[Gnso-newgtld-wg] Initial Report Excerpts - Section 1.8: Dispute Proceedings

Thu Jun 14 00:54:39 UTC 2018

Karen, Robin, et al.  I took another look at the references to “dispute resolution provider” after the call on Monday.  I think you guys are right that Objection panels are called “dispute resolution providers”.  Nevertheless, if Jeff and I were both confused, it may mean others reading the Initial Report could also be a bit confused.   I’ll leave it up to Jeff and Work Track 3 Leadership as to what you think is best.

Further to my note sent on Monday on the LRO language (forwarded again below this email), I found another section of the draft dealing with the grounds for the LRO which needs to be modified as shown in the snip below:

ON PAGE 10
[cid:image001.png at 01D4033C.65AF85F0]
I realize this may not be significant to some, but the fact is that in the trademark law, there is a HUGE difference between “infringement” and “likelihood of confusion”.    The former relates to violations and carries monetary damages.  The latter refers to prevailing law in most countries relative to the grant of registrations.  In 2012, the LRO was based on reputation impairment and/or likelihood of confusion and/or “passing off” grounds as noted in the excerpt from the WIPO rules below.  This is not an “infringement” standard.

Secondly,  in relation to GAC Advice, we say

○        Given the changes to the ICANN Bylaws with respect to the Board’s consideration of GAC Advice, is it still necessary to maintain the presumption that if the GAC provides advice against a string (or an application) that such string or application should not proceed?

I am not sure which Bylaws changes are referenced.  I know of two significant changes:

a.      Requirement for GAC Advice to be consensus advice – but I think that means only as the GAC defines consensus – Are we saying that GAC cannot endorse any one nation’s objection as “Consensus Advice”?  I am asking because I think this was debated in the Accountability Work Stream 1 work and may not have been resolved.

b.      Requirement of 60% vote for the Board to override GAC Advice.

Lastly, in relation to all the recommendations at the top of page 8 related to the GAC, I would suggest these be conformed to use the word “should” rather than the word “must”.  (We are varying the use in this draft.)
Thank you,
Anne

Anne E. Aikman-Scalese

Of Counsel

520.629.4428 office

520.879.4725 fax

AAikman at lrrc.com<mailto:AAikman at lrrc.com>

_____________________________

[cid:image002.png at 01D4033F.984F16D0]

Lewis Roca Rothgerber Christie LLP

One South Church Avenue, Suite 2000

Tucson, Arizona 85701-1611

lrrc.com<http://lrrc.com/>

From: Aikman-Scalese, Anne
Sent: Monday, June 11, 2018 5:13 PM
To: 'Steve Chan'; gnso-newgtld-wg at icann.org
Subject: RE: [Gnso-newgtld-wg] Initial Report Excerpts - Section 1.8: Dispute Proceedings

Regarding the draft in 1.8 related to Legal Rights Objections, the use of the word “infringement” as the standard applicable to LROs on page 15  of the draft is incorrect.  During the course of the discussion, comments were made in the calls and on the list to the effect that the standard for LRO is NOT infringement.

The 2012 round standard for LRO could be referred to as an “unfair advantage” and/or “passing off” and/or “impairment of reputation” standard.  It is not an infringement standard.  See excerpt from WIPO website below:
What criteria will a panel use to determine the outcome of a Legal Rights Objection?<http://www.wipo.int/amc/en/domains/lro/faq/#top>

As provided for in section 3.5.2 of the ICANN Applicant Guidebook, the independent panel will determine whether the potential use of the applied-for gTLD by the applicant:

(i)                 takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym, or

(ii)               unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or

(iii)             otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym.

The language on page 15 of 1.8 may be changed to read as follows:

“The Work Track discussed the fact that in the 2012 round, the Legal Rights Objections was based on “unfair advantage and/or “passing off”  analysis. Some Work Track members noted that infringement, which is typically demonstrated through use, is difficult to prove for an applied-for TLD still in the application stage. There was disagreement in the Work Track about whether the existing basis of the Legal Rights Objection remains appropriate for subsequent procedures. While some Work Track members considered the standard of unfair advantage, “passing off”, and/or likelihood of confusion appropriately high, other Work Track members thought that it was too difficult for trademark owners to prevail in Legal Rights Objection cases where the string had more than one meaning.

The Work Track also considered a strawman redline edit of AGB section 3.2.2.2, which proposed changing the standard from “unfair advantage”. “likelihood of confusion”,  and/or “passing off”  to a standard of proving that the string was being “abused” (a policy based on bad faith).[1]  Some Work Track members expressed concern that the proposal would significantly expand the scope of the Legal Rights Objection and would constitute too significant a shift from the intent of the original policy. Other Work Track members expressed concern that “bad faith” presents a more difficult standard of proof and would represent a substantial change in policy in relation to the Legal Rights Objection process.  The Work Track continues to accept feedback on these issues and the suggested revision.

Anne E. Aikman-Scalese

Of Counsel

520.629.4428 office

520.879.4725 fax

AAikman at lrrc.com<mailto:AAikman at lrrc.com>

_____________________________

[cid:image005.png at 01D4033C.65AF85F0]

Lewis Roca Rothgerber Christie LLP

One South Church Avenue, Suite 2000

Tucson, Arizona 85701-1611

lrrc.com<http://lrrc.com/>

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Steve Chan
Sent: Thursday, June 07, 2018 4:55 PM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: [Gnso-newgtld-wg] Initial Report Excerpts - Section 1.8: Dispute Proceedings

Dear WG Members,

Attached, please find the Initial Report excerpt for section 1.8 on Dispute Proceedings. This section consists of:

  1.  Objections
  2.  Accountability Mechanisms & Post-Delegation Dispute Resolution Procedures.

This section has been added to the Wiki here: https://community.icann.org/x/NwUhB.

We may be able to begin review of this section on the 12 June 2018 meeting, so please begin your review and feel free to provide your input on these sections ahead of their discussion during the WG meeting.

Best,
Steve

Steven Chan

Policy Director, GNSO Support

ICANN
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Los Angeles, CA 90094-2536

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[1]https://community.icann.org/download/attachments/63157176/7.2.5%20Legal%20Rights%20Objection%20-%20Strawman%20Edits.pdf?version=1&modificationDate=1486402474000&api=v2

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