RE: [bc-gnso] RE: [Bc-private] URGENT - redrafted letter from officers to ICANN Board re improvements in the new gTLD program

[<icann@xxxxxxxxxxxxxx>]

Thanks Phil.

 

On point 4, we will have to agree to disagree.  The heightened burden of
proof to 'clear and convincing' makes the URS much different than a UDRP.
Without option to transfer, there is little utility to the proposed URS;
particularly since ICANN is not likely to find an administrator for anywhere
near $300 per case.

 

On point 5, I agree the TMC notice should have some different language in
the case of brand + keyword or typo matches, to make it clear.  But I think
the additional benefit of notice in such cases is useful both as an
information service for the prospective registrant, and as a deterrent
against misuse.  The TM owner should self-select the keywords and typos that
would trigger a match.  They would bear the brunt of poor PR and/or
complaints from third parties if they over-reach with typos or keywords,
just like they do today with keyword advertising or domain monetization
issues.  Most would be responsible and only register commonly squatted
strings like yahoomail, googl, etc., particularly if there were some
additional cost for registering additional strings.  In any event, only a
notice would be triggered, and then the registrant is free to register in
light of it.  I really don't see a downside, even if there could be comical
attempts at misuse from some over-reaching trademark owners.

 

Mike Rodenbaugh

RODENBAUGH LAW

tel/fax: +1.415.738.8087

 <http://rodenbaugh.com> http://rodenbaugh.com 

 

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
Phil Corwin
Sent: Thursday, December 29, 2011 1:33 PM
To: mike@xxxxxxxxxxxxxx; 'Marilyn Cade'; 'bc-private icann.org'; 'Bc GNSO
list '
Subject: [bc-gnso] RE: [Bc-private] URGENT - redrafted letter from officers
to ICANN Board re improvements in the new gTLD program

 

Mike:

 

I'm in general agreement with points 1-3 of your letter.

 

On point 4, as previously stated, I'm against the URS including a transfer
option, especially if there's no additional due diligence, and most
especially as there is as of yet no indication that any credible URS
arbitration provider can be secured at the $300 filing level. Assuming that
a credible provider or providers can be secured, I would again propose that
rather than having a transfer option, which turns URS into a bargain
basement UDRP, that suspended domains be put on a permanent do not
re-register list -- which avoids the conflict with UDRP and also obviates
the need tor TM owners to pay defensive registration fees forever.

 

On point 5, I generally support limiting TMC to exact matches, especially as
that has always been its purpose. If any notice is to be given in regard to
brand + keyword it must be a balanced notice that alerts registrants that
their proposed domain name MAY OR MAY NOT be infringing, depending on use of
the website, because, as pointed out in my earlier e-mail, the mere
inclusion of a TM in a longer domain name is not determinative of
infringement. And I'm absolutely opposed to inclusion of "Typos" in the TMC
database as there is no possible way to limit that vast expansion of TM
rights into the DNS space -- and, as you yourself already pointed out, every
dictionary word is already a TM for something so even made-up words for
Internet startups -- like Google -- would trigger warnings under such a
regime.

 

best, Philip  

 

Philip S. Corwin, Founding Principal

Virtualaw LLC

1155 F Street, NW

Suite 1050

Washington, DC 20004

202-559-8597/Direct

202-559-8750/Fax

202-255-6172/cell

 

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

 

  _____  

From: bc-private-bounces@xxxxxxxxx [bc-private-bounces@xxxxxxxxx] on behalf
of icann@xxxxxxxxxxxxxx [icann@xxxxxxxxxxxxxx]
Sent: Thursday, December 29, 2011 2:31 PM
To: 'Marilyn Cade'; 'bc-private icann.org'; 'Bc GNSO list '
Subject: Re: [Bc-private] URGENT - redrafted letter from officers to ICANN
Board re improvements in the new gTLD program

Why are our deliberations about policy positions so often pushed by a few
members to the private list?  I think that is contrary to the reason we have
a public list, and to our stated commitment to develop policy openly and
transparently.  I am moving it back to the public list where it belongs.

 

I attach a redline with suggestions for improvement and accuracy in
Marilyn's redraft.  It requires changes, or at least a formal policy process
per our Charter if she is going to maintain some of her stated positions.

