RE: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

["Zahid Jamil" <zahid@xxxxxxxxx>]

In short there may be a simple solution to the deadlock.  

 

The BC has existing positions (especially the BC minority report and I think
also with the comments Ron is working with-need to check). 

 

In such a case the current positions hold. 

 

If members wish to water these positions down then it would be necessary for
such positions to be reach consensus - ie. the burden to change the
positions would be on those suggesting watering down.  

 

Hence, in my view if there is no consensus on any changes the default
position or positions consistent thereto would be repeated as BC comments.


 

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 35680760 / 35685276 / 35655025

Fax: +92 21 35655026

 <http://www.jamilandjamil.com/> www.jamilandjamil.com

 

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From: Zahid Jamil [mailto:zahid@xxxxxxxxx] 
Sent: 19 July 2010 17:00
To: 'Deutsch, Sarah B'; 'Jon Nevett'
Cc: 'Phil Corwin'; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx; jb7454@xxxxxxx;
randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx; bc-GNSO@xxxxxxxxx
Subject: RE: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

 

Dear All,

 

Have been following in this discussion intermittently.  Here are some of my
quick thoughts.  The IRT is not and has not been the yard stick by which BC
comments or views have been formed in the past.  BC did support the IRT but
clearly stated that the IRT had not gone far enough.  If we take the
argument that the IRT position should be followed solely then please keep
the GPML in.

 

We currently have no solutions for the defensive registration problem.  The
URS is not Rapid.  There is no transfer of the domain in a URS.  The
Trademark Clearinghouse is not a Rights Protection Mechanism (admittedly).
So what are we really left with.  

 

Jon's discussions here in the BC are reminiscent of the arguments Jon made
in the IRT and the STI where, at the time, Jon was representing Registrar
interests.  He has been a valuable member of both groups and I look forward
to his arguing in favour of BC positions now with the same, if not greater,
zeal.

 

Any argument that amounts to -they didn't listen to us in the past so let's
give up and settle for what we can does not address the problem.  There is
much to be said about consistency.  I would encourage the BC to also take
from the existing BC minority position in the STI report.  That is a BC
position and hence, it ought to be repeated where appropriate (have attached
the STI report - BC minority position is at page 31).  We should be lobbying
for better protection, in my view, not less since ICANN staff proposals
sideline and ignore business and trademark interests.

 

Lets also remember that the BC position has been vindicated in the Economic
Analysis which asks that limited rounds be undertaken and clearly
underscores the economic cost of the defensive registration problem.  Just
because we haven't worked on how limited rounds would be implemented it
doesn't mean that the concept is flawed.  The Economic study makes cogent
arguments in its favour.  Its now up to ICANN staff and possibly community
to come up with mechanisms.

 

Also the Economic Analysis clearly finds that there need to be surveys and
studies (details in the report) which should be conducted and then
mechanisms developed based on actual statistics.  Clearly showing that ICANN
staff has run away with the new gTLD proposal without adequate study and
analysis.  Hence, mention of the Analysis is quite pertinent and I support
Jeff's views in this.

 

 

Have pasted my Brussels email below:

My edits in [...]

 

 

 

Economic Study:

In light of the newly released economic study what steps are envisioned by
ICANN staff: including:

Survey (how)

Study (how)

Past introductions

Methodlogies

In particular re TM, user confusion (notwithstanding the current RPMs)

 

P - 16 - 17 :

Subsidies

Adjust Fee vs. Favourable approval process

 

25 - Potential consumer confusion or fragmentation of the Internet

26 - Increased registration costs for companies that feel the need to be

in multiple places on the Internet

28 - Defensive registrations

29 - Increased cost to companies to police new gTLD registrations that

violate trademarks or copyrights [VIGILANCE]

44 - 74 percent of the registered domain names either were "under
construction," for

sale, returned an error, or did not return a website at all.   Thus, at
least in the early stages of .biz, the great majority of registered domain
names were not being used to provide content to users, again indicating that
the registrations may have been defensive.

 

59 - 

105. A survey of registrants would likely be needed to disentangle the
extent to which

duplicate registrations are either purely defensive (and constitute external
costs) or generate benefits to the registrants. A survey of trademark owners
could provide information on the reasons for registration of domain names in
multiple gTLDs, such as how registrants use the additional gTLDs (e.g., to
provide new content or purely to redirect to another site) and whether the
registrants expect to reach a new audience with the new gTLD.115

 

[Zahid Note -  SURVEY requested by IRT hasn't been undertaken by Staff
either] 

 

61 - We recommend that ICANN consider the potential for consumer confusion
in deciding how quickly to proceed with the introduction of gTLDs, possibly
incorporating some methodology to measure consume confusion as new gTLDs are
rolled out over time.

