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

[Phil Corwin <psc@xxxxxxxxxxx>]

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] On 
Behalf Of Mason Cole
Sent: Friday, October 14, 2016 7:34 PM
To: GNSO Council List (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

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

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
 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

[ICANN]<http://www.icann.org/>
News Alert
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 Internet secure, stable and 
interoperable. It also promotes competition and develops policy for the 
top-level of the Internet's naming system and 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.
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mason@donuts.email<mailto:mason@donuts.email>
Ofc +1 503 908 7623
Cell +1 503 407 2555




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