New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri.... Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://community.icann.org/download/attachments/109482780/Martin%20Pablo%20...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list.
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list.
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list.
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:*GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
------------------------------------------------------------------------
*From:*GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
_Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)_:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from theRPM PDP Working Groupcall held on 16 October 2019 at 17:00 UTC. Staff will postthese to the wiki space. */Please note that these /**/arehigh-level notes and are not meant as a substitute for the recording, chat room, or transcript/*/./ The recording, Zoom chat, transcriptand attendance records are posted on the wikiat: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
_Q7 Design Marks_: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
_Q8 GIs: ACTION_: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
_Q12_: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
_Q15_: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
_Q2_: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>.
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*//*
*/a. Close Discussion:/*TMCH Category 6: Balance: Charter Question 16: Close discussion.
*/b. Discussion:/*TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>)
*//*
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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+100 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Kathy Kleiman <kathy@kathykleiman.com> Date: Wednesday, October 23, 2019 at 5:24 PM To: <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri.... Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list. _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=8FH-5Lm9_iyYjpspSNzAt2dOVuvjvZ2kyCIQh2x7n9Y&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=j15WQS8Bnm8KeBCSUJPlw5Hdbmvws-gnr_af0NTo1s4&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=nykW72AfYIBMd5943mKpT4hvlgo8SdVQo0ChyyJJz_w&e=>). 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Thank you, John. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of John McElwaine Sent: Wednesday, October 23, 2019 7:01 PM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list. _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=8FH-5Lm9_iyYjpspSNzAt2dOVuvjvZ2kyCIQh2x7n9Y&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=j15WQS8Bnm8KeBCSUJPlw5Hdbmvws-gnr_af0NTo1s4&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=nykW72AfYIBMd5943mKpT4hvlgo8SdVQo0ChyyJJz_w&e=>). 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These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list. _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=8FH-5Lm9_iyYjpspSNzAt2dOVuvjvZ2kyCIQh2x7n9Y&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=j15WQS8Bnm8KeBCSUJPlw5Hdbmvws-gnr_af0NTo1s4&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=nykW72AfYIBMd5943mKpT4hvlgo8SdVQo0ChyyJJz_w&e=>). 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Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list. _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=8FH-5Lm9_iyYjpspSNzAt2dOVuvjvZ2kyCIQh2x7n9Y&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=j15WQS8Bnm8KeBCSUJPlw5Hdbmvws-gnr_af0NTo1s4&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=nykW72AfYIBMd5943mKpT4hvlgo8SdVQo0ChyyJJz_w&e=>). 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Good. So we all agree that the rationale John just posted for minimizing access to TMCH data is bunk. On Wed, Oct 23, 2019 at 1:48 PM Marie Pattullo <marie.pattullo@aim.be> wrote:
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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No Michael, we don't. -----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Wednesday, October 23, 2019 8:14 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Good. So we all agree that the rationale John just posted for minimizing access to TMCH data is bunk. On Wed, Oct 23, 2019 at 1:48 PM Marie Pattullo <marie.pattullo@aim.be> wrote:
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Michael, to be clear, I did not post the below as a rationale. I posted it to shed some light as to how the "non-searchable" nature of the TMCH arose. There have been assertions that TMCH was not intended to be confidential. You can argue the rationale set forth, which I respect. John -----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Wednesday, October 23, 2019 2:14 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Good. So we all agree that the rationale John just posted for minimizing access to TMCH data is bunk. On Wed, Oct 23, 2019 at 1:48 PM Marie Pattullo <marie.pattullo@aim.be> wrote:
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list. _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=8FH-5Lm9_iyYjpspSNzAt2dOVuvjvZ2kyCIQh2x7n9Y&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=j15WQS8Bnm8KeBCSUJPlw5Hdbmvws-gnr_af0NTo1s4&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=nykW72AfYIBMd5943mKpT4hvlgo8SdVQo0ChyyJJz_w&e=>). 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I appreciate the suggestion, Rebecca. I have read them. And I disagree with your summation. From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Wednesday, October 23, 2019 8:19 PM To: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list. _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=8FH-5Lm9_iyYjpspSNzAt2dOVuvjvZ2kyCIQh2x7n9Y&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=j15WQS8Bnm8KeBCSUJPlw5Hdbmvws-gnr_af0NTo1s4&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=nykW72AfYIBMd5943mKpT4hvlgo8SdVQo0ChyyJJz_w&e=>). 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Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning. I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up. So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening? Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 >
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
_______________________________________________
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Michael, When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"? Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining. So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note. Best regards Claudio On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote: Michael, When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"? Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining. So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note. Best regards Claudio On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote: And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up. So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening? Sent from my iPhone On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning. I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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Rebecca, I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view? Best, Claudio On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). >From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com> wrote: Rebecca, I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view? Best, Claudio On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Michael, When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"? Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining. So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note. Best regards Claudio On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote: And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up. So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening? Sent from my iPhone On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning. I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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Rebecca, Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH. Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this? Best, Claudio On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view?
Best, Claudio
On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
_______________________________________________
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I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require more work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice. Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 6:39 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Mike <mkaranicolas@gmail.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH. Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this? Best, Claudio On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Rebecca, I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view? Best, Claudio On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Michael, When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"? Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining. So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note. Best regards Claudio On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote: And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up. So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening? Sent from my iPhone On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning. I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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The abuse scenario is avoided by rules, and enforcement of rules, that prevent data mining of the TMCH. This was something that was identified as a potential problem long ago, as pointed out by John, by the team that developed the implementation guidelines. Yet, here in this WG, the data mining is being used as argument for transparency. I'm sorry, I just don't find that a legitimate argument. I've already stated there are other legitimate arguments for transparency, just not this one. So I guess we just have to agree to disagree on this point. As always, I value and appreciate your and Michael's engagement and debate. Best regards, Claudio On Wed, Oct 23, 2019 at 6:47 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require *more *work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice.
Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 6:39 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Mike <mkaranicolas@gmail.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca,
Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH.
Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this?
Best, Claudio
On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view?
Best, Claudio
On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
_______________________________________________
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I’d be interested in finding out whether TM owners would hesitate use the TMCH if the info were made publicly searchable. The TMCH was created as a way to balance users ability to freely register domains against the burden & expense of TM owners to protect their IP rights. If TM owners believe the TMCH is more liability than protection – whether that’s true or not – then the mechanism becomes worthless. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Wednesday, October 23, 2019 5:55 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 The abuse scenario is avoided by rules, and enforcement of rules, that prevent data mining of the TMCH. This was something that was identified as a potential problem long ago, as pointed out by John, by the team that developed the implementation guidelines. Yet, here in this WG, the data mining is being used as argument for transparency. I'm sorry, I just don't find that a legitimate argument. I've already stated there are other legitimate arguments for transparency, just not this one. So I guess we just have to agree to disagree on this point. As always, I value and appreciate your and Michael's engagement and debate. Best regards, Claudio On Wed, Oct 23, 2019 at 6:47 PM Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > wrote: I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require more work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice. Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: claudio di gangi <ipcdigangi@gmail.com <mailto:ipcdigangi@gmail.com> > Sent: Wednesday, October 23, 2019 6:39 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > Cc: Mike <mkaranicolas@gmail.com <mailto:mkaranicolas@gmail.com> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH. Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this? Best, Claudio On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > wrote: I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com <mailto:ipcdigangi@gmail.com> > wrote: Rebecca, I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view? Best, Claudio On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > wrote: Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com <mailto:ipcdigangi@gmail.com> > wrote: Michael, When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"? Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining. So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note. Best regards Claudio On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com <mailto:mkaranicolas@gmail.com> > wrote: And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up. So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening? Sent from my iPhone On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > wrote: As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning. I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: claudio di gangi <ipcdigangi@gmail.com <mailto:ipcdigangi@gmail.com> > Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > Cc: Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be> >; John McElwaine <john.mcelwaine@nelsonmullins.com <mailto:john.mcelwaine@nelsonmullins.com> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> > wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be> > Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> >; John McElwaine <john.mcelwaine@nelsonmullins.com <mailto:john.mcelwaine@nelsonmullins.com> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com <mailto:john.mcelwaine@nelsonmullins.com> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com <mailto:john.mcelwaine@nelsonmullins.com> > Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). >From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <mailto:gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <mailto:julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org> > Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org> > Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> " <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...> . Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> . Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> ) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> : -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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Cyntia, One practical way of getting this information may be to create a voluntary Opt-in option for brand owners, and then look at the level of adoption over time, e.g. how many brand owners choose to opt-in or keep it private. Some may prefer to have the information public to act as a deterrent of sorts. And for brand owners who want to have that option, I think it should be available to them. I think the same should go for those who want to keep it private. I simply hesitate / have concerns with the notion of flipping a switch and turning IP sensitive data - aggregated in one place and for one purpose, which was submitted under terms of confidentiality, open into the public domain. Maybe the Opt-in option is something we can further explore/reach consensus upon for placing in the Initial Report for public comment. Best regards, Claudio On Wed, Oct 23, 2019 at 7:32 PM <cking@modernip.com> wrote:
I’d be interested in finding out whether TM owners would hesitate use the TMCH if the info were made publicly searchable.
The TMCH was created as a way to balance users ability to freely register domains against the burden & expense of TM owners to protect their IP rights.
If TM owners believe the TMCH is more liability than protection – whether that’s true or not – then the mechanism becomes worthless.
*Cyntia King*
O: +1 816.633.7647
C: +1 818.209.6088
[image: Email Logo5]
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *claudio di gangi *Sent:* Wednesday, October 23, 2019 5:55 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
The abuse scenario is avoided by rules, and enforcement of rules, that prevent data mining of the TMCH. This was something that was identified as a potential problem long ago, as pointed out by John, by the team that developed the implementation guidelines.
Yet, here in this WG, the data mining is being used as argument for transparency. I'm sorry, I just don't find that a legitimate argument. I've already stated there are other legitimate arguments for transparency, just not this one.
So I guess we just have to agree to disagree on this point. As always, I value and appreciate your and Michael's engagement and debate.
Best regards,
Claudio
On Wed, Oct 23, 2019 at 6:47 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require *more *work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice.
Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 6:39 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Mike <mkaranicolas@gmail.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca,
Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH.
Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this?
Best,
Claudio
On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view?
Best,
Claudio
On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards
Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards,
Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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All I have ever seen is anecdotal claims. In my view this is not sufficient. Sent from my iPhone
On 24 Oct 2019, at 01:32, cking@modernip.com wrote:
I’d be interested in finding out whether TM owners would hesitate use the TMCH if the info were made publicly searchable.
The TMCH was created as a way to balance users ability to freely register domains against the burden & expense of TM owners to protect their IP rights.
