[bc-gnso] IMPORTANT - Decision BC has to make on new gTLD TM issues

["Zahid Jamil" <zahid@xxxxxxxxx>]

Dear All,

Have spent a good 3 hours discussing these issues with the far right on the
Non-Commercial SG (will update in the BC meeting tomorrow).


In the meantime, as promised in the Huddle here is, a short brief to help
with discussion on BC strategy in tomorrow’s meeting:


Not part of the GNSO work requested in the Board letter:

1.      GPML:
This has been rejected by the Board and so the Board has not sent this to
the GNSO for any consensus.  There has been much opposition within the ICANN
community to this and was the main target of criticism.  It seems there also
may be some opposition from the GAC.  However, this leaves open the problem
of defensive registration.  BC has to decide what its position is to be
going forward.  This would not be an issue we need to decide on with respect
to the GNSO working group to work on URSS and IP Clearing House as this is
not part of the work assigned by the Board to the GNSO in its letter.  But a
general position in this regard to be communicated so that the Board is
aware of our view may be an idea.


2.      Post Delegation:

This too has not been sent by the Board to the GNSO for any work on reaching
consensus.  It is currently open for public comment and the BC can make
comments in this regard.  The Post Delegation is not in line with the IRT
Report (many reasons mentioned in earlier posts so will not repeat here).
The Staff Proposal would put the interests of both TM holders and
Communities at risk since once the delegation is made they would not have
any recourse or rights to institute Post Delegation Disputes under this
policy based on:
・         breach of representations in the gTLD application
・         breach of Registry Agreements
・         systemic breach of TMs in the gTLD as a result of omissions or
lacunas in Registry Operations or where the Registry can simply turn ‘a
blind eye’ to the infringements
This is what the Post Delegation was initially designed for and so not
having this in the Staff proposal makes the Solution effectively irrelevant.

The BC needs to decide on its response to the Staff Proposal for posting of
comments


Work Board has asked GNSO to work/decide on:

1.      IP Clearing House

Staff Proposal is not as problematic as other proposals.  There are a few
important issues though.  Here the object of the IRT was to allow IP Rights
holders to voluntarily sign up their IP rights (not just TM) with a
centralised database (Clearing house to validate rights).  It would be
mandatory for New gTLD Registries Operators to connect with the Clearing
house.   In case of a Sunrise the New gTLD Operator would have to provide a
Sunrise registration process verified by Clearinghouse data, and
incorporates a Sunrise Dispute Resolution Policy (SDRP).  In case of a
Claims Service, if a registrant applies for a domain name matches with a TM
‘identical’ to one in the IP Clearing house this will prompt a
notification to the registrant of the TM and require registrant to make
warranties as to the domain name being registered.

IRT had recommended that ‘identical match’ mean:
In this regard: (a) spaces contained within a trademark that are replaced by
hyphens (and vice versa), (b) spaces, hyphens, punctuation or special
characters contained within a trademark that are spelt out with appropriate
words describing it (Including but not limited to ~ @ # ! § % ^ (c) and
&.), and (c) punctuation or special characters contained within a trademark
that are omitted or replaced by spaces or hyphens will be considered
identical matches.

In the Staff Proposal identical match’ means:

‘“identical” is defined to mean that the domain name consists of the
complete and identical textual element of the trademark.’

As can be seen the Staff definition of identical match is very narrow.  BC
needs to decide whether to advocate IRT definition or also seek inclusion of
Typosquatting  and/or extend match to visual, aural?


In the Staff Proposal Pre‐registration complaint process in URS is not
included.  BC needs to decide whether such pre-registration for use in URS
is necessary.

Not clear whether IP Clearing house connectivity with New gTLD Registry
Operators is mandatory or not.




2.      URS:

The Staff proposal (different from the IRT) only recommends this as a ‘best
practice’ and not mandatory for a New gTLD.  Staff suggest this is only an
interim solution “until and if policy development work in this area is
undertaken by the GNSO which may adopt this or a similar system for use by
all registries”.  The link of the URS of pre-registration in the IP
Clearing house have been removed.  The IRT had suggested a fee be imposed on
registrant to file an answer if more than 26 domains are at issue.  Staff
Proposal removes this requirement.  Notification under IRT of URS was
supposed to be by email.  Staff Proposal includes the requirement of paper
as well as fax notification in addition to email.  Only remedy: “that
domain name shall be suspended for the balance of the registration period.
It will point to a site with a standardized post stating that it was
suspended as a result of a URS proceeding. The Whois record shall be revised
to reflect that the domain name is on hold and cannot be transferred for the
life of the registration.”  This may lead to the same domain name being put
back into the pool and snapped up by cybersquatters.

BC needs to decide whether transfer of the domain name to the Complainant
(for a fee and/or other conditions) is to be advocated.  Also should BC
advocate this be a mandatory and permanent Rights Protection Mechanism.

It may also be an idea to advocate that all these RPMs be reviewed
periodically.  Once new gTLDs are launched there will be more data to enable
revisiting these RPMs for improvement and possibly addressing problems not
earlier foreseeable.


Getting late now so will post more if necessary in morning.



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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