FW: 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

[Mike Rodenbaugh]

Eager to hear opinions of Sarah or any other experts.  I have quite a lot of
experience with that myself, of course.



Also, I’ve realized just now that the IRT itself did NOT recommend that all
domain registrations be checked against the Clearinghouse database, so long
as the registry enacts a sunrise perios, and so the URS is enacted and
mandatory.  Thus Staff has not watered down that aspect of the proposal,
except that they have proposed that the URS be denominated a ‘best
practice’ rather than a mandatory requirement.  I strongly believe that
both elements must be mandatory, and urge that as the BC position.
Obviously, allowing registries to offer only a sunrise period, and no other
RPMs for trademark owners, is no improvement whatsoever over the previous
rollouts of TLDs.



Of course it will be very difficult to get consensus to something even more
stringent than recommended by the IRT, but I think we need to try.  A
fallback option is to require registries to do Clearinghouse lookups, and
provide URS, in order to get the new ‘high security zone’ designation.
But my gut feel on that initiative is that it is worthless, few registrants
will care, thus few contract parties will care.



Mike Rodenbaugh

RODENBAUGH LAW

548 Market Street

San Francisco, CA  94104

(415)
<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer
=http://rodenbaugh.com/contact>  738-8087

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





From: Marilyn Cade [mailto:marilynscade at hotmail.com]
Sent: Saturday, October 24, 2009 11:58 PM
To: Mike Rodenbaugh; Liz Williams; Zahid Jamil; Sarah Deutsch
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



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)
<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer
=http://rodenbaugh.com/contact>  738-8087

http://rodenbaugh.com <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 - 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 - Reserved List (GPML)

It’s just gone - 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 - but the
GPML was just removed - no explanation and without completing this study.

SO NO RESERVED LIST - 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’ - 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

 <http://www.jamilandjamil.com/> 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)
<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer
=http://rodenbaugh.com/contact>  738-8087

http://rodenbaugh.com <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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