If TM owners believe the TMCH is more liability than protection – whether that’s true or not – then the mechanism becomes worthless.
Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg>
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of claudio di gangi Sent: Wednesday, October 23, 2019 5:55 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
The abuse scenario is avoided by rules, and enforcement of rules, that prevent data mining of the TMCH. This was something that was identified as a potential problem long ago, as pointed out by John, by the team that developed the implementation guidelines.
Yet, here in this WG, the data mining is being used as argument for transparency. I'm sorry, I just don't find that a legitimate argument. I've already stated there are other legitimate arguments for transparency, just not this one.
So I guess we just have to agree to disagree on this point. As always, I value and appreciate your and Michael's engagement and debate.
Best regards, Claudio
On Wed, Oct 23, 2019 at 6:47 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require more work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice.
Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 6:39 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Mike <mkaranicolas@gmail.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca,
Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH.
Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this?
Best, Claudio
On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca, I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view?
Best, Claudio
On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote: And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 >
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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My company would not hesitate to use the TMCH if the registry were open. We might vary our current strategy to avoid any possible revelation of strategies, etc. In light of Claudio’s “Opt Open” proposal, I would propose a test period in which Opt Open is applied and after a set period there is a review of the practice by participants to see if there are negative consequences or considerations. Michael R. [cid:image001.png@01D49D39.23E390C0] Michael R. Graham Senior Counsel and Global Director, Intellectual Property, Expedia Group T +1 425 679 4330 | M +1 425 241 1459 333 108th Ave. NE | Bellevue | WA 98004 Email: migraham@expediagroup.com<mailto:migraham@expediagroup.com> [cid:image002.png@01D49D39.23E390C0] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of cking@modernip.com Sent: Wednesday, October 23, 2019 4:32 PM To: 'claudio di gangi' <ipcdigangi@gmail.com>; 'Tushnet, Rebecca' <rtushnet@law.harvard.edu> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I’d be interested in finding out whether TM owners would hesitate use the TMCH if the info were made publicly searchable. The TMCH was created as a way to balance users ability to freely register domains against the burden & expense of TM owners to protect their IP rights. If TM owners believe the TMCH is more liability than protection – whether that’s true or not – then the mechanism becomes worthless. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of claudio di gangi Sent: Wednesday, October 23, 2019 5:55 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 The abuse scenario is avoided by rules, and enforcement of rules, that prevent data mining of the TMCH. This was something that was identified as a potential problem long ago, as pointed out by John, by the team that developed the implementation guidelines. Yet, here in this WG, the data mining is being used as argument for transparency. I'm sorry, I just don't find that a legitimate argument. I've already stated there are other legitimate arguments for transparency, just not this one. So I guess we just have to agree to disagree on this point. As always, I value and appreciate your and Michael's engagement and debate. Best regards, Claudio On Wed, Oct 23, 2019 at 6:47 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require more work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice. Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 6:39 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Mike <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH. Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this? Best, Claudio On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Rebecca, I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view? Best, Claudio On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Michael, When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"? Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining. So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note. Best regards Claudio On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote: And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up. So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening? Sent from my iPhone On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning. I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, all, As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse. No query through WIPO or national TMO databases can reveal this information. Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims. An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world. They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up. Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc. Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner. One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice. For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios. Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose. Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use. In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer... Best regards, Claudio On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.) Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH. Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated: If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”: Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks. In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns. The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model: Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 ◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves. Kathy (with my hat as member of the STI) On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline: Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty? The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts." More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear WG members, Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call. Kind regards, Mary, Ariel, and Julie Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_2019-2D10-2D16-2BReview-2Bof-2Ball-2BRights-2BProtection-2BMechanisms-2B-2528RPMs-2529-2Bin-2Ball-2BgTLDs-2BPDP-2BWG&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=Lebe-G6v-muk6fUa-l7fXJ95Vfc50wtSu3jY53kDW2k&e=>. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Questions: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Status of Questions Q7, Q8, Q12, and Q15: Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=6PdODCxx0pFS_O8Ct151GXBvBolgy6QESpwRhpAInzE&s=AaHHM_PFma3YOKVp3Fa79Iw_DMDLVZUNFVKWJgOPee8&e=> ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion. b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>) Q1: Close discussion. Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pages_viewpage.action-3FpageId-3D61606864&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=GU7oC_LaBo7KvH3LCTYNBb2Z62O2_gB7PePpFA2YNvE&s=9vB4Yvqqu-gSbuPEj2gY7ATdZdok63vjBBtw77AvqOA&e=> . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications. 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...>: -- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. 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Hi Michael, The program is elevated wether the root foundation of WG group has something Todo with TMCH accordingly. I hope someone would share their thoughts in finding the right creativity in this community. Anything to pursue must field complaints againgst WG wether part of the working groups or not. Like I said no one should believe academic awards to pursue accordingly. Trends are not by participants but by participle. Any action can cause brutal allegation against WG or not elaborative or inconsistent temptation against off guard residue like no other. I hope this would clearly state the decipleship I mention a while ago toward s this working WG group of TMCH. More ikely to come another day trends of abductful action is trends tourist spot in the highway Clementine residue of brutal forsaken truth. Thanks Ben On Fri, Oct 25, 2019, 12:22 AM Michael Graham (ELCA) via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:
My company would not hesitate to use the TMCH if the registry were open. We might vary our current strategy to avoid any possible revelation of strategies, etc.
In light of Claudio’s “Opt Open” proposal, I would propose a test period in which Opt Open is applied and after a set period there is a review of the practice by participants to see if there are negative consequences or considerations.
Michael R.
[image: cid:image001.png@01D49D39.23E390C0]
*Michael R. Graham*
Senior Counsel and Global Director,
Intellectual Property, *Expedia Group*
T +1 425 679 4330 | M +1 425 241 1459
333 108th Ave. NE | Bellevue | WA 98004
Email: *migraham@expediagroup.com <migraham@expediagroup.com>*
[image: cid:image002.png@01D49D39.23E390C0]
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of * cking@modernip.com *Sent:* Wednesday, October 23, 2019 4:32 PM *To:* 'claudio di gangi' <ipcdigangi@gmail.com>; 'Tushnet, Rebecca' < rtushnet@law.harvard.edu> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I’d be interested in finding out whether TM owners would hesitate use the TMCH if the info were made publicly searchable.
The TMCH was created as a way to balance users ability to freely register domains against the burden & expense of TM owners to protect their IP rights.
If TM owners believe the TMCH is more liability than protection – whether that’s true or not – then the mechanism becomes worthless.
*Cyntia King*
O: +1 816.633.7647
C: +1 818.209.6088
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*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *claudio di gangi *Sent:* Wednesday, October 23, 2019 5:55 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
The abuse scenario is avoided by rules, and enforcement of rules, that prevent data mining of the TMCH. This was something that was identified as a potential problem long ago, as pointed out by John, by the team that developed the implementation guidelines.
Yet, here in this WG, the data mining is being used as argument for transparency. I'm sorry, I just don't find that a legitimate argument. I've already stated there are other legitimate arguments for transparency, just not this one.
So I guess we just have to agree to disagree on this point. As always, I value and appreciate your and Michael's engagement and debate.
Best regards,
Claudio
On Wed, Oct 23, 2019 at 6:47 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I think you're making our point. It's pretty easy to get a list of an entity's registered marks in the US and most other jurisdictions, not a matter of hours of work. It would require *more *work to run them against the TMCH to figure out the lack of overlap than to just go ahead and try everything, thus discovering which get a Notice.
Our argument is that transparency has a number of benefits, including to legitimate commercial entities, and that your abuse scenario is not avoided by lack of transparency. So, while you can assume I'm against phishing, my opinion about your hypothetical does not change as a result.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 6:39 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Mike <mkaranicolas@gmail.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca,
Michael's example was someone was going to spend hours querying the 1000 trademarks (which presumably they spent tons of time and energy researching to identify in the first instance), that a company owned, i.e. by seeking to register them as domain names in new gTLDs, in order to determine which 50 TMs are registered in the TMCH, and which 950 are not in the TMCH.
Do you see this is good faith activity or TMCH data mining? If you see this as good faith activity, what possible good faith purpose would someone have for doing this?
Best,
Claudio
On Wed, Oct 23, 2019 at 6:24 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
I was objecting to the idea that a domain name registrant or would be registrant has any duties arising out of a relationship with the TMCH. You characterized them as accessing confidential information by attempting to register; I can’t see how that is true. And I think there are multiple acceptable reasons to see what’s available for registration. The bad actor isn’t bad because its attempt is checked against the TMCH, but because of its intended use in your hypothetical.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 6:10 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
I didn't just say "receive a notice" - I was referring to misusing the system to mine the TMCH data. Are you suggesting this practice is OK from your point of view?
Best,
Claudio
On Wed, Oct 23, 2019 at 5:44 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Receiving a Notice is not accessing confidential data. No one is under any confidentiality obligations with respect to Notices.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
Sent from my phone. Apologies for terseness/typos.
On Oct 23, 2019, at 5:38 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards
Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards,
Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
_______________________________________________
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Yes - I saw you pivot to this argument previously... but it doesn't change the fact that this information is already available. So if the risks in your hypothetical are realistic, and the information to carry them out is already available, then surely this scenario would have manifested by now? So, I ask again, do you have any examples of this actually happening? On Wed, Oct 23, 2019 at 5:38 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on the substantive of the issue/concern that I articulated in my last note.
Best regards Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Michael, I may have missed your prior reply to my "pivot" - or did you not respond? To answer your question/statement here: no, the information isn't already available under legitimate means, only potentially through abuse of the system. Since bank robberies take place, should we tell the guards to go home and rest up and open the vaults - or should we take action to stop the crime? Finally, what are you asking me to provide examples of - cybersquatting, or something more specific? Best, Claudio On Wed, Oct 23, 2019 at 5:57 PM Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Yes - I saw you pivot to this argument previously... but it doesn't change the fact that this information is already available.
So if the risks in your hypothetical are realistic, and the information to carry them out is already available, then surely this scenario would have manifested by now?
So, I ask again, do you have any examples of this actually happening?
On Wed, Oct 23, 2019 at 5:38 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
When you say "By spending a few hours querying for each of the 1000
trademarks and seeing when a claims notification pops up." - do you mean "by misusing the system in order to gain access to confidential data that I am not otherwise entitled to have access to"?
Your response actually exposes how someone can try to game the system
because 1) they are getting away with breaking the rules; or 2) sufficient rules are not already in place or enforced to prevent illicit data mining.
So, unfortunately, your response doesn't move the needle in one iota on
the substantive of the issue/concern that I articulated in my last note.