 

The major issues I see with this, at this point:  

 

1.       The BC has never discussed or recommended any sort of "block list"
policy, and this would be a major policy recommendation that must go through
the policy development procedures in Section 7 of the BC Charter
<http://www.bizconst.org/charter.htm> .  The implementation of such a policy
across all TLDs would be unfathomable.  As you state it, United can go and
prevent anyone from registering United in any TLD?  (Um, "which United". one
might ask.)  Oh, and lucky for Siemens, they own 'MUSIC' as a registered
trademark for hearing aids in the USA since 1997!  ICANN has already given
away new TLD operators' rights to use any country name, ICANN's trademarks,
etc., for absolutely no logical reason.  Now you want the BC to propose that
all words that are registered trademarks anywhere in the world can be
blocked by any holder of any such registration, across every new TLD in the
world?  At minimum, this will require more thoughtful, and formal, written
policy development per our Charter.  You can't just throw this skeletal and
dubious proposal into a letter to the Board, merely because you and a few
other members like the idea.  Particularly while giving the membership just
one holiday weekend to consider your idea?!  There is no rush to get such a
position developed, if that is what the membership wants to do, but I
suspect the idea will die fairly quickly once people think for a moment
about the implications.

 

2.       Your statement about Community Priority should restate the position
we have agreed upon in prior, formally developed policy positions on this
issue.  Specifically, we have recommended lessening the CPE passing score
from 12 to 11 points.  We have never discussed giving 'brands' any priority
over other applicants, unless somehow they can qualify as a community-based
applicant.  Again the practical implementation of such a policy is
unfathomable, given that almost every single word imaginable is registered
somewhere as a trademark, or otherwise used as a 'brand' by someone,
somewhere.

 

3.       The BC has never proposed a centralized URS service, and I don't
know what you mean by this.  Instead we have expected it to operate similar
to the UDRP, with several accredited providers, and we suggest ICANN have a
contract with all providers.  So that proposal needs to come out.

 

4.       Agreed with URS transfer option, as we have long agreed in our
written policy positions, but why are we now suggesting an additional fee to
trademark owners?  Again this seems like a new and unhelpful idea that has
not been properly discussed, so that proposal should come out.

 

5.       We should reiterate our call for the TMC to include "brand +
keyword" and brand typosquats, as we have previously agreed in prior written
policy documents.  That would be the single biggest help to trademark owners
and businesses, and could be easily achievable as there really is no
downside consequence from additional notices going out to applicants for
domain registration.

 

I hope everyone has a happy new year, it is regretful that some in the BC
leadership are so urgently pushing new proposals to us at this point in
time.  I frankly don't see the urgency, unless someone is hoping to delay
the new TLD application window from opening, as scheduled for more than six
months now.

 

Mike Rodenbaugh

RODENBAUGH LAW

tel/fax: +1.415.738.8087

http://rodenbaugh.com 

 

From: bc-private-bounces@xxxxxxxxx [mailto:bc-private-bounces@xxxxxxxxx] On
Behalf Of Marilyn Cade
Sent: Thursday, December 29, 2011 8:53 AM
To: bc-private icann.org
Subject: [Bc-private] URGENT - redrafted letter from officers to ICANN Board
re improvements in the new gTLD program

 

Dear BC members -- although it is a holiday period, I must ask that you
focus on the redraft of the improvements document which has been circulating
on the bc-private list. 

 

I have edited the earlier version of the improvements, added in accurate
WHOIS at the request of a member, and a reference to not sending 'brands' or
NGO or charitable gTLD string applicants into auctions. This was called to
my attention by an applicant for BC membership that has just began to learn
about ICANN. 

 

The significant addition is the do not register/registry block service,
which is modeled after the IFFOR .XXX service in many ways.  It is
challenging to consider defensive registrations costs and UDRP costs across
potentially hundreds of new gTLDs, a single cross all gTLD block on a number
of names associated with trademarks will at least lower the defensive
registration burden somewhat. I proposed a three year period, followed by an
assessment.  

 

In order to have impact, this really needs to be sent out Tuesday, January
3.  The letter is silent on a delay, but does recognize that many global
businesses are highly concerned, and that the BC has consistently tried to
get improvements to the program.  Some are expensive to ICANN, but all are
achievable improvements. 

 

I incorporated the request to express support for multi stakeholder nature
of ICANN raised by a couple of members.