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>]

Comments below:


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: Marilyn Cade [mailto:marilynscade@xxxxxxxxxxx]
Sent: Monday, October 26, 2009 2:31 PM
To: David Fares; Phil Corwin; sarah.b.deutsch@xxxxxxxxxxx; Mike Rodenbaugh;
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

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? [Zahid Jamil] this is one of
the issues I will be trying to get resolved.  If there is a successful URSS
application then the TM holder should have a way in which to have the domain
transferred on payment of fee otherwise if the domain goes back into the
pool it will be snapped up again by cybersquatters.

Sarah and you are quite right, in my view, that defensive registrations are
now an 'open field'. NOT good. [Zahid Jamil]  Well we need to speak up about
it.  No one is speaking to this issue at the moment.  If a GPML isn’t the
answer then what is - that’s ICANN problem to solve.  We should continue to
lobby this.

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 re garding
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 Ver sion 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)
<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


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