Hi Marie, The problem with the claim of commercial harm as you frame it here is that it is trivially easy to find out which marks from a particular portfolio are registered in the TMCH through trial and error. As you mention - the totality of the portfolio is publicly available. So if you have that dataset, it's pretty simple to just search for each word and see when a trademark claim notification pops up (indeed - this is how journalists found all those generic words). So any interested party who wanted to find out about a company's "commercial/enforcement strategy" could just spend an hour or two searching for each registered mark, and get the complete picture. I think that's the reason why Jason painted the elaborate scenario he did, is because many of us are wracking our brains trying to find out how there's a legitimate confidentiality interest when this information is available to anyone who cares to look. It's good to know that the scenario he mentioned hasn't come up... but if that's the case it begs the question as to what the basis of your opposition is, given that the strategic information you refer to is already available to anyone who spends a couple of hours looking? Because I have to admit, I'm growing increasingly suspicious that the argument to keep it secret is not rooted in any actual need for confidentiality, but rather in a desire to avoid the kind of public oversight which we are advocating. Best, Michael On Fri, Oct 11, 2019 at 2:25 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

Thanks Jason,

I can only speak for myself but no, this isn’t our main concern and I apologise if I was unclear.

A branded goods company may own many trade marks – some, 100s (e.g. in the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.

The TMCH is a totally different thing. A brand that chooses to (pay to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.

It may not want to announce that to the market for a variety of reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).

As for enforcement, I stress that the TMCH only gives the brand the possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.

I can’t comment on your scenario below as that has never been brought to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.

I hope this is clear, and again apologise if I was not before.

Marie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jason Schaeffer Sent: Friday, October 11, 2019 6:52 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

_______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

Thanks, Michael. If it is as easy as you say, then what purpose would a public TMCH serve? As for your suspicion, while of course I cannot speak for you, I can for me: that it absolutely not the case. And Paul, at the risk of simply quoting you: nothing in your comments moves the needle of the opposition for us either. That's the joy of a debate between people with different perspectives. Best to all, Marie -----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Friday, October 11, 2019 8:49 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Jason Schaeffer <jason@esqwire.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Hi Marie, The problem with the claim of commercial harm as you frame it here is that it is trivially easy to find out which marks from a particular portfolio are registered in the TMCH through trial and error. As you mention - the totality of the portfolio is publicly available. So if you have that dataset, it's pretty simple to just search for each word and see when a trademark claim notification pops up (indeed - this is how journalists found all those generic words). So any interested party who wanted to find out about a company's "commercial/enforcement strategy" could just spend an hour or two searching for each registered mark, and get the complete picture. I think that's the reason why Jason painted the elaborate scenario he did, is because many of us are wracking our brains trying to find out how there's a legitimate confidentiality interest when this information is available to anyone who cares to look. It's good to know that the scenario he mentioned hasn't come up... but if that's the case it begs the question as to what the basis of your opposition is, given that the strategic information you refer to is already available to anyone who spends a couple of hours looking? Because I have to admit, I'm growing increasingly suspicious that the argument to keep it secret is not rooted in any actual need for confidentiality, but rather in a desire to avoid the kind of public oversight which we are advocating. Best, Michael On Fri, Oct 11, 2019 at 2:25 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

Thanks Jason,

I can only speak for myself but no, this isn’t our main concern and I apologise if I was unclear.

A branded goods company may own many trade marks – some, 100s (e.g. in the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.

The TMCH is a totally different thing. A brand that chooses to (pay to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.

It may not want to announce that to the market for a variety of reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).

As for enforcement, I stress that the TMCH only gives the brand the possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.

I can’t comment on your scenario below as that has never been brought to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.

I hope this is clear, and again apologise if I was not before.

Marie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jason Schaeffer Sent: Friday, October 11, 2019 6:52 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

_______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

Because while it's very easy to find out whether a particular word (or a dataset of 50 or 100 words) is in the TMCH, it's impossible to see the totality of words included in the TMCH. This prevents effective oversight - as we've run into time and again in discussing the extent of registrations of GIs, the extent of registrations of design marks, etc. It's only easy to search when you know specifically what you're looking for. And while I understand your perspective is different... I feel like at some point you need to make a defensible and realistic argument for the harm that would result from transparency, since the brand strategy information you mention is already, essentially, publicly available. On Fri, Oct 11, 2019 at 3:01 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

Thanks, Michael. If it is as easy as you say, then what purpose would a public TMCH serve? As for your suspicion, while of course I cannot speak for you, I can for me: that it absolutely not the case. And Paul, at the risk of simply quoting you: nothing in your comments moves the needle of the opposition for us either. That's the joy of a debate between people with different perspectives. Best to all, Marie

-----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Friday, October 11, 2019 8:49 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Jason Schaeffer <jason@esqwire.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi Marie,

The problem with the claim of commercial harm as you frame it here is that it is trivially easy to find out which marks from a particular portfolio are registered in the TMCH through trial and error. As you mention - the totality of the portfolio is publicly available. So if you have that dataset, it's pretty simple to just search for each word and see when a trademark claim notification pops up (indeed - this is how journalists found all those generic words). So any interested party who wanted to find out about a company's "commercial/enforcement strategy" could just spend an hour or two searching for each registered mark, and get the complete picture.

I think that's the reason why Jason painted the elaborate scenario he did, is because many of us are wracking our brains trying to find out how there's a legitimate confidentiality interest when this information is available to anyone who cares to look. It's good to know that the scenario he mentioned hasn't come up... but if that's the case it begs the question as to what the basis of your opposition is, given that the strategic information you refer to is already available to anyone who spends a couple of hours looking?

