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

[Phil Corwin]

I don't believe that references to  "overwrought pounding on the table by a small extremely vocal set of players!" are helpful. As a BC member who tried and failed to secure one place within the IRT for an expert with the perspective of defending UDRP actions (an omission that occured in part because, as found by the Ombudsman, the BC failed to provide its members with timely notice of the opportunity to apply for IRT membership), as someone who made detailed and thoughtful critiques of the IRT process and Report generally without ever pounding on the table, and as a representative of a group that is genuinely opposed to trademark infringement and would like the opportunity to contribute to a constructive and balanced approach that can be made applicable to all gTLDs, new and incumbent, I take exception to the statement -- and I haven't even mentioned the many overwrought statements that have been made by representatives of TM interests.

But let's put all that aside and try to move forward constructively.  The staff assimilation of the URS seems to be a proposal that has little support from either side of the issue. I spoke with Zahid earlier today and indicated my belief that there is still a possibility for a balanced and constructive proposal to be put on the table as an alternative. He welcomed that message and advised me to stay engaged. The BC has a number of domain investors as members, and on their behalf I would hope that at least one of the four CSG slots for the STI-DT could reflect that perspective and that we will not again be shut out of any official status as we were for the IRT.



Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

________________________________
From: owner-bc-gnso at icann.org [owner-bc-gnso at icann.org] On Behalf Of Marilyn Cade [marilynscade at hotmail.com]
Sent: Sunday, October 25, 2009 1:56 AM
To: Liz Williams; Zahid Jamil
Cc: bc - GNSO list
Subject: RE: 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

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 acti! on/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 (http://www.icann.org/en/topic! s/new-gtlds/dag-en.htm<http://www.icann.org/en/topics/new-gtlds/dag-en.htm>) and those mentioned on
for Rights Protection Mechanism (http://www.icann.org/en/public-comment/#prpm-new-gtlds -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 to 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 community
The 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 http://www.circleid.com/members/2921/ )

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 3
types:
(a) The Registry Operator¡¯s manner
of operation or use of a TLD is
inconsistent with the
representations made in the TLD
application as approved by
ICANN and incorporated into the
applicable Registry Agreement
and such operation or use of the
TLD is likely to cause confusion
with the complainant¡¯s mark; or
(b) The Registry Operator is in
breach of the specific rights
protection mechanisms
enumerated in such Registry
Operator¡¯s Agreement and such
breach is likely to cause
confusion with complainant¡¯s
mark; 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 si! milar to the complainant¡¯s mark, meeting any of the following conditi ons: (i) taking unfair advantage of the distinctive character or the reputation of
the complainant¡¯s mark, or (ii) unjustifiably impairing the distinctive character or the
reputation of the complainant¡¯s mark, or (iii) creating an impermissible likelihood of
confusion with Complainant¡¯s mark.



For a Registry Operator to ! be liable for toplevel
infringement, a complainant must assert
and prove by clear and convincing evidence
that the Registry Operator¡¯s affirmative
conduct in its operation or use of its gTLD, that is identical or confusingly similar to the
complainant¡¯s mark, causes or materially
contributes to the gTLD: (a) taking unfair
advantage of the distinctive character or the
reputation of the complainant¡¯s mark, or (b)
unjustifiably impairing the distinctive character
or the reputation of the complainant¡¯s mark, or








(c) creating an impermissible likelihood of
confusion with the complainant¡¯s mark.
For a Registry Operator to be liable for the
conduct at the second level, the complainant
must assert and prove by clear and convincing
evidence:

(a) that there is substantial ongoing
pattern or practice of specific bad faith intent
by the registry operator to profit from the sale
of trademark infringing domain names; and



(b) of the registry operator¡¯s bad faith intent to profit from the systematic registration of
domain names within the gTLD, that are
identical or confusingly similar to the
complainant¡¯s mark, which: (i) takes unfair
advantage of the distinctive character or the
reputation 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 of
confusion with the complainant¡¯s mark. In this
regard, it would not be nearly enough to show
that the registry operator was on notice of
possible of trademark infringement through
registrations 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:&nb! sp; 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 BEST 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 http://www.icann.org/en/topics/new©\gtlds/gnso©\consultations©\reports©\en.htm), which is an as similation of the IRT work and Board concerns), or
b) propose an alternative that is equivalent or more effective and implementable.

A six weeks window has been allowed.
&nbs! p;
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 b! ack ¨C but the GPML was just removed ¨C no explanation 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 Jamil
Barrister-at-law
Jamil & Jamil
Barristers-at-law
219-221 Central Hotel Annexe
Merewether Road, Karachi. Pakistan
Cell: +923008238230
Tel: +92 21 5680760 / 5685276 / 5655025
Fax: +92 21 5655026
www.jamilandjamil.com<http://www.jamilandjamil.com/>

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From: owner-bc-gnso at icann.org<mailto:owner-bc-gnso at icann.org> [mailto:owner-bc-gnso at icann.org] On Behalf Of Mike Rodenbaugh
Sent: Sunday, October 25, 2009 7: 19 AM
To: bc-gnso at icann.org<mailto:bc-gnso at icann.org>
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 Rodenbaugh
RODENBAUGH LAW
548 Market Street
San Francisco, CA  94104
( 415) 738-8087<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://!
%20rodenbaugh.com/contact>

http://rodenbaugh.com<http://rodenbaugh.com/>

From: owner-gnso-sti at icann.org<mailto:owner-gn!
%20so-sti at icann.org> [mailto:owner-gnso-sti at icann.org] On Behalf Of Margie Milam
Sent: Saturday, October 24, 2009 6:01 PM
To: Council GNSO; gnso-sti at icann.org<mailto:gnso-sti at icann.org>
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 Milam
Senior Policy Counselor

ICANN

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