Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3

Marilyn Cade marilynscade at
Sun Oct 25 05:56:16 UTC 2009

Zahid, your analysis is extremely helpful.
I have a few thoughts. One is about how disturbing this is as a 'precedent', as well as the specifics of what has actually taken place in terms of the outcome/content; e.g. what the present proposals are/and the work before the Council on the Board letter. 
I had understood that this letter would be part of your Council/Board dinner. If that is the case, it would be helpful to keep that in mind and plan to have a discussion with the BC membership again on Monday, BEFORE the Tuesday a.m. breakfast. 
When we discuss this at the ad hoc huddle  tonight, can we also get a debrief from you not only on this, but also on how the discussions go today with the GAC. 
You are making a point that I have a concern about as well. It appears that due to somewhat overwrought pounding on the table by a small extremely vocal set of players/people, significant changes have been made.
The way that the IRT was set up was driven by a Board resolution. The initial approach to the participants was in fact broadened from the 7-8 IP attorneys chosen by the IPC into a broadened approach that was not totally open, but was composed of 'experts'. The work product was then put out for consultation and comments taken. 
I am thinking that what we are seeing is that the staff then made major changes, having taken comments 'selectively' into account. 
I think we have to ask ourselves the following: IRT recommendations, and following on comments.  On balance, based on the predominance of comments, do we think that the staff recommendations /proposals reflect the comments fairly and on balance? 
I ask that question because I am thinking about 'recourse' if we believe that our interests are harmed by this action/failure of action. 
Will be very good to talk about this tonight. 

