[bc-gnso] DRAFT BC Public Comments on DAGv4

Phil Corwin pcorwin at butera-andrews.com
Sat Jul 17 00:11:15 UTC 2010

Ron (and other BC members who contacted me to ask that I provide alternative URS language):

I appreciate the request, as I appreciate the hard work put in by Ron and Sarah on the draft.

That said, a few word changes will not suffice to alter ICA's dissent, as we have an entirely different perspective. We represent individuals and companies with substantial investments in domain portfolios. They view domains in the same way that most of you (and we) view trademarks -- as an intangible asset with substantial value. When a trademark rights protection is proposed it might be useful to ask whether you would be willing to have one of your trademarks suspended, or forfeited, on the basis of what is on the table. If not, then don't expect registrants to embrace it. In no way do we condone trademark infringement, but proposed responses to it need to assure basic due process.

If a majority wills it then the BC is within its rights to proffer a reworking of the same positions it has articulated on prior occasions, and it should expect essentially the same results -- especially after BC members participated in an STI process that reworked the IRT recommendations, and the STI's work was embraced by the GNSO and approved by the Board. If ICANN staff have significantly altered the STI's consensus recommendations then that certainly should be raised, but otherwise the rights protections for new gTLDs have been pretty much baked into the DAG. Does anyone really think they will be reopened in any significant way?

As regards the specifics of the URS provision, we cannot agree that the URS should have the same substantive standard as the UDRP. The URS was proposed by the IRT as reserved for "obvious", "no brainer" rights disputes, and was originally proposed with a higher evidentiary standard to distinguish URS cases from UDRPs. We don't think the BC's credibility on trademark matters is enhanced when it consistently articulates a harder line than that of the IPC, which conceived of and oversaw the IRT. As for urging that the URS lead to a domain transfer and not just a suspension -- again, this goes beyond the IRT recommendation and would likewise blur the distinction between the URS and UDRP.

Finally, we find the discussion of the "impact" test for a finding of RDNH in the URS to be confusing -- but we do believe that if a complainant advances deliberate falsehoods with the intent of having a favorable impact on its complaint then it is clearly guilty of attempting to abuse the available system.

Beyond the URS, our only other comment on the rights protection language is to note our strong questioning of a TM Clearinghouse regime in which an "identical match" is defined as "typographical variations". Identical means identical, not variations. Variations to what degree? Having a trademark in one word doesn't provide a right to fire warning shots at tens of thousands of possible variants of that word, multiple degrees of separation away from it. If you're going to propose that variations be encompassed then it really is incumbent to articulate some defining limits on that notion - "we know it when we see it" is really not adequate assurance for registrants. And, of course, these issues become even more problematic for dictionary words that are trademarked for various purposes. Please let's remember that in most instances infringement can't just be determined by the name of a domain but requires a look at how it is being used.

Finally, to note an area of agreement -- we share the concern that ICANN devotes inadequate resources to compliance, and indeed in Brussels we suggested publicly that it earmark a meaningful portion of revenues from new gTLD applications to that end.

Summing up, we would have to oppose the URS regime that the majority of the BC seems to favor as providing inadequate assurance of due process to registrants, and we think the overall position on rights protection is backwards looking given that the STI train has left the station. Again, this does not mean we are unsympathetic to the concerns of rights holders. Throughout the past 18 months we have advocated comprehensive UDRP reform that would address the concerns of all parties across the entire gTLD space, and we continue to believe that a good faith collaboration could produce positive changes that could be put in place in tandem with the opening of new gTLDs.

Regards to all,

Philip S. Corwin
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 BRUEGGEMAN, JEFF (ATTSI) [jb7454 at att.com]
Sent: Friday, July 16, 2010 3:36 PM
To: Ron Andruff; frederick felman; bc-GNSO at icann.org
Subject: RE: [bc-gnso] DRAFT BC Public Comments on DAGv4

Thanks Ron and Sarah.  AT&T supports filing comments and I like how you’ve updated them.  While I was not involved in the original BC comments, I would note that you could add a reference to the recommendation in the Economic Study that it may be wise for ICANC to continue its practice of introducing new gTLDs in discrete, limited rounds.

Jeff Brueggeman
AT&T Public Policy
(202) 457-2064

From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Ron Andruff
Sent: Friday, July 16, 2010 12:34 PM
To: 'frederick felman'; bc-GNSO at icann.org
Subject: RE: [bc-gnso] DRAFT BC Public Comments on DAGv4

Thanks to Mark Monitor and AIM for your notes of support for the circulated draft.

I encourage other members to give the doc a quick read.  While it is several pages long, please note that it is the same document we submitted for DAGv3 so what we are asking is for you to review the redlines and give your comments/amendments.   To that end, Phil Corwin, can you send your suggested URS text asap?

Thanks again everyone for taking a moment to review the DAGv4 draft comments.


Ronald N. Andruff
RNA Partners, Inc.
220 Fifth Avenue
New York, New York 10001
+ 1 212 481 2820 ext. 11

From: frederick felman [mailto:ffelman at markmonitor.com]
Sent: Friday, July 16, 2010 12:21 PM
To: Ron Andruff; bc-GNSO at icann.org
Subject: Re: [bc-gnso] DRAFT BC Public Comments on DAGv4
Importance: High

MarkMonitor support the BC comments to DAGv4.

On 7/15/10 7:20 AM, "Ron Andruff" <randruff at rnapartners.com<https://exchange.sierracorporation.com/owa/UrlBlockedError.aspx>> wrote:
Dear Members,

Further to my reminder earlier this week regarding the need for a BC public comment on DAGv4, Sarah Deutsch and I have developed a draft for member review and comment.  Effectively, we have taken the BC’s DAGv3 comments and added/amended based on (1) staff having largely ignored our comments in DAGv2 and v3; and (2) utilized subsequent information that has come available in the interim (e.g., the latest economic study). FYI, Sarah drafted the RPM material and I took responsibility for the other elements.

We ask that members review and comment on the document at your earliest convenience, so that we can meet the submission deadline of Wednesday, July 21st.  Sorry for the late posting, but unfortunately with summer holidays and all, a few things are slipping between the cracks...

Thanks in advance for your soonest input.

Kind regards,


Ronald N. Andruff

RNA Partners, Inc.
220 Fifth Avenue
New York, New York 10001
+ 1 212 481 2820 ext. 11

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