> recorded >>>>>>>>> labels with the TMCH. The extended claims services does not include a >>>>>>>>> domain name pre-registration notification (i.e. a notification to the >>>>>>>>> potential registrant of a domain name that the domain name such >>>>>>>>> registrant >>>>>>>>> intends to register matches a label recorded with the Trademark >>>>>>>>> Clearinghouse). >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> 2. Audit Report >>>>>>>>> >>>>>>>>> Deloitte may offer an audit report service for Trademark Holders and >>>>>>>>> Trademark Agents with active Trademark Records recorded in the Trademark >>>>>>>>> Clearinghouse. Such audit reports shall consist primarily of a listing >>>>>>>>> of >>>>>>>>> matches between their recorded labels within the Trademark Clearinghouse >>>>>>>>> and >>>>>>>>> domain names registered in an Eligible TLD. >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on >>>>>>>>> the >>>>>>>>> fifth anniversary of ICANN’s entry into a Registry Agreement under the >>>>>>>>> New >>>>>>>>> gTLD Program, with consecutive one-year renewals thereafter. Although >>>>>>>>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint >>>>>>>>> additional validators once ten Qualified Sunrise Periods have been >>>>>>>>> completed >>>>>>>>> under the New gTLD Program. >>>>>>>>> >>>>>>>>> >>>>>>>>> >>>>>>>>> Thanks and cheers >>>>>>>>> >>>>>>>>> Mary >>>>>>>>> >>>>>>>>> >>>>>>>>> _______________________________________________ >>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>> gnso-rpm-wg@icann.org >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>>> >>>>>>>> _______________________________________________ >>>>>>>> gnso-rpm-wg mailing list >>>>>>>> gnso-rpm-wg@icann.org >>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>> >>>>>>> >>>>>>> >>>>>>> _______________________________________________ >>>>>>> gnso-rpm-wg mailing list >>>>>>> gnso-rpm-wg@icann.org >>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>> _______________________________________________ >>>>>> gnso-rpm-wg mailing list >>>>>> gnso-rpm-wg@icann.org >>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>> >>>>>> >>>>>> >>>>>> >>>>> >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>> >>>> >>>> >>>> >>> >> >> !DSPAM:58dabffd17168279290674! >> >> > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
J.Scott, With all respect, The notice process was requested by trademark holders in order to establish actual notice. Constructive notice was not then accepted by UDRP panels. Sent from my iPad
On 28 Mar 2017, at 22:49, J. Scott Evans <jsevans@adobe.com> wrote:
Paul:
Always taking the most negative view. The notice serves to warn a party that there could be an issue so that purchaser can make an informed decision before proceeding.
J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
On 3/28/17, 1:14 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote:
Marie,
Sorry but I don't understand your questions.
The notice is intended to remove the ignorance defense of the registrant. It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue. In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something .
One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice).
Sent from my iPad
On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo@aim.be> wrote:
And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them? M
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Unfortunately, "searching a TM registry" won't get the job done, because--as we've discussed before in other contexts--TMCH registrations are different. They provide claims no matter what the goods or services are. No matter what I want to use "the" or "color" etc. for, they're in the TMCH. That is different from any trademark registry (even most of the previous attempts to create "fame" registries required goods/services listings). Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: Thanks Rebecca. If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. Marie
Sent from my iPhone, sorry for typos
On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
I think the value of transparency has been articulated here several times, whether or not you agree: legitimate market entrants--who, not for nothing, are also likely to be trademark owners--may want to know what they can do. People concerned with the integrity of the register want to know whether (as current data seem to indicate) many of the existing registrants and many existing claims notices are asserting control over domain names whose value is distinct from trademark value attributable to the registrant. Those are the usual values of transparency: knowing what's going on so one can order one's own behavior accordingly, and/or advocate for change where change is desirable.
On the other side, I find persuasive the argument that cybersquatters generally don't need to consult any records to figure out what domains they want and thus I find it hard to identify the harm to be avoided. We are talking here about the marginal impact of transparency in the TMCH added to the public nature of registration (searchable online in many large nations) and the public nature of trademark fame (e.g., Twentieth Century Fox, to take an example that's been discussed). For me, transparency in the TMCH would provide a lot of TMCH-relevant information but has only a marginal effect on information about trademark values generally, arguing in favor of transparency. Rebecca Tushnet Georgetown Law 703 593 6759
On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer?