Because I have to admit, I'm growing increasingly suspicious that the argument to keep it secret is not rooted in any actual need for confidentiality, but rather in a desire to avoid the kind of public oversight which we are advocating.

Best,

Michael

On Fri, Oct 11, 2019 at 2:25 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

...

Thanks Jason,

I can only speak for myself but no, this isn’t our main concern and I apologise if I was unclear.

A branded goods company may own many trade marks – some, 100s (e.g. in the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.

The TMCH is a totally different thing. A brand that chooses to (pay to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.

It may not want to announce that to the market for a variety of reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).

As for enforcement, I stress that the TMCH only gives the brand the possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.

I can’t comment on your scenario below as that has never been brought to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.

I hope this is clear, and again apologise if I was not before.

Marie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jason Schaeffer Sent: Friday, October 11, 2019 6:52 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

_______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

I appreciate the replies, but have laid out a straightforward, fact-based "defensible and realistic argument for the harm that would result from transparency", while I don't believe I've seen fact-based arguments as to the purported harm that transparency would solve. I wish you all a great evening, Marie -----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Friday, October 11, 2019 9:15 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Jason Schaeffer <jason@esqwire.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Because while it's very easy to find out whether a particular word (or a dataset of 50 or 100 words) is in the TMCH, it's impossible to see the totality of words included in the TMCH. This prevents effective oversight - as we've run into time and again in discussing the extent of registrations of GIs, the extent of registrations of design marks, etc. It's only easy to search when you know specifically what you're looking for. And while I understand your perspective is different... I feel like at some point you need to make a defensible and realistic argument for the harm that would result from transparency, since the brand strategy information you mention is already, essentially, publicly available. On Fri, Oct 11, 2019 at 3:01 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

Thanks, Michael. If it is as easy as you say, then what purpose would a public TMCH serve? As for your suspicion, while of course I cannot speak for you, I can for me: that it absolutely not the case. And Paul, at the risk of simply quoting you: nothing in your comments moves the needle of the opposition for us either. That's the joy of a debate between people with different perspectives. Best to all, Marie

-----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Friday, October 11, 2019 8:49 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Jason Schaeffer <jason@esqwire.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi Marie,

The problem with the claim of commercial harm as you frame it here is that it is trivially easy to find out which marks from a particular portfolio are registered in the TMCH through trial and error. As you mention - the totality of the portfolio is publicly available. So if you have that dataset, it's pretty simple to just search for each word and see when a trademark claim notification pops up (indeed - this is how journalists found all those generic words). So any interested party who wanted to find out about a company's "commercial/enforcement strategy" could just spend an hour or two searching for each registered mark, and get the complete picture.

I think that's the reason why Jason painted the elaborate scenario he did, is because many of us are wracking our brains trying to find out how there's a legitimate confidentiality interest when this information is available to anyone who cares to look. It's good to know that the scenario he mentioned hasn't come up... but if that's the case it begs the question as to what the basis of your opposition is, given that the strategic information you refer to is already available to anyone who spends a couple of hours looking?

Because I have to admit, I'm growing increasingly suspicious that the argument to keep it secret is not rooted in any actual need for confidentiality, but rather in a desire to avoid the kind of public oversight which we are advocating.

Best,

Michael

On Fri, Oct 11, 2019 at 2:25 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

...

Thanks Jason,

I can only speak for myself but no, this isn’t our main concern and I apologise if I was unclear.

A branded goods company may own many trade marks – some, 100s (e.g. in the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.

The TMCH is a totally different thing. A brand that chooses to (pay to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.

It may not want to announce that to the market for a variety of reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).

As for enforcement, I stress that the TMCH only gives the brand the possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.

I can’t comment on your scenario below as that has never been brought to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.

I hope this is clear, and again apologise if I was not before.

Marie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jason Schaeffer Sent: Friday, October 11, 2019 6:52 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

