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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: David Fares <dfares@xxxxxxxxxxxx>, Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>, <sarah.b.deutsch@xxxxxxxxxxx>, Mike Rodenbaugh <mike@xxxxxxxxxxxxxx>, Liz Williams <lizawilliams@xxxxxxx>, Zahid Jamil <zahid@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
- From: Marilyn Cade <marilynscade@xxxxxxxxxxx>
- Date: Mon, 26 Oct 2009 04:31:20 -0400
I would not see any reason why the civil society folks would object to the
brand holder being able to get back names that are subject to the URS, rather
than have them just picked up again for further abuse.
Zahid, do you have any insights on that point?
Sarah and you are quite right, in my view, that defensive registrations are now
an 'open field'. NOT good.
We are missing you, David. as well as others from the BC.
I'll leave it to others to bring David up to date on the range of challenges
that we face in figuring out the best approaches, AND an effective strategy.
The GNSO Policy Council is not a very stable environment right now, due partly
to all the changes in players within the Council and the high degree of stress
due to time limitations.
but, within the BC, we are going to also have to do work on this regarding our
positions substantively. It is going to be a very challenging time ahead, and I
know all of us, who have strongly held interests, will try our best to work
collegially throughout these days....
I think that in some ways, we are now reaping some of the fruits of how the IRT
was initially conceptualized and put forward. What is now very clear is that
the ability of Bruce and Rita to get support for the creation of the IRT, more
or less 'masked' the underlaying skeptism among a larger number of Board
members, and perhaps also the legal staff [just speculating]. That means that
we actually lost a good deal of time in 'educating' and improving
understanding...
Fortunately, we actually have a newly strengthened set of concerned potential
allies with the GAC clearly expressing its concerns about the 'overarching
issues' of protection of IPR in the new gTLDs, and the reference to this issue
in the AoC. BUT that doesn't mean that we have actually achieved the level of
acceptance of 'our' concerns as business users -- NOT merely IP
attorneys/representatives as represented by the IPC, but the broader and
aligned concerns about fraud, malicious conduct, etc.
BUT, we do have work ahead within the BC; within the Stakeholder group, and
then within the "HOUSE". We need to also be thinking about how to further the
good relationships that exists in some areas with the Registries.
From: DFares@xxxxxxxxxxxx
To: pcorwin@xxxxxxxxxxxxxxxxxx; sarah.b.deutsch@xxxxxxxxxxx;
mike@xxxxxxxxxxxxxx; marilynscade@xxxxxxxxxxx; lizawilliams@xxxxxxx;
zahid@xxxxxxxxx
CC: bc-gnso@xxxxxxxxx
Date: Mon, 26 Oct 2009 03:35:18 -0400
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
Thanks Phil. If I am not mistaken, there was representation
from all of the consitituencies on the IRT and therefore at least some level of
agreement.
From: Phil Corwin
[mailto:pcorwin@xxxxxxxxxxxxxxxxxx]
Sent: Monday, October 26, 2009 3:17 AM
To: Fares, David; 'sarah.b.deutsch@xxxxxxxxxxx'; 'mike@xxxxxxxxxxxxxx';
'marilynscade@xxxxxxxxxxx'; '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
With
all due respect, if the BC's efforts are devoted to trying to revert to the IRT
proposals rather than trying to find common ground with those who opposed them
(as Zahid is commendably trying to achieve) the result is likely to be an
inability
to achieve GNSO consensus and the Board's default adoption of the staff
assimilations that no one seems happy with.
Philip S. Corwin
Partner, Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004
2026635347/Office
2022556172/Cell
"Luck is the residue of design." -- Branch Rickey
From:
owner-bc-gnso@xxxxxxxxx <owner-bc-gnso@xxxxxxxxx>
To: Deutsch, Sarah B <sarah.b.deutsch@xxxxxxxxxxx>; mike@xxxxxxxxxxxxxx
<mike@xxxxxxxxxxxxxx>; Marilyn Cade <marilynscade@xxxxxxxxxxx>; Liz
Williams <lizawilliams@xxxxxxx>; Zahid Jamil <zahid@xxxxxxxxx>
Cc: bc - GNSO list <bc-gnso@xxxxxxxxx>
Sent: Mon Oct 26 03:09:17 2009
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
Colleagues,
While I am not in Seoul so cannot gauge the dynamics, I suggest
that the BC advocate adoption of the IRT's recommendations in their
entirety.
Thanks,
David
From:
owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Deutsch,
Sarah B
Sent: Sunday, October 25, 2009 6:09 PM
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)
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
Notice / Disclaimer
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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
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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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