[Gnso-newgtld-wg-wt3] Actions/Discussion Notes: Work Track 3 Sub Team Meeting 07 February

Tue Feb 7 16:32:15 UTC 2017

Dear Sub Team Members,

Please see below the action items and discussion notes captured by staff from the meeting on 07 February.  These high-level notes are designed to help Work Track Sub Team members navigate through the content of the call and are not a substitute for the recording.  Please also see the recording on the meetings page at: https://community.icann.org/display/NGSPP/Work+Track+3+Meetings.  In addition, excerpts from the chat room are included below for ease of reference.

In addition, please see the attached documents referenced below – the slides on applicant freedom of expression, the CC2 draft questions, and the legal rights objection strawman edits from Paul McGrady.

Best regards,

Julie

Julie Hedlund, Policy Director

Action Items/Discussion Notes 07 February 2017

1. Update from PDP Full Group

-- No call this week.  Resume next week.

-- Getting volunteers to form small drafting teams for some of the overarching questions.

-- Keeping an eye on the work tracks to develop the CC2 questions.

-- Working towards Copenhagen for the full PDP WG meeting on Saturday, 11 March, tentatively 08;30-12;15 local time.

2. Review of CC2 Questions from WT3.  See: https://docs.google.com/document/d/1iZBCVEAJPBYEDg7jLsMHKkNczR_b6-jH2Wl5eVH-WWM/edit. 

-- Staff and Karen have circulated the link to the Google doc of the CC2 document for review and participation in developing the questions.  (See link above.)

-- Would like to hear from WT3 members about the questions.  No questions yet on new gTLD applicant freedom of expression, but hope to have them after today's discussion (as noted also in the chat).

-- Are we ready to say that these are the questions to send to the full PDP WG? 2 positive checkmarks, one x mark -- need more discussion on legal rights objections questions.

3. 5. Legal Rights Objections – AGB 3.2.2.2 and 3.5.2 / Principal G – Recommendation 3 *Review of Strawman Proposal with Paul McGrady (attached)

-- Discussed this previously and had some good feedback.

-- Paul McGrady created a strawman (attached).

3.2.2.2 Legal Rights Objection

First Para.  

-- Changed first sentence to "Any rightsholder".

-- Changed "infringed" to "abused by the applied-for gTLD..." -- "infringed" made this unworkable since it is so narrow. 

3.5.2 Legal Rights Objection:

-- Added "or was filed for the purpose of triggering a private auction proceeding designed to obtain a payment from the objecter."

-- 1. Whether the applied-for gTLD is identical [strike "or"] similar, add "or a translation or transliteration of" add open parens "(" prior to "including" and closed "parens ")" after "meaning".

-- 3. Changed to "a applicant, in advocance of...conducted a trademark search for trademarks corresponding to the applied-for string: b. if the objection is based on common law rights, whether or not the applicant knew or should have known of the objector's mark", addition of new sections d and e.

-- 5. Added "In the event that the string does not correspond to a famous trademark owned by the objector..."

-- 6. Added new text [see the document]

-- 7. Deleted as this can be gamed with mere corporate filings.

-- 8.  Added new text [see the document].

Discussion:

-- Briefing on IGO/INGO PDP -- we need a placeholder where we mention IGO rights to make sure we are consistent with the final outcome of the PDP.

-- Determining intent -- need to see if Paul's proposal addresses that or if there are other approaches.

>From the chat:

-- Jeff Neuman: Paul - what other harms other than Trademark Infringement (or likely infringement) would you recommend this objection address? 

-- Paul McGrady: Infringement is using a trademark for goods or services in a way that leads to consumer confusion in a way that suggests the two sources are somehow related.  The primary form of abuse is having a registry that had an unlimited right at the second level for any type of goods and services.  Primary concern is issue of dilution rather than infringement.

-- Rubens Kuhl: Jeff, note that LRO is currently the vehicle for IGO objections as well... 

-- Jeff Neuman: Would you recommend the doctrine of foreign equivalents apply to only trademarks or would yo propose that they apply to registry operators of existing gTLDs?

-- Rubens Kuhl: Even though it was not used in 2012. 

-- Jon Nevett: what % of english dictionary terms have a trademark in any jurisdiction in the world? Disagree with that too.

-- avri doria: seems to require knowing intent, which is something i thought we said could not be known (personal view).

-- Rubens Kuhl: http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/ (With the caveat disclaimer that LRO criteria is not the same as TMCH criteria).

-- Kristina Rosette (Amazon Registry): The policy recommendation states: Strings must not infringe the existing legal rights of others .. . .   Are you proposing that the policy recommendation be revised to replace "infringe" with "abuse" the legal rights of others?  If not, what is the rationale for the disconnect between the policy recommendations and the change to the LRO standing that you've proposed?

-- Paul McGrady:  I hadn't considered whether this would require a policy change, but we would need to look at that.  We would need to look at recommendation 3 if what we have now is suitable, or if it means the same as section 3.2.2.2.  It says "must not infringe existing legal rights of others" but may mean something different from the legal rights objection.

-- Rubens Kuhl: Real life problem, evidenced by Merck  x Merck: if marks have jurisdiction boundaries, does any restriction require geolocation-based blocking, since the Internet is global in nature ? 

-- avri doria: what does abuse mean?  seems rather open.

-- Rubens Kuhl: Kristina, I believe the timing here is exactly to see whether policy recommendation changes are needed. It seems this would be a required policy change to support for an implementation such as Paul is proposing. 

-- Jon Nevett: I need to drop in a few min too -- have LOTS of concerns with this proposal as well .  We should look at all the LROs from the 2012 round and test any proposed changes. Paul, what kinds of cases are you trying to get at with the proposal?  Think the proposal is way too overbroad.

-- Kristina Rosette (Amazon Registry): My recollection (although going back to 2007-08) is that the GNSO intended to limit the LRO to trademark infringement, but I think it's  something that needs to be reviewed.

-- Rubens Kuhl: Paul, isn't what you suggested covered by UDRP ? For instance, if I register chairing.coach, I'm not trying to use to something to be used with Leather goods... while if someone registers leather.coach or bag.coach, it's likely to be infringing but could be took down by UDRP.   (UDRP and URS, in fact)

-- Jon Nevett: if we can't demonstrate a problem, then why are we looking for a solution?

Questions:

-- Overriding question -- what are you trying to do with this proposal?  What was wrong with the LROs in the first round that you want to change for this round?

-- Answer (Paul McGrady): I tried to walk through the explanations for the changes.  Are there specific proposals that you have concerns about?  The basic concern is if you apply for a registry with intention of abuse and infringement doesn't apply.  Applicants should do a trademark search and show that abuse is not the intent.  There is potential for abuse.

6. Introduction of Topic: New gTLD Applicant Freedom of Expression (See attached slides and excerpt from the Issue Report at: https://community.icann.org/x/Uz2AAw)

-- Background (slide 2)

-- Issue description (slide 3) -- snap shot of where the discussion group was at the time it wrote its report.

-- "ICANN's Procedures and Policies in the Light of Human Rights, Fundamental Freedoms and Democratic Values" (slide 4)

-- Questions and Concerns Related to the Topic (slide 5)

-- Rationale for Policy Development (slide 6) 

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