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

john at crediblecontext.com john at crediblecontext.com
Wed Feb 20 21:01:03 UTC 2013

Mason, et. al.,

Brian makes a rather eloquent case -- far better than I had been able to do.  He restates my own previous comments with regard to the "expansion of rights" and "majority," then goes further.  All are good points and worth considering, though on our current time-frame that may not be logistically possible.  All this leads me to re-submit my initial suggestion on this letter: tell Steve our best thought is to let the constituencies and stake-holder groups speak for themselves.

It would certainly make the letter a lot shorter and easier to approve!



--------- Original Message ---------Subject: RE: [council] Current draft of Fadi's requested communication from council
From: "Winterfeldt, Brian" <bwinterfeldt at steptoe.com>
Date: 2/20/13 9:13 am
To: "council at gnso.icann.org" <council at gnso.icann.org>

Dear all:
As promised on our last Council teleconference, here is written feedback from the IPC with respect to the current draft response to Fadi Chehadé on strawman solution and limited preventative registrations proposal.  More specifically, this is a critique of the draft GNSO Council statement on the strawman which we feel does not accurately reflect a consensus or considered analysis as urged by Chair Crocker.
The list is non-exhaustive and our intent is to demonstrate that there are a number of flaws in the current draft that we should address as a Council.
·         The IPC is concerned with the statement that the strawman solution represents “expansion of trademark rights beyond law.”  Apart from being a legal conclusion, it implies that the strawman is composed of solutions or protections to which trademark owners have no legal right.  To the contrary, trademark owners have the legal right to prevent infringement of their marks, and the rights protection mechanisms being established as part of the new gTLD program are founded on this fundamental right.  The Strawman merely addresses the implementation of this policy, not its extension or expansion.
·        The IPC believes the use of the term “majority” throughout the letter is misleading as it minimizes the fact that an entire Stakeholder Group—indeed the Stakeholder Group whose members will bear the greatest economic impact from inadequate rights protection mechanisms—unanimously agrees that additional rights protection mechanisms are essential.  Put another way, a vote should be necessary before asserting that a “majority of the Council” feels a certain way, particularly the presumption that “protection policies for new gTLDs are sufficient and need not be revisited.”  It is also important to note that not all stakeholder groups or constituencies submitted comments in the public comment forum, so we should not assume that there is a majority in support.  It might be an overstatement.  Of the statements that were submitted, in addition to the BC/IPC comments, the ISPC "endorsed the intent and critical importance of preventing fraudulent registrations and reducing defensive measures and agrees that the RPMs currently in the AGB may be improved; however, ISPCP is neutral on the subject of specific RPMs."  The use of the term "majority" usually refers to a majority in each house.  However, With the IPC, ISP and BC taking a different approach, we believe the statement of "majority " in support of the letter is not really accurate.  Sending the letter as written would go against the spirit of the carefully thought-out comments of these groups.
·         There is a difference between “agree[ment] to socialize these [proposals] to the rest of the GNSO” as Dr. Crocker is quoted as saying and the requisite GNSO Council support asserted in the draft letter.  Indeed, here are a few more compelling and recent quotes from Fadi Chehadé during the NCPH intersessional meeting, “… I still believe is an issue, I don't believe that the claims or the things that you brought to my attention, you know, are not right. Quite the opposite, I think they're very right, that's why I engaged, that's why I jumped on it.”  “Some of the things that came out of the strawman discussions make sense and are implementation decisions.”  And, “unless the community vehemently disagrees … that work will not be counted out, we will look at it in good faith.”  Most recently, in Mr. Chehadé’s February 13, 2013 video blog, he affirmed that the Strawman Proposal is absolutely legitimate and that the statements he made in Amsterdam on this topic were taken out of context.  He confirmed that his “mistake” was in the way he convened the meetings, and that the work on the Strawman is “not throw away work”, but rather, it is important work.  
·        The letter cites ICANN’s goal of advancing “competition in the domain name industry,” but fails to reflect temperance with the new gTLD policy toward not infringing the legal rights of others which advances consumer trust of the system.
·        The letter is silent with respect to the thirty-day sunrise notice period—an aspect of the strawman solution that most public comments seem to agree is a noncontroversial implementation detail. 
·         Comments on Claims 1 and Claims 2 appear seriously inaccurate and seems to ignore the contours of the process and raise a number of implementation questions as policy matters—“How would payments be made and allocated?  How do Registries and Registrars adapt their technical systems…” etc.
·         Claims 2 imposes fewer obligations and offers fewer benefits than Claims 1.  Thus, “lightweight” seems apt to us.
·        Most conventional dictionaries define “disenfranchise” as follows, “to deprive of a franchise, of a legal right, or some privilege or immunity; especially: to deprive of the right to vote.”  The strawman has nothing to do with the right to vote.  So what is the legal right to which you are referring here?  If what is meant is that adopting the Strawman would deprive any stakeholder of a voice in the development of the implementation of the policy that intellectual property should be protected in the new gTLD, then that would ignore the input of numerous stakeholders.  If anything, the Strawman process has enfranchised more concerned parties than ever before.
·         The IPC fervently disagrees with dismissal of the Limited Preventative Registration proposal as a “blocking mechanism.”  Again, this also seems seriously inaccurate and appears to ignore the contours of the proposal.  To sum up, it is a low-cost bulk sunrise registration.  It would provide precisely the same benefits to brand owners as participation in each individual new gTLD sunrise period to which they are qualified to participate in.
·         The statement that this is entirely "a matter of policy" ignores the fact that the Strawman proposal resulted from “implementation discussions on the Trademark Clearinghouse and its associated rights protection mechanism.” http://www.icann.org/en/news/public-comment/tmch-strawman-30nov12-en.htm.  The fact that Mr. Chehadé has asked the GNSO Council for input on the Strawman proposal does not now turn it into a policy matter.  In fact, the Limited Preventative Registration mechanism was left out of the Strawman proposal not because it was considered policy, but rather simply because it did not achieve consensus among the participants in the implementation meetings. It is thus completely within the Council's purview to provide substantive input on these issues without resorting to a PDP.  Indeed, the original rights protection mechanisms did not stem from a PDP, but from an informal GNSO process (the Implementation Recommendation Team).   Formation of a working group to explore these implementation issues substantively is an option that has not been fully explored.
·        The response ignores the substantial number of comments submitted during the public comment forum—which reflect a significant interest in looking at this issue further from inside and, significantly, outside the IP community.  For example, the ALAC statement supports a number of elements of the proposal, and encourages the GNSO to fairly evaluate them.  The proposed GNSO letter does not do so.
Thank you,
Brian J. Winterfeldt  
bwinterfeldt at steptoe.com
+1 202 429 6260 direct
+1 202 903 4422 mobile
+1 202 429 3902 fax
Steptoe & Johnson LLP - DC
1330 Connecticut Avenue, NW
Washington, DC 20036
+1 212.506.3935 direct
+1 212.506.3950 fax
Steptoe & Johnson LLP – New York
1114 Avenue of the Americas
New York, NY 10036

