[Gnso-newgtld-wg] Notes and Action Items - New gTLD Subsequent Procedures PDP WG - 01 October 2019

[Julie Hedlund]

Dear Working Group members,

Please see below the notes from the meeting on 01 October 2019. These high-level notes are designed to help WG members navigate through the content of the call and are not a substitute for the recording, transcript, or the chat, which will be posted at: https://community.icann.org/display/NGSPP/2019-10-01+New+gTLD+Subsequent+Procedures+PDP.

Kind regards,
Julie
Julie Hedlund, Policy Director

Notes and Action Items:

Actions:

String Confusion Objections:

Do you support the proposal that there should be grounds for a String Confusion Objection if an applied-for string is an exact translation of existing string that is in a highly regulated sector, and the applied-for string would not employ the same safeguards as the existing string?
ACTION ITEM 1: Re: NABP comments -- New TLDs that mimic existing verified TLDs in highly regulated sectors but that lack the same safeguards stand to create confusion and place consumers at risk of fraud and abuse.   The WG should consider whether there was a high-level agreement relating to this proposal and the CCT-RT recommendation concerning incentives: “Create incentives and/or eliminate current disincentives that encourage gTLD registries to meet user expectations regarding...restrictions as to who can register a domain name in certain gTLDs based upon implied messages of trust conveyed by the name of its gTLDs (particularly in sensitive or regulated industries).

Legal Rights Objections:

Should the standard for the Legal Rights Objection remain the same as in the 2012 round?
Re: INTA: Amend the standard of proof to: whether the potential use of the applied-for gTLD by the applicant takes (or will once used) unfair advantage of the distinctive character or the reputation of the objector’s mark; or creates (or will once used) actual confusion with the objector's mark or a high likelihood of such confusion. Develop additional factors that would guide applicants and LRO panels on concepts of bad faith including, but not limited to the history of the applicant and the individuals behind the applicant, and whether underlying trademark rights acquired by the applicant were filed solely with respect to supporting the business of the application.
ACTION ITEM 2: Set up a small drafting team to rewrite the section along the lines suggested by INTA.

Re: IPC Comment -- The standard should be relaxed and holders of registered marks which also constitute "generic" names should be able to prevent awards to third party applicants if those third party applicants intend to use the TLD in similar goods/services as the Objector.
ACTION ITEM 3: Could this be another factor under current section 3.5.2 of the AGB? Paul, Greg, Anne to work on draft language to consider how bad faith can be integrated, as well as the other aspect of INTA's comment.

Accountability Mechanisms:

New substantive appeal mechanism specific to the New gTLD Program -- Preliminary recommendation to establish such a mechanism:
-- Re: ICANN.Org comment -- ICANN Org: Concerns - ICANN org would like to understand how this proposed “New Appeals Mechanism” differs from the ICANN Reconsideration Request process.  WG may want to clearly articulate the difference in the appeals mechanism and reconsideration request: Reconsideration is: “Requestor may submit a request for reconsideration or review of an ICANN action or inaction ("Reconsideration Request") to the extent that the Requestor has been adversely affected by: (i) One or more Board or Staff actions or inactions that contradict ICANN's Mission, Commitments, Core Values and/or established ICANN policy(ies)....”
ACTION ITEM 4: Co-Chairs/Staff to review the Bylaws to determine if a Reconsideration Request only applies to Board or staff actions.

Notes:

1. Updates to Statements of Interest (SOIs): Elaine Pruis updated her SOI.

2. Review of summary documents:

a. Objections -- See: https://docs.google.com/document/d/1BkRn9nYeBNjyx2mTw-3nIDn22jTumWd4w1PZR-KNrPs/edit?usp=sharing

String Confusion Objections:

Do you support the proposal that there should be grounds for a String Confusion Objection if an applied-for string is an exact translation of existing string that is in a highly regulated sector, and the applied-for string would not employ the same safeguards as the existing string?
ACTION ITEM: Re: NABP comments -- New TLDs that mimic existing verified TLDs in highly regulated sectors but that lack the same safeguards stand to create confusion and place consumers at risk of fraud and abuse.  WG should consider whether there is a high-level agreement coming out of the NABP comments relating to the CCT-RT recommendation on incentives.
-- Seems like a good idea in the wrong place (shouldn’t be in string Confusion Objections).
-- Might be complicated.
-- Good if we could have some examples.
-- Look at in the context of the CCT-RT recommendation: CCT-RT Recommendation 12.   Create incentives and/or eliminate current disincentives that encourage gTLD registries to meet user expectations regarding: (1) the relationship of content of a gTLD to its name; (2) restrictions as to who can register a domain name in certain gTLDs based upon implied messages of trust conveyed by the name of its gTLDs (particularly in sensitive or regulated industries) and (3) the safety and security of users’ personal and sensitive information (including health and financial information). These incentives could relate to applicants who choose to make public interest commitments in their applications that relate to these expectations. Ensure that applicants for any subsequent rounds are aware of these public expectations by inserting information about the results of the ICANN surveys in the Applicant Guide Books -- Would the NABP proposal be considered an incentive?
-- WG should consider whether there is a high-level agreement coming out of the NABP comments relating to the CCT-RT recommendation on incentives.