Best regards Claudio
On Wed, Oct 23, 2019 at 5:22 PM Mike <mkaranicolas@gmail.com> wrote:
And, as we have also been over, the bad actor in Claudio’s scenario
could already do that by spending a few hours querying for each of the 1000 trademarks and seeing when a claims notification pops up.
So, seeing as this is already possible, there’s no need to dwell in the
realm of the hypothetical. Claudio - do you have any examples of this actually happening?
Sent from my iPhone
On Oct 23, 2019, at 4:55 PM, Tushnet, Rebecca <rtushnet@law.harvard.edu>
wrote:
As we've been over, the theoretical possibility you hypothesize
here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a
Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <
john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org>
Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... .
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Rebecca, Please don't get thrown off because I used the word "hypo" in my note - that wasn't meant to imply this is some dream scenario. In terms of the DNS, we know the domain registration process is exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality. So opening up the propriety TMCH, where sensitive IP data is aggregated in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit. As I noted, I would be willing to suggest/propose an Opt-in option for TM owners who want to have their TMCH information publicly available. There are other means and approaches to mitigate "Sunrise gaming" (which I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary). So I recommend we explore them together in further detail to help address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG. Best regards, Claudio On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* claudio di gangi <ipcdigangi@gmail.com> *Sent:* Wednesday, October 23, 2019 4:37 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu> *Cc:* Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Marie Pattullo <marie.pattullo@aim.be> *Sent:* Wednesday, October 23, 2019 1:47 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 7:31 PM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> *Sent:* Wednesday, October 23, 2019 1:00 PM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If *the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies*. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, October 23, 2019 11:22 AM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
*◄External Email►* - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Tushnet, Rebecca *Sent:* Wednesday, October 23, 2019 3:15 PM *To:* Julie Hedlund <julie.hedlund@icann.org> <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Sent:* Wednesday, October 23, 2019 9:01 AM *To:* gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> *Subject:* [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
*Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October)*:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Wednesday, October 16, 2019 at 3:27 PM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. *Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript**.* The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>.
Best Regards,
Julie
Julie Hedlund, Policy Director
==
*NOTES & ACTION ITEMS*
*Actions:*
*Open and Deferred TMCH Questions:*
*Q7 Design Marks*: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
*Q8 GIs: ACTION*: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
*Q12*: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
*Q15*: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
*Q2*: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
*Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: *ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> .
*Notes:*
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...>
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
*a. Close Discussion:* TMCH Category 6: Balance: Charter Question 16: Close discussion.
*b. Discussion:* TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...> )
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_pag...> . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle] <https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq6...> :
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
_______________________________________________
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That's a relatively long-winded way of saying that, no - you cannot come up with an instance of the available TMCH data being used to facilitate abusive registrations. On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
Please don't get thrown off because I used the word "hypo" in my note - that wasn't meant to imply this is some dream scenario.
In terms of the DNS, we know the domain registration process is exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality.
So opening up the propriety TMCH, where sensitive IP data is aggregated in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit.
As I noted, I would be willing to suggest/propose an Opt-in option for TM owners who want to have their TMCH information publicly available.
There are other means and approaches to mitigate "Sunrise gaming" (which I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary).
So I recommend we explore them together in further detail to help address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG.
Best regards, Claudio
On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Michael, Are you asking me to find an abusive domain name registration and make a determination on whether that abusive registration resulted from mining the TMCH data? In order to make that complex assessment, we need at a minimum a list of which records were mined from the TMCH and compare that list to domain registration abuse patterns. If you want ICANN to conduct a study on this issue, we can consider a WG recommendation to perform such a study. I would support that research; would you also support it? Best, Claudio On Wed, Oct 23, 2019 at 6:19 PM Michael Karanicolas <mkaranicolas@gmail.com> wrote:
That's a relatively long-winded way of saying that, no - you cannot come up with an instance of the available TMCH data being used to facilitate abusive registrations.
On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
Please don't get thrown off because I used the word "hypo" in my note -
that wasn't meant to imply this is some dream scenario.
In terms of the DNS, we know the domain registration process is
exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality.
So opening up the propriety TMCH, where sensitive IP data is aggregated
in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit.
As I noted, I would be willing to suggest/propose an Opt-in option for
TM owners who want to have their TMCH information publicly available.
There are other means and approaches to mitigate "Sunrise gaming" (which
I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary).
So I recommend we explore them together in further detail to help
address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG.
Best regards, Claudio
On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <
rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize
here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a
Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <
john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org>
Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri... .
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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The question is whether the TMCH data, which is already essentially freely available for those who want to see the totality of an individual company's strategy, has ever been used to try and game the system, or otherwise to support corporate surveillance. We don't need an ICANN study to determine this - there are dozens of lawyers who specialize in IP enforcement in this working group. If it were going on, your colleagues on the enforcement side would know about it and have examples to point to. The silence on this point tells us all we need to know about the commercial sensitivity of this information. I would not support an opt-in model, as it would by definition not provide an accurate picture of how the TMCH is operating. Honestly - I think this dialogue has run its course. I look forward to hearing what the broader community thinks of the idea. Best, Michael On Wed, Oct 23, 2019 at 6:47 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
Are you asking me to find an abusive domain name registration and make a determination on whether that abusive registration resulted from mining the TMCH data?
In order to make that complex assessment, we need at a minimum a list of which records were mined from the TMCH and compare that list to domain registration abuse patterns.
If you want ICANN to conduct a study on this issue, we can consider a WG recommendation to perform such a study. I would support that research; would you also support it?
Best, Claudio
On Wed, Oct 23, 2019 at 6:19 PM Michael Karanicolas <mkaranicolas@gmail.com> wrote:
That's a relatively long-winded way of saying that, no - you cannot come up with an instance of the available TMCH data being used to facilitate abusive registrations.
On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
Please don't get thrown off because I used the word "hypo" in my note - that wasn't meant to imply this is some dream scenario.
In terms of the DNS, we know the domain registration process is exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality.
So opening up the propriety TMCH, where sensitive IP data is aggregated in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit.
As I noted, I would be willing to suggest/propose an Opt-in option for TM owners who want to have their TMCH information publicly available.
There are other means and approaches to mitigate "Sunrise gaming" (which I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary).
So I recommend we explore them together in further detail to help address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG.
Best regards, Claudio
On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). >From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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What I would like to more fully understand, as I probably missed a number of the nonstop back and forth is why there has to be an open registry, what harm you are trying to prevent, and what evidence that this harm actually exists and is not theoretical. While you accuse Claudio for the lack examples, I really have not see any concrete examples the other way. Telling me that there are some things that got into the TMCH that shouldn't have does not mean there is an actual issue, or systematic problem that requires a full opening of the database. Given, as I believe many others will agree, that we have heard every argument multiple times on this issue (3 years and now yet again), I suggest that you, Claudio, Rebecca and anyone else, put together a simple proposal as to whether or not the TMCH database should be open and set forth a paragraph on each position explaining why it should be open or why it should remain confidential / or be an opt in That proposal I am sure will have consensus and can move on to the public comment period -- and we can all stop getting dozens of emails a day on the same issue. I hereby ask that the co-chairs step in here and bring this repeated debate to a close, so we can move on to other issues. From: mkaranicolas@gmail.com Sent: October 24, 2019 6:23 AM To: ipcdigangi@gmail.com Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 The question is whether the TMCH data, which is already essentially freely available for those who want to see the totality of an individual company's strategy, has ever been used to try and game the system, or otherwise to support corporate surveillance. We don't need an ICANN study to determine this - there are dozens of lawyers who specialize in IP enforcement in this working group. If it were going on, your colleagues on the enforcement side would know about it and have examples to point to. The silence on this point tells us all we need to know about the commercial sensitivity of this information. I would not support an opt-in model, as it would by definition not provide an accurate picture of how the TMCH is operating. Honestly - I think this dialogue has run its course. I look forward to hearing what the broader community thinks of the idea. Best, Michael On Wed, Oct 23, 2019 at 6:47 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Michael,
Are you asking me to find an abusive domain name registration and make a determination on whether that abusive registration resulted from mining the TMCH data?
In order to make that complex assessment, we need at a minimum a list of which records were mined from the TMCH and compare that list to domain registration abuse patterns.
If you want ICANN to conduct a study on this issue, we can consider a WG recommendation to perform such a study. I would support that research; would you also support it?
Best, Claudio
On Wed, Oct 23, 2019 at 6:19 PM Michael Karanicolas <mkaranicolas@gmail.com> wrote:
That's a relatively long-winded way of saying that, no - you cannot come up with an instance of the available TMCH data being used to facilitate abusive registrations.
On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com> wrote:
Rebecca,
Please don't get thrown off because I used the word "hypo" in my note - that wasn't meant to imply this is some dream scenario.
In terms of the DNS, we know the domain registration process is exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality.
So opening up the propriety TMCH, where sensitive IP data is aggregated in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit.
As I noted, I would be willing to suggest/propose an Opt-in option for TM owners who want to have their TMCH information publicly available.
There are other means and approaches to mitigate "Sunrise gaming" (which I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary).
So I recommend we explore them together in further detail to help address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG.
Best regards, Claudio
On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
?External Email? - From: gnso-rpm-wg-bounces@icann.org
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Dear Georges, all, I apologize for not getting to this sooner, but picking up on Georges’ request in his last sentence, given inter alia the emails over the last 24 hours (which indeed reflect many earlier thoughtful discussions) it is clear that WG members have well staked-out positions on different sides of an issue here. One of the more difficult tasks of chairing is to know when to let discussion continue in the hope of a compromise or consensus, and when to identify a divergence and lack of possibility of compromise or consensus. With respect to the idea of a proposal, this feels like it veers towards “compromise or consensus” and unless people mentioned below feel strongly otherwise (and moreover unless they can timely deliver a result) perhaps it is better if we hold off on this idea given that Staff have the full call transcripts and email archive at hand with a view to producing the Initial Report where the concept and divergent views will be captured. In that light, I would agree with Georges that we should consider this debate closed and respectfully suggest that if people wish to continue they take it offline. Thanks. Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Thursday, October 24, 2019 12:46 PM To: Michael Karanicolas <mkaranicolas@gmail.com>; claudio di gangi <ipcdigangi@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 What I would like to more fully understand, as I probably missed a number of the nonstop back and forth is why there has to be an open registry, what harm you are trying to prevent, and what evidence that this harm actually exists and is not theoretical. While you accuse Claudio for the lack examples, I really have not see any concrete examples the other way. Telling me that there are some things that got into the TMCH that shouldn't have does not mean there is an actual issue, or systematic problem that requires a full opening of the database. Given, as I believe many others will agree, that we have heard every argument multiple times on this issue (3 years and now yet again), I suggest that you, Claudio, Rebecca and anyone else, put together a simple proposal as to whether or not the TMCH database should be open and set forth a paragraph on each position explaining why it should be open or why it should remain confidential / or be an opt in That proposal I am sure will have consensus and can move on to the public comment period -- and we can all stop getting dozens of emails a day on the same issue. I hereby ask that the co-chairs step in here and bring this repeated debate to a close, so we can move on to other issues. From: mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com> Sent: October 24, 2019 6:23 AM To: ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 The question is whether the TMCH data, which is already essentially freely available for those who want to see the totality of an individual company's strategy, has ever been used to try and game the system, or otherwise to support corporate surveillance. We don't need an ICANN study to determine this - there are dozens of lawyers who specialize in IP enforcement in this working group. If it were going on, your colleagues on the enforcement side would know about it and have examples to point to. The silence on this point tells us all we need to know about the commercial sensitivity of this information. I would not support an opt-in model, as it would by definition not provide an accurate picture of how the TMCH is operating. Honestly - I think this dialogue has run its course. I look forward to hearing what the broader community thinks of the idea. Best, Michael On Wed, Oct 23, 2019 at 6:47 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote:
Michael,
Are you asking me to find an abusive domain name registration and make a determination on whether that abusive registration resulted from mining the TMCH data?
