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

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

I don't believe that references to  "overwrought pounding on the table by a 
small extremely vocal set of players!" are helpful. As a BC member who tried 
and failed to secure one place within the IRT for an expert with the 
perspective of defending UDRP actions (an omission that occured in part 
because, as found by the Ombudsman, the BC failed to provide its members with 
timely notice of the opportunity to apply for IRT membership), as someone who 
made detailed and thoughtful critiques of the IRT process and Report generally 
without ever pounding on the table, and as a representative of a group that is 
genuinely opposed to trademark infringement and would like the opportunity to 
contribute to a constructive and balanced approach that can be made applicable 
to all gTLDs, new and incumbent, I take exception to the statement -- and I 
haven't even mentioned the many overwrought statements that have been made by 
representatives of TM interests.

But let's put all that aside and try to move forward constructively.  The staff 
assimilation of the URS seems to be a proposal that has little support from 
either side of the issue. I spoke with Zahid earlier today and indicated my 
belief that there is still a possibility for a balanced and constructive 
proposal to be put on the table as an alternative. He welcomed that message and 
advised me to stay engaged. The BC has a number of domain investors as members, 
and on their behalf I would hope that at least one of the four CSG slots for 
the STI-DT could reflect that perspective and that we will not again be shut 
out of any official status as we were for the IRT.



Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

________________________________
From: owner-bc-gnso@xxxxxxxxx [owner-bc-gnso@xxxxxxxxx] On Behalf Of Marilyn 
Cade [marilynscade@xxxxxxxxxxx]
Sent: Sunday, October 25, 2009 1:56 AM
To: Liz Williams; Zahid Jamil
Cc: bc - GNSO list
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, 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 acti! on/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/topic! 
s/new-gtlds/dag-en.htm<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 ?C 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 si! milar to the 
complainant’s mark, meeting any of the following conditi ons: (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:&nb! sp; 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 as similation 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.
&nbs! p;
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 b! ack ?C but the GPML 
was just removed ?C no explanation 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 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
www.jamilandjamil.com<http://www.jamilandjamil.com/>

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!
From: owner-bc-gnso@xxxxxxxxx<mailto: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<mailto: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) 
738-8087<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://!
%20rodenbaugh.com/contact>

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

From: owner-gnso-sti@xxxxxxxxx<mailto:owner-gn!
%20so-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<mailto: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

!