_______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

Michael, Rebecca, Jason, all I think Marie and Greg have done a great job explaining the views of IP owners, along with the nature and type of harms that are at risk. I am supplementing their response to address some of the other issues or questions raised by Michael, Rebecca, and Jason, and to suggest a path forward that may be capable of reaching consensus. *The Rules of the Original TMCH Proposal Did Not Change During Implementation to Create a "Secret" Database* In terms of the 'original intent' question that Jason raised, I previously served the ICANN committee (the Implementation Recommendation Team) that developed the original proposal and recommendation for an IP Clearinghouse (the name of which was later changed to TMCH); I can assure you that the intent from the very beginning was for TMCH data to remain confidential. To demonstrate this point, the following language appears in the Final IRT Report: "Access to and use of such data must be restricted to trademark owners (who will be permitted to access and use only their own data), ICANN, new gTLD registries and registrars, for the sole purpose of performing the data validation functions for new gTLD registries and the implementation of RPMs, e.g., in relation to...[TM Claims etc.]. Ownership of any and all data submitted to or generated by the IP Clearinghouse must remain exclusively with the entity providing such data." The concept of having a database where these assets are left out in the open for third-parties, including criminals (or even competitors), to access the proprietary data, would never have gotten off the ground within the IP community to provide the support needed to obtain the adoption of the TMCH by ICANN in the first instance. The issues we are discussing now (regarding confidentiality of TMCH data) are not new, and were identified and discussed during the implementation phase of the new gTLD program. But there was never a period of time when the "status quo" (as expressed in the various draft Applicant Guidebook(s)) included an open TMCH where trademark data was freely accessible. While these issue were contemplated, there was never sufficient traction for this concept to be incorporated into the official rule-making, so there wasn't a big switch behind the scenes at the 11th hour. *Distinction Between Searching National Trademark Office Databases and the TMCH* The TMCH is a proprietary database which houses some of the most valuable and important assets that organizations own. This is the underlying basis for the need of confidential treatment of the associated data elements. There are now over 45,000 trademark records recorded in the TMCH; without confidentiality, there would never be the current level of TMCH adoption by the IP community. If the TMCH data was not confidential, the targeted, aggregation of this data could be used to identify jurisdictions in which the rights holder may not have registered its trademarks or in which it has not chosen to defensively register domain names. It would also expose gaps in IP protection strategies because it would reflect which trademarks may be considered more valuable than others in terms of online brand protection, or on the other end of the spectrum, may expose competitive intelligence. Since the TMCH is a unique and proprietary database, the risk exposure relates to the aggregation of trademark data for a specific purpose, e.g. to protect brands in the DNS through the TMCH. A similar level of inference can not be gained by simply searching the national trademark office databases. And we know that having this level of inference about IP owners online brand strategies can be leveraged to further criminal activity, such as counterfeiting and DNS abuse (phishing attacks, etc.). So these factors, which lay at the very foundational design of the TMCH, are the primary distinctions between the trademark data that is available in the various public searchable national trademark office databases and the targeted, aggregated data held by the TMCH for the purpose of online brand protection. *Using TM Claims to Misuse and Mine TMCH Data* I do not find the recent question that Michael raised concerning the misuse of data access, e.g. "data mining", to be a valid argument for transparency. To be clear, I am not saying there are not valid arguments for transparency, but I am referring to the practice of mining the database for the purpose of obtaining confidential data. Accordingly, the TMCH should be structured in a manner that minimizes data mining of trademark registration patterns. I haven't dug into the contracts as of yet, but there should be contractual safeguards (either within the Registrar Accreditation Agreement (RAA), or the Registry Agreement (RA)), to ensure that TMCH data is not mined and to provide enforcement against abuse of access. The justification of confidentiality is based on the concept of minimizing abuse of data, so that the distribution of data is limited to situations where the data is needed to implement TMCH functionality, including for technical reasons, e.g. uptime/availability. The WG should consider putting forward a recommendation if sufficient enforceable safeguards against data mining do not already exist. *Paradigm for Building Consensus* Based on the concerns that Rebecca, Michael, and Jason have articulated, I believe the appropriate venue to address those concerns are the dispute resolution procedures at the Registry-level, including the Sunrise Dispute Resolution Policy (SDRP). For example, Greg has recently submitted a proposal (in relation to the design marks topic) that sets forth a new ground, (e.g. the trademark mark was obtained in a pre-textual manner) upon which to bring a complaint under the SDRP policy. On our last call I extended an olive branch to Michael to work on developing additional solutions. Rebecca and I recently successfully engaged in such an exercise to help build consensus on the TMCH. I'm not sure if it helps you feel any better, but my previous proposal to provide transparency on Reserved Names, was not adopted because of a similar confidentiality issue. So in conclusion, I encourage you to accept my offer to work together to develop solutions that have a better potential to reach consensus. Cheers, Claudio On Fri, Oct 11, 2019 at 5:36 PM Paul Keating <paul@law.es> wrote:

Marie,

Regarding defensible arguments:

Because while it's very easy to find out whether a particular word (or a dataset of 50 or 100 words) is in the TMCH, it's impossible to see the totality of words included in the TMCH. *This prevents effective oversight - as we've run into time and again in discussing the extent of registrations of GIs, the extent of registrations of design marks, etc*. It's only easy to search when you know specifically what you're looking for.

Sent while on the run.

On 11 Oct 2019, at 20:37, Marie Pattullo <marie.pattullo@aim.be> wrote:

I appreciate the replies, but have laid out a straightforward, fact-based "defensible and realistic argument for the harm that would result from transparency", while I don't believe I've seen fact-based arguments as to the purported harm that transparency would solve. I wish you all a great evening, Marie

-----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Friday, October 11, 2019 9:15 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Jason Schaeffer <jason@esqwire.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Because while it's very easy to find out whether a particular word (or a dataset of 50 or 100 words) is in the TMCH, it's impossible to see the totality of words included in the TMCH. This prevents effective oversight - as we've run into time and again in discussing the extent of registrations of GIs, the extent of registrations of design marks, etc. It's only easy to search when you know specifically what you're looking for.

And while I understand your perspective is different... I feel like at some point you need to make a defensible and realistic argument for the harm that would result from transparency, since the brand strategy information you mention is already, essentially, publicly available.

On Fri, Oct 11, 2019 at 3:01 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

...

Thanks, Michael. If it is as easy as you say, then what purpose would a public TMCH serve? As for your suspicion, while of course I cannot speak for you, I can for

me: that it absolutely not the case.

...

And Paul, at the risk of simply quoting you: nothing in your comments moves the needle of the opposition for us either. That's the joy of a debate between people with different perspectives. Best to all, Marie

-----Original Message----- From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Friday, October 11, 2019 8:49 PM To: Marie Pattullo <marie.pattullo@aim.be> Cc: Jason Schaeffer <jason@esqwire.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi Marie,

The problem with the claim of commercial harm as you frame it here is that it is trivially easy to find out which marks from a particular portfolio are registered in the TMCH through trial and error. As you mention - the totality of the portfolio is publicly available. So if you have that dataset, it's pretty simple to just search for each word and see when a trademark claim notification pops up (indeed - this is how journalists found all those generic words). So any interested party who wanted to find out about a company's "commercial/enforcement strategy" could just spend an hour or two searching for each registered mark, and get the complete picture.