No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No?
Marie
Sent from my iPhone, sorry for typos
> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@law-democracy.org> wrote: > > Hi Greg, > > If I had a perfect solution to prevent cybersquatting in my pocket I > probably would have led with it :) > > That said, my aim in drafting that was to try and help frame the > discussion, rather than to try and close it. Look, my expertise is > more on the transparency side than on the trademark side. But on the > transparency side, we deal with potential harms all the time - be they > for information involving national security, personal privacy - or > legitimate commercial interests like trademark protection. And > generally, we seek to find an avenue forward which provides adequate > protection for these interests, while respecting the overarching > interest in openness. This calculus shouldn't mean that openness is > abandoned whenever a potential for harm is encountered. Indeed, if > that were the case almost no information would end up being put out > there. Rather, it means assessing the specific harms that would flow > directly from the specific disclosures, weighing them against the > public interest in disclosure, and seeking ways to work around those > harms which also provide for maximum openness. > > So, while I don't have a readymade solution to present, I do think we > need to work together to find one. Reverting to secrecy is just not > consistent with ICANN's broader mission, given that the entire model > is based on public oversight and accountability. > > Looking forward to engaging on this further. > > Michael > > P.S. I'm not sure why it's at all relevant who actually drafted the > text of the EFF letter? As someone who's been involved in many similar > efforts, they can be done fully collaboratively, or with one or two of > the signatories taking the lead. Either way though, all of the names > attached to it have approved and endorsed it. These are very senior > and respected experts - they don't just throw their names on any > document that's sent their way. If they signed the letter it means > they support it - what does it matter who held the pen? > > > >> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: >> Michael, >> >> Do you have any solutions for the issues and concerns that have been >> mitigated by having the database be closed? >> >> Thanks! >> >> Greg >> >> Greg Shatan >> C: 917-816-6428 >> S: gsshatan >> Phone-to-Skype: 646-845-9428 >> gregshatanipc@gmail.com >> >> >> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >> <michael@law-democracy.org> wrote: >>> >>> Hi all, >>> >>> Just building on the discussion around transparency, after hearing the >>> conversation at ICANN 58 I drafted my own short note setting out my >>> thoughts on the issue, which I'm attaching here. >>> >>> I want to be mindful of the conversation on inputs which is ongoing >>> now - so hopefully it isn't out of place or inappropriate to submit my >>> thoughts via this method. >>> >>> I very much look forward to further discussions on this issue. >>> >>> Best wishes, >>> >>> Michael Karanicolas >>> >>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman@comlaude.com> >>> wrote: >>>> Thanks Mary. >>>> >>>> >>>> >>>> Co-Chairs, >>>> >>>> >>>> >>>> Can I assume that with respect to the EFF letter, the only items we >>>> would be >>>> discussing from that letter at this point are their comments with >>>> respect to >>>> design marks and the transparency of the TMCH database? >>>> >>>> I am not saying the other comments are not important, but with respect >>>> to >>>> this Working Group at this time, we are not yet addressing those other >>>> issues. >>>> >>>> >>>> >>>> I would strongly urge that we not engage yet in the other discussion >>>> around >>>> the other comments at this point (namely, trademark rights in general), >>>> as I >>>> think that could lead us down a large rabbit hole and considerably slow >>>> down >>>> out work. >>>> >>>> >>>> Thanks. >>>> >>>> >>>> >>>> Jeffrey J. Neuman >>>> >>>> Senior Vice President |Valideus USA | Com Laude USA >>>> >>>> 1751 Pinnacle Drive, Suite 600 >>>> >>>> Mclean, VA 22102, United States >>>> >>>> E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com >>>> >>>> T: +1.703.635.7514 >>>> >>>> M: +1.202.549.5079 >>>> >>>> @Jintlaw >>>> >>>> >>>> >>>> >>>> >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>> On