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

Mon Oct 26 08:31:20 UTC 2009

I would not see any reason why the civil society folks would object to the brand holder being able to get back names that are subject to the URS, rather than have them just picked up again for further abuse. 
Zahid, do you have any insights on that point? 
Sarah and you are quite right, in my view, that defensive registrations are now an 'open field'. NOT good. 
We are missing you, David.  as well as others from the BC. 
I'll leave it to others to bring David up to date on the range of challenges that we face in figuring out the best approaches, AND an effective strategy. The GNSO Policy Council is not a very stable environment right now, due partly to all the changes in players within the Council and the high degree of stress due to time limitations. 
but, within the BC, we are going to also have to do work on this regarding our positions substantively. It is going to be a very challenging time ahead, and I know all of us, who have strongly held interests, will try our best to work collegially throughout these days....
I think that in some ways, we are now reaping some of the fruits of how the IRT was initially conceptualized and put forward. What is now very clear is that the ability of Bruce and Rita to get support for the creation of the IRT, more or less 'masked' the underlaying skeptism among a larger number of Board members, and perhaps also the legal staff [just speculating]. That means that we actually lost a good deal of time in 'educating' and improving understanding...
Fortunately, we actually have a newly strengthened set of concerned potential allies with the GAC clearly expressing its concerns about the 'overarching issues' of protection of IPR in the new gTLDs, and the reference to this issue in the AoC. BUT that doesn't mean that we have actually achieved the level of acceptance of 'our' concerns as business users -- NOT merely IP attorneys/representatives as represented by the IPC, but the broader and aligned concerns about fraud, malicious conduct, etc. 
BUT, we do have work ahead within the BC; within the Stakeholder group, and then within the "HOUSE".  We need to also be thinking about how to further the good relationships that exists in some areas with the Registries. 

From: DFares at newscorp.com
To: pcorwin at butera-andrews.com; sarah.b.deutsch at verizon.com; mike at rodenbaugh.com; marilynscade at hotmail.com; lizawilliams at mac.com; zahid at dndrc.com
CC: bc-gnso at icann.org
Date: Mon, 26 Oct 2009 03:35:18 -0400
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

Thanks Phil.  If I am not mistaken, there was representation
from all of the consitituencies on the IRT and therefore at least some level of
agreement.   

From: Phil Corwin
[mailto:pcorwin at butera-andrews.com] 

Sent: Monday, October 26, 2009 3:17 AM

To: Fares, David; 'sarah.b.deutsch at verizon.com'; 'mike at rodenbaugh.com';
'marilynscade at hotmail.com'; '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

With
all due respect, if the BC's efforts are devoted to trying to revert to the IRT
proposals rather than trying to find common ground with those who opposed them
(as Zahid is commendably trying to achieve) the result is likely to be an inability
to achieve GNSO consensus and the Board's default adoption of the staff
assimilations that no one seems happy with. 

Philip S. Corwin 

Partner, Butera & Andrews 

1301 Pennsylvania Ave., NW 

Suite 500 

Washington, DC 20004 

2026635347/Office 

2022556172/Cell 

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

From:
owner-bc-gnso at icann.org <owner-bc-gnso at icann.org> 

To: Deutsch, Sarah B <sarah.b.deutsch at verizon.com>; mike at rodenbaugh.com
<mike at rodenbaugh.com>; Marilyn Cade <marilynscade at hotmail.com>; Liz
Williams <lizawilliams at mac.com>; Zahid Jamil <zahid at dndrc.com> 

Cc: bc - GNSO list <bc-gnso at icann.org> 

Sent: Mon Oct 26 03:09:17 2009

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 

Colleagues,

While I am not in Seoul so cannot gauge the dynamics, I suggest
that the BC advocate adoption of the IRT's recommendations in their
entirety.  

Thanks,

David

From:
owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Deutsch,
Sarah B

Sent: Sunday, October 25, 2009 6:09 PM

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)
738-8087

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)
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

Notice / Disclaimer

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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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