Re: [council] Fwd: [GAC] For GAC: Draft Report of the Independent Review of the Trademark Clearinghouse Available for Public Comment

[Mason Cole <mason@xxxxxxxxx>]

Excellent.  Will do, thanks Phil.

> On Oct 16, 2016, at 4:21 PM, Phil Corwin <psc@xxxxxxxxxxx> wrote:
> 
> Mason:
>  
> Please let Mark know that the PDP WG that is reviewing all RPMs in all gTLDs 
> is submitting questions to the TMCH as well as to registries and registrars 
> to gather more data from all of them in regard to the operation of the 
> TMCH-linked RPMs to date, and that we will be pleased to share that data with 
> the GAC as it is received and analyzed.
>  
> Best, Philip
>  
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
> 202-255-6172/Cell
>  
> Twitter: @VlawDC
>  
> "Luck is the residue of design" -- Branch Rickey
>  
> From: owner-council@xxxxxxxxxxxxxx <mailto:owner-council@xxxxxxxxxxxxxx> 
> [mailto:owner-council@xxxxxxxxxxxxxx <mailto:owner-council@xxxxxxxxxxxxxx>] 
> On Behalf Of Mason Cole
> Sent: Friday, October 14, 2016 7:34 PM
> To: GNSO Council List (council@xxxxxxxxxxxxxx <mailto:council@xxxxxxxxxxxxxx>)
> Subject: [council] Fwd: [GAC] For GAC: Draft Report of the Independent Review 
> of the Trademark Clearinghouse Available for Public Comment
>  
> Councilors —
>  
> I was copied on the attached email from Mark Carvell, the GAC representative 
> from the UK.  I’m forwarding to you as a heads up on an issue the GAC will 
> likely seek to put on the agenda for the council’s joint meeting with the GAC 
> in Hyderabad.
>  
> Please let me know if you’d like me to return any information or concerns to 
> Mark.  I’m happy to do so.
>  
> Mason
> 
> 
> Begin forwarded message:
>  
> From: Mark Carvell <mark.carvell@xxxxxxxxxxxxxx 
> <mailto:mark.carvell@xxxxxxxxxxxxxx>>
> Subject: Re: [GAC] For GAC: Draft Report of the Independent Review of the 
> Trademark Clearinghouse Available for Public Comment
> Date: October 7, 2016 at 12:29:02 PM PDT
> To: "gac@xxxxxxxxx <mailto:gac@xxxxxxxxx>" <gac@xxxxxxxxx 
> <mailto:gac@xxxxxxxxx>>
> Cc: Mason Cole <mason@xxxxxxxxx <mailto:mason@xxxxxxxxx>>, 
> "Thomas.Schneider@xxxxxxxxxxxxxx <mailto:Thomas.Schneider@xxxxxxxxxxxxxx>" 
> <thomas.schneider@xxxxxxxxxxxxxx <mailto:thomas.schneider@xxxxxxxxxxxxxx>>, 
> Tom Dale <tom@xxxxxxxxxxx <mailto:tom@xxxxxxxxxxx>>
>  
> Dear GAC colleagues
>  
> As aide memoire I'm resending my e-mail of 14 August below which set out 
> proposed action by the GAC on the draft report of the review of the Trade 
> Mark Clearing House (TMCH) which has been undertaken in response to a GAC 
> proposal before the launch of the current new gTLD application round in view 
> of the criticality of the TMCH as a rights protection mechanism (RPM). 
>  
> Responses received from stakeholders to the consultation on the draft report 
> of the TMCH review are accessible at 
> https://www.icann.org/public-comments/tmch-review-2016-07-25-en 
> <https://www.icann.org/public-comments/tmch-review-2016-07-25-en>  
>  
> The GAC has a session in Hyderabad on the TMCH review scheduled for 6 
> November and it is possible that one of the authors of the report will be 
> able to attend. I encourage colleagues therefore in the remaining time 
> available before travelling to Hyderabad to familiarise themselves with this 
> RPM, to review the responses to the draft review report and if necessary to 
> seek comments and advice from intellectual property policy experts in your 
> administrations.