I think that's the reason why Jason painted the elaborate scenario he did, is because many of us are wracking our brains trying to find out how there's a legitimate confidentiality interest when this information is available to anyone who cares to look. It's good to know that the scenario he mentioned hasn't come up... but if that's the case it begs the question as to what the basis of your opposition is, given that the strategic information you refer to is already available to anyone who spends a couple of hours looking?

Because I have to admit, I'm growing increasingly suspicious that the argument to keep it secret is not rooted in any actual need for confidentiality, but rather in a desire to avoid the kind of public oversight which we are advocating.

Best,

Michael

On Fri, Oct 11, 2019 at 2:25 PM Marie Pattullo <marie.pattullo@aim.be> wrote:

...

Thanks Jason,

I can only speak for myself but no, this isn’t our main concern and I

apologise if I was unclear.

...

A branded goods company may own many trade marks – some, 100s (e.g. in

the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.

...

The TMCH is a totally different thing. A brand that chooses to (pay

to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.

...

It may not want to announce that to the market for a variety of

reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).

...

As for enforcement, I stress that the TMCH only gives the brand the

possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.

...

I can’t comment on your scenario below as that has never been brought

to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.

...

I hope this is clear, and again apologise if I was not before.

Marie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jason Schaeffer Sent: Friday, October 11, 2019 6:52 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi All,

Sorry for not being able to address this on yesterday’s call – I was

bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

...

Large brand owners like the ability to file in “remote” jurisdictions

with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

...

This use of the “secret TM priority” filing method is one thing, and I

understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

...

If the project is top secret and subject to heightened secrecy, how

can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

...

In addition, if I am correctly capturing how the method is employed in

practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

...

Thanks,

Jason

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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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

---

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Thanks Marie, However nothing in your comments moves the needle of the opposition. Sent while on the run.

On 11 Oct 2019, at 19:25, Marie Pattullo <marie.pattullo@aim.be> wrote:

Thanks Jason,

I can only speak for myself but no, this isn’t our main concern and I apologise if I was unclear.

A branded goods company may own many trade marks – some, 100s (e.g. in the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.

The TMCH is a totally different thing. A brand that chooses to (pay to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.

It may not want to announce that to the market for a variety of reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).

As for enforcement, I stress that the TMCH only gives the brand the possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.

I can’t comment on your scenario below as that has never been brought to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.

I hope this is clear, and again apologise if I was not before.

Marie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jason Schaeffer Sent: Friday, October 11, 2019 6:52 PM To: gnso-rpm-wg@icann.org Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

Thanks Greg. Very clear and fully agree. Marie Sent from my iPhone On 12 Oct 2019, at 19:42, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: Jason and all, This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database. I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database. I am not even aware of the use of the strategy as described in its totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts. As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc. However, if I'm incorrect about any of this, I'm always happy to learn new facts. I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice. I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants. Best regards, Greg On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com<mailto:jason@esqwire.com>> wrote: Hi All, Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale: Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday. This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use. If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH? In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH. Thanks, Jason _______________________________________________ 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 _______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ 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 _______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

One quick point. You would not necessarily know what someone's portfolio might be as one would not necessarily know where all of a brand owners marks were registered. I suppose someone could spend hours figuring this out with painstaking searches. The point is that brand owners have been subjected to well documented abuse over the years and so are quite sensitive to giving yet more tools and abilities to those who want to tale advantage of others rights for profit. The flip side of the closed registry is that there has been some sort of abuse of the system. However, after three plus years of discussing these issue I have yet to see any substantial evidence of widespread abuse. So in my mind this is a straw person argument and I really do not see why we are relitigating or discussing what has been discussed extensively already in the past. From: mkaranicolas@gmail.com Sent: October 12, 2019 8:30 PM To: gregshatanipc@gmail.com Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH? On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

I am not even aware of the use of the strategy as described in its totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

However, if I'm incorrect about any of this, I'm always happy to learn new facts.

I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com> wrote:

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

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Hi Greg and all, I am not the only one that heard the concept of filing in jurisdictions that do not have searchable DBs as a basis for wanting to keep the TMCH closed. I agree that is sounds like a curious practice which is why I asked others who confirmed they also heard it presented (perhaps through a combination of chat and audio statements). Only after trying to figure out how obtaining a priority date in a closed (non-searchable) jurisdiction would be relevant to the TMCH was the question raised to the group. Marie’s rationale, as you call it, is a separate basis. It would be nice to review the transcript and the chat, but we heard the idea floated and it seemed odd and frankly a bit of an overreach. Clearly this warrants further discussion as we have serious questions regarding the TMCH and having oversight of the DB and the data would be very helpful. I was hoping we could clarify the opposition’s positions and work to reach consensus, but we may just have to move Michael’s proposal to public comment. Michael’s point below still worth noting. Thanks, Jason Schaeffer ESQwire.com P.C. ________________________________ From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Saturday, October 12, 2019 2:30 PM To: Greg Shatan Cc: Jason Schaeffer; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH? On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

I am not even aware of the use of the strategy as described in its totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

However, if I'm incorrect about any of this, I'm always happy to learn new facts.

