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
Liz Williams
lizawilliams at mac.com
Sun Oct 25 06:34:04 UTC 2009
Zahid
In that case, spell out the harm, indicate a solution and then this
has to be sent to the Board. The Board needs to see where the process
has gone "off" and what the downsides are.
Another table, perhaps, that puts proposed "staff" solution on one
side and "harms" on the other would be helpful.
Liz
On 25 Oct 2009, at 06:21, Zahid Jamil wrote:
> I would suggest that there is harm by a failure to act here. I do
> not think that the staff recommendations have any connection with
> comments or balancing.
>
>
> 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
> This message contains confidential information and its contents are
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>
> From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On
> Behalf Of Marilyn Cade
> Sent: Sunday, October 25, 2009 11:56 AM
> To: 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
>
> Zahid, your analysis is extremely helpful.
>
> I have a few thoughts. One is about how disturbing this is as a
> 'precedent', as well as the specifics of what has actually taken
> place in terms of the outcome/content; e.g. what the present
> proposals are/and the work before the Council on the Board letter.
>
> I had understood that this letter would be part of your Council/
> Board dinner. If that is the case, it would be helpful to keep that
> in mind and plan to have a discussion with the BC membership again
> on Monday, BEFORE the Tuesday a.m. breakfast.
>
> When we discuss this at the ad hoc huddle tonight, can we also get
> a debrief from you not only on this, but also on how the discussions
> go today with the GAC.
>
> You are making a point that I have a concern about as well. It
> appears that due to somewhat overwrought pounding on the table by a
> small extremely vocal set of players! /people, significant changes
> have been made.
>
> The way that the IRT was set up was driven by a Board resolution.
> The initial approach to the participants was in fact broadened from
> the 7-8 IP attorneys chosen by the IPC into a broadened approach
> that was not totally open, but was composed of 'experts'. The work
> product was then put out for consultation and comments taken.
>
> I am thinking that what we are seeing is that the staff then made
> major changes, having taken comments 'selectively' into account.
>
> I think we have to ask ourselves the following: IRT recommendations,
> and following on comments. On balance, based on the predominance of
> comments, do we think that the staff recommendations /proposals
> reflect the comments fairly and on balance?
>
> I ask that question because I am thinking about 'recourse' if we
> believe that our interests are harmed by this acti! on/failure of
> action.
>
> Will be very good to talk about this tonight.
>
>
>
> 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/topic! s/
> 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 si! milar to the complainant’s mark, meeting any of the
> following conditi ons: (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:&nb! sp; 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 as
> similation 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.
> &nbs! p;
> 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 b! ack – 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
> www.jamilandjamil.com
>
> Notice / Disclaimer
> This message contains confidential information and its contents are
> being communicat! ed only for the intended recipients . If you are
> not the intended reci pient 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) 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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