Behalf Of Mary Wong >>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>> To: gnso-rpm-wg@icann.org >>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>>> and >>>> information on Deloitte Ancillary Services >>>> >>>> >>>> >>>> Dear all, >>>> >>>> >>>> >>>> During the ICANN58 Working Group sessions in Copenhagen, the following >>>> two >>>> matters came up for which staff is now following up with the requested >>>> document (for #1) and information (for #2). >>>> >>>> >>>> >>>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>>> practitioners to our Working Group co-chairs expressing concerns with >>>> certain aspects of the TMCH: >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org.... >>>> >>>> >>>> >>>> Item #2: Question regarding the Ancillary Services that Deloitte is >>>> permitted to provide under its Validation Agreement with ICANN, subject >>>> to >>>> ICANN’s authorization. >>>> >>>> >>>> >>>> Currently, two Ancillary Services have been approved by ICANN: >>>> >>>> 1. Extended Claims Services >>>> >>>> The extended claims services provide the Trademark Holder or Trademark >>>> Agent, as applicable, with an electronic notification when a domain name >>>> registered in an Eligible TLD matches one or more of such party’s >>>> recorded >>>> labels with the TMCH. The extended claims services does not include a >>>> domain name pre-registration notification (i.e. a notification to the >>>> potential registrant of a domain name that the domain name such >>>> registrant >>>> intends to register matches a label recorded with the Trademark >>>> Clearinghouse). >>>> >>>> >>>> >>>> 2. Audit Report >>>> >>>> Deloitte may offer an audit report service for Trademark Holders and >>>> Trademark Agents with active Trademark Records recorded in the Trademark >>>> Clearinghouse. Such audit reports shall consist primarily of a listing >>>> of >>>> matches between their recorded labels within the Trademark Clearinghouse >>>> and >>>> domain names registered in an Eligible TLD. >>>> >>>> >>>> >>>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on >>>> the >>>> fifth anniversary of ICANN’s entry into a Registry Agreement under the >>>> New >>>> gTLD Program, with consecutive one-year renewals thereafter. Although >>>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint >>>> additional validators once ten Qualified Sunrise Periods have been >>>> completed >>>> under the New gTLD Program. >>>> >>>> >>>> >>>> Thanks and cheers >>>> >>>> Mary >>>> >>>> >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg@icann.org >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>> >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >> >> >> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > > > >
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The truth is that the Notice was originally designed by Neustar in lieu of the Sunrise. However, in an effort to offer a broad array of options, the TMCH data was tied to 2 possible RPMs. The original notice designed by the IRT was simply a notice of prior rights. Concerned that the IRT suggested notice was too simple, the STI (in response to urging from Kathy and like-minded others) was to create the (IMHO) overly complex notice we have now. 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, 2:01 PM, "Paul Keating" <paul@law.es> wrote: J.Scott, With all respect, The notice process was requested by trademark holders in order to establish actual notice. Constructive notice was not then accepted by UDRP panels. Sent from my iPad > On 28 Mar 2017, at 22:49, J. Scott Evans <jsevans@adobe.com> wrote: > > Paul: > > Always taking the most negative view. The notice serves to warn a party that there could be an issue so that purchaser can make an informed decision before proceeding. > > > J. Scott Evans > 408.536.5336 (tel) > 345 Park Avenue, Mail Stop W11-544 > Director, Associate General Counsel > 408.709.6162 (cell) > San Jose, CA, 95110, USA > Adobe. Make It an Experience. > jsevans@adobe.com > www.adobe.com > > > > > On 3/28/17, 1:14 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote: > > Marie, > > Sorry but I don't understand your questions. > > The notice is intended to remove the ignorance defense of the registrant. It operates to preclude a defense that the registration was undertaken without knowledge of the trademark rights at issue. In this way it discourages the registration by a