 

62 - This potential project would use case studies to examine the likely
costs and benefits in broad categories of new gTLDs.

 

Such studies would lead to recommendations on how ICANN could craft its
application process and ongoing rules to lessen the likelihood of delegating
gTLDs that will have negative net social benefits and to enhance the net
social benefits from gTLDs that are designated.117

 

para 117 - end:

 

117. First, it may be wise to continue ICANN's practice of introducing new
gTLDs in discrete, limited rounds. It is impossible to predict the costs and
benefits of new gTLDs accurately. By proceeding with multiple rounds, the
biggest likely costs-consumer confusion and trademark protection-can be
evaluated in the earlier rounds to make more accurate predictions about
later rounds.

 

118. Second, in order to derive the greatest informational benefits from the
next round of

gTLD introductions, ICANN should adopt practices that will facilitate the
assessment of the net benefits from the initial rollout of additional gTLDs.
Specifically, ICANN should require registries, registrars, and domain names
registrants to provide information sufficient to allow the estimation of the
costs and benefits of new gTLDs. For example, there might be mandatory
reporting of trademark disputes.

 

 

 

 

 

 

 

 

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 35680760 / 35685276 / 35655025

Fax: +92 21 35655026

 <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
Deutsch, Sarah B
Sent: 19 July 2010 15:26
To: Jon Nevett
Cc: Zahid Jamil; Phil Corwin; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx;
jb7454@xxxxxxx; randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx;
bc-GNSO@xxxxxxxxx
Subject: RE: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

 

 

Jon,

 

Thanks for clarifying.  If this is the case, then it looks like ICANN kept
the high burden of proof for trademark owners on the one hand and ditched
other parts of the deal, including that it be in exchange for a rapid (hence
the "R" in the name URS) process.

 

As a practical matter, I don't see how any trademark owner will be able to
prove anything more than they already prove in filing a UDRP case.  For
example, in most cases, you'll know the infringer took your domain name,
which is identical or confusingly similar to your trademark.  You may or may
not have screen shots of ads on their infringing webpages.  You may or may
not have accurate WHOIS information about the infringer.  You may or may not
have evidence that the infringer stole other third party trademarks.  


There is no certainty for trademark owners about what is meant by "clear and
convincing evidence" and how to meet that standard over the evidence we
typically submit in the UDRP process.  Obviously, there's no way to know the
subjective intent of the infringer without full blown litigation and
discovery.  At a minimum, ICANN needs to give more guidance on this issue.

 

This burden of evidence standard is just one more reason why brand owners
will avoid using the URS.    

 

Sarah

Sarah B. Deutsch 
Vice President & Associate General Counsel 
Verizon Communications 
Phone: 703-351-3044 
Fax: 703-351-3670 

 

 

  _____  

From: Jon Nevett [mailto:jon@xxxxxxxxxx] 
Sent: Monday, July 19, 2010 3:10 PM
To: Deutsch, Sarah B
Cc: Zahid Jamil; Phil Corwin; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx;
jb7454@xxxxxxx; randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx;
bc-GNSO@xxxxxxxxx
Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

Sarah:

 

Sorry if I was unclear.  The intent of the IRT was to have the same legal
standard for the UDRP and URS (the same elements -- registration with bad
fait intent, etc.), but having a higher burden of proof (clear and
convincing vs. preponderance.

 

Here are the relevant quotes from the IRT report --
http://www.icann.org/en/announcements/announcement-4-29may09-en.htm

 

"The Final Evaluation analysis involves consideration of three basic issues,
similar to the standards for a UDRP decision, but requires a much higher
burden of proof." (emphasis added)

 

"If the Examiner finds that all of these elements are satisfied by clear and
convincing evidence and that there is no genuine contestable issue, then the
Examiner shall issue a decision in favor of the Complainant." (emphasis
added)

 

http://www.icann.org/en/announcements/announcement-4-29may09-en.htm

 

These positions had a unanimous consensus of the IRT.  Not sure the
relevance of my status on the IRT, but for the record I was told by the IPC
that I wasn't representing registrars on the IRT.  If you had heard the crap
that I got from my former registrar colleagues, you would understand that I
definitely wasn't representing them on the IRT :-).

 

As I don't believe that the BC complained about this burden of proof in the
past on the IRT, on the STI, or any public comments thereafter, I don't
think that we should raise it here.  If we think that the URS was changed in
a way that is problematic, let's focus on those changes instead of trying to
go back on issues that had complete consensus and haven't changed at all.

 

Thanks!

