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

["BRUEGGEMAN, JEFF (ATTSI)" <jb7454@xxxxxxx>]

Jon, would you be amenable to adding some language explaining why the BC
is resubmitting its positions.  In addition to David's point that ICANN
hasn't provided an explanation for ignoring the BC's positions, I think
both the malicious conduct study and the economic paper support David's
point that the trademark protections should be considered in the context
of consumer and economic issues.  It we provided that rationale, then we
could stick to the existing approved language but make the comments
relevant to the proceeding as it stands now.

 

Jeff

 

From: Jon Nevett [mailto:jon@xxxxxxxxxx] 
Sent: Tuesday, July 20, 2010 9:39 AM
To: Fares, David
Cc: Zahid Jamil; 'Deutsch, Sarah B'; 'Phil Corwin';
michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx; BRUEGGEMAN, JEFF (ATTSI);
randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx; bc-GNSO@xxxxxxxxx
Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

 

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 <http://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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