I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com> wrote:

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

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Good points, Marc. And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of *minimizing misuse of **access*. As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction. Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice. If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration. The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address. Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain. So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns. http://www.circleid.com/posts/20120828_trademark_clearinghouse_secure_reliab... "The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access." Later in the article: "But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems." On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:

Two reasons:

1. Trademark Claims only runs for 90 days after Sunrise; and

2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed

In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate.

Best regards,

Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 trac@gtlaw.com | www.gtlaw.com | View GT Biography

-----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

*EXTERNAL TO GT*

Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH?

On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

...

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with

non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

...

I believe it's incorrect to say that this scenario was raised (in the

chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

...

I am not even aware of the use of the strategy as described in its

totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

...

As I recall, the rationale is much more straightforward: A brand owner's

choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

...

However, if I'm incorrect about any of this, I'm always happy to learn

new facts.

...

I am aware that some applicants may choose to file in jurisdictions

where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

...

I do recall that one or a few people or entities have used some aspects

of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

...

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com>

wrote:

...

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was

bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

...

Large brand owners like the ability to file in “remote” jurisdictions

with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

...

This use of the “secret TM priority” filing method is one thing, and I

understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

...

If the project is top secret and subject to heightened secrecy, how can

the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

...

In addition, if I am correctly capturing how the method is employed in

practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

...

Thanks,

Jason

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Michael With all due respect not every country is listed in the WIPO database. In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this. Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside. the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here From: mkaranicolas@gmail.com Sent: October 14, 2019 4:36 PM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Hi all, A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://www3.wipo.int/branddb/en/ It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn. Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim. I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent. Best, Michael On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Good points, Marc. And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of minimizing misuse of access. As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction. Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice. If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration. The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address. Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain. So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns. http://www.circleid.com/posts/20120828_trademark_clearinghouse_secure_reliab... "The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access." Later in the article: "But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems." On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Two reasons: 1. Trademark Claims only runs for 90 days after Sunrise; and 2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> |  View GT Biography -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH *EXTERNAL TO GT* Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH? On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

I am not even aware of the use of the strategy as described in its totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

However, if I'm incorrect about any of this, I'm always happy to learn new facts.

I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com<mailto:jason@esqwire.com>> wrote:

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

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Michael, How exactly does this come full circle to the elaborate scenario that Jason first asked about? Jason asked about a practice where “Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.” I am not sure where he is getting his information from, particularly the part about the large brand owners “liking” this ability. I am not aware of this practice being widespread and Jason has presented no facts or evidence that this strategy regularly occurs other than his bald and conclusory allegation of such. Irrespective of whether this practice is prevalent (which its not), Georges’ point that often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons in no way connects or supports Jason’s conspiracy theory. That leaves us with Georges’ other point, which is that there does not seem to be a strong reason supported by real world evidence supporting opening up the TMCH while there is ample evidence of trademark and brand abuse which supports keeping the database closed. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Monday, October 14, 2019 3:09 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Thanks Georges - we have now come full circle to the "elaborate scenario" which Jason first asked about, and which your colleagues disavowed earlier in this very thread. On Mon, Oct 14, 2019 at 4:03 PM Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote: Michael With all due respect not every country is listed in the WIPO database. In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this. Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside. the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here From: mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com> Sent: October 14, 2019 4:36 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Hi all, A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://urldefense.proofpoint.com/v2/url?u=https-3A__www3.wipo.int_branddb_e... <https://urldefense.proofpoint.com/v2/url?u=https-3A__www3.wipo.int_branddb_e...> It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn. Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim. I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent. Best, Michael On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Good points, Marc. And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of minimizing misuse of access. As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction. Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice. If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration. The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address. Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain. So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns. https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_2... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_2...> "The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access." Later in the article: "But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems." On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Two reasons: 1. Trademark Claims only runs for 90 days after Sunrise; and 2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> |  View GT Biography -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH *EXTERNAL TO GT* Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH? On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

I am not even aware of the use of the strategy as described in its totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

However, if I'm incorrect about any of this, I'm always happy to learn new facts.

I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com<mailto:jason@esqwire.com>> wrote:

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

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Hi Greg. I think we're talking past each other with regard to Jason's original comment. I don't think it was attempting to accuse anyone of anything shady with regard to registering different things in different jurisdictions - which I know is standard practice. It was, I think, a genuine attempt to understand the substance of the opposition. I asked you earlier in the thread why someone who wanted to find out a brand's digital strategy wouldn't simply go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up. So I understand - your point is that there are some national systems which are not included in WIPO's database (even though Canada and the US, and from what I can see virtually every other major market are included), and so there will be some countries where full trademark registration information is not immediately available, and thus information obtained by trawling through the system on a trial-and-error basis using just WIPO's database would be (slightly) incomplete. Is that an accurate representation of the substance of your position here? On Mon, Oct 14, 2019 at 4:47 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

Michael,

What Marc said.

To make it clearer, a company will file for different marks in Country A vs. Country B because they use a different subset of their total brand portfolio in each country.

Even moving between the USA and Canada, you must have noticed products available in one country but not the other, even though the parent company does business in both countries. Just try to buy a Coffee Crisp in the States. (Due to a failed attempt to introduce Coffee Crisp several years back, the TM may be registered here, but you get the point.)

Let’s put the “elaborate scenario” to rest and move on (unless there is transcript or email evidence that this position was actually put forth as an argument in favor of a closed database).

The explanation given by Marie has been the primary stated concern since the beginning — I can remember Susan Kawaguchi stating this about 3 years ago.

Greg

On Mon, Oct 14, 2019 at 4:26 PM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:

...

