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

["Mike Rodenbaugh" <icann@xxxxxxxxxxxxxx>]

Thanks Zahid.  Just want to note my strong opinion that, if the Clearinghouse 
must be checked against every domain registrations, with conflicts resulting in 
notice to the applicant, and the URS is mandatory for all new TLD registries, 
then I believe there will be sufficient protections such that TM owners will 
not be forced to defensively register their marks.  Interested to hear if 
anyone has a different view, and their reasoning, as I expect the BC will 
develop a position statement that includes these key points.

 

Mike Rodenbaugh

RODENBAUGH LAW

548 Market Street

San Francisco, CA  94104

 
<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://rodenbaugh.com/contact>
 (415) 738-8087

 <http://rodenbaugh.com/> http://rodenbaugh.com

 

 

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Liz 
Williams
Sent: Saturday, October 24, 2009 8:54 PM
To: Zahid Jamil
Cc: bc-gnso@xxxxxxxxx
Subject: 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

 

Zahid

 

Thanks very much for this analysis.  It is always disturbing when months of 
community time and organisational resources are of questionable value.  It also 
points again to the difficulty of trying to do what is essentially policy 
development outside of the normal policy development channels but that is a 
debate for another day.

 

However, what is your suggestion for a way forward?  You make a "scream about 
it" note at the end but that most likely won't be very productive.  It seems to 
be that the Board is going to be required to be the final decision maker given 
it is highly unlikely that the Council will reach consensus -- given that lack 
of consensus was the whole reason why the IRT was established anyway.

 

Following Ron's request for items for tonight's meeting, I suggest that the 
strategy forward is the subject of tonight's huddle at 6pm in the bar.  Gin and 
tonic will be required!

 

Liz

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 on

for 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 to 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 community

The 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 – 3

types:

(a) The Registry Operator’s manner

of operation or use of a TLD is

inconsistent with the

representations made in the TLD

application as approved by

ICANN and incorporated into the

applicable Registry Agreement

and such operation or use of the

TLD is likely to cause confusion

with the complainant’s mark; or

(b) The Registry Operator is in

breach of the specific rights

protection mechanisms

enumerated in such Registry

Operator’s Agreement and such

breach is likely to cause

confusion with complainant’s

mark; 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 of

the complainant’s mark, or (ii) unjustifiably impairing the distinctive 
character or the

reputation of the complainant’s mark, or (iii) creating an impermissible 
likelihood of

confusion with Complainant’s mark.

 

 

For a Registry Operator to be liable for toplevel

infringement, a complainant must assert

and prove by clear and convincing evidence

that the Registry Operator’s affirmative

conduct in its operation or use of its gTLD, that is identical or confusingly 
similar to the

complainant’s mark, causes or materially

contributes to the gTLD: (a) taking unfair

advantage of the distinctive character or the

reputation of the complainant’s mark, or (b)

unjustifiably impairing the distinctive character

or the reputation of the complainant’s mark, or

 

 

 

 

 

 

 

 

(c) creating an impermissible likelihood of

confusion with the complainant’s mark.

For a Registry Operator to be liable for the

conduct at the second level, the complainant

must assert and prove by clear and convincing

evidence:

 

(a) that there is substantial ongoing

pattern or practice of specific bad faith intent

by the registry operator to profit from the sale

of trademark infringing domain names; and

 

 

 

(b) of the registry operator’s bad faith intent to profit from the systematic 
registration of

domain names within the gTLD, that are

identical or confusingly similar to the

complainant’s mark, which: (i) takes unfair

advantage of the distinctive character or the

reputation 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 of

confusion with the complainant’s mark. In this

regard, it would not be nearly enough to show

that the registry operator was on notice of

possible of trademark infringement through

registrations 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 BEST 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), or

b) 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 – Reserved List (GPML)

It’s just gone – 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 – but the GPML was 
just removed – no explanation and without completing this study.

SO NO RESERVED LIST – 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’ 
– basically do what the Non commercials are doing.

 

 

 

 

 

 

 

Similarly

 

 

 

 

 

 

 

 

 

Sincerely,

 

Zahid Jamil

Barrister-at-law

Jamil & Jamil

Barristers-at-law

219-221 Central Hotel Annexe

Merewether Road, Karachi. Pakistan

Cell: +923008238230

Tel: +92 21 5680760 / 5685276 / 5655025

Fax: +92 21 5655026

 <http://www.jamilandjamil.com/> www.jamilandjamil.com

 

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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 Rodenbaugh

RODENBAUGH LAW

548 Market Street

San Francisco, CA  94104

(415) 
<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://rodenbaugh.com/contact>
  738-8087

http://rodenbaugh.com <http://rodenbaugh.com/> 

From: 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 Milam

Senior Policy Counselor

ICANN