>  
> Kind regards
>  
> Mark 
>  
> Mark Carvell
>  
> Representative of the United Kingdom and its Overseas Territories on the 
> Governmental Advisory Committee of ICANN
>  
> GAC Vice-Chair candidate for 2017  
>  
> Global Internet Governance Policy
> Department for Culture, Media and Sport
> mark.carvell@xxxxxxxxxxxxxx <mailto:mark.carvell@xxxxxxxxxxxxxx>
> tel +44 (0) 20 7211 6062
>  
> On 14 August 2016 at 17:11, Mark Carvell <mark.carvell@xxxxxxxxxxxxxx 
> <mailto:mark.carvell@xxxxxxxxxxxxxx>> wrote:
> Dear GAC colleagues
>  
> One of the key parts of the new gTLD Applicant Guidebook as it was being 
> written in 2009-11 that came under scrutiny by the GAC in its "scorecard" 
> progressive review of the proposals was that relating to intellectual rights 
> protection. This was  in order to mitigate what was perceived to be a 
> substantial risk of escalation of the cybersquatting problem of bad faith 
> registration of trade mark names in order to extort money from brand-owners 
> if there were to be a significant expansion in the number of top level 
> domains. Cybersquatting costs business over a billion dollars annually.
>  
> The level of public policy concern relating to how the rights protection 
> mechanisms (RPMs) were being developed to address this risk, is indicated in 
> the detailed exchanges on rights protection at the time of the 
> inter-sessional GAC meeting with the Board in Brussels on 28 February-1 March 
> 2011 - see for example: 
> https://gacweb.icann.org/display/gacweb/ICANN+Board-GAC+Consultation+Brussels+28+Feb-1+Mar+2011?preview=/27131966/27198027/GACID_20110309-GAC_replies_to_ICANN_rights_protection_questions.pdf
>  
> <https://gacweb.icann.org/display/gacweb/ICANN+Board-GAC+Consultation+Brussels+28+Feb-1+Mar+2011?preview=/27131966/27198027/GACID_20110309-GAC_replies_to_ICANN_rights_protection_questions.pdf>
>   
>  
> There is also the statement of comments on the guidebook that issued on 25 
> May:  
> https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf
>  
> <https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf>
>  which in how it addresses issues such as community-based applications is a 
> very interesting document from the archives, when read in the light of the 
> experience of the new gTLDs round. 
>  
> The key safeguard mechanism that emerged from these discussions is the 
> "Trademark Clearinghouse" which is essentially a database of registered marks 
> to which registrars need to refer when receiving registration enquiries and 
> requests. This has been operational since the roll out of the new gTLD 
> programme started in late 2013; the size of the database is described on 
> pp5-6 of the draft review report.  
>  
> The message to corporate brand-owners was that they needed to develop 
> strategies to prepare for this rapidly growing TLD landscape and use the 
> clearing house as the one-stop-solution for protecting their brand in the era 
> of the massively expanded new gTLD system. 
>  
> For its part the GAC after some of its recommendations and proposals had not 
> been fully accepted, ultimately recommended in the 25 May 2011 statement that 
> a comprehensive independent review of the TMCH be conducted that would be 
> triggered at the one year point after the launch of the 75th new gTLD in the 
> round. We are now at that point. 
>  
> As the topic lead of the RPMs at the time of the inter-sessional meeting with 
> the Board, the GAC leadership has asked me to coordinate the GAC's 
> interaction and response to the review report. I now propose to do this with 
> a view to presenting a GAC statement of position at our next meeting in 
> Hyderabad. By the time of that meeting in November, we and the GNSO will have 
> had the opportunity to review the stakeholder responses to the current public 
> consultation which concludes on 3 September and it is likely that the planned 
> revised report taking into account the responses will have issued. 