Michael,

How exactly does this come full circle to the elaborate scenario that Jason first asked about? Jason asked about a practice where “Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.” I am not sure where he is getting his information from, particularly the part about the large brand owners “liking” this ability. I am not aware of this practice being widespread and Jason has presented no facts or evidence that this strategy regularly occurs other than his bald and conclusory allegation of such.

Irrespective of whether this practice is prevalent (which its not), Georges’ point that often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons in no way connects or supports Jason’s conspiracy theory.

That leaves us with Georges’ other point, which is that there does not seem to be a strong reason supported by real world evidence supporting opening up the TMCH while there is ample evidence of trademark and brand abuse which supports keeping the database closed.

Best regards,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 <https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+C...> Tel 312.456.1020

Mobile 773.677.3305

trachtenbergm@gtlaw.com | www.gtlaw.com

[image: Greenberg Traurig]

*From:* GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Michael Karanicolas *Sent:* Monday, October 14, 2019 3:09 PM *To:* Nahitchevansky, Georges <ghn@kilpatricktownsend.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Thanks Georges - we have now come full circle to the "elaborate scenario" which Jason first asked about, and which your colleagues disavowed earlier in this very thread.

On Mon, Oct 14, 2019 at 4:03 PM Nahitchevansky, Georges < ghn@kilpatricktownsend.com> wrote:

Michael

With all due respect not every country is listed in the WIPO database. In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this. Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside. the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here

*From:* mkaranicolas@gmail.com

*Sent:* October 14, 2019 4:36 PM

*To:* gnso-rpm-wg@icann.org

*Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi all,

A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://www3.wipo.int/branddb/en/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__www3.wipo.int_branddb_e...> It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn.

Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim.

I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent.

Best,

Michael

On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

Good points, Marc.

And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of *minimizing misuse of access*.

As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction.

Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice.

If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration.

The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address.

Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain.

So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns.

http://www.circleid.com/posts/20120828_trademark_clearinghouse_secure_reliab... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_2...>

"The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access."

Later in the article:

"But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems."

On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:

Two reasons:

1. Trademark Claims only runs for 90 days after Sunrise; and

2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed

In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate.

Best regards,

Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 <https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+C...> T +1 312.456.1020 trac@gtlaw.com | www.gtlaw.com | View GT Biography

-----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

*EXTERNAL TO GT*

Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH?

On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

...

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with

non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

...

I believe it's incorrect to say that this scenario was raised (in the

chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

...

I am not even aware of the use of the strategy as described in its

totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

...

As I recall, the rationale is much more straightforward: A brand

owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

...

However, if I'm incorrect about any of this, I'm always happy to learn

new facts.

...

I am aware that some applicants may choose to file in jurisdictions

where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

...

I do recall that one or a few people or entities have used some aspects

of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

...

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com>

wrote:

...

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was

bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

...

Large brand owners like the ability to file in “remote” jurisdictions

with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

...

This use of the “secret TM priority” filing method is one thing, and I

understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

...

If the project is top secret and subject to heightened secrecy, how

can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

...

In addition, if I am correctly capturing how the method is employed in

practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

...

Thanks,

Jason

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Michael, Via two separate emails, I have responded to your question about someone mining the TMCH in order to ascertain an organization’s brand portfolio and online protection strategy. This practice of data mining is not consistent with the purpose or functionality of the TMCH, and various solutions were proposed and seriously considered during the implementation phase to mitigate against this type of abusive practice taking place post-launch; ICANN Org (not the community) deemed the proposed control measures to mitigate against this harmful practice to be ineffective. ICANN’s decision on the lack of effective control mechanisms to prevent data mining does not lead to a conclusion that data mining is appropriate: yet your appear to be drawing this very inference and basing your argument for transparency on a loophole in the rules that can be exploited for nefarious purposes. As we’ve noted, this activity can be used to defraud and harm consumers. There should be adequate safeguards to protect against this abuse of access. I encourage you to consider this line of reasoning and reply to these points directly to help move the ball forward in this discussion. Cheers, Claudio On Monday, October 14, 2019, Michael Karanicolas <mkaranicolas@gmail.com> wrote:

Hi Greg. I think we're talking past each other with regard to Jason's original comment. I don't think it was attempting to accuse anyone of anything shady with regard to registering different things in different jurisdictions - which I know is standard practice. It was, I think, a genuine attempt to understand the substance of the opposition.

I asked you earlier in the thread why someone who wanted to find out a brand's digital strategy wouldn't simply go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up.

So I understand - your point is that there are some national systems which are not included in WIPO's database (even though Canada and the US, and from what I can see virtually every other major market are included), and so there will be some countries where full trademark registration information is not immediately available, and thus information obtained by trawling through the system on a trial-and-error basis using just WIPO's database would be (slightly) incomplete.

Is that an accurate representation of the substance of your position here?

On Mon, Oct 14, 2019 at 4:47 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

...

Michael,

What Marc said.

To make it clearer, a company will file for different marks in Country A vs. Country B because they use a different subset of their total brand portfolio in each country.

Even moving between the USA and Canada, you must have noticed products available in one country but not the other, even though the parent company does business in both countries. Just try to buy a Coffee Crisp in the States. (Due to a failed attempt to introduce Coffee Crisp several years back, the TM may be registered here, but you get the point.)

Let’s put the “elaborate scenario” to rest and move on (unless there is transcript or email evidence that this position was actually put forth as an argument in favor of a closed database).

The explanation given by Marie has been the primary stated concern since the beginning — I can remember Susan Kawaguchi stating this about 3 years ago.