In order to make that complex assessment, we need at a minimum a list of which records were mined from the TMCH and compare that list to domain registration abuse patterns.
If you want ICANN to conduct a study on this issue, we can consider a WG recommendation to perform such a study. I would support that research; would you also support it?
Best, Claudio
On Wed, Oct 23, 2019 at 6:19 PM Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote:
That's a relatively long-winded way of saying that, no - you cannot come up with an instance of the available TMCH data being used to facilitate abusive registrations.
On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote:
Rebecca,
Please don't get thrown off because I used the word "hypo" in my note - that wasn't meant to imply this is some dream scenario.
In terms of the DNS, we know the domain registration process is exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality.
So opening up the propriety TMCH, where sensitive IP data is aggregated in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit.
As I noted, I would be willing to suggest/propose an Opt-in option for TM owners who want to have their TMCH information publicly available.
There are other means and approaches to mitigate "Sunrise gaming" (which I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary).
So I recommend we explore them together in further detail to help address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG.
Best regards, Claudio
On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
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Hi All, In Brian's confidential correspondence, all majority gentleman are allowed to note the wjd membership but as of now learning towards the proposal of q15 are not yet deducted to contribute to the working groups that's why you may encourage decipleship in this particular area of responsibility according to Bryan the immaturity of Penelope is illegal to abduct as certain criteria of homophobic attack underlying the membership of wjd group together with q15 not worthy at all of us gtld. Thanks, Ben On Thu, Oct 24, 2019, 9:10 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote: > Dear Georges, all, > > > > I apologize for not getting to this sooner, but picking up on Georges’ > request in his last sentence, given inter alia the emails over the last 24 > hours (which indeed reflect many earlier thoughtful discussions) it is > clear that WG members have well staked-out positions on different sides of > an issue here. > > > > One of the more difficult tasks of chairing is to know when to let > discussion continue in the hope of a compromise or consensus, and when to > identify a divergence and lack of possibility of compromise or consensus. > > > > With respect to the idea of a proposal, this feels like it veers towards > “compromise or consensus” and unless people mentioned below feel strongly > otherwise (and moreover unless they can timely deliver a result) perhaps it > is better if we hold off on this idea given that Staff have the full call > transcripts and email archive at hand with a view to producing the Initial > Report where the concept and divergent views will be captured. > > > > In that light, I would agree with Georges that we should consider this > debate closed and respectfully suggest that if people wish to continue they > take it offline. > > > > Thanks. > > > > Brian > > > > *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Nahitchevansky, > Georges > *Sent:* Thursday, October 24, 2019 12:46 PM > *To:* Michael Karanicolas <mkaranicolas@gmail.com>; claudio di gangi < > ipcdigangi@gmail.com> > *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> > *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > > > > What I would like to more fully understand, as I probably missed a number > of the nonstop back and forth is why there has to be an open registry, what > harm you are trying to prevent, and what evidence that this harm actually > exists and is not theoretical. While you accuse Claudio for the lack > examples, I really have not see any concrete examples the other way. > Telling me that there are some things that got into the TMCH that shouldn't > have does not mean there is an actual issue, or systematic problem that > requires a full opening of the database. > > > > Given, as I believe many others will agree, that we have heard every > argument multiple times on this issue (3 years and now yet again), I > suggest that you, Claudio, Rebecca and anyone else, put together a simple > proposal as to whether or not the TMCH database should be open and set > forth a paragraph on each position explaining why it should be open or > why it should remain confidential / or be an opt in That proposal I am sure > will have consensus and can move on to the public comment period -- and we > can all stop getting dozens of emails a day on the same issue. > > > > I hereby ask that the co-chairs step in here and bring this repeated > debate to a close, so we can move on to other issues. > > > > *From:* mkaranicolas@gmail.com > > *Sent:* October 24, 2019 6:23 AM > > *To:* ipcdigangi@gmail.com > > *Cc:* gnso-rpm-wg@icann.org > > *Subject:* Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > > > > The question is whether the TMCH data, which is already essentially > freely available for those who want to see the totality of an > individual company's strategy, has ever been used to try and game the > system, or otherwise to support corporate surveillance. We don't need > an ICANN study to determine this - there are dozens of lawyers who > specialize in IP enforcement in this working group. If it were going > on, your colleagues on the enforcement side would know about it and > have examples to point to. The silence on this point tells us all we > need to know about the commercial sensitivity of this information. > > I would not support an opt-in model, as it would by definition not > provide an accurate picture of how the TMCH is operating. > > Honestly - I think this dialogue has run its course. I look forward to > hearing what the broader community thinks of the idea. > > Best, > > Michael > > On Wed, Oct 23, 2019 at 6:47 PM claudio di gangi <ipcdigangi@gmail.com> > wrote: > > > > Michael, > > > > Are you asking me to find an abusive domain name registration and make a > determination on whether that abusive registration resulted from mining the > TMCH data? > > > > In order to make that complex assessment, we need at a minimum a list of > which records were mined from the TMCH and compare that list to domain > registration abuse patterns. > > > > If you want ICANN to conduct a study on this issue, we can consider a WG > recommendation to perform such a study. I would support that research; > would you also support it? > > > > Best, > > Claudio > > > > > > On Wed, Oct 23, 2019 at 6:19 PM Michael Karanicolas < > mkaranicolas@gmail.com> wrote: > >> > >> That's a relatively long-winded way of saying that, no - you cannot > >> come up with an instance of the available TMCH data being used to > >> facilitate abusive registrations. > >> > >> On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com> > wrote: > >> > > >> > Rebecca, > >> > > >> > Please don't get thrown off because I used the word "hypo" in my note > - that wasn't meant to imply this is some dream scenario. > >> > > >> > In terms of the DNS, we know the domain registration process is > exploited and abused heavily on a daily basis in a variety of ways. In > terms of IP abuse, this includes using TM information obtained through all > available means to find new or existing "targets" from any jurisdiction of > choice. There is nothing hypothetical about this reality. > >> > > >> > So opening up the propriety TMCH, where sensitive IP data is > aggregated in one place for a specific purpose - without a TM owners > consent - will simply create another threat vector, without, in my > perspective, substantial corresponding public interest benefit. > >> > > >> > As I noted, I would be willing to suggest/propose an Opt-in option > for TM owners who want to have their TMCH information publicly available. > >> > > >> > There are other means and approaches to mitigate "Sunrise gaming" > (which I find speculative in terms of it happening in any meaningful way - > but if I'm wrong, please show me the numbers and evidence that reflects the > contrary). > >> > > >> > So I recommend we explore them together in further detail to help > address your concerns, without going down a road where it will be nearly > impossible to reach consensus as a WG. > >> > > >> > Best regards, > >> > Claudio > >> > > >> > > >> > On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca < > rtushnet@law.harvard.edu> wrote: > >> >> > >> >> As we've been over, the theoretical possibility you hypothesize > here--especially as compared to the availability of open registration > systems through most of the world--is not particularly plausible. We > haven't even seen evidence that scammers do this with existing open > registration systems, which provide exactly the guide they ought to be > using by your reasoning. > >> >> > >> >> I am interested by the idea that openness about what receives a > Notice--that is, what strings have actually triggered notices, which > reflects what people are looking for and not what's in the TMCH as a > whole--is a path towards greater transparency. I look forward to Staff's > answer about that as to the AG report. > >> >> > >> >> > >> >> Rebecca Tushnet > >> >> Frank Stanton Professor of First Amendment Law, Harvard Law School > >> >> 703 593 6759 > >> >> ________________________________ > >> >> From: claudio di gangi <ipcdigangi@gmail.com> > >> >> Sent: Wednesday, October 23, 2019 4:37 PM > >> >> To: Tushnet, Rebecca <rtushnet@law.harvard.edu> > >> >> Cc: Marie Pattullo <marie.pattullo@aim.be>; John McElwaine < > john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < > gnso-rpm-wg@icann.org> > >> >> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > >> >> > >> >> Rebecca, all, > >> >> > >> >> As I previously described on the list (to which I haven't seen a > direct response by anyone) the concern with an "open" TMCH is the > aggregation of IP data for a specific purpose, i.e. protection from DNS > abuse. > >> >> > >> >> No query through WIPO or national TMO databases can reveal this > information. > >> >> > >> >> Hypo: a trademark owner owns 1000 trademarks; so they decide to > select 50 TMs based on an informed judgment (based on previous UDRPs, C&D > letters, etc.) that they believe are most likely to be abused in the > DNS/new gTLDs and record them in the TMCH for protection through Sunrise > and Claims. > >> >> > >> >> An open TMCH would expose that information to cyber-criminals, > giving them important insights that they can't find anywhere else in the > world. > >> >> > >> >> They could then proceed to focus on abusively registering any of the > other 950 trademarks the company has registered, but which are not recorded > in the TMCH, since they will know with certainty the TM owner won't receive > a Claims notice and they will be able to register the domain as soon as > General Availability opens up. > >> >> > >> >> Upon which time they can set up a 48-72 hour phishing scheme to > steal as much consumer sensitive information as possible, and/or perpetrate > criminal fraud to steal money or data from the company by sending out > "official-looking" emails (that incorporate the brand name) to corporate > executives, resellers, etc. > >> >> > >> >> Or on the flip-side, they may infer "these are the most important 50 > TMs to that company" - so I will register them as domains in <.com> or in > ccTLDs and extort money from the TM owner. > >> >> > >> >> One middle ground solution may be permit a TMCH "Opt-in" for TM > owners that are fine or desire to have their TMCH records made public so > they have that option available as a voluntary choice. > >> >> > >> >> For example, some TM owners may believe having this information > public may have a deterrent effect on cybersquatters, depending on the > specifics of their own TM and domain portfolios. > >> >> > >> >> Hope this helps clarify the concern some have with an open > aggregated data system that has the details of valuable IP recorded in one > location and for one specific purpose. > >> >> > >> >> Also, as I mentioned on today's and on previous calls - other > solutions can be explored at the Registry-level, where the hypothetical > registrant who is "gaming" Sunrise, has a contractual relationship with a > specific registry operator, who has the ability to delete the registration > because it violates their terms of use. > >> >> > >> >> In fact, I have indicated willingness on several occasions to form a > small group to further explore this option/solution, but no one has > accepted my offer... > >> >> > >> >> Best regards, > >> >> Claudio > >> >> > >> >> On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca < > rtushnet@law.harvard.edu> wrote: > >> >> > >> >> Marie, I suggest you reread the materials John sent: one key > rationale--that access to the TMCH