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 Jamil
zahid at dndrc.com
Sun Oct 25 23:26:21 UTC 2009
Thought i’d clarify some of what I’d posted earlier the Staff proposal for Post Delegation introduces what I refer to as the ‘blind eye’ provision:
In short the IRT had recommended that:
>From IRT Recommendation:
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.
>From Staff Proposal up for Comments:
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.
The use of the words affirmative conduct in the Staff proposal means that TM owners can only trigger Post Delegation if there is clear and convincing proof that the Registry Operator actually and positively acted in a manner as described. However, this leaves open omission and recklessness or turning a ‘blind eye’ to systemic abuse on the gTLD. Moreover, if there is a change in the nature of use of the gTLD in breach of the representations made in the new gTLD application or the Registry Agreement (which the IRT had recommended), the TM Owner / aggrieved party cannot trigger a Post Delegation Dispute Resolution. So there is no protection awarded to TM Owners and even communities in case any of this happens once the gTLD has been delegated. As Staff put it – Registry Agreement is a bilateral contract and ICANN would enforce it – basically trust us.
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
Notice / Disclaimer
This 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 intellectual 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: Deutsch, Sarah B [mailto:sarah.b.deutsch at verizon.com]
Sent: Monday, October 26, 2009 4:09 AM
To: mike at rodenbaugh.com; Marilyn Cade; 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
Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy.
Sarah
Sarah B. Deutsch
Vice President & Associate General Counsel
Verizon Communications
Phone: 703-351-3044
Fax: 703-351-3670
sarah.b.deutsch at verizon.com
_____
From: Mike Rodenbaugh [mailto:mike at rodenbaugh.com]
Sent: Sunday, October 25, 2009 3:20 AM
To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B
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
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
Notice / Disclaimer
This 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 intellectual 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 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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