Greg

On Mon, Oct 14, 2019 at 4:26 PM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:

...

Michael,

How exactly does this come full circle to the elaborate scenario that Jason first asked about? Jason asked about a practice where “Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.” I am not sure where he is getting his information from, particularly the part about the large brand owners “liking” this ability. I am not aware of this practice being widespread and Jason has presented no facts or evidence that this strategy regularly occurs other than his bald and conclusory allegation of such.

Irrespective of whether this practice is prevalent (which its not), Georges’ point that often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons in no way connects or supports Jason’s conspiracy theory.

That leaves us with Georges’ other point, which is that there does not seem to be a strong reason supported by real world evidence supporting opening up the TMCH while there is ample evidence of trademark and brand abuse which supports keeping the database closed.

Best regards,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 <https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+C...> Tel 312.456.1020

Mobile 773.677.3305

trachtenbergm@gtlaw.com | www.gtlaw.com

[image: Greenberg Traurig]

*From:* GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Michael Karanicolas *Sent:* Monday, October 14, 2019 3:09 PM *To:* Nahitchevansky, Georges <ghn@kilpatricktownsend.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Thanks Georges - we have now come full circle to the "elaborate scenario" which Jason first asked about, and which your colleagues disavowed earlier in this very thread.

On Mon, Oct 14, 2019 at 4:03 PM Nahitchevansky, Georges < ghn@kilpatricktownsend.com> wrote:

Michael

With all due respect not every country is listed in the WIPO database. In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this. Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside. the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here

*From:* mkaranicolas@gmail.com

*Sent:* October 14, 2019 4:36 PM

*To:* gnso-rpm-wg@icann.org

*Subject:* Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Hi all,

A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://www3.wipo.int/branddb/en/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__www3.wipo.int_branddb_e...> It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn.

Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim.

I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent.

Best,

Michael

On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

Good points, Marc.

And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of *minimizing misuse of access*.

As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction.

Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice.

If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration.

The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address.

Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain.

So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns.

http://www.circleid.com/posts/20120828_trademark_ clearinghouse_secure_reliable_usable_pick_any_two/ <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_2...>

"The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access."

Later in the article:

"But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems."

On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG < gnso-rpm-wg@icann.org> wrote:

Two reasons:

1. Trademark Claims only runs for 90 days after Sunrise; and

2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed

In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate.

Best regards,

Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 <https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+C...> T +1 312.456.1020 trac@gtlaw.com | www.gtlaw.com | View GT Biography

-----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

*EXTERNAL TO GT*

Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH?

On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

...

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with

non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

...

I believe it's incorrect to say that this scenario was raised (in the

chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

...

I am not even aware of the use of the strategy as described in its

totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

...

As I recall, the rationale is much more straightforward: A brand

owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

...

However, if I'm incorrect about any of this, I'm always happy to learn

new facts.

...

I am aware that some applicants may choose to file in jurisdictions

where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

...

I do recall that one or a few people or entities have used some

aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

...

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com>

wrote:

...

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was

bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

...

Large brand owners like the ability to file in “remote” jurisdictions

with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

...

This use of the “secret TM priority” filing method is one thing, and

I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

...

If the project is top secret and subject to heightened secrecy, how

can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

...

In addition, if I am correctly capturing how the method is employed

in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

...

