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 Jamil" <zahid@xxxxxxxxx>]

You can find the Post Delegation DRP Draft at 
http://icann.org/en/topics/new-gtlds/comments-3-en.htm#files 
 
 
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: Zahid Jamil [mailto:zahid@xxxxxxxxx] 
Sent: Monday, October 26, 2009 5:26 AM
To: 'Deutsch, Sarah B'; 'mike@xxxxxxxxxxxxxx'; 'Marilyn Cade'; 'Liz Williams'
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
 
Thought i’d clarify some of what I’d posted earlier the Staff proposal for Post 
Delegation introduces what I refer to as the ‘blind eye’ provision:
 
In short the IRT had recommended that:
 

 
>From IRT Recommendation:
 
 
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.
 
 
 
>From Staff Proposal up for Comments:
 
 
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.
 
 
The use of the words affirmative conduct in the Staff proposal means that TM 
owners can only trigger Post Delegation if there is clear and convincing proof 
that the Registry Operator actually and positively acted in a manner as 
described.  However, this leaves open omission and recklessness or turning a 
‘blind eye’ to systemic abuse on the gTLD.  Moreover, if there is a change in 
the nature of use of the gTLD in breach of the representations made in the new 
gTLD application or the Registry Agreement (which the IRT had recommended), the 
TM Owner / aggrieved party cannot trigger a Post Delegation Dispute Resolution. 
 So there is no protection awarded to TM Owners and even communities in case 
any of this happens once the gTLD has been delegated.  As Staff put it – 
Registry Agreement is a bilateral contract and ICANN would enforce it – 
basically trust us.
 
 
 
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
 
Notice / Disclaimer
This message contains confidential information and its contents are being 
communicated only for the intended recipients . If you are not the intended 
recipient you should not disseminate, distribute or copy this e-mail.  Please 
notify the sender immediately by e-mail if you have received this message by 
mistake and delete it from your system. The contents above may contain/are the 
intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute 
privileged information protected by attorney client privilege. The 
reproduction, publication, use, amendment, modification of any kind whatsoever 
of any part or parts (including photocopying or storing it in any medium by 
electronic means whether or not transiently or incidentally or some other use 
of this communication) without prior written permission and consent of Jamil & 
Jamil is prohibited.
 
From: Deutsch, Sarah B [mailto:sarah.b.deutsch@xxxxxxxxxxx] 
Sent: Monday, October 26, 2009 4:09 AM
To: mike@xxxxxxxxxxxxxx; Marilyn Cade; 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
 
Merely requiring a registry to offer a sunrise period is actually worse than 
the status quo given that trademark owners' defensive registration costs will 
skyrocket in direct proportion to the number of new TLDs introduced.   The URS 
was one way to avoid such costs.  But the URS as proposed by the IRT was only a 
partial solution unless trademark owners also have the right to request back 
the transfer of valuable domain names into their portfolio.   For such valuable 
domain names, trademark owners will face increased litigation costs to win back 
the names, or be placed in a perpetual monitoring situation, also increasing 
costs.  But, as Mike says, if the URS is a so-called "best practice," it will 
be mere window dressing and trademark owners will be left without any practical 
remedy.
 
 
Sarah

Sarah B. Deutsch
Vice President & Associate General Counsel
Verizon Communications
Phone: 703-351-3044
Fax: 703-351-3670
sarah.b.deutsch@xxxxxxxxxxx
 
 
  _____  

From: Mike Rodenbaugh [mailto:mike@xxxxxxxxxxxxxx] 
Sent: Sunday, October 25, 2009 3:20 AM
To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B
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
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) 
<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://rodenbaugh.com/contact>
  738-8087
http://rodenbaugh.com <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) 
<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-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
 
Notice / Disclaimer
This message contains confidential information and its contents are being 
communicated only for the intended recipients . If you are not the intended 
recipient you should not disseminate, distribute or copy this e-mail.  Please 
notify the sender immediately by e-mail if you have received this message by 
mistake and delete it from your system. The contents above may contain/are the 
intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute 
privileged information protected by attorney client privilege. The 
reproduction, publication, use, amendment, modification of any kind whatsoever 
of any part or parts (including photocopying or storing it in any medium by 
electronic means whether or not transiently or incidentally or some other use 
of this 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 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