[bc-gnso] FW: ALAC & BC - can we find common ground on RPMs?

["Zahid Jamil" <zahid@xxxxxxxxx>]

Dear All,

There have been indications from the ALAC that they may be able to find
common ground with Business interests in connection the Rights Protection
Mechanisms.  Have sent them informal email below to see if we can find some
common ground to help with the response of the GNSO to the Board’s letter
with respect to URSS and IP Clearing house.  Am hoping to remain optimistic
but realise that there may be detractors on their side so will be cautious.


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 11:17 AM
To: 'Cheryl Langdon-Orr'
Subject: RE: ALAC & BC - can we find common ground on RPMs?

Dear Cheryl,
Here are my comments for circulation to your ALAC:
The Commercial Business Users Constituency has been and remains concerned
about the inadequacy of Rights Protection Mechanisms with respect to the New
gTLDs Program.  The recent development of the Board Letter to the GNSO and
the Staff Proposals for 3 RPMs (URSS, IP Clearing house and Post
Delegation).  The BC had made a statement supporting the IRT report as going
in the right direction although many in the BC thought it may have not gone
far enough and some may have had reservations.  However, the Staff versions
of the RPMs are seen as being nowhere near adequacy.  In fact in my personal
interactions with many who may have had divergent views regarding the IRT
solutions, there seems agreement that the Staff proposals are probably even
more tenable.  It seems from the Board letter that the Staff recommendations
are the default and if the GNSO cannot achieve consensus the staff proposals
may be what the Board is left with to implement.
I am hoping that possibly the GNSO may be able to achieve some common ground
and ward off such a result.   I am therefore attempting to see if the ALAC
would be willing to informally discuss possibly reaching common ground so we
can together and possibly with other in the GNSO hopefully build a consensus
on the issues.
In this regard here very briefly are some thoughts we may consider in terms
of the Rights Protection issues in new gTLDs (beyond just the Board letter
to the GNSO):
 The IRT suggested 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 - this was included in the DAG3

However, the outcome from Staff in the DAG3 (
<http://www.icann.org/en/topics/new-gtlds/dag-en.htm>
http://www.icann.org/en/topics/new-gtlds/dag-en.htm) and those mentioned in
the Staff Rights Protection Mechanism Proposals (
<http://www.icann.org/en/public-comment/#prpm-new-gtlds>
http://www.icann.org/en/public-comment/#prpm-new-gtlds only URS & IP
Clearing house-difficult to find on the website and not connected to the
DAG3’s website) DO NOT REFLCT the IRT Recommendations.

One RPM ie the Post Delegation Dispute Resolution Policy difficult to find
from the main page is available on
<http://icann.org/en/topics/new-gtlds/comments-3-en.htm#files> http://icann.
org/en/topics/new-gtlds/comments-3-en.htm#files up for public comments.
This I believe is an important RPM and seems to have had less exposure to
public discussion and possibly will therefore attract little public comment.
I would suggest that we highlight this RPM as well (not being distracted
simply by IP Clearing house and URSS) and also comment on this RPM.

So of the 5 solutions the GNSO letter only puts forward 2:

GPML seems to not have moved much forward and dropped without completing the
research that ICANN Staff had promised - (irrespective of whether this was
an acceptable solution or not the decision should have followed after such a
study had been made public).  Thus, the problem of DEFENSIVE REGISTATIONS
still remains UNADDRESSED in the DAG3 and the Staff Proposed Rights
Protection Mechanisms.

Post Delegation has not been sent to the GNSO in the Board letter.  Instead
the staff version has been put up for public comments at
<http://icann.org/en/topics/new-gtlds/comments-3-en.htm#files> http://icann.
org/en/topics/new-gtlds/comments-3-en.htm#files (I believe this version does
not provide adequate remedies with respect to Rights holders and even
communities)
 Here’s a comparison:


 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.

So basically if a Rights holders or a community (if that is allowed) doesn’
t object at the application stage possibly taking comfort from the
representations in the Application and the Registry Agreement they have no
recourse subsequently to assert and challenge under this Proposal, in case
there is a breach of those representations or the Registry Agreement in the
application.
The use of the words ‘affirmative conduct’ in the Staff proposal to my
mind imply 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 recommendation had addressed), the TM Owner /
aggrieved party cannot trigger a Post Delegation Dispute Resolution.  So
there seems no protection awarded to TM Owners and even communities (if this
is allowed) in case any of this happens once the gTLD has been delegated.
Staff’s response to this issue has been - ‘Registry Agreement is a
bilateral contract and ICANN would enforce it’ - basically we should trust
ICANN to enforce the Registry Agreements.


In regards the URS:

ICANN staff has changed the Rapid Suspension from MANDATORY to BEST PRACTICE


Also delinked URSS from the Clearing House. Staff admits that “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.

It would help to see if we can reach common ground on the URSS being a fair,
due process, quick, cost effective and balanced process and also see if we
can reach common ground as to which cases will it apply.  The intent, I
believe, was that it apply to egregious or clear cut cases of cyber
squatting and related malicious abuse  (I paraphrase).  So if we can agree
through maybe a list of illustrations or some other means what that means to
all sides then we would have been able to move forward together.
Sorry for the rushed note.  I hope to be able also provide more insight on
the IP Clearing house some time later - just pressed for time so sending
this out to you asap.
I would welcome the possibility to informally meet with ALAC reps to see if
we can find common ground.  It is vital that we reject the Staff Model as it
stands at the moment.
 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.