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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
- To: Mike Rodenbaugh <icann@xxxxxxxxxxxxxx>, Liz Williams <lizawilliams@xxxxxxx>, Zahid Jamil <zahid@xxxxxxxxx>, Sarah Deutsch <sarah.deutsch@xxxxxxxxxxx>
- 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
- From: Marilyn Cade <marilynscade@xxxxxxxxxxx>
- Date: Sun, 25 Oct 2009 02:58:04 -0400
Have the actual brand holders from large BC members agreed with that
perspective? I've added Sarah, who is an expert on these issues -- I think that
there was a few that there needed to be a number of safeguards, not only one or
two.
From: icann@xxxxxxxxxxxxxx
To: lizawilliams@xxxxxxx; zahid@xxxxxxxxx
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
Date: Sat, 24 Oct 2009 22:53:10 -0700
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
(415) 738-8087
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 ?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 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 ?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 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
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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)
738-8087
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
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