would disclose jurisdictions in which a > TM is not registered--is flatly wrong, as you agree. The arguments were > based on a misapprehension of what the TMCH was. > >> >> > >> >> > >> >> Rebecca Tushnet > >> >> Frank Stanton Professor of First Amendment Law, Harvard Law School > >> >> 703 593 6759 > >> >> ________________________________ > >> >> From: Marie Pattullo <marie.pattullo@aim.be> > >> >> Sent: Wednesday, October 23, 2019 1:47 PM > >> >> To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; John McElwaine < > john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org < > gnso-rpm-wg@icann.org> > >> >> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > >> >> > >> >> > >> >> Rebecca, the TMCH has nothing to do with where TMs are/are not > registered. > >> >> > >> >> I’m afraid I don’t understand where you are going with the below. > >> >> > >> >> Marie > >> >> > >> >> > >> >> > >> >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of > Tushnet, Rebecca > >> >> Sent: Wednesday, October 23, 2019 7:31 PM > >> >> To: John McElwaine <john.mcelwaine@nelsonmullins.com>; > gnso-rpm-wg@icann.org > >> >> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > >> >> > >> >> > >> >> > >> >> These excerpts make clear that the objections to transparency were > based on fundamental factual misunderstandings of what the TMCH would be. > I hope that no one in this group would agree that one can figure out > jurisdictions in which a TM is not registered by looking at a TMCH entry, > which requires only one valid registration from one jurisdiction. (As has > been pointed out, there are already public tools to look at registrations > across jurisdictions; the TMCH couldn't be one of them.) Similarly, the > way to figure out if a domain name is registered is to look at that domain > name, not at the TMCH, which will likewise not tell you anything. (And of > course Sunrise requires proof of use, so that should already be public.) > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> Rebecca Tushnet > >> >> > >> >> Frank Stanton Professor of First Amendment Law, Harvard Law School > >> >> 703 593 6759 > >> >> > >> >> ________________________________ > >> >> > >> >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John > McElwaine <john.mcelwaine@nelsonmullins.com> > >> >> Sent: Wednesday, October 23, 2019 1:00 PM > >> >> To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> > >> >> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > >> >> > >> >> > >> >> > >> >> I recall that the issue of the confidentiality of the TMCH database > specifically came up in the Implementation Assistance Group (IAG) which was > the group putting together the details and rules of the TMCH. > >> >> > >> >> > >> >> > >> >> Having “Data Access” limited to a “need to know basis” was how the > subject was originally introduced to the IAG. I believe (but am not sure) > that this “Data Access” may have resulted out of Section 8.1 of the STI > Report which stated: > >> >> > >> >> > >> >> > >> >> If feasible, the TM Claims Notice should provide links, or provide > alternative methods of providing access, to the registrant for accessing > the TC Database information referenced in the TM Claims Notice for a fuller > understanding of the TM rights being claimed by the trademark owner. These > links shall be provided in real time without cost to the Registrant. The > implementation details should be left to ICANN Staff to determine how to > easily provide access to registrants to this information. > >> >> > >> >> > >> >> > >> >> From the September 26, 2012 Report of the IAG which was used to > prepare “the draft implementation model of the Trademark Clearinghouse > published by ICANN for discussion purposes”: > >> >> > >> >> > >> >> > >> >> Misuse of Data > >> >> > >> >> To minimize abuse, distribution of TMCH data should be limited to > situations where necessary to implement TMCH functionality. It should also > be justified by technical, performance, uptime, availability, and economic > factors. At a minimum, there should be sufficient contractual restrictions > to provide enforcement capabilities to guard against abuse of the access > and information provided through the TMCH. Specifically, rights holders > have expressed concerns related to the aggregation of mark data through the > TMCH, which may expose their brand protection strategies or be used to > gather competitive intelligence by competitors. If the TMCH database is > freely searchable and accessible, it could be possible to identify a rights > holder’s gaps in its intellectual property protection strategies. For > example, it might be possible to identify jurisdictions in which the rights > holder has not registered its trademarks or in which it has not chosen to > defensively register domain names. In this regard, this information could > be misused by criminals, such as to conduct phishing attacks or other types > of social engineering attacks. > >> >> > >> >> > >> >> > >> >> In addition, concerns were raised with regard to limiting > information submitted in the TMCH that may be valuable to a competitor, > especially with regards to a brand-related registry. If it is possible to > do extensive searching of the database to compile a list of marks that a > mark holder has registered, some IAG members believed that this can reveal > the mark holder’s brand protection strategy because it shows which marks it > believes are more valuable than others. If someone can access all of the > countries where a specific brand is registered, this may also create > competitive advantage because a competitor might go to the unprotected > jurisdiction and register the mark before the mark holder. The TMCH should > not allow extensive searching to be done in a manner where a trademark > holder’s entire portfolio could be easily accessed. Accordingly, the TMCH > should be structured to address how to minimize data mining by a registry > of a competitor’s trademark registration patterns. > >> >> > >> >> > >> >> > >> >> The above report and analysis was related to work undertaken by the > IAG looking at the “Data Access” (which labeled issue T1). From the April > 13, 2012 Draft Implementation Model: > >> >> > >> >> > >> >> > >> >> Specifically, some rights holders indicated concern that the > aggregation of rights data through the Clearinghouse may expose corporate > strategies or be used to gather competitive intelligence, particularly if > the database is freely searchable and accessible. For example, it might be > possible to identify jurisdictions in which a rights holder has not > registered its trademarks or in which it has not chosen to register domain > names. In this regard, this information could drive uses such as phishing > or other types of social engineering activities. > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of > Kathy Kleiman > >> >> Sent: Wednesday, October 23, 2019 11:22 AM > >> >> To: gnso-rpm-wg@icann.org > >> >> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: > RPM PDP WG Meeting 16 October 2019 > >> >> > >> >> > >> >> > >> >> ◄External Email► - From: gnso-rpm-wg-bounces@icann.org > >> >> > >> >> > >> >> > >> >> The Trademark Clearinghouse database -- as negotiated by the GNSO > Council appointed group and approved unanimously by the GNSO Council and > ICANN Board -- was *not* secret or confidential. It's openness was > discussed, debated and agreed to as a monitoring and oversight mechanism, > and additionally because so much of what was already within the TMCH would > be public materials -- registered trademarks themselves. > >> >> > >> >> > >> >> > >> >> Kathy (with my hat as member of the STI) > >> >> > >> >> > >> >> > >> >> On 10/23/2019 10:52 AM, Marie Pattullo wrote: > >> >> > >> >> Thanks, Julie. I’m about to go into a call so apologies for the hit > & run response, but initial thoughts inline: > >> >> > >> >> > >> >> > >> >> Para one: > >> >> > >> >> The Working Group understands that, on the one hand, trademark > owners may register trademarks and enter them into the Trademark > Clearinghouse as part of a business-confidential strategy, including for > new products yet to enter the market. Access to the database would allow > misuse, including by bad actors and/or competitors. On the other hand, some > Working Group members have noted that it was not clear, during the lead up > to the launch of the 2012 New gTLD Program, that the Trademark > Clearinghouse database was intended to be a non-publicly-accessible, > confidential database. I wasn’t involved then, but I thought Claudio said > that it was always intended to be confidential? I’ve never seen reference > to it being considered as being an open resources. In addition, some > Working Group members expressed concern that potential registrants may > benefit from knowing what marks are already in the Trademark Clearinghouse > database prior to attempting a registration, especially in view of the > likelihood (based on discussions the Working Group has held with the > current Trademark Clearinghouse validator) that some marks may consist of > generic words which potential registrants may legitimately wish to use as a > domain name. If it’s a legitimate use, then brand holders won’t stop them. > >> >> > >> >> The Working Group agrees in principle that an audit of the Trademark > Clearinghouse database can be beneficial. I still have reservations about > this – I don’t think the potential harm, based on fact, is an equal balance > for the potential gain, based on supposition. Accordingly, the Working > Group recommends that, in order to inform the next review of the Trademark > Clearinghouse, a small group of community volunteers be formed that will > have limited, specifically-defined, confidential access to the Trademark > Clearinghouse database, for the sole purpose of working with ICANN Org and > any appointed third party examiner on such review. The scope of such > confidential access is to be limited to oversight purposes only and must > not violate any terms of confidentiality that apply to trademark owners > whose marks are already in the Trademark Clearinghouse database at that > time. Should this be take forward, any trademark owners that have chosen to > enter their trademarks in the Trademark Clearinghouse must first be given > time to consider if they wish to remove them, and to do so, before they are > made known to any such community members, with appropriate safeguards > considered for the effect that this may have on such trademark owners. > >> >> > >> >> > >> >> > >> >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of > Tushnet, Rebecca > >> >> Sent: Wednesday, October 23, 2019 3:15 PM > >> >> To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org > >> >> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM > PDP WG Meeting 16 October 2019 > >> >> > >> >> > >> >> > >> >> I asked this in the meeting but didn't directly address it to Staff: > Analysis Group reported on the top ten queried terms in the TMCH. Is it > Staff's understanding that this disclosure by AG breached a confidentiality > duty? > >> >> > >> >> > >> >> > >> >> The description "non-publicly-accessible, confidential database" is > not accurate, given that members of the public with no duties of > confidentiality can find out on a term-by-term basis by attempting to > register. I would suggest something like "database that is inaccessible to > the public except through individual registration attempts." > >> >> > >> >> > >> >> > >> >> More generally, I think the proposal needs to state ICANN's > understanding of the current rule. Without a clear statement of the > current rule, I don't think this audit proposal is understandable--and to > the extent it suggests that disclosing anything, including a top ten list, > is a violation of confidentiality, that seems like a worsening of the > problem. > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> Rebecca Tushnet > >> >> > >> >> Frank Stanton Professor of First Amendment Law, Harvard Law School > >> >> 703 593 6759 > >> >> > >> >> ________________________________ > >> >> > >> >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of > Julie Hedlund <julie.hedlund@icann.org> > >> >> Sent: Wednesday, October 23, 2019 9:01 AM > >> >> To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> > >> >> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP > WG Meeting 16 October 2019 > >> >> > >> >> > >> >> > >> >> Dear WG members, > >> >> > >> >> > >> >> > >> >> Per the action item below to draft a new Q15 proposal relating to > the discussion during the meeting on 16 October, staff submits for your > consideration the following suggested text. We very much look forward to > working with you on further revisions as needed, as well as to the > discussion on today’s call. > >> >> > >> >> > >> >> > >> >> Kind regards, > >> >> > >> >> Mary, Ariel, and Julie > >> >> > >> >> > >> >> > >> >> Staff-suggested draft (based on Working Group discussions and > suggestions made on the Working Group call of 16 October): > >> >> > >> >> The Working Group understands that, on the one hand, trademark > owners may register trademarks