[Gnso-newgtld-wg] FW: Proposed agenda - New gTLD Subsequent Procedures PDP WG - 18 June 2018 at 15:00 UTC

Tue Jun 19 02:00:18 UTC 2018

Rubens,
This is definitely not a “change in policy” that Kristina and I are suggesting. The clear language of the AGB which codifies the grounds for the LRO  is at 3.5.2 as follows:

3.5.2 Legal Rights Objection
In interpreting and giving meaning to GNSO
Recommendation 3 (“Strings must not infringe the existing
legal rights of others that are recognized or enforceable
under generally accepted and internationally recognized
principles of law”), a DRSP panel of experts presiding over a
legal rights objection will determine whether the potential
use of the applied-for gTLD by the applicant 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 (as
identified in the treaty establishing the organization), or
unjustifiably impairs the distinctive character or the
reputation of the objector’s mark or IGO name or
acronym, or otherwise creates an impermissible likelihood
of confusion between the applied-for gTLD and the
objector’s mark or IGO name or acronym.

Anne E. Aikman-Scalese

Of Counsel

520.629.4428 office

520.879.4725 fax

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

_____________________________

[cid:image003.png at 01D40736.974CFAE0]

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, June 18, 2018 6:06 PM
To: Aikman-Scalese, Anne
Cc: Rosette, Kristina; gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] FW: Proposed agenda - New gTLD Subsequent Procedures PDP WG - 18 June 2018 at 15:00 UTC

Anne and Kristina,

While we can reckon the actual standard used in 2012, we can't simply ignore that we have
- The current applicable GNSO Recommendation (3) saying infringement
- Three AGB references using infringement
3.2.1 Grounds for Objection
Legal Rights Objection – The applied-for gTLD string infringes the existing legal rights of the objector.
3.2.2.2 Legal Rights Objection A rightsholder has standing to file a legal rights objection. The source and documentation of the existing legal rights the objector is claiming (which may include either registered or unregistered trademarks) are infringed by the applied-for gTLD must be included in the filing.
Attachment to Module 3
Article 2 (e) (ii)
“Existing Legal Rights Objection” refers to the objection that the string comprising the potential new gTLD infringes the existing legal rights of others

(not counting 3.5.2, where infringement is redefined to the criteria actually used)

That means that in order to keep 2012 status-quo, the policy recommendation needs to be changed and AGB also needs to be changed.

What I find curious is that ICANN's own Program Implementation Review failed to acknowledge this deviation from policy, and we probably need to state that somehow. Even if the PDP finds that it was for the better, and it looks that way to me, we shouldn't miss the learning that this mistake provided.

Rubens

On 18 Jun 2018, at 19:07, Aikman-Scalese, Anne <AAikman at lrrc.com<mailto:AAikman at lrrc.com>> wrote:

I support Kristina’s comments shown in the attachment and note that she also states in her comment on page 10 that the LRO in 2012 was not an “infringement” standard.  Kristina suggests in the attachment that we simply refer to the “standard used in 2012”  if we are not willing to set out the three grounds set forth in the AGB and copied again below.

This same reference to “infringement analysis” occurs on page 15 of draft Section 1.8 so the language there should be conformed to the language chosen for page 10.

Again, the standard for LRO from 2012 is as follows:

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.

Anne

Anne E. Aikman-Scalese

Of Counsel

520.629.4428 office

520.879.4725 fax

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

_____________________________

<image003.png>

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 Rosette, Kristina via Gnso-newgtld-wg
Sent: Monday, June 18, 2018 7:52 AM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: [Gnso-newgtld-wg] FW: Proposed agenda - New gTLD Subsequent Procedures PDP WG - 18 June 2018 at 15:00 UTC

This time with attachment. Apologies.

From: Rosette, Kristina
Sent: Monday, June 18, 2018 10:51 AM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Cc: 'Steve Chan' <steve.chan at icann.org<mailto:steve.chan at icann.org>>
Subject: RE: [Gnso-newgtld-wg] Proposed agenda - New gTLD Subsequent Procedures PDP WG - 18 June 2018 at 15:00 UTC

My comments and suggestions on 1.8 attached.

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Steve Chan
Sent: Sunday, June 17, 2018 1:25 PM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: [Gnso-newgtld-wg] Proposed agenda - New gTLD Subsequent Procedures PDP WG - 18 June 2018 at 15:00 UTC

Dear WG Members,

With apologies for the late delivery, please find the proposed agenda for the New gTLD Subsequent Procedures WG meeting scheduled for 18 June 2018 at 15:00 UTC, for 90 minutes.

  1.  Agenda Review
  2.  Roll Call/SOIs
  3.  Review of the Initial Report (continued). * The purpose of this review is to ensure that preliminary outcomes and deliberations are accurately captured and written in an understandable manner. The WG Co-Chairs have sought to make clear that this exercise is not intended to re-open substantive discussions, which is better served by the submission of public comments and subsequently when reviewing public comments received. Please submit your comments about these sections to the Working Group mailing list (gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>) in advance of the meeting.

     *   Review of Section 1.8 (Accountability Mechanisms)
     *   Review of Section 1.9 (Community Applications)

  1.  Review of other sections in the Initial Report
  2.  AOB

For Item 3, the relevant documents are attached. As a reminder, please note that a resource page has been set up on the Wiki to track the distribution of Initial Report sections, which you can find here: https://community.icann.org/x/NwUhB.

For Item 4, you will find a draft of most of the other sections within the Initial Report, including the Preamble and the Executive Summary. You will see a placeholder in Section 2, which states, “Insert sections from the excerpts reviewed by Working Group…” – here, staff will insert the sections we have been reviewing for the last couple of months, inclusive of any changes as needed from discussions on calls and on list.

Those signed up as Members to this PDP WG should have received meeting information from the SOAC Support team. If you did not receive these participation details or if you would like to send your apologies, please contact the SOAC Support team (gnso-secs at icann.org<mailto:gnso-secs at icann.org>).

Best,
Steve

Steven Chan

Policy Director, GNSO Support

ICANN
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Los Angeles, CA 90094-2536

steve.chan at icann.org<mailto:steve.chan at icann.org>
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office fax: +1.310.823.8649

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