 

jon

 

 

 

On Jul 19, 2010, at 2:39 PM, Deutsch, Sarah B wrote:

 

Jon,

 

Thank you for your many constructive changes.  I want to respond to one
suggested edit you made below:

 

*I deleted the clear and convincing evidence issue with regard to the URS.
As a member of the IRT, I can say that it clearly was our intent for the URS
to have a higher burden of proof  than the UDRP -- the legal standard is
exactly the same.  We wanted the URS to be for "slam dunk" cases.  The URS
was to be a less expensive alternative to the UDRP cognizant of the fact
that 70% of UDRPs go unanswered.  


 

1.  I don't disagree that the URS, like the UDRP, should be used for slam
dunk cases.  I'm glad you confirmed that the legal standard was supposed to
be exactly the same.  It's my understanding that proof under the UDRP is in
fact based on a preponderance of the evidence standard, not a clear and
convincing evidence standard.  See below.  

 

Section 1.3.1.1 - Burden of Proof (How much proof is necessary?) 

In the administrative proceeding, the Complainant must prove that each of
the three elements contained in Section 4(a) of the Policy are present.

Comment:  In general, the Panels recognize a preponderance of the evidence
standard.  Preponderance of the evidence means that a fact is proved when it
is more likely than not that the fact is true.

2. Rather than delete this sentence in its entirety, I would recommend
inserting back in the following single sentence: "The BC recommends that
while the URS is intended to deal with "slam dunk," cases, we ask ICANN to
clarify that the legal standard remain the exactly the same as that found in
the UDRP.  ICANN should clarify that while proof of bad faith must be clear,
the evidence generally can be established by a proponderance of evidence
standard."

3.  I know that you were a valuable member of the IRT and at that time you
were representing registrars' views.  Other IRT members point out to me one
additional point.  The "slam dunk" aspect of the URS was in exchange for a
quick and cheap process.  No one knows how cheap this will wind up being,
but there is no question that the "quick" part of this trade off has
disappeared.  Many IRT participants confirm that the DAG4 doesn't represent
anything akin to the deal they thought they had struck.  

 

Sarah



Sarah B. Deutsch 
Vice President & Associate General Counsel 
Verizon Communications 
Phone: 703-351-3044 
Fax: 703-351-3670 

 

 

  _____  

From: Jon Nevett [mailto:jon@xxxxxxxxxx] 
Sent: Sunday, July 18, 2010 9:40 PM
To: Zahid Jamil
Cc: Deutsch, Sarah B; 'Phil Corwin'; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx;
jb7454@xxxxxxx; randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx;
bc-GNSO@xxxxxxxxx
Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

Folks: 

 

Attached is a suggested redraft to bridge the gap.  I personally don't agree
with some of the arguments I left in the attached, but I tried to keep the
longstanding BC positions while toning down the anti-TLD language.  I also
deleted a couple of the arguments that were objected to in some of the notes
I reviewed.

 

Here are some of the highlights:

 

*I deleted the GPML section.

 

*I deleted the clear and convincing evidence issue with regard to the URS.
As a member of the IRT, I can say that it clearly was our intent for the URS
to have a higher burden of proof  than the UDRP -- the legal standard is
exactly the same.  We wanted the URS to be for "slam dunk" cases.  The URS
was to be a less expensive alternative to the UDRP cognizant of the fact
that 70% of UDRPs go unanswered.  Has this issue even been raised before by
the BC?

 

*Based on Sarah's helpful e-mail, I left alone the complaint about
transferring names after a successful URS as that has been an issue that
Zahid, Mike and others in the BC have argued consistently.  I do note,
however, that transfer was not in the IRT recommendation and the STI agreed
to add a year to the registration at the request of the complainant as a
compromise.  

 

*Again based on Sarah's e-mail, I left the PDDRP section pretty much alone
except for an argument about registries warehousing names, but not using
them, as that argument didn't make much sense to me.  That's exactly the
function of a registry to warehouse names until they are sold by registrars.
If a registry "reserves" a name and it is not in use at all, the mark holder
should be thrilled that it can't be registered by a squatter.

 

*I also deleted the paragraph about the Director of Compliance.  I don't
think it appropriate to comment on those kinds of personnel matters. 

 

*I didn't touch the arguments related to community and 13 points (though I
personally favor 14 points to avoid gaming -- sorry Ron), as that seems to
be longstanding BC position.

 

*I didn't do much on the Market Differentiation section either other than
soften some of the language.

 

I have no idea if my attempt will get consensus or not, but I thought it
worthwhile to offer alternative language and I tried hard to find a balance.


 

Thanks.

 

Jon