cybersquatter who might otherwise think they were getting away with something . > > One of the WG questions was directed to finding out how effective the notice was (e.g how many registrations occurred notwithstanding the notice). > > > Sent from my iPad > >> On 28 Mar 2017, at 22:00, Marie Pattullo <marie.pattullo@aim.be> wrote: >> >> And what Claims Notice would stop you registering a DN, Rebecca? How many brand holders would take action against something that doesn't affect them? >> M >> >> Sent from my iPhone, sorry for typos >> >>> On 28 Mar 2017, at 21:56, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >>> >>> Unfortunately, "searching a TM registry" won't get the job done, >>> because--as we've discussed before in other contexts--TMCH >>> registrations are different. They provide claims no matter what the >>> goods or services are. No matter what I want to use "the" or "color" >>> etc. for, they're in the TMCH. That is different from any trademark >>> registry (even most of the previous attempts to create "fame" >>> registries required goods/services listings). >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>>> On Tue, Mar 28, 2017 at 3:52 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: >>>> Thanks Rebecca. >>>> If anyone wants to know what TMs exist, search a TM Registry. They're public. Claims Notices in the TMCH context tell you only that a TM owner has recorded that name - not that they are going to take action against you. They're not the same thing. >>>> Marie >>>> >>>> Sent from my iPhone, sorry for typos >>>> >>>>> On 28 Mar 2017, at 21:20, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >>>>> >>>>> I think the value of transparency has been articulated here several >>>>> times, whether or not you agree: legitimate market entrants--who, not >>>>> for nothing, are also likely to be trademark owners--may want to know >>>>> what they can do. People concerned with the integrity of the register >>>>> want to know whether (as current data seem to indicate) many of the >>>>> existing registrants and many existing claims notices are asserting >>>>> control over domain names whose value is distinct from trademark value >>>>> attributable to the registrant. Those are the usual values of >>>>> transparency: knowing what's going on so one can order one's own >>>>> behavior accordingly, and/or advocate for change where change is >>>>> desirable. >>>>> >>>>> On the other side, I find persuasive the argument that cybersquatters >>>>> generally don't need to consult any records to figure out what domains >>>>> they want and thus I find it hard to identify the harm to be avoided. >>>>> We are talking here about the marginal impact of transparency in the >>>>> TMCH added to the public nature of registration (searchable online in >>>>> many large nations) and the public nature of trademark fame (e.g., >>>>> Twentieth Century Fox, to take an example that's been discussed). For >>>>> me, transparency in the TMCH would provide a lot of TMCH-relevant >>>>> information but has only a marginal effect on information about >>>>> trademark values generally, arguing in favor of transparency. >>>>> Rebecca Tushnet >>>>> Georgetown Law >>>>> 703 593 6759 >>>>> >>>>> >>>>>> On Tue, Mar 28, 2017 at 3:07 PM, Marie Pattullo <marie.pattullo@aim.be> wrote: >>>>>> Can we look at what we are trying to achieve maybe? What greater good would an open database give balanced against the harm TM owners would suffer? >>>>>> >>>>>> No one wants to promote bad players for a theory. What is the reality? We all want a clean space. We all want legal commercial growth. And we all want the common good. No? >>>>>> >>>>>> Marie >>>>>> >>>>>> Sent from my iPhone, sorry for typos >>>>>> >>>>>>> On 28 Mar 2017, at 20:38, Michael Karanicolas <michael@law-democracy.org> wrote: >>>>>>> >>>>>>> Hi Greg, >>>>>>> >>>>>>> If I had a perfect solution to prevent cybersquatting in my pocket I >>>>>>> probably would have led with it :) >>>>>>> >>>>>>> That said, my aim in drafting that was to try and help frame the >>>>>>> discussion, rather than to try and close it. Look, my expertise is >>>>>>> more on the transparency side than on the trademark side. But on the >>>>>>> transparency side, we deal with potential harms all the time - be they >>>>>>> for information involving national security, personal privacy - or >>>>>>> legitimate commercial interests like trademark protection. And >>>>>>> generally, we seek to find an avenue forward which provides adequate >>>>>>> protection for these interests, while respecting the overarching >>>>>>> interest in openness. This calculus shouldn't mean that openness is >>>>>>> abandoned whenever a potential for harm is encountered. Indeed, if >>>>>>> that were the case almost no information would end up being put out >>>>>>> there. Rather, it means assessing the specific harms that would flow >>>>>>> directly from the specific disclosures, weighing them against the >>>>>>> public interest in disclosure, and seeking ways to work around those >>>>>>> harms which also provide for maximum openness. >>>>>>> >>>>>>> So, while I don't have a readymade solution to present, I do think we >>>>>>> need to work together to find one. Reverting to secrecy is just not >>>>>>> consistent with ICANN's broader mission, given that the entire model >>>>>>> is based on public oversight and accountability. >>>>>>> >>>>>>> Looking forward to engaging on this further. >>>>>>> >>>>>>> Michael >>>>>>> >>>>>>> P.S. I'm not sure why it's at all relevant who actually drafted the >>>>>>> text of the EFF letter? As someone who's been involved in many similar >>>>>>> efforts, they can be done fully collaboratively, or with one or two of >>>>>>> the signatories taking the lead. Either way though, all of the names >>>>>>> attached to it have approved and endorsed it. These are very senior >>>>>>> and respected experts - they don't just throw their names on any >>>>>>> document that's sent their way. If they signed the letter it means >>>>>>> they support it - what does it matter who held the pen? >>>>>>> >>>>>>> >>>>>>> >>>>>>>> On Tue, Mar 28, 2017 at 2:30 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: >>>>>>>> Michael, >>>>>>>> >>>>>>>> Do you have any solutions for the issues and concerns that have been >>>>>>>> mitigated by having the database be closed? >>>>>>>> >>>>>>>> Thanks! >>>>>>>> >>>>>>>> Greg >>>>>>>> >>>>>>>> Greg Shatan >>>>>>>> C: 917-816-6428 >>>>>>>> S: gsshatan >>>>>>>> Phone-to-Skype: 646-845-9428 >>>>>>>> gregshatanipc@gmail.com >>>>>>>> >>>>>>>> >>>>>>>> On Tue, Mar 28, 2017 at 12:21 PM, Michael Karanicolas >>>>>>>> <michael@law-democracy.org> wrote: >>>>>>>>> >>>>>>>>> Hi all, >>>>>>>>> >>>>>>>>> Just building on the discussion around transparency, after hearing the >>>>>>>>> conversation at ICANN 58 I drafted my own short note setting out my >>>>>>>>> thoughts on the issue, which I'm attaching here. >>>>>>>>> >>>>>>>>> I want to be mindful of the conversation on inputs which is ongoing >>>>>>>>> now - so hopefully it isn't out of place or inappropriate to submit my >>>>>>>>> thoughts via this method. >>>>>>>>> >>>>>>>>> I very much look forward to further discussions on this issue. >>>>>>>>> >>>>>>>>> Best wishes, >>>>>>>>> >>>>>>>>> Michael Karanicolas >>>>>>>>> >>>>>>>>> On Tue, Mar 28, 2017 at 11:54 AM, Jeff Neuman <jeff.neuman@comlaude.com> >>>>>>>>> wrote: >>>>>>>>>> Thanks Mary. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Co-Chairs, >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Can I assume that with respect to the EFF letter, the only items we >>>>>>>>>> would be >>>>>>>>>> discussing from that letter at this point are their comments with >>>>>>>>>> respect to >>>>>>>>>> design marks and the transparency of the TMCH database? >>>>>>>>>> >>>>>>>>>> I am not saying the other comments are not important, but with respect >>>>>>>>>> to >>>>>>>>>> this Working Group at this time, we are not yet addressing those other >>>>>>>>>> issues. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> I would strongly urge that we not engage yet in the other discussion >>>>>>>>>> around >>>>>>>>>> the other comments at this point (namely, trademark rights in general), >>>>>>>>>> as I >>>>>>>>>> think that could lead us down a large rabbit hole and considerably slow >>>>>>>>>> down >>>>>>>>>> out work. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Thanks. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Jeffrey J. Neuman >>>>>>>>>> >>>>>>>>>> Senior Vice President |Valideus USA | Com Laude USA >>>>>>>>>> >>>>>>>>>> 1751 Pinnacle Drive, Suite 600 >>>>>>>>>> >>>>>>>>>> Mclean, VA 22102, United States >>>>>>>>>> >>>>>>>>>> E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com >>>>>>>>>> >>>>>>>>>> T: +1.703.635.7514 >>>>>>>>>> >>>>>>>>>> M: +1.202.549.5079 >>>>>>>>>> >>>>>>>>>> @Jintlaw >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> From: gnso-rpm-wg-bounces@icann.org >>>>>>>>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>>>>>>>> On Behalf Of Mary Wong >>>>>>>>>> Sent: Tuesday, March 28, 2017 6:15 AM >>>>>>>>>> To: gnso-rpm-wg@icann.org >>>>>>>>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars >>>>>>>>>> and >>>>>>>>>> information on Deloitte Ancillary Services >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Dear all, >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> During the ICANN58 Working Group sessions in Copenhagen, the following >>>>>>>>>> two >>>>>>>>>> matters came up for which staff is now following up with the requested >>>>>>>>>> document (for #1) and information (for #2). >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Item #1: Letter of 10 March 2017 from some trademark scholars and >>>>>>>>>> practitioners to our Working Group co-chairs expressing concerns with >>>>>>>>>> certain aspects of the TMCH: >>>>>>>>>> >>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org.... >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Item #2: Question regarding the Ancillary Services that Deloitte is >>>>>>>>>> permitted to provide under its Validation Agreement with ICANN, subject >>>>>>>>>> to >>>>>>>>>> ICANN’s authorization. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Currently, two Ancillary Services have been approved by ICANN: >>>>>>>>>> >>>>>>>>>> 1. Extended Claims Services >>>>>>>>>> >>>>>>>>>> The extended claims services provide the Trademark Holder or Trademark >>>>>>>>>> Agent, as applicable, with an electronic notification when a domain name >>>>>>>>>> registered in an Eligible TLD matches one or more of such party’s >>>>>>>>>> recorded >>>>>>>>>> labels with the TMCH. The extended claims services does not include a >>>>>>>>>> domain name pre-registration notification (i.e. a notification to the >>>>>>>>>> potential registrant of a domain name that the domain name such >>>>>>>>>> registrant >>>>>>>>>> intends to register matches a label recorded with the Trademark >>>>>>>>>> Clearinghouse). >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> 2. Audit Report >>>>>>>>>> >>>>>>>>>> Deloitte may offer an audit report service for Trademark Holders and >>>>>>>>>> Trademark Agents with active Trademark Records recorded in the Trademark >>>>>>>>>> Clearinghouse. Such audit reports shall consist primarily of a listing >>>>>>>>>> of >>>>>>>>>> matches between their recorded labels within the Trademark Clearinghouse >>>>>>>>>> and >>>>>>>>>> domain names registered in an Eligible TLD. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> FYI, Deloitte’s contract with ICANN is for an initial period expiring on >>>>>>>>>> the >>>>>>>>>> fifth anniversary of ICANN’s entry into a Registry Agreement under the >>>>>>>>>> New >>>>>>>>>> gTLD Program, with consecutive one-year renewals thereafter. Although >>>>>>>>>> Deloitte currently serves as the sole TMCH validator, ICANN may appoint >>>>>>>>>> additional validators once ten Qualified Sunrise Periods have been >>>>>>>>>> completed >>>>>>>>>> under the New gTLD Program. >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> Thanks and cheers >>>>>>>>>> >>>>>>>>>> Mary >>>>>>>>>> >>>>>>>>>> >>>>>>>>>> _______________________________________________ >>>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>>> gnso-rpm-wg@icann.org >>>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>>>> >>>>>>>>> _______________________________________________ >>>>>>>>> gnso-rpm-wg mailing list >>>>>>>>> gnso-rpm-wg@icann.org >>>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>>> >>>>>>>> >>>>>>>> >>>>>>>> _______________________________________________ >>>>>>>> gnso-rpm-wg mailing list >>>>>>>> gnso-rpm-wg@icann.org >>>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>> _______________________________________________ >>>>>>> gnso-rpm-wg mailing list >>>>>>> gnso-rpm-wg@icann.org >>>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>>>> >>>>>>> >>>>>>> >>>>>>> >>>>>> >>>>>> _______________________________________________ >>>>>> gnso-rpm-wg mailing list >>>>>> gnso-rpm-wg@icann.org >>>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >>>>> >>>>> >>>>> >>>>> >>>> >>> >>> !DSPAM:58dabffd17168279290674! >>> >>> >> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... >
participants (3)
-
J. Scott Evans -
Marie Pattullo -
Paul Keating