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

Sun Oct 25 06:58:04 UTC 2009

Have the actual brand holders from large BC members agreed with that perspective? I've added Sarah, who is an expert on these issues -- I think that there was a few that there needed to be a number of safeguards, not only one or two. 

From: icann at rodenbaugh.com
To: lizawilliams at mac.com; zahid at dndrc.com
CC: bc-gnso at icann.org
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
Date: Sat, 24 Oct 2009 22:53:10 -0700

Thanks Zahid.  Just want to note my strong opinion that, if the
Clearinghouse must be checked against every domain registrations, with
conflicts resulting in notice to the applicant, and the URS is mandatory for
all new TLD registries, then I believe there will be sufficient protections
such that TM owners will not be forced to defensively register their marks. 
Interested to hear if anyone has a different view, and their reasoning, as I
expect the BC will develop a position statement that includes these key points.

Mike Rodenbaugh

RODENBAUGH LAW

548 Market Street

San Francisco, CA  94104

(415) 738-8087

http://rodenbaugh.com

From:
owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Liz
Williams

Sent: Saturday, October 24, 2009 8:54 PM

To: Zahid Jamil

Cc: bc-gnso at icann.org

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

Thanks very much for this analysis.  It is always
disturbing when months of community time and organisational resources are of
questionable value.  It also points again to the difficulty of trying to
do what is essentially policy development outside of the normal policy
development channels but that is a debate for another day.

However, what is your suggestion for a way forward?
 You make a "scream about it" note at the end but that most
likely won't be very productive.  It seems to be that the Board is going
to be required to be the final decision maker given it is highly unlikely that
the Council will reach consensus -- given that lack of consensus was the whole
reason why the IRT was established anyway.

Following Ron's request for items for tonight's meeting, I
suggest that the strategy forward is the subject of tonight's huddle at 6pm in
the bar.  Gin and tonic will be required!

Liz

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/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 similar to the complainant¡¯s mark, meeting any
  of the following conditions: (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:  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 assimilation 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.

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 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

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From: 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

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://rodenbaugh.com

From: owner-gnso-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

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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