[Gnso-newgtld-wg-wt3] Legal Rights Objection - Strawman for WT3
Aikman-Scalese, Anne
AAikman at lrrc.com
Tue Feb 20 00:54:16 UTC 2018
The standard was whether an applicant’s POTENTIAL use of the applied for TLD would be LIKELY to infringe the objector’s existing trademark, or IGO name or acronym. It was never based on a finding of actual infringement.
The BIG policy change implicated by the bad faith standard proposal is that it does not comport with the determination as set out below either as to “POTENTIAL use” or as to “impermissible LIKELIHOOD of confusion” (emphasis added)
See snip below from the WIPO page discussing the elements of the LRO:
[cid:image001.png at 01D3A9AA.A612A2D0]
Anne E. Aikman-Scalese
Of Counsel
520.629.4428 office
520.879.4725 fax
AAikman at lrrc.com<mailto:AAikman at lrrc.com>
_____________________________
[cid:image004.png at 01D3A9AA.A8743980]
Lewis Roca Rothgerber Christie LLP
One South Church Avenue, Suite 2000
Tucson, Arizona 85701-1611
lrrc.com<http://lrrc.com/>
From: Rubens Kuhl [mailto:rubensk at nic.br]
Sent: Monday, February 19, 2018 5:47 PM
To: Aikman-Scalese, Anne
Cc: icannlists; Terri Agnew; Karen Day; Paul McGrady; gnso-newgtld-wg-wt3 at icann.org
Subject: Re: [Gnso-newgtld-wg-wt3] Legal Rights Objection - Strawman for WT3
Anne,
Do you believe a bad faith standard would be a significant change from actual implementation ? Because what Paul already pointed out that is that following the 2012 LRO to the letter, no one would have been found infringing, since there was no use. There is a criteria that LRO panels followed that wasn't infringement, and since the LRO results seem to have been received in a good light, at least reflecting the actual implementation into policy would be good, IMHO.
Rubens
On 19 Feb 2018, at 20:49, Aikman-Scalese, Anne <AAikman at lrrc.com<mailto:AAikman at lrrc.com>> wrote:
Paul,
A requirement to meet a standard of bad faith in order to succeed in a Legal Rights Objection is a significant change in policy. Bad faith cannot be shown by an “inference” resulting from a failure to make a statement disclaiming any bad faith intent on the part of an applicant. This proposed new “bad faith” standard is far too high a standard on which to condition a Legal Rights Objection if that is what you are proposing.
Anne
Anne E. Aikman-Scalese
Of Counsel
520.629.4428 office
520.879.4725 fax
AAikman at lrrc.com<mailto:AAikman at lrrc.com>
_____________________________
<image001.png>
Lewis Roca Rothgerber Christie LLP
One South Church Avenue, Suite 2000
Tucson, Arizona 85701-1611
lrrc.com<http://lrrc.com/>
From: icannlists [mailto:icannlists at winston.com]
Sent: Sunday, January 28, 2018 6:53 PM
To: Aikman-Scalese, Anne; icannlists; 'Terri Agnew'; 'Karen Day'; Paul McGrady
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: RE: Legal Rights Objection - Strawman for WT3
Hi Anne,
It might show likelihood of infringement, but without use, there can be no infringement. Additionally, it seems unlikely that someone would disclose an intent to infringe in an application. For example, it seems highly unlikely that a party would state affirmatively that they would use a .apple to sell computer parts. However, a failure to disclaim such an intent and to propose a process for the registry to monitor and stop such uses, could show an inference of bad faith.
Bad faith is not a significant change from the policy. The GNSO Council policy does not require an infringement analysis nor does it exclude a bad faith based policy.
Best,
Paul
From: Aikman-Scalese, Anne [mailto:AAikman at lrrc.com]
Sent: Tuesday, January 23, 2018 5:44 PM
To: icannlists <icannlists at winston.com<mailto:icannlists at winston.com>>; 'Terri Agnew' <terri.agnew at icann.org<mailto:terri.agnew at icann.org>>; 'Karen Day' <Karen.Day at sas.com<mailto:Karen.Day at sas.com>>; Paul McGrady <policy at paulmcgrady.com<mailto:policy at paulmcgrady.com>>
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: RE: Legal Rights Objection - Strawman for WT3
My note on this would be that the description of the purpose and the proposed use of the TLD (Question 18) could certainly demonstrate infringement without a showing of bad faith per se. Bad faith is a hard standard to meet and a very big change in policy.
Anne
Anne E. Aikman-Scalese
Of Counsel
520.629.4428 office
520.879.4725 fax
AAikman at lrrc.com<mailto:AAikman at lrrc.com>
_____________________________
<image005.png>
Lewis Roca Rothgerber Christie LLP
One South Church Avenue, Suite 2000
Tucson, Arizona 85701-1611
lrrc.com<http://lrrc.com/>
From: icannlists [mailto:icannlists at winston.com]
Sent: Tuesday, January 23, 2018 3:26 PM
To: Aikman-Scalese, Anne; 'Terri Agnew'; 'Karen Day'; Paul McGrady
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: RE: Legal Rights Objection - Strawman for WT3
Thanks Karen.
