[council] Current draft of Fadi's requested communication from council

Volker Greimann vgreimann at key-Systems.net
Wed Feb 13 23:36:38 UTC 2013

If that were so, there would be less of a problem, but it is not so, in 
my opinion:

-Does a trademark allow its owner to prevent the use of the mark by 
third parties in other classes, or if the mark is their name, etc, etc?
I think not. There are reasons why trademarks are limited to classes and 
regions and why legitimate use of the same trademarked term cannot be 
prohibited. Yet LPR would do just that. If any legitimate potential 
registrant missed the sunrise period or decided to wait for a cheaper 
registration period, LPR would block even legitimate registrations.

-Does a trademark require otherwise unrelated third parties to implement 
and build and maintain a system at their own costs that is solely used 
to inform others of a potential legal conflict, confuse customers with 
information potentially irrelevant to their planned use and that 
generally interferes with the customary flow of business by scaring away 
or confusing potential legitimate customers and delaying orders or 
I think not. Yet Claims II does just that to registrants, registrars and 
registries.  I am not aware of any other industry that at their own cost 
had to create a warning system to inform third parties of potential 
trademark abuse.

These are just the easiest examples of why the Strawman and the attached 
LPR proposal will, in my opinion create new protections.

The claims process in itself is a new right for trademark holders not 
previously granted by trademark law, so any extension of the time period 
carefully considered and agreed upon by the community expands the reach 
of this new right for trademark holders. These proposals have been on 
the table before in some form or other and have been rejected by the 
community. Fadi Chehade’s has stated himself in his letter to the U.S. 
Congress that the 60 days period should not be extended unilaterally by 
ICANN, yet this is what is proposed now.

The extension of claims to non-exact matches was previously rejected by 
the Special Trademark Issues Review Team, i.e. a GNSO created team.

If Trademark law provided the level of protection to automatically 
include non-exact matches in the manner proposed in the strawman, 
lawmakers would have implemented such a list. Yet none did. While the 
trademark protection can be extended to additional near match strings, 
it is the duty of the courts to decide this. And just because a certain 
string has been used in an infringing manner, that does not mean that 
there are not also non-infringing manners in which the same string may 
legitimately be used.

These proposals create a new fence to protect trademark holders from 
legitimate and illegitimate registrations of their marks alike.

Solely the 30 day notice period does not create any new rights specific 
to trademark holders. The rest is a matter for a PDP, not for a closed 
door, no outside communication allowed session. ICANN should not deviate 
from the multi-stakeholder principle. If any outcome of our policy 
development and consensus building processes is subject to unilateral 
revision once a small part of the community is no longer sufficiently 
happy with the consensus results, the multi-stakeholder model is dead.


> I will not argue with your metaphor -- I am quite fond of apples.  But 
> I do quibble with you saying the strawman is "an expansion of the 
> rights of a trademark holder in the domain world."  Trademark rights 
> exist (not always consistently) in all earthly realms.  The strawman 
> is not seeking to create new ones, merely to create a method by which 
> those that already exist can be enforced.
> Cheers,
> Berard
>     --------- Original Message ---------
>     Subject: Re: [council] Current draft of Fadi's requested
>     communication from council
>     From: Volker Greimann - Key-Systems GmbHz <vgreimann at key-Systems.net>
>     Date: 2/12/13 4:25 pm
>     To: "john at crediblecontext.com" <john at crediblecontext.com>
>     Cc: "Mason Cole" <mcole at 5x5com.com>, "council at gnso.icann.org List"
>     <council at gnso.icann.org>
>     I think Fadi has made it very clear during the meeting in
>     Amsterdam that he has now understood the BC and IPC requests that
>     led to the strawman as a second bite of the apple, as he called
>     it. The proposed contents of the strawman would certainly
>     constitute an expansion of the rights of a trademark holder in the
>     domain world. I therefore support sending the draft letter as is.
>     Sent from my iPad
>     On 13.02.2013, at 01:11, john at crediblecontext.com
>     <mailto:john at crediblecontext.com> wrote:
>         Mason,
>         Did I not suggest the "expansion of rights" language is a bit
>         over the top?
>         Berard
>             --------- Original Message ---------
>             Subject: [council] Current draft of Fadi's requested
>             communication from council
>             From: Mason Cole <mcole at 5x5com.com <mailto:mcole at 5x5com.com>>
>             Date: 2/12/13 3:00 pm
>             To: "council at gnso.icann.org
>             <mailto:council at gnso.icann.org> List"
>             <council at gnso.icann.org <mailto:council at gnso.icann.org>>
>             Council colleagues --
>             As you know, Fadi requested of the council its input
>             regarding the strawman proposal resulting from the BC's
>             and IPC's request for additional RPMs in new gTLDs. On
>             December 27, I circulated an early draft of a council reply.
>             The communication is due very shortly, and has been taken
>             up by a small group within the council to ensure that all
>             points of view are represented. Because this is an agenda
>             item for our meeting this week, at Maria Farrell's helpful
>             suggestion, I'm sending the current draft to council so we
>             can be prepared to discuss it then. This draft does not
>             reflect additional input of the BC and IPC -- if this is
>             provided prior to the meeting, I'll be happy to forward it
>             to the council.
>             Thanks --
>             Mason

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