Re: The Thai Network Information Center Foundation: New Idea - Homonyms should be explicitly included in the similarity to existing top-level domain consideration of the new gTLD Applicant Guidebook to prevent future confusions and costly disputes. -- Add note that this came up in the string similarity discussions (DONE).

Legal Rights Objections:

Should the standard for the Legal Rights Objection remain the same as in the 2012 round?
-- Existing Standard: whether the applicant’s potential use of the applied-for gTLD would be likely to infringe (described below) the objector’s existing trademark, or IGO name or acronym.
-- Original standard used by the dispute resolution providers was the likelihood of confusion standard, which is the worldwide standard for trademark issues.
-- Could have additional reasons for opposing on legal rights objections, but without abandoning the likelihood of confusion standard.
-- Also need to look at a bad faith standard.
-- AGB says likely to infringe which is very different than likelihood of confusion.
-- Section 3.5.2 of the AGB is helpful, but the problem is with GNSO Recommendation 3, which isn’t clear.  We need to fix the GNSO recommendation.
ACTION ITEM: Re: INTA: Amend the standard of proof to: whether the potential use of the applied-for gTLD by the applicant takes (or will once used) unfair advantage of the distinctive character or the reputation of the objector’s mark; or creates (or will once used) actual confusion with the objector's mark or a high likelihood of such confusion. Develop additional factors that would guide applicants and LRO panels on concepts of bad faith including, but not limited to the history of the applicant and the individuals behind the applicant, and whether underlying trademark rights acquired by the applicant were filed solely with respect to supporting the business of the application.
-- Set up a small drafting team to rewrite the section of the AGB along the lines suggested by INTA.

Re: IPC Comment -- The standard should be relaxed and holders of registered marks which also constitute "generic" names should be able to prevent awards to third party applicants if those third party applicants intend to use the TLD in similar goods/services as the Objector.
-- The bad faith standard is certainly not a loosening of the existing standard unlikelihood of confusion.  It would be an additional standard, or a factor in the likelihood of confusion analysis.
-- Need to decide if gets its own grounds for a legal rights objection - stands independently.
ACTION ITEM: Could this be another factor under current section 3.5.2 of the AGB? Paul, Greg, Anne to work on draft language to consider how bad faith can be integrated, as well as the other aspect of INTA's comment.

b. Accountability Mechanisms -- See: https://docs.google.com/document/d/1BkRn9nYeBNjyx2mTw-3nIDn22jTumWd4w1PZR-KNrPs/edit?usp=sharing, page 15

New substantive appeal mechanism specific to the New gTLD Program -- Preliminary recommendation to establish such a mechanism:
-- ALAC, BRG, INTA, IPC, Council of Europe, CCT-RT Recommendations: Agreement.
-- Helpful language in the RySG comment: Support the introduction of a limited substantive appeals process for certain types of disputes that arise from a failure to adhere to criteria in the Applicant Guidebook, for example but not limited to, where: An evaluator misapplies the Guidebook or omits Guidebook criteria; or A panel relies on incorrect information or standard to decide an objection.
-- Re: ICANN.Org comment -- ICANN Org: Concerns - ICANN org would like to understand how this proposed “New Appeals Mechanism” differs from the ICANN Reconsideration Request process.  WG may want to clearly articulate the difference in the appeals mechanism and reconsideration request: Reconsideration is: “Requestor may submit a request for reconsideration or review of an ICANN action or inaction ("Reconsideration Request") to the extent that the Requestor has been adversely affected by: (i) One or more Board or Staff actions or inactions that contradict ICANN's Mission, Commitments, Core Values and/or established ICANN policy(ies)....”
-- We don't have a really clear dividing line between you know what what WHERE DOES APPEAL apply and where does Request for Reconsideration apply.
-- Appeal should be to a third-party decision, not to a Board or staff action.
ACTION ITEM: Co-Chairs/Staff to review the Bylaws to determine if a Reconsideration Request only applies to Board or staff actions.

What are the types of actions or inactions that should be subject to this new limited appeals process?
-- What about review of conflicts?  That's not technically considered a substantive decision, but that certainly is something that should be reviewable on an appeal.
-- The accountability mechanism should be only for a narrow set of circumstances.

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