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

[Jon Nevett <jon@xxxxxxxxxx>]

Thanks David for that perspective and insight.  After co-chairing a USCIB 
committee with you for a couple of years, I know that you always are a voice of 
reason and I think that you probably are correct in this case.

If we can't agree on consensus comments specific to DAGv4, which I hope is not 
the case, we probably should reissue the BC DAGv3 comments without any word 
changes with the following header (or something like it):

"The Business Constituency did not reach consensus on comments on DAGv4.  As 
such, the BC's comments on DAGv3 still stand and are being resubmitted for 
ICANN's review." 

Is that an acceptable default position for folks should our efforts over the 
next 24 hours not reach fruition?

Thanks.

Best,

Jon


On Jul 20, 2010, at 9:21 AM, Fares, David wrote:

> Colleagues,
>  
> News Corporation shares the views of the brand owners that have posted on the 
> list.  We believe strong trademark protection mechanisms are important in and 
> of themselves, but they also facilitate fair competition and prevent consumer 
> fraud, issues about which all businesses should care deeply.
>  
> Also, as a company that is a member of many trade/business associations we 
> recognize that existing policies can and should evolve.  However, as in those 
> other associations, a change from an existing position must follow the same 
> procedures under which the position was originally adopted.  Therefore, in 
> the context of this current debate, past positions should prevail unless a 
> majority of members agree to change/evolve them.  Several members have 
> mentioned that it is pointless to reiterate past positions that have not been 
> adopted by ICANN.  We would note that unfortunately, no explanation has been 
> provided by ICANN as to why the BC's longstanding positions have been 
> ignored.  With this in mind, we think the burden lies with ICANN to 
> articulate its rationale so that the community can assess the rationale's 
> legitimacy and then consider how to proceed.  This is particularly important 
> in light of the economic analysis presented in Brussels.
>  
> Janet and I look forward to working with everyone to find a solution to this 
> within the BC.
>  
> David
>  
>  
> From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of 
> Zahid Jamil
> Sent: Monday, July 19, 2010 5:00 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
>  
> 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
>  
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> 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
>  
>  
> 
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