and enter them into the Trademark > Clearinghouse as part of a business-confidential strategy, including for > new products yet to enter the market. On the other hand, some Working Group > members have noted that it was not clear, during the lead up to the launch > of the 2012 New gTLD Program, that the Trademark Clearinghouse database was > intended to be a non-publicly-accessible, confidential database. In > addition, some Working Group members expressed concern that potential > registrants may benefit from knowing what marks are already in the > Trademark Clearinghouse database prior to attempting a registration, > especially in view of the likelihood (based on discussions the Working > Group has held with the current Trademark Clearinghouse validator) that > some marks may consist of generic words which potential registrants may > legitimately wish to use as a domain name. > >> >> > >> >> > >> >> > >> >> The Working Group agrees in principle that an audit of the Trademark > Clearinghouse database can be beneficial. Accordingly, the Working Group > recommends that, in order to inform the next review of the Trademark > Clearinghouse, a small group of community volunteers be formed that will > have limited, specifically-defined, confidential access to the Trademark > Clearinghouse database, for the sole purpose of working with ICANN Org and > any appointed third party examiner on such review. The scope of such > confidential access is to be limited to oversight purposes only and must > not violate any terms of confidentiality that apply to trademark owners > whose marks are already in the Trademark Clearinghouse database at that > time. > >> >> > >> >> > >> >> > >> >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of > Julie Hedlund <julie.hedlund@icann.org> > >> >> Date: Wednesday, October 16, 2019 at 3:27 PM > >> >> To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> > >> >> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 > October 2019 > >> >> > >> >> > >> >> > >> >> Dear All, > >> >> > >> >> > >> >> > >> >> Please see below the action items captured by staff from the RPM PDP > Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post > these to the wiki space. Please note that these are high-level notes and > are not meant as a substitute for the recording, chat room, or transcript. > The recording, Zoom chat, transcript and attendance records are posted on > the wiki at: > https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG > . > >> >> > >> >> > >> >> > >> >> Best Regards, > >> >> > >> >> Julie > >> >> > >> >> Julie Hedlund, Policy Director > >> >> > >> >> > >> >> > >> >> == > >> >> > >> >> > >> >> > >> >> NOTES & ACTION ITEMS > >> >> > >> >> > >> >> > >> >> Actions: > >> >> > >> >> > >> >> > >> >> Open and Deferred TMCH Questions: > >> >> > >> >> > >> >> > >> >> Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and > Shatan proposals in the Initial Report for Public Comment. > >> >> > >> >> Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial > Report for Public Comment. > >> >> > >> >> Q12: ACTION: Staff will work with Maxim to revise the proposal to > include context and background, and make it more formal. Make it clear > that this is an implementation recommendation, not policy. Publish to the > WG email list for review. > >> >> > >> >> Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the > Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal > based on suggestions and circulate it to interested WG members and the > Co-Chairs. > >> >> > >> >> Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to > revise the proposal with assistance of other WG members and circulate it on > the WG email list for review. 2) Staff will check to see if either party to > the contract can seek modifications. > >> >> > >> >> > >> >> > >> >> Discussion of whether individual URS proposals should be revisited > by the WG, and methodology for doing so: ACTION: WG members are requested > to continue discussion on the email list. See the draft survey at: survey > [forms.gle]. > >> >> > >> >> > >> >> > >> >> Notes: > >> >> > >> >> > >> >> > >> >> 1. Updates to Statements of Interest: No updates provided. > >> >> > >> >> > >> >> > >> >> 2. Status of Questions Q7, Q8, Q12, and Q15: > >> >> > >> >> > >> >> > >> >> Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and > Shatan proposals in the Initial Report for Public Comment. > >> >> > >> >> > >> >> > >> >> Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial > Report for Public Comment. > >> >> > >> >> > >> >> > >> >> Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations > >> >> > >> >> -- Need to improve redundancy and availability of the TMCH. > >> >> > >> >> -- Question: Are you referring to the TM database, run by IBM? > Deloitte is the validator and IBM is the maintainer of the database. > Answer: Relates to the provision of the database. Or could be a issue with > the design, it’s hard to say. Need to review how it works. Might not be > limited to software functions. Could be dataflow design. > >> >> > >> >> -- Need to get background on the cases reported to GDD colleagues. > The validation function is kept separate from the database function. If > the WG wishes to investigate this further this is probably an issue with > implementation as to SLA (there are applicable SLAs). Need also to go back > and look at the deliberations concerning the original design of the TMCH > and database. > >> >> > >> >> -- Information about the SOW with IBM (and for that matter the SLAs > with Deloitte) on this Working Group wiki page, under TMCH Contracting: > https://community.icann.org/pages/viewpage.action?pageId=61606864 > >> >> > >> >> ACTION: Staff will work with Maxim to revise the proposal to include > context and background, and make it more formal. Make it clear that this > is an implementation recommendation, not policy. Publish to the WG email > list for review. > >> >> > >> >> > >> >> > >> >> Q15: ACTION: WG agrees to publish Karanicolas proposal in the > Initial Report for Public Comment. > >> >> > >> >> -- Hoped that we could get consensus. > >> >> > >> >> -- Could allow a limited group to access the data, perhaps a future > review team? Can’t just open up now when those who participate have been > assured of confidentiality. > >> >> > >> >> -- Question - is there a way for the WG to reach agreement on how to > ensure there is some kind of specific, limited access to the data in the > TMDB for oversight purposes only (including future reviews)? > >> >> > >> >> ACTION: Staff to draft a new proposal based on suggestions and > circulate it to interested WG members and the Co-Chairs. > >> >> > >> >> > >> >> > >> >> 3. Remaining Deferred Charter Questions (see the attached Status of > WG Discussions on Agreed TMCH Charter Questions): > >> >> > >> >> > >> >> > >> >> a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: > Close discussion. > >> >> > >> >> > >> >> > >> >> b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, > and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019) > >> >> > >> >> > >> >> > >> >> Q1: Close discussion. > >> >> > >> >> > >> >> > >> >> Q2: Proposal from Martin Pablo Silva Valent: > >> >> > >> >> -- TMCH should educate rights holders; it is already doing outreach > and should do more. > >> >> > >> >> -- Needs to be revised to be in the form of a recommendation. > >> >> > >> >> -- Amendment: this effort would work in conjunction with whatever > marketing ICANN is doing to support knowledge around new gTLD program in > general and the TMCH. > >> >> > >> >> -- Not clear as drafting what is the remit of Deloitte and what > falls elsewhere. Some of this should be done at an ICANN level. > >> >> > >> >> -- Not sure involving ICANN at this level is required. > >> >> > >> >> -- ICANN is not involved in marketing gTLDs. > >> >> > >> >> -- Needs to be some definition/scope. Don’t see TMCH providing > education on RPMs. We also need to clarify what is meant by “education.” > Is this essentially “awareness” or is something more contemplated? > >> >> > >> >> -- In the end we need much more in terms of education. If it’s not > in the current contract then it’s worth considering in future discussion. > >> >> > >> >> -- Need to be careful how to express this. > >> >> > >> >> -- From staff: ICANN Org does not have control over the TMCH > provider’s website and information. The contract was an initial 5-year > term that expired on the first anniversary of the entering into force of > the new gTLD program, and followed by consecutive 1-year renewal terms > unless there’s a 180 day notice of termination. See: > https://community.icann.org/pages/viewpage.action?pageId=61606864 . We > are in the 1-year renewal term. > >> >> > >> >> -- Should look at what Deloitte already provides on their website. > >> >> > >> >> -- There's a lot of talk about what should be done - but no-one > identifying anything actually glaringly missing. > >> >> > >> >> -- Maybe it’s more of an outreach question, if the education already > exists. > >> >> > >> >> -- We should be identifying what’s not being done. Otherwise, we’re > just endorsing education conceptually, or providing a generic roadmap for > what could be done that will include many things that are already being > done. > >> >> > >> >> ACTION: Martin to revise the proposal with assistance of other WG > members and circulate it on the WG email list for review. > >> >> > >> >> ACTION: Staff will check to see if either party to the contract can > seek modifications. > >> >> > >> >> > >> >> > >> >> 4. Discussion of whether individual URS proposals should be > revisited by the WG, and methodology for doing so. See the draft survey > at: survey [forms.gle]: > >> >> > >> >> > >> >> > >> >> -- Survey does not designate which proposals go into the Initial > Report – that will be decided via WG discussion. > >> >> > >> >> -- WG members should consider whether or not names and affiliations > should be included, although the survey is not a poll. > >> >> > >> >> -- WG members will decide what to do with the data. > >> >> > >> >> -- Co-Chairs suggest allowing WG members to take the survey as a way > to inform, but not direct, WG discussions. > >> >> > >> >> ACTION: WG members are requested to continue discussion on the email > list. > >> >> > >> >> > >> >> > >> >> > >> >> > >> >> _______________________________________________ > >> >> > >> >> > >> >> > >> >> GNSO-RPM-WG mailing list > >> >> > >> >> > >> >> > >> >> GNSO-RPM-WG@icann.org > >> >> > >> >> > >> >> > >> >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >> >> > >> >> > >> >> > >> >> _______________________________________________ > >> >> > >> >> > >> >> > >> >> By submitting your personal data, you consent to the processing of > your personal data for purposes of subscribing to this mailing list > accordance with the ICANN Privacy Policy ( > https://www.icann.org/privacy/policy) and the website Terms of Service ( > https://www.icann.org/privacy/tos). 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I agree that the issue is of sufficient interest and concern that it should be presented for public comment and consideration based on brief statements of position on Open/Closed. I believe this would best serve the WG and the community. We will have to return to the subject for our Final report, but by soliciting evidence we might be able to put to rest some of the superstitions we all have in its regard. Michael R. [cid:image001.png@01D49D39.23E390C0] Michael R. Graham Senior Counsel and Global Director, Intellectual Property, Expedia Group T +1 425 679 4330 | M +1 425 241 1459 333 108th Ave. NE | Bellevue | WA 98004 Email: migraham@expediagroup.com<mailto:migraham@expediagroup.com> [cid:image002.png@01D49D39.23E390C0] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of BECKHAM, Brian Sent: Thursday, October 24, 2019 6:10 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Michael Karanicolas <mkaranicolas@gmail.com>; claudio di gangi <ipcdigangi@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 Dear Georges, all, I apologize for not getting to this sooner, but picking up on Georges’ request in his last sentence, given inter alia the emails over the last 24 hours (which indeed reflect many earlier thoughtful discussions) it is clear that WG members have well staked-out positions on different sides of an issue here. One of the more difficult tasks of chairing is to know when to let discussion continue in the hope of a compromise or consensus, and when to identify a divergence and lack of possibility of compromise or consensus. With respect to the idea of a proposal, this feels like it veers towards “compromise or consensus” and unless people mentioned below feel strongly otherwise (and moreover unless they can timely deliver a result) perhaps it is better if we hold off on this idea given that Staff have the full call transcripts and email archive at hand with a view to producing the Initial Report where the concept and divergent views will be captured. In that light, I would agree with Georges that we should consider this debate closed and respectfully suggest that if people wish to continue they take it offline. Thanks. Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nahitchevansky, Georges Sent: Thursday, October 24, 2019 12:46 PM To: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 What I would like to more fully understand, as I probably missed a number of the nonstop back and forth is why there has to be an open registry, what harm you are trying to prevent, and what evidence that this harm actually exists and is not theoretical. While you accuse Claudio for the lack examples, I really have not see any concrete examples the other way. Telling me that there are some things that got into the TMCH that shouldn't have does not mean there is an actual issue, or systematic problem that requires a full opening of the database. Given, as I believe many others will agree, that we have heard every argument multiple times on this issue (3 years and now yet again), I suggest that you, Claudio, Rebecca and anyone else, put together a simple proposal as to whether or not the TMCH database should be open and set forth a paragraph on each position explaining why it should be open or why it should remain confidential / or be an opt in That proposal I am sure will have consensus and can move on to the public comment period -- and we can all stop getting dozens of emails a day on the same issue. I hereby ask that the co-chairs step in here and bring this repeated debate to a close, so we can move on to other issues. From: mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com> Sent: October 24, 2019 6:23 AM To: ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019 The question is whether the TMCH data, which is already essentially freely available for those who want to see the totality of an individual company's strategy, has ever been used to try and game the system, or otherwise to support corporate surveillance. We don't need an ICANN study to determine this - there are dozens of lawyers who specialize in IP enforcement in this working group. If it were going on, your colleagues on the enforcement side would know about it and have examples to point to. The silence on this point tells us all we need to know about the commercial sensitivity of this information. I would not support an opt-in model, as it would by definition not provide an accurate picture of how the TMCH is operating. Honestly - I think this dialogue has run its course. I look forward to hearing what the broader community thinks of the idea. Best, Michael On Wed, Oct 23, 2019 at 6:47 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote:
Michael,
Are you asking me to find an abusive domain name registration and make a determination on whether that abusive registration resulted from mining the TMCH data?
In order to make that complex assessment, we need at a minimum a list of which records were mined from the TMCH and compare that list to domain registration abuse patterns.
If you want ICANN to conduct a study on this issue, we can consider a WG recommendation to perform such a study. I would support that research; would you also support it?
Best, Claudio
On Wed, Oct 23, 2019 at 6:19 PM Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> wrote:
That's a relatively long-winded way of saying that, no - you cannot come up with an instance of the available TMCH data being used to facilitate abusive registrations.
On Wed, Oct 23, 2019 at 6:07 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote:
Rebecca,
Please don't get thrown off because I used the word "hypo" in my note - that wasn't meant to imply this is some dream scenario.
In terms of the DNS, we know the domain registration process is exploited and abused heavily on a daily basis in a variety of ways. In terms of IP abuse, this includes using TM information obtained through all available means to find new or existing "targets" from any jurisdiction of choice. There is nothing hypothetical about this reality.
So opening up the propriety TMCH, where sensitive IP data is aggregated in one place for a specific purpose - without a TM owners consent - will simply create another threat vector, without, in my perspective, substantial corresponding public interest benefit.
As I noted, I would be willing to suggest/propose an Opt-in option for TM owners who want to have their TMCH information publicly available.
There are other means and approaches to mitigate "Sunrise gaming" (which I find speculative in terms of it happening in any meaningful way - but if I'm wrong, please show me the numbers and evidence that reflects the contrary).
So I recommend we explore them together in further detail to help address your concerns, without going down a road where it will be nearly impossible to reach consensus as a WG.
Best regards, Claudio
On Wed, Oct 23, 2019 at 4:55 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote:
As we've been over, the theoretical possibility you hypothesize here--especially as compared to the availability of open registration systems through most of the world--is not particularly plausible. We haven't even seen evidence that scammers do this with existing open registration systems, which provide exactly the guide they ought to be using by your reasoning.
I am interested by the idea that openness about what receives a Notice--that is, what strings have actually triggered notices, which reflects what people are looking for and not what's in the TMCH as a whole--is a path towards greater transparency. I look forward to Staff's answer about that as to the AG report.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Wednesday, October 23, 2019 4:37 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, all,
As I previously described on the list (to which I haven't seen a direct response by anyone) the concern with an "open" TMCH is the aggregation of IP data for a specific purpose, i.e. protection from DNS abuse.
No query through WIPO or national TMO databases can reveal this information.
Hypo: a trademark owner owns 1000 trademarks; so they decide to select 50 TMs based on an informed judgment (based on previous UDRPs, C&D letters, etc.) that they believe are most likely to be abused in the DNS/new gTLDs and record them in the TMCH for protection through Sunrise and Claims.
An open TMCH would expose that information to cyber-criminals, giving them important insights that they can't find anywhere else in the world.
They could then proceed to focus on abusively registering any of the other 950 trademarks the company has registered, but which are not recorded in the TMCH, since they will know with certainty the TM owner won't receive a Claims notice and they will be able to register the domain as soon as General Availability opens up.
Upon which time they can set up a 48-72 hour phishing scheme to steal as much consumer sensitive information as possible, and/or perpetrate criminal fraud to steal money or data from the company by sending out "official-looking" emails (that incorporate the brand name) to corporate executives, resellers, etc.
Or on the flip-side, they may infer "these are the most important 50 TMs to that company" - so I will register them as domains in <.com> or in ccTLDs and extort money from the TM owner.
One middle ground solution may be permit a TMCH "Opt-in" for TM owners that are fine or desire to have their TMCH records made public so they have that option available as a voluntary choice.
For example, some TM owners may believe having this information public may have a deterrent effect on cybersquatters, depending on the specifics of their own TM and domain portfolios.
Hope this helps clarify the concern some have with an open aggregated data system that has the details of valuable IP recorded in one location and for one specific purpose.
Also, as I mentioned on today's and on previous calls - other solutions can be explored at the Registry-level, where the hypothetical registrant who is "gaming" Sunrise, has a contractual relationship with a specific registry operator, who has the ability to delete the registration because it violates their terms of use.
In fact, I have indicated willingness on several occasions to form a small group to further explore this option/solution, but no one has accepted my offer...
Best regards, Claudio
On Wed, Oct 23, 2019 at 2:19 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote:
Marie, I suggest you reread the materials John sent: one key rationale--that access to the TMCH would disclose jurisdictions in which a TM is not registered--is flatly wrong, as you agree. The arguments were based on a misapprehension of what the TMCH was.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Sent: Wednesday, October 23, 2019 1:47 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Rebecca, the TMCH has nothing to do with where TMs are/are not registered.
I’m afraid I don’t understand where you are going with the below.
Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data
To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
◄External Email► - From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>
The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote:
Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one:
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards,
Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October):
The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards,
Julie
Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations
-- Need to improve redundancy and availability of the TMCH.
-- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design.
-- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database.
-- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864
ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment.
-- Hoped that we could get consensus.
-- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality.
-- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)?
ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent:
-- TMCH should educate rights holders; it is already doing outreach and should do more.
-- Needs to be revised to be in the form of a recommendation.
-- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH.
-- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level.
-- Not sure involving ICANN at this level is required.
-- ICANN is not involved in marketing gTLDs.
-- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated?
-- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion.
-- Need to be careful how to express this.
-- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term.
-- Should look at what Deloitte already provides on their website.
-- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing.
-- Maybe it’s more of an outreach question, if the education already exists.
-- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done.
ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review.
ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion.
-- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll.
-- WG members will decide what to do with the data.
-- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions.
ACTION: WG members are requested to continue discussion on the email list.
_______________________________________________
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Marie, Don’t worry, just explain it again in case people didn’t understand. Don’t let them make you feel awkward. Sent while on the run.
On 23 Oct 2019, at 19:48, Marie Pattullo <marie.pattullo@aim.be> wrote:
Rebecca, the TMCH has nothing to do with where TMs are/are not registered. I’m afraid I don’t understand where you are going with the below. Marie
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 7:31 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
These excerpts make clear that the objections to transparency were based on fundamental factual misunderstandings of what the TMCH would be. I hope that no one in this group would agree that one can figure out jurisdictions in which a TM is not registered by looking at a TMCH entry, which requires only one valid registration from one jurisdiction. (As has been pointed out, there are already public tools to look at registrations across jurisdictions; the TMCH couldn't be one of them.) Similarly, the way to figure out if a domain name is registered is to look at that domain name, not at the TMCH, which will likewise not tell you anything. (And of course Sunrise requires proof of use, so that should already be public.)
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of John McElwaine <john.mcelwaine@nelsonmullins.com> Sent: Wednesday, October 23, 2019 1:00 PM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I recall that the issue of the confidentiality of the TMCH database specifically came up in the Implementation Assistance Group (IAG) which was the group putting together the details and rules of the TMCH.
Having “Data Access” limited to a “need to know basis” was how the subject was originally introduced to the IAG. I believe (but am not sure) that this “Data Access” may have resulted out of Section 8.1 of the STI Report which stated:
If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information.