On 25 Oct 2009, at 02:10, Zahid Jamil wrote:This document was prepared for a meeting held yesterday between the IRT and Staff (Kurt, Dan) and a Board Member (Bruce). Here are some points that may interest members: The outcome from Staff in the DAG3 ( and those mentioned onfor Rights Protection Mechanism ( -difficult to find on the website and not connected to the DAG3¡¯s website) DO NOT REFLCT the IRT Recommendations. It seems that the Staff has completely reengineered the solutions.   To a large extent even though the title of the solution may be the same but the contents are effectively not what the IRT recommended. So to give members a feel of the process and what Staff acknowledged in yesterday¡¯s meeting: Focusing on 5 Solutions:1.       Reserved List (GPML)2.       Central IP Database (IP Clearinghouse)3.       Rapid Suspension (URSS)4.       Rights holders right t!
 o take a Registry through a Dispute Resolution after the gTLD is launched (Post Delegation Dispute Resolution Procedure PDDRP)5.       Thick Whois Eg. 1 - So for instance, in regards PDDRP: There were no comments from the communityThe Board agreed at the higher level to a PDDRP In my view this would have mean that Staff would go ahead and incorporate the IRT solution (maybe just maybe filling in some holes) into DAG3 or the Rights Protection Mechanism.  This wasn¡¯t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman¡¯s article ) So as I put in the meeting yesterday Staff swapped the cards on the IRT, the community, and the Board! (But since this was too tricky they didn¡¯t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim ¨C 3types:(a) The Registry Operator¡¯s mannerof operation or use of a TLD isinconsistent with therepresentations made in the TLDapplication as approve!
 d byICANN and incorporated into theapplicable Registry Agreementand su
ch operation or use of theTLD is likely to cause confusionwith the complainant¡¯s mark; or(b) The Registry Operator is inbreach of the specific rightsprotection mechanismsenumerated in such RegistryOperator¡¯s Agreement and suchbreach is likely to causeconfusion with complainant¡¯smark; or            (c) The Registry Operator manner of operation or use of the TLD exhibits a bad faith intent to profit from the systemic registration of domain name registrations therein, which are identical or confusingly similar to the complainant¡¯s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation ofthe complainant¡¯s mark, or (ii) unjustifiably impairing the distinctive character or thereputation of the complainant¡¯s mark, or (iii) creating an impermissible likelihood ofconfusion with Complainant¡¯s mark.  For a Registry Operator to be liable for toplevelinfringement, a complainant must assertand prove by clear and con!
 vincing evidencethat the Registry Operator¡¯s affirmativeconduct in its operation or use of its gTLD, that is identical or confusingly similar to thecomplainant¡¯s mark, causes or materiallycontributes to the gTLD: (a) taking unfairadvantage of the distinctive character or thereputation of the complainant¡¯s mark, or (b)unjustifiably impairing the distinctive characteror the reputation of the complainant¡¯s mark, or        (c) creating an impermissible likelihood ofconfusion with the complainant¡¯s mark.For a Registry Operator to be liable for theconduct at the second level, the complainantmust assert and prove by clear and convincingevidence: (a) that there is substantial ongoingpattern or practice of specific bad faith intentby the registry operator to profit from the saleof trademark infringing domain names; and   (b) of the registry operator¡¯s bad faith intent to profit from the systematic registration ofdomain names within the gTLD, that areidentical or confusingly si!
 milar to thecomplainant¡¯s mark, which: (i) takes unfairadvantage of t
he distinctive character or thereputation of the complainant¡¯s mark, or (ii)unjustifiably impairs the distinctive character or the reputation of the complainant¡¯s mark, or (iii) creates an impermissible likelihood ofconfusion with the complainant¡¯s mark. In thisregard, it would not be nearly enough to showthat the registry operator was on notice ofpossible of trademark infringement throughregistrations in the gTLD. So basically if a Rights holder or a community that doesn¡¯t object at the application stage since the representations in the Application and the Registry Agreement seem fine has no recourse subsequently to assert and challenge in case there is a breach of the Registry Agreement or those representations in the application. ICANN staff¡¯s response was:  we will independently deal with enforcement brought to our notice.  Basically trust us to enforce Registry contracts.  Eg. 2 - In regards the URSS:ICANN staff has changed the Rapid Suspension from MANDATORY to BE!
 ST PRACTICE Also delinked URSS from the GPML and Clearing House ¡°The Guidebook proposal does not mention a pre©\registration process utilizing the Clearinghouse¡± And since the Board was advised that this seems more like Policy the Board has sent a letter to the GNSO to either: a) approve the staff model (details of which can be found here©\gtlds/gnso©\consultations©\reports©\en.htm), which is an assimilation of the IRT work and Board concerns), orb) propose an alternative that is equivalent or more effective and implementable. A six weeks window has been allowed. This basically means that if GNSO cannot reach consensus then Staff Model is likely to go through  The IRT proposals thus have been side tracked and swapped.  Example 3 ¨C Reserved List (GPML)It¡¯s just gone ¨C Staff had said that they would complete their research (about strongest global brands- get data about global brands and see how many countries these brands are registered!
  in) and then come back ¨C but the GPML was just removed ¨C no explana
tion and without completing this study.SO NO RESERVED LIST ¨C AND NO SOLUTION TO DEFENSIVE REGISTRATIONS!  Generally: In response to protestations Kurt said in regards some aspects ¡®you¡¯re preaching to the converted¡¯  and generally said ¡®go ahead and scream about it¡¯ ¨C basically do what the Non commercials are doing.       Similarly         Sincerely, Zahid JamilBarrister-at-lawJamil & JamilBarristers-at-law219-221 Central Hotel AnnexeMerewether Road, Karachi. PakistanCell: +923008238230Tel: +92 21 5680760 / 5685276 / 5655025Fax: +92 21 Notice / DisclaimerThis message contains confidential information and its contents are being communicated only for the intended recipients . If you are not the intended recipient you should not disseminate, distribute or copy this e-mail.  Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellec!
 tual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited. From: owner-bc-gnso at [mailto:owner-bc-gnso at] On Behalf Of Mike Rodenbaugh
Sent: Sunday, October 25, 2009 7:19 AM
To: bc-gnso at
Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Further fyi, re STI (¡°Specified TM Issues¡±). Mike RodenbaughRODENBAUGH LAW548 Market StreetSan Francisco, CA  94104(415) 738-8087http://rodenbaugh.comFrom: owner-gnso-sti at [mailto:owner-gnso-sti at] On Behalf Of Margie Milam
Sent: Saturday, October 24, 2009 6:01 PM
To: Council GNSO; gnso-sti at
Subject: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Dear All, As we discussed yesterday,  attached is  a document that summarizes the key differences between the IRT and the Applicant Guidebook Version 3.   This matrix seeks to succinctly present areas of contrast and briefly explain the rationale for the differences.    Please review this draft  and let me know  whether there is any other information that should be included to facilitate the GNSO¡¯s work on the Board request. Best regards, Margie MilamSenior Policy CounselorICANN
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