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

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

With all respect, how can we know what there is consensus for without a polling 
of the entire consistency? Only a minority of the membership has weighed in 
during the current discussion on either side of the issues.

Your formulation would tend to let the dead hand of the past control BC 
positions and leaves the Constituency looking irrelevant and self-isolated -- 
arguing the exact same positions that were not adopted by the STI and have not 
found their way into the DAG amkes it easy for the GNSO Council, staff, and 
Board to ignore them and is likely to achieve little in the way of changing the 
trademark protections.

Another concern is that this approach tends to exacerbate divisions within the 
BC rather than reducing them. Once one viewpoint is adopted its defenders can 
dig in for an extended period and tell those with other views that all must 
remain static until they can demonstrate (by unstated means) that there is a 
new consensus for a different position, regardless of intervening events since 
the position was first formulated.

The opposite view is that for the BC to continue putting forward the same 
positions over time there should be a demonstration that a consensus still 
exists in their favor. Many members have spoken out against the prior position 
over the past few days, which is why there has been a move toward Jon's 
reformulation of the rights protections. Is his work now being rejected? Is 
everything that deviates from the original unsuccessful positions to be labeled 
a "watering down"?

If a majority of the BC wants to repeat the same rights protection positions 
that have borne little in the way of results so be it, but don't expect much to 
change. But perhaps it would be better for the Constituency to now advance 
positions on which their appears to be consensus -- such as careful and staged 
rollout of new gTLDs - note its disappointment that its views have not found 
their way into the DAG, and then advance something positive and forward looking 
for which there might be broad support within the BC. In that regard I would 
again suggest that we consider endorsing the RAPWG's call for balanced and 
comprhensive review of the UDRP.




Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

________________________________
From: Zahid Jamil [zahid@xxxxxxxxx]
Sent: Monday, July 19, 2010 5:18 PM
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

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
www.jamilandjamil.com<http://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
www.jamilandjamil.com<http://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<mailto:michaelc@xxxxxxxxxxxx>; 
mike@xxxxxxxxxx<mailto:mike@xxxxxxxxxx>; jb7454@xxxxxxx<mailto:jb7454@xxxxxxx>; 
randruff@xxxxxxxxxxxxxxx<mailto:randruff@xxxxxxxxxxxxxxx>; 
ffelman@xxxxxxxxxxxxxxx<mailto:ffelman@xxxxxxxxxxxxxxx>; 
bc-GNSO@xxxxxxxxx<mailto: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