RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3

[Marilyn Cade <marilynscade@xxxxxxxxxxx>]

Zahid, your analysis is extremely helpful.
I have a few thoughts. One is about how disturbing this is as a 'precedent', as 
well as the specifics of what has actually taken place in terms of the 
outcome/content; e.g. what the present proposals are/and the work before the 
Council on the Board letter. 
I had understood that this letter would be part of your Council/Board dinner. 
If that is the case, it would be helpful to keep that in mind and plan to have 
a discussion with the BC membership again on Monday, BEFORE the Tuesday a.m. 
breakfast. 
When we discuss this at the ad hoc huddle  tonight, can we also get a debrief 
from you not only on this, but also on how the discussions go today with the 
GAC. 
You are making a point that I have a concern about as well. It appears that due 
to somewhat overwrought pounding on the table by a small extremely vocal set of 
players/people, significant changes have been made.
The way that the IRT was set up was driven by a Board resolution. The initial 
approach to the participants was in fact broadened from the 7-8 IP attorneys 
chosen by the IPC into a broadened approach that was not totally open, but was 
composed of 'experts'. The work product was then put out for consultation and 
comments taken. 
I am thinking that what we are seeing is that the staff then made major 
changes, having taken comments 'selectively' into account. 
I think we have to ask ourselves the following: IRT recommendations, and 
following on comments.  On balance, based on the predominance of comments, do 
we think that the staff recommendations /proposals reflect the comments fairly 
and on balance? 
I ask that question because I am thinking about 'recourse' if we believe that 
our interests are harmed by this action/failure of action. 
Will be very good to talk about this tonight. 