>  
> The ICANN announcement summarises very succinctly the main conclusions of the 
> draft report -  including relating to few specific critical questions raised 
> back in 2011 about TMCH not dealing with non-exact matches of trademarks 
> (which had been rejected by the Board) and not handling notifications after 
> 60 days limit - but not exclusively so as this should be a comprehensive 
> evaluation of the TMCH's effectiveness including how unforeseen problems have 
> been dealt with. 
>  
> For further information and key links, Tom Dale has provided the attached GAC 
> Secretariat briefing note.
>  
> My proposed way forward for the GAC in preparing its response to the 
> Independent Review of TMCH Services:
>  
> 1. Colleagues familiarise themselves with the draft report and its 
> preliminary conclusions in preparation for consideration of the stakeholder 
> consultation responses in September.  We should bear in mind what the GAC 
> required of this comprehensive review in 2011. In particular we should 
> question whether all the relevant issues relating to mitigating the 
> cybersquatting risk have been covered in the draft report and whether all the 
> emerging issues from the experience since the roll-out of new gTLDs 
> commenced. have been taken into account.  
>  
> Timeline: send me your initial responses to the draft report by 9 September 
> prior to my launch the main GAC exercise which is to review the stakeholder 
> responses (with the help of ICANN staff) in the second half of September and 
> first week of October. 
>  
> How can you contribute? 
>  
> Few of us on the GAC are IPR experts. Back in 2011 several GAC members 
> (including the UK) actively consulted their intellectual property policy 
> expert leads in the respective ministries and agencies, for direction as to 
> the position that the GAC should take on enhancing rights protection while 
> also balancing the opportunity for new stakeholders in the domain name 
> system. So I recommend at this time of the TCMH services review, that 
> colleagues likewise consider engaging their intellectual property policy 
> colleagues - especially those familiar with the cybersquatting risk and 
> complaints and so who would be in contact with brand-owners in particular - 
> in order to develop your inputs into the GAC deliberations on the TMCH, well 
> in advance of the Hyderabad.
>  
> 2. At the Hyderabad meeting, I propose I chair a substantive discussion with 
> the aim of formulating a GAC statement of position on the TMCH services and 
> the revised review report. and as appropriate recommend adjustments both for 
> the current round and the subsequent mechanisms should there be a community 
> decision to extend further the domain name system with more gTLDs.. 
>  
> 3. The TMCH services review will quite possibly be an issue for discussion 
> with the GNSO in Hyderabad (I'm copying in our liaison Mason Cole so that he 
> is aware). One further option for colleagues to consider is the potential 
> value of inviting the review authors (Jiariu Liu of the Stamford Law School, 
> Greg Rafert of Analysis Group, and Katja Seim of the Warton School 
> Pennsylvania University) to present their findings to the GAC and take 
> questions in open session. Let me know what you think of that option in due 
> course.
>  
>  I'm away on summer leave for the rest of August but will be happy to take 
> questions and comments on the above proposed way forward on the Trademark 
> Clearinghouse Services review, when I return to the office on 2 September.   
>  
> Kind regards
>  
> Mark
> 
> Mark Carvell
> ​United Kingdom Representative on the Governmental Advisory Committee of 
> ICANN​
>  
> Global Internet Governance Policy
> Department for Culture, Media and Sport
> mark.carvell@xxxxxxxxxxxxxx <mailto:mark.carvell@xxxxxxxxxxxxxx>
> tel +44 (0) 20 7211 6062 <tel:%2B44%20%280%29%2020%207211%206062>
>  
> On 26 July 2016 at 06:44, Tom Dale <tom@xxxxxxxxxxx <mailto:tom@xxxxxxxxxxx>> 
> wrote:
> Dear GAC
>  
> Please see the news alert from ICANN, below, advising that the draft report 
> of the Review of the Trademark Clearinghouse has been released for public 
> comment. The deadline for comment is 3 September 2016.
>  
> This review is based on a GAC recommendation of May 2011 for a comprehensive 
> post-launch independent review of the Clearinghouse to be conducted one year 
> after the launch of the 75th new gTLD in the round. 