Thanks,

Jason

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Michael We are going to go round and round on this issue, which after three years of discussion still hasn't gotten us anywhere. Personally I don't know why we are still discussing this non issue. This whole exercise and back forth gamesmanship is not getting us anywhere. There has yet to be any legitimate reason supported with real evidence of an actual real world problem, as opposed to conjecture and speculation, for opening up the TMCH database. From: mkaranicolas@gmail.com Sent: October 14, 2019 10:10 PM To: ghn@kilpatricktownsend.com Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Thanks Georges - we have now come full circle to the "elaborate scenario" which Jason first asked about, and which your colleagues disavowed earlier in this very thread. On Mon, Oct 14, 2019 at 4:03 PM Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote: Michael With all due respect not every country is listed in the WIPO database. In fact there are a number of countries that are not listed or included there and that are not online. I am surprised you do not know this. Most practitioners know this. The point is that you have do much research to figure out all of the marks filed by a brand owner. Perhaps you do not know this, but often brand owners file for different marks in different countries depending on local products, translation issues and other business reasons. But again this is an aside. the real point is that the concern of brand owners of having an open TMCH registry is the likelihood that it will lead to more abuse. There does not seem to be a strong reason supported by real world evidence supporting a change here From: mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com> Sent: October 14, 2019 4:36 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH Hi all, A few points have been raised that warrant being addressed. First off - it wouldn't take "hours of painstaking searches" to find a trademark owner's full portfolio. WIPO has a wonderful tool which aggregates these databases together: https://www3.wipo.int/branddb/en/ It's a bit surprising to me that professionals working in this space are unfamiliar with this aggregated database... but live and learn. Regarding the technical challenges of findings a trademark owner's filings in the TMCH - while it is correct that the claims period only runs for 90 days - the fact that there has been, and continues to be, a steady stream of new gTLD rollouts renders that relatively moot as an obstacle to access. I concede there might be some small financial risk to mining the data in this way (although I believe most credit cards allow for cancelled transactions within 24 hours or so) - but even so, it would be a relatively trivial amount of money in the context of corporate intelligence budgets. If the commercial value of this information doesn't exceed a few hundred dollars for a major brand, I would question whether it's as sensitive as people claim. I'm not going to engage in discussions about the original intent of the TMCH since I wasn't involved in ICANN at the time - except to note that there are those who were involved in the process who will argue vehemently that it was intended to be transparent. Best, Michael On Sun, Oct 13, 2019 at 6:12 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Good points, Marc. And point #3 is what I expressed in my prior note, e.g. the mining of TMCH data was an issue that was contemplated during TMCH implementation in the content of minimizing misuse of access. As some may recall, there was a major proposal (submitted by a group of registries) designed to mitigate the misuse of access by decreasing the coupling of certain technical functions of the TMCH from registry interaction. Misuse of access was germane to these proposals. ICANN org ultimately decided against implementing certain proposed control mechanisms - but not for policy reasons based on the support/permission of data mining, but because ICANN org deemed the control mechanisms to be ineffective in practice. If anyone is interested in more background, please see the blog article linked to below (from CircleID) which took place at this juncture of TMCH implementation when the cited proposal was under consideration. The bottom line is the fact that someone can mine the TMCH data under current procedures, and then turnaround and use that data to target brands and register domain names abusively (in other TLDs) is, if anything, a problem we should be working to address. Moreover, data mining is a real indication that the number of TM Claims notices that were issued are not reflective of the true number of times an actual registrant sought to register a domain. So while we could try to develop TMCH recommendations that mitigate the practice of data mining, since that practice is inconsistent with the intended purpose and functionality of the TMCH, at a minimum, such harmful practices (which increase costs on all parties) do not constitute valid arguments for TMCH transparency in my opinion, and are not necessary for our team to build potential solutions for addressing stakeholder concerns. http://www.circleid.com/posts/20120828_trademark_clearinghouse_secure_reliab... "The discussions focused on a fundamental contradiction in the TMCH specifications that are mandated by the Applicant Guidebook. During the development of the AGB, rights holders made it clear that a major concern for them was the risk of data mining if the database was released into the public domain: being able to identify new products being developed by global corporations (by tracking their registered trade marks) could threaten multi-billion dollar product development plans. This means restrictions on the distribution of the database, to minimise the chances of unauthorised access." Later in the article: "But the fundamental problems with the TMCH are much more serious: rights holder protection was probably the most controversial issue surrounding the programme, and if the protection mechanisms devised should fail, then it would be a significant blow to the credibility of ICANN as a corporation and as a community (as Kurt Pritz made clear in Brussels). Some very smart minds are now paying close attention to this issue, trying to resolve the problems." On Sun, Oct 13, 2019 at 2:45 AM Marc Trachtenberg via GNSO-RPM-WG <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Two reasons: 1. Trademark Claims only runs for 90 days after Sunrise; and 2. The claims notice does not pop up when a domain name is searched. The person must actually attempt to register the domain name before a Claims Notice will be generated and displayed In other words, it would take a significant amount of time and effort to try and circumvent the existing confidentiality and there would also be some measure of financial risk - i.e., if there is no TMCH entry the person would be charged for the registration. This might not cost so much on a one-off basis, but could quickly get expensive in the aggregate. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> |  View GT Biography -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Michael Karanicolas Sent: Saturday, October 12, 2019 1:30 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH *EXTERNAL TO GT* Thanks Greg. Now can you explain to me why a person who wanted to know this "confidential strategy" wouldn't just go to any registrar, search for domains corresponding to the trademarks that an entity has registered, and see when a claims notification pops up, to get an accurate and complete picture of which marks they have chosen to put into the TMCH? On Sat, Oct 12, 2019 at 1:42 PM Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with non-searchable DBs to gain a priority date") is not at all the rationale that was put forth by those in favor of a closed TMCH database.

I believe it's incorrect to say that this scenario was raised (in the chat, by John McElwaine, or otherwise) introduced this concept as part of an argument in favor of a closed TMCH database.

I am not even aware of the use of the strategy as described in its totality. I think this may be an unfortunate misunderstanding or mis-recollection of the earlier discussions and the surrounding facts.

As I recall, the rationale is much more straightforward: A brand owner's choice of the subset of their trademarks to put in the TMCH is a confidential strategy. Giving third parties knowledge of this strategy allows these third parties to engage in activities that would harm TMCH registrants, which in turn would discourage use of the TMCH. These activities include: Targeting the brand owner's marks not in the TMCH for domain name registrations that can then be exploited in various ways; Developing a counter-strategy for TMCH registration (either by registering the same marks in the TMCH to enable contested Sunrises, or by registering the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH marks for counterfeiting, knock-offs, etc. (on the theory that the brand owner is less likely to put resources into policing and enforcing these less important marks), etc.

However, if I'm incorrect about any of this, I'm always happy to learn new facts.

I am aware that some applicants may choose to file in jurisdictions where registrations issue more quickly. Even this limited scenario is not the practice of any brand owners I have represented or of which I'm specifically aware. I can't speak to who or what type of applicant engages in even this limited practice.

I do recall that one or a few people or entities have used some aspects of this strategy or something similar to try to "game" Sunrise. The specific concern about gaming the TMCH and Sunrise is one that I believe we need to deal with. I believe we should do this in a targeted fashion, both to get to consensus in the WG and to avoid disadvantaging legitimate TMCH registrants.

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason@esqwire.com<mailto:jason@esqwire.com>> wrote:

...

Hi All,

Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.” In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

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_______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org<mailto:GNSO-RPM-WG@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... _______________________________________________ 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://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p... ) and the website Terms of Service (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t... ). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate the information. _______________________________________________ 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 _______________________________________________ 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). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.