On 25 Oct 2009, at 02:10, Zahid Jamil wrote:This document was prepared for a 
meeting held yesterday between the IRT and Staff (Kurt, Dan) and a Board Member 
(Bruce). Here are some points that may interest members: The outcome from Staff 
in the DAG3 (http://www.icann.org/en/topics/new-gtlds/dag-en.htm) and those 
mentioned onfor Rights Protection Mechanism 
(http://www.icann.org/en/public-comment/#prpm-new-gtlds -difficult to find on 
the website and not connected to the DAG3’s website) DO NOT REFLCT the IRT 
Recommendations. It seems that the Staff has completely reengineered the 
solutions.   To a large extent even though the title of the solution may be the 
same but the contents are effectively not what the IRT recommended. So to give 
members a feel of the process and what Staff acknowledged in yesterday’s 
meeting: Focusing on 5 Solutions:1.       Reserved List (GPML)2.       Central 
IP Database (IP Clearinghouse)3.       Rapid Suspension (URSS)4.       Rights 
holders right t!
 o take a Registry through a Dispute Resolution after the gTLD is launched 
(Post Delegation Dispute Resolution Procedure PDDRP)5.       Thick Whois Eg. 1 
- So for instance, in regards PDDRP: There were no comments from the 
communityThe Board agreed at the higher level to a PDDRP In my view this would 
have mean that Staff would go ahead and incorporate the IRT solution (maybe 
just maybe filling in some holes) into DAG3 or the Rights Protection Mechanism. 
 This wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff 
Neuman’s article http://www.circleid.com/members/2921/ ) So as I put in the 
meeting yesterday Staff swapped the cards on the IRT, the community, and the 
Board! (But since this was too tricky they didn’t let this go to the GNSO) In 
short the IRT had recommended that: Standard for Asserting a Claim ?C 
3types:(a) The Registry Operator’s mannerof operation or use of a TLD 
isinconsistent with therepresentations made in the TLDapplication as approve!
 d byICANN and incorporated into theapplicable Registry Agreementand su
ch operation or use of theTLD is likely to cause confusionwith the 
complainant’s mark; or(b) The Registry Operator is inbreach of the specific 
rightsprotection mechanismsenumerated in such RegistryOperator’s Agreement and 
suchbreach is likely to causeconfusion with complainant’smark; or            
(c) The Registry Operator manner of operation or use of the TLD exhibits a bad 
faith intent to profit from the systemic registration of domain name 
registrations therein, which are identical or confusingly similar to the 
complainant’s mark, meeting any of the following conditions: (i) taking unfair 
advantage of the distinctive character or the reputation ofthe complainant’s 
mark, or (ii) unjustifiably impairing the distinctive character or 
thereputation of the complainant’s mark, or (iii) creating an impermissible 
likelihood ofconfusion with Complainant’s mark.  For a Registry Operator to be 
liable for toplevelinfringement, a complainant must assertand prove by clear 
and con!
 vincing evidencethat the Registry Operator’s affirmativeconduct in its 
operation or use of its gTLD, that is identical or confusingly similar to 
thecomplainant’s mark, causes or materiallycontributes to the gTLD: (a) taking 
unfairadvantage of the distinctive character or thereputation of the 
complainant’s mark, or (b)unjustifiably impairing the distinctive characteror 
the reputation of the complainant’s mark, or        (c) creating an 
impermissible likelihood ofconfusion with the complainant’s mark.For a Registry 
Operator to be liable for theconduct at the second level, the complainantmust 
assert and prove by clear and convincingevidence: (a) that there is substantial 
ongoingpattern or practice of specific bad faith intentby the registry operator 
to profit from the saleof trademark infringing domain names; and   (b) of the 
registry operator’s bad faith intent to profit from the systematic registration 
ofdomain names within the gTLD, that areidentical or confusingly si!
 milar to thecomplainant’s mark, which: (i) takes unfairadvantage of t
he distinctive character or thereputation of the complainant’s mark, or 
(ii)unjustifiably impairs the distinctive character or the reputation of the 
complainant’s mark, or (iii) creates an impermissible likelihood ofconfusion 
with the complainant’s mark. In thisregard, it would not be nearly enough to 
showthat the registry operator was on notice ofpossible of trademark 
infringement throughregistrations in the gTLD. So basically if a Rights holder 
or a community that doesn’t object at the application stage since the 
representations in the Application and the Registry Agreement seem fine has no 
recourse subsequently to assert and challenge in case there is a breach of the 
Registry Agreement or those representations in the application. ICANN staff’s 
response was:  we will independently deal with enforcement brought to our 
notice.  Basically trust us to enforce Registry contracts.  Eg. 2 - In regards 
the URSS:ICANN staff has changed the Rapid Suspension from MANDATORY to BE!
 ST PRACTICE Also delinked URSS from the GPML and Clearing House “The Guidebook 
proposal does not mention a pre?\registration process utilizing the 
Clearinghouse” And since the Board was advised that this seems more like Policy 
the Board has sent a letter to the GNSO to either: a) approve the staff model 
(details of which can be found here 
http://www.icann.org/en/topics/new?\gtlds/gnso?\consultations?\reports?\en.htm),
 which is an assimilation of the IRT work and Board concerns), orb) propose an 
alternative that is equivalent or more effective and implementable. A six weeks 
window has been allowed. This basically means that if GNSO cannot reach 
consensus then Staff Model is likely to go through  The IRT proposals thus have 
been side tracked and swapped.  Example 3 ?C Reserved List (GPML)It’s just gone 
?C Staff had said that they would complete their research (about strongest 
global brands- get data about global brands and see how many countries these 
brands are registered!
  in) and then come back ?C but the GPML was just removed ?C no explana
tion and without completing this study.SO NO RESERVED LIST ?C AND NO SOLUTION 
TO DEFENSIVE REGISTRATIONS!  Generally: In response to protestations Kurt said 
in regards some aspects ‘you’re preaching to the converted’  and generally said 
‘go ahead and scream about it’ ?C basically do what the Non commercials are 
doing.       Similarly         Sincerely, Zahid JamilBarrister-at-lawJamil & 
JamilBarristers-at-law219-221 Central Hotel AnnexeMerewether Road, Karachi. 
PakistanCell: +923008238230Tel: +92 21 5680760 / 5685276 / 5655025Fax: +92 21 
5655026www.jamilandjamil.com Notice / DisclaimerThis message contains 
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communication) without prior written permission and consent of Jamil & Jamil is 
prohibited. From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On 
Behalf Of Mike Rodenbaugh
Sent: Sunday, October 25, 2009 7:19 AM
To: bc-gnso@xxxxxxxxx
Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between 
IRT Report and Applicant Guidebook Version 3 Further fyi, re STI (“Specified TM 
Issues”). Mike RodenbaughRODENBAUGH LAW548 Market StreetSan Francisco, CA  
94104(415) 738-8087http://rodenbaugh.comFrom: owner-gnso-sti@xxxxxxxxx 
[mailto:owner-gnso-sti@xxxxxxxxx] On Behalf Of Margie Milam
Sent: Saturday, October 24, 2009 6:01 PM
To: Council GNSO; gnso-sti@xxxxxxxxx
Subject: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and 
Applicant Guidebook Version 3 Dear All, As we discussed yesterday,  attached is 
 a document that summarizes the key differences between the IRT and the 
Applicant Guidebook Version 3.   This matrix seeks to succinctly present areas 
of contrast and briefly explain the rationale for the differences.    Please 
review this draft  and let me know  whether there is any other information that 
should be included to facilitate the GNSO’s work on the Board request. Best 
regards, Margie MilamSenior Policy CounselorICANN