This message and any attached documents contain information from the law firm Steptoe & Johnson LLP that may be confidential and/or privileged. If you are not the intended recipient, please do not read, copy, distribute, or use this information. If you have received this transmission in error, please notify the sender immediately by reply e-mail and then delete this message.

From: owner-council at gnso.icann.org on behalf of Jonathan Robinson[SMTP:JONATHAN.ROBINSON at IPRACON.COM] 
Sent: Wednesday, February 20, 2013 5:59:43 AM 
To: council at gnso.icann.org 
Subject: RE: [council] Current draft of Fadi's requested communication from council 
Auto forwarded by a Rule
A reminder that we really need to keep this moving.  
I’d like to close it off this week if at all possible.
From: owner-council at gnso.icann.org [mailto:owner-council at gnso.icann.org] On Behalf Of Petter Rindforth
Sent: 14 February 2013 10:39
To: john at crediblecontext.com; volker at greimann.de
Cc: Mason Cole; council at gnso.icann.org List
Subject: Re: [council] Current draft of Fadi's requested communication from council

"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."
This is in fact up to each Examiner of each national PTO. 
That’s why it may take up to 10 months (or more) to pass such trademark examination processes. I do not think such time would be accepted by domain name applicants.... 
Strawman is dealing with an existing protection system in a more time optimized way.

/ Petter
-- Petter Rindforth, LL M Fenix Legal KBStureplan 4c, 4tr114 35 StockholmSwedenFax: +46(0)8-4631010Direct phone: +46(0)702-369360E-mail: petter.rindforth at fenixlegal.euwww.fenixlegal.eu  NOTICEThis e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail.Fenix Legal KB, Sweden, www.fenixlegal.euThank youOn 14 feb 2013 00:36 "Volker Greimann" <vgreimann at key-Systems.net> wrote:
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 inquiries?
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.






--------- 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 wrote:



Did I not suggest the "expansion of rights" language is a bit over the top?




--------- Original Message --------- 
Subject: [council] Current draft of Fadi's requested communication from council
From: Mason Cole <mcole at 5x5com.com>
Date: 2/12/13 3:00 pm
To: "council at gnso.icann.org List" <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 --

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/council/attachments/20130220/ebab1373/attachment.html>

More information about the council mailing list