I’m concerned that with current workload and the LA GNSO Council followed immediately by the NCPH Intercessional (also in LA) that I am not going to have time anytime soon to get into producing a line by line rationale which correspond to the detailed discussion this I already had with this group. If there are specific questions on the proposal, I will do my best to deal with them on the list. Please feel free to pass those on. As far as the overall reasoning, it is that the version in the AGB is an infringement-based policy and infringement requires use. I don’t know how you can “use” an application. The Policy isn’t fit for purpose. My proposal is that we move to a bad-faith based policy (the UDRP is an example of a bad-faith based policy, not an infringement based policy).
Best,
Paul
From: Gnso-newgtld-wg-wt3 [mailto:gnso-newgtld-wg-wt3-bounces at icann.org] On Behalf Of Aikman-Scalese, Anne
Sent: Thursday, January 18, 2018 5:45 PM
To: 'Terri Agnew' <terri.agnew at icann.org<mailto:terri.agnew at icann.org>>; 'Karen Day' <Karen.Day at sas.com<mailto:Karen.Day at sas.com>>; Paul McGrady <policy at paulmcgrady.com<mailto:policy at paulmcgrady.com>>
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: Re: [Gnso-newgtld-wg-wt3] Legal Rights Objection - Strawman for WT3
Thank you Terri. I remember now that it was determined this would be too expensive.
Anne
Anne E. Aikman-Scalese
Of Counsel
520.629.4428 office
520.879.4725 fax
AAikman at lrrc.com<mailto:AAikman at lrrc.com>
_____________________________
<image005.png>
Lewis Roca Rothgerber Christie LLP
One South Church Avenue, Suite 2000
Tucson, Arizona 85701-1611
lrrc.com<http://lrrc.com/>
From: Terri Agnew [mailto:terri.agnew at icann.org]
Sent: Wednesday, January 17, 2018 2:23 PM
To: Aikman-Scalese, Anne; 'Karen Day'; Paul McGrady
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: RE: Legal Rights Objection - Strawman for WT3
Hi all,
As a reminder, we do not record transcription for WT3 meetings, only Adobe Connect and MP3 recording are provided.
Kind regards,
Terri
From: Gnso-newgtld-wg-wt3 [mailto:gnso-newgtld-wg-wt3-bounces at icann.org] On Behalf Of Aikman-Scalese, Anne
Sent: Wednesday, January 17, 2018 2:29 PM
To: 'Karen Day' <Karen.Day at sas.com<mailto:Karen.Day at sas.com>>; Paul McGrady <policy at paulmcgrady.com<mailto:policy at paulmcgrady.com>>
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: Re: [Gnso-newgtld-wg-wt3] Legal Rights Objection - Strawman for WT3
Hi Paul and Karen,
Have not been able to locate the transcript of the call but the mp3 and Chat records are attached for Paul’s consideration.
Anne
Anne E. Aikman-Scalese
Of Counsel
520.629.4428 office
520.879.4725 fax
AAikman at lrrc.com<mailto:AAikman at lrrc.com>
_____________________________
<image005.png>
Lewis Roca Rothgerber Christie LLP
One South Church Avenue, Suite 2000
Tucson, Arizona 85701-1611
lrrc.com[lrrc.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__lrrc.com_&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=hRWuSVZDdC1_uPnksy214DIGYwmr9SkJaaN4uVQLYlU&s=b2n7fIJOUCMYF4o5G37oTOV105dWHTtCfTC6VabXWLs&e=>
From: Gnso-newgtld-wg-wt3 [mailto:gnso-newgtld-wg-wt3-bounces at icann.org] On Behalf Of Karen Day
Sent: Wednesday, January 17, 2018 1:07 PM
To: Paul McGrady
Cc: gnso-newgtld-wg-wt3 at icann.org<mailto:gnso-newgtld-wg-wt3 at icann.org>
Subject: [Gnso-newgtld-wg-wt3] Legal Rights Objection - Strawman for WT3
Dear Paul
On our WT3 call this past week we again reviewed the strawman modifications to the Legal Rights Objection[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_NGSPP_2017-2D02-2D07-2BNew-2BgTLD-2BSubsequent-2BProcedures-2BPDP-2BWork-2BTrack-2B3-3Fpreview-3D_63157176_64067212_7.2.5-2520Legal-2520Rights-2520Objection-2520-2D-2520Strawman-2520Edits.pdf&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=hRWuSVZDdC1_uPnksy214DIGYwmr9SkJaaN4uVQLYlU&s=zFCZ-KaqNV8GuMlqk2Qj7x_XLebUL_qYNGn3_bjm87Q&e=> sections of the AGB which you had presented to the group for our consideration. Since you were not able to join us on the call, the members wanted to ask if you could please provide to the us, via the email list, a written explanation for the overall reasoning for making changes to the LRO, as well as rationale for each of your red lines.
As you will see from the notes and chat transcript, in almost every instance members wanted to know if there had been specific occurrences in the 2012 round which prompted your request for that particular change. If so, they would like to know the details of what those incidents were.
The members felt that having a good understanding of the foundation for your recommendations was essential to the group being able to continue to refine our thoughts and positions on the LRO.
If I can be of any assistance or if you have any questions back while preparing your responses, please don’t hesitate to let me know.
Thanks,
Karen
____________________________
Karen L. Day, NCCP ACP
Brand Protection & Registry Operations Manager
Tel: + 1 919-531-6016 ▪ Mobile: + 1 919-599-4356 ▪ karen.day at sas.com<mailto:karen.day at sas.com>
SAS Institute Inc.▪ SAS Campus Drive ▪ Cary, NC 27513 USA
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