From the September 26, 2012 Report of the IAG which was used to prepare “the draft implementation model of the Trademark Clearinghouse published by ICANN for discussion purposes”:
Misuse of Data To minimize abuse, distribution of TMCH data should be limited to situations where necessary to implement TMCH functionality. It should also be justified by technical, performance, uptime, availability, and economic factors. At a minimum, there should be sufficient contractual restrictions to provide enforcement capabilities to guard against abuse of the access and information provided through the TMCH. Specifically, rights holders have expressed concerns related to the aggregation of mark data through the TMCH, which may expose their brand protection strategies or be used to gather competitive intelligence by competitors. If the TMCH database is freely searchable and accessible, it could be possible to identify a rights holder’s gaps in its intellectual property protection strategies. For example, it might be possible to identify jurisdictions in which the rights holder has not registered its trademarks or in which it has not chosen to defensively register domain names. In this regard, this information could be misused by criminals, such as to conduct phishing attacks or other types of social engineering attacks.
In addition, concerns were raised with regard to limiting information submitted in the TMCH that may be valuable to a competitor, especially with regards to a brand-related registry. If it is possible to do extensive searching of the database to compile a list of marks that a mark holder has registered, some IAG members believed that this can reveal the mark holder’s brand protection strategy because it shows which marks it believes are more valuable than others. If someone can access all of the countries where a specific brand is registered, this may also create competitive advantage because a competitor might go to the unprotected jurisdiction and register the mark before the mark holder. The TMCH should not allow extensive searching to be done in a manner where a trademark holder’s entire portfolio could be easily accessed. Accordingly, the TMCH should be structured to address how to minimize data mining by a registry of a competitor’s trademark registration patterns.
The above report and analysis was related to work undertaken by the IAG looking at the “Data Access” (which labeled issue T1). From the April 13, 2012 Draft Implementation Model:
Specifically, some rights holders indicated concern that the aggregation of rights data through the Clearinghouse may expose corporate strategies or be used to gather competitive intelligence, particularly if the database is freely searchable and accessible. For example, it might be possible to identify jurisdictions in which a rights holder has not registered its trademarks or in which it has not chosen to register domain names. In this regard, this information could drive uses such as phishing or other types of social engineering activities.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, October 23, 2019 11:22 AM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] FW: New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
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The Trademark Clearinghouse database -- as negotiated by the GNSO Council appointed group and approved unanimously by the GNSO Council and ICANN Board -- was *not* secret or confidential. It's openness was discussed, debated and agreed to as a monitoring and oversight mechanism, and additionally because so much of what was already within the TMCH would be public materials -- registered trademarks themselves.
Kathy (with my hat as member of the STI)
On 10/23/2019 10:52 AM, Marie Pattullo wrote: Thanks, Julie. I’m about to go into a call so apologies for the hit & run response, but initial thoughts inline:
Para one: The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. Access to the database would allow misuse, including by bad actors and/or competitors. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. I wasn’t involved then, but I thought Claudio said that it was always intended to be confidential? I’ve never seen reference to it being considered as being an open resources. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name. If it’s a legitimate use, then brand holders won’t stop them. The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. I still have reservations about this – I don’t think the potential harm, based on fact, is an equal balance for the potential gain, based on supposition. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time. Should this be take forward, any trademark owners that have chosen to enter their trademarks in the Trademark Clearinghouse must first be given time to consider if they wish to remove them, and to do so, before they are made known to any such community members, with appropriate safeguards considered for the effect that this may have on such trademark owners.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Wednesday, October 23, 2019 3:15 PM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
I asked this in the meeting but didn't directly address it to Staff: Analysis Group reported on the top ten queried terms in the TMCH. Is it Staff's understanding that this disclosure by AG breached a confidentiality duty?
The description "non-publicly-accessible, confidential database" is not accurate, given that members of the public with no duties of confidentiality can find out on a term-by-term basis by attempting to register. I would suggest something like "database that is inaccessible to the public except through individual registration attempts."
More generally, I think the proposal needs to state ICANN's understanding of the current rule. Without a clear statement of the current rule, I don't think this audit proposal is understandable--and to the extent it suggests that disclosing anything, including a top ten list, is a violation of confidentiality, that seems like a worsening of the problem.
Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Sent: Wednesday, October 23, 2019 9:01 AM To: gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] New Q15 Proposal re: Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear WG members,
Per the action item below to draft a new Q15 proposal relating to the discussion during the meeting on 16 October, staff submits for your consideration the following suggested text. We very much look forward to working with you on further revisions as needed, as well as to the discussion on today’s call.
Kind regards, Mary, Ariel, and Julie
Staff-suggested draft (based on Working Group discussions and suggestions made on the Working Group call of 16 October): The Working Group understands that, on the one hand, trademark owners may register trademarks and enter them into the Trademark Clearinghouse as part of a business-confidential strategy, including for new products yet to enter the market. On the other hand, some Working Group members have noted that it was not clear, during the lead up to the launch of the 2012 New gTLD Program, that the Trademark Clearinghouse database was intended to be a non-publicly-accessible, confidential database. In addition, some Working Group members expressed concern that potential registrants may benefit from knowing what marks are already in the Trademark Clearinghouse database prior to attempting a registration, especially in view of the likelihood (based on discussions the Working Group has held with the current Trademark Clearinghouse validator) that some marks may consist of generic words which potential registrants may legitimately wish to use as a domain name.
The Working Group agrees in principle that an audit of the Trademark Clearinghouse database can be beneficial. Accordingly, the Working Group recommends that, in order to inform the next review of the Trademark Clearinghouse, a small group of community volunteers be formed that will have limited, specifically-defined, confidential access to the Trademark Clearinghouse database, for the sole purpose of working with ICANN Org and any appointed third party examiner on such review. The scope of such confidential access is to be limited to oversight purposes only and must not violate any terms of confidentiality that apply to trademark owners whose marks are already in the Trademark Clearinghouse database at that time.
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Wednesday, October 16, 2019 at 3:27 PM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 16 October 2019
Dear All,
Please see below the action items captured by staff from the RPM PDP Working Group call held on 16 October 2019 at 17:00 UTC. Staff will post these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-16+Review+of+all+Ri....
Best Regards, Julie Julie Hedlund, Policy Director
==
NOTES & ACTION ITEMS
Actions:
Open and Deferred TMCH Questions:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment. Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment. Q12: ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review. Q15: ACTIONS: 1) WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. 2) ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs. Q2: Proposal from Martin Pablo Silva Valent: ACTIONS: 1) Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. 2) Staff will check to see if either party to the contract can seek modifications.
Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so: ACTION: WG members are requested to continue discussion on the email list. See the draft survey at: survey [forms.gle].
Notes:
1. Updates to Statements of Interest: No updates provided.
2. Status of Questions Q7, Q8, Q12, and Q15:
Q7 Design Marks: ACTION: WG agrees to publish Kleiman/Muscovitch and Shatan proposals in the Initial Report for Public Comment.
Q8 GIs: ACTION: WG agrees to publish Tushnet proposal in the Initial Report for Public Comment.
Q12: Proposal from Maxim Alzoba – TMCH Operational Considerations -- Need to improve redundancy and availability of the TMCH. -- Question: Are you referring to the TM database, run by IBM? Deloitte is the validator and IBM is the maintainer of the database. Answer: Relates to the provision of the database. Or could be a issue with the design, it’s hard to say. Need to review how it works. Might not be limited to software functions. Could be dataflow design. -- Need to get background on the cases reported to GDD colleagues. The validation function is kept separate from the database function. If the WG wishes to investigate this further this is probably an issue with implementation as to SLA (there are applicable SLAs). Need also to go back and look at the deliberations concerning the original design of the TMCH and database. -- Information about the SOW with IBM (and for that matter the SLAs with Deloitte) on this Working Group wiki page, under TMCH Contracting: https://community.icann.org/pages/viewpage.action?pageId=61606864 > ACTION: Staff will work with Maxim to revise the proposal to include context and background, and make it more formal. Make it clear that this is an implementation recommendation, not policy. Publish to the WG email list for review.
Q15: ACTION: WG agrees to publish Karanicolas proposal in the Initial Report for Public Comment. -- Hoped that we could get consensus. -- Could allow a limited group to access the data, perhaps a future review team? Can’t just open up now when those who participate have been assured of confidentiality. -- Question - is there a way for the WG to reach agreement on how to ensure there is some kind of specific, limited access to the data in the TMDB for oversight purposes only (including future reviews)? ACTION: Staff to draft a new proposal based on suggestions and circulate it to interested WG members and the Co-Chairs.
3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):
a. Close Discussion: TMCH Category 6: Balance: Charter Question 16: Close discussion.
b. Discussion: TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019)
Q1: Close discussion.
Q2: Proposal from Martin Pablo Silva Valent: -- TMCH should educate rights holders; it is already doing outreach and should do more. -- Needs to be revised to be in the form of a recommendation. -- Amendment: this effort would work in conjunction with whatever marketing ICANN is doing to support knowledge around new gTLD program in general and the TMCH. -- Not clear as drafting what is the remit of Deloitte and what falls elsewhere. Some of this should be done at an ICANN level. -- Not sure involving ICANN at this level is required. -- ICANN is not involved in marketing gTLDs. -- Needs to be some definition/scope. Don’t see TMCH providing education on RPMs. We also need to clarify what is meant by “education.” Is this essentially “awareness” or is something more contemplated? -- In the end we need much more in terms of education. If it’s not in the current contract then it’s worth considering in future discussion. -- Need to be careful how to express this. -- From staff: ICANN Org does not have control over the TMCH provider’s website and information. The contract was an initial 5-year term that expired on the first anniversary of the entering into force of the new gTLD program, and followed by consecutive 1-year renewal terms unless there’s a 180 day notice of termination. See: https://community.icann.org/pages/viewpage.action?pageId=61606864 . We are in the 1-year renewal term. -- Should look at what Deloitte already provides on their website. -- There's a lot of talk about what should be done - but no-one identifying anything actually glaringly missing. -- Maybe it’s more of an outreach question, if the education already exists. -- We should be identifying what’s not being done. Otherwise, we’re just endorsing education conceptually, or providing a generic roadmap for what could be done that will include many things that are already being done. ACTION: Martin to revise the proposal with assistance of other WG members and circulate it on the WG email list for review. ACTION: Staff will check to see if either party to the contract can seek modifications.
4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]:
-- Survey does not designate which proposals go into the Initial Report – that will be decided via WG discussion. -- WG members should consider whether or not names and affiliations should be included, although the survey is not a poll. -- WG members will decide what to do with the data. -- Co-Chairs suggest allowing WG members to take the survey as a way to inform, but not direct, WG discussions. ACTION: WG members are requested to continue discussion on the email list.
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participants (14)
-
BECKHAM, Brian -
Ben Menor Jr. -
cking＠modernip.com -
claudio di gangi -
John McElwaine -
Julie Hedlund -
Kathy Kleiman -
Marie Pattullo -
Michael Graham (ELCA) -
Michael Karanicolas -
Mike
-
Nahitchevansky, Georges -
Paul Keating -
Tushnet, Rebecca