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>]

very few of the proposed registries are likely to want 'high security zone'. 

From: mike@xxxxxxxxxxxxxx
To: marilynscade@xxxxxxxxxxx; lizawilliams@xxxxxxx; zahid@xxxxxxxxx; 
sarah.deutsch@xxxxxxxxxxx
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: Sun, 25 Oct 2009 00:20:14 -0700



















Eager to hear opinions of Sarah or any other experts.  I
have quite a lot of experience with that myself, of course.

 

Also, I’ve realized just now that the IRT itself did NOT
recommend that all domain registrations be checked against the Clearinghouse
database, so long as the registry enacts a sunrise perios, and so the URS is
enacted and mandatory.  Thus Staff has not watered down that aspect of the
proposal, except that they have proposed that the URS be denominated a ‘best
practice’ rather than a mandatory requirement.  I strongly believe that
both elements must be mandatory, and urge that as the BC position. 
Obviously, allowing registries to offer only a sunrise period, and no other
RPMs for trademark owners, is no improvement whatsoever over the previous
rollouts of TLDs.

 

Of course it will be very difficult to get consensus to
something even more stringent than recommended by the IRT, but I think we need
to try.  A fallback option is to require registries to do Clearinghouse
lookups, and provide URS, in order to get the new ‘high security zone’
designation.  But my gut feel on that initiative is that it is worthless,
few registrants will care, thus few contract parties will care.

 



Mike Rodenbaugh

RODENBAUGH LAW

548 Market Street

San Francisco, CA  94104

(415) 738-8087

http://rodenbaugh.com

 



 





From: Marilyn Cade
[mailto:marilynscade@xxxxxxxxxxx] 

Sent: Saturday, October 24, 2009 11:58 PM

To: Mike Rodenbaugh; Liz Williams; Zahid Jamil; Sarah Deutsch

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





 

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