>  
> Further briefing will be provided in the near future.
>  
> Regards
>  
>  
> Tom Dale
> ACIG GAC Secretariat
>  
>  
> From: ICANN News Alert <no-reply@xxxxxxxxxxxxxxxxxx 
> <mailto:no-reply@xxxxxxxxxxxxxxxxxx>>
> Reply-To: "no-reply@xxxxxxxxxxxxxxxxxx <mailto:no-reply@xxxxxxxxxxxxxxxxxx>" 
> <no-reply@xxxxxxxxxxxxxxxxxx <mailto:no-reply@xxxxxxxxxxxxxxxxxx>>
> Date: Tuesday, 26 July 2016 at 2:16 AM
> To: Thomas Dale <tom@xxxxxxxxxxx <mailto:tom@xxxxxxxxxxx>>
> Subject: ICANN News Alert -- Draft Report of the Independent Review of the 
> Trademark Clearinghouse Available for Public Comment
>  
>  <http://www.icann.org/>
> News Alert
> 
> https://www.icann.org/news/announcement-2016-07-25-en 
> <https://www.icann.org/news/announcement-2016-07-25-en>
> Draft Report of the Independent Review of the Trademark Clearinghouse 
> Available for Public Comment
> 25 July 2016
> 25 July 2016 – ICANN today announced the publication of the Draft Report of 
> the Independent Review of the Trademark Clearinghouse. Specific 
> considerations related to the matching criteria, Trademark Claims service and 
> Sunrise period are assessed in the review, conducted by Analysis Group.
> Read the report 
> <https://newgtlds.icann.org/en/reviews/tmch/draft-services-review-25jul16-en.pdf>
>  [PDF, 1.15 MB].
> The report is available for public comment through 3 September 2016. Feedback 
> will be incorporated into a revised report.
> Comment on the Draft Report of the Independent Review of the Trademark 
> Clearinghouse 
> <https://www.icann.org/public-comments/tmch-review-2016-07-25-en>.
> Key Findings:
> 
> Expanding Matching Criteria to include non-exact matches may be of limited 
> benefit: The dispute rate of completed registrations that are variations of 
> trademark strings is very low.
> Extending the Trademark Claims Service may have diminishing value: 
> Registrations of names matching trademarks decline after the required 90-day 
> Claims service period ends.
> Few trademark holders utilize the Sunrise period: Most users of the Trademark 
> Clearinghouse submit proof of use to gain access to the Sunrise period. 
> However, across eligible trademark holders, fewer than 20 percent have used 
> the Sunrise period to date.
> Additional Information
> 
> An independent review of the Trademark Clearinghouse was recommended 
> <https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf>
>  [PDF, 110 KB] by the GAC in May 2011 to be completed after the launch of the 
> New gTLD Program. The review is informed by an analysis of Trademark 
> Clearinghouse and third-party data sources, including data collected from 
> stakeholders via interviews and surveys.
> About ICANN
> 
> ICANN's mission is to help ensure a stable, secure and unified global 
> Internet. To reach another person on the Internet, you have to type an 
> address into your computer - a name or a number. That address has to be 
> unique so computers know where to find each other. ICANN helps coordinate and 
> support these unique identifiers across the world. ICANN was formed in 1998 
> as a not-for-profit public-benefit corporation and a community with 
> participants from all over the world. ICANN and its community help keep the 
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> facilitates the use of other unique Internet identifiers. For more 
> information please visit: www.icann.org <https://www.icann.org/>.
>  
> 
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>  
>  
> Mason Cole 
> VP Communications & Industry Relations
> Donuts Inc.
> ………………………………
> ……
> ……
> mason@donuts.email <mailto:mason@donuts.email>
> Ofc +1 503 908 7623
> Cell +1 503 407 2555
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Mason Cole 
VP Communications & Industry Relations
Donuts Inc.
…………………………………………
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Cell +1 503 407 2555