[bc-gnso] Fwd: ICANN’s Noncommercial Users Request Board Review of Staff Decision to Expand Scope of Trademark Clearinghouse in Violation of ICANN’s Bylaws

[Stéphane Van Gelder Consulting <svg@xxxxxxxxxxxxxxxxxxxxx>]

Colleagues, FYI. An interesting read.

> 
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH
> 
> ICANN’s Noncommercial Users Request Board Review of Staff Decision to Expand 
> Scope of Trademark Clearinghouse in Violation of ICANN’s Bylaws
> 
> ICANN’s Non-Commercial Stakeholders Group (NCSG) has filed a Request for 
> Reconsideration with ICANN’s Board of Directors regarding the staff’s 
> decision to expand the scope of the trademark claims service beyond that 
> provided by community consensus policy and in contradiction to ICANN Bylaws.
> 
> Specifically at issue is ICANN staff’s unilateral decision to adopt the 
> “trademark +50” proposal for new domains, which would provide trademark 
> holders who have previously won a UDRP or court decision with rights to 50 
> additional derivations of their trademark in ICANN’s Trademark Clearinghouse 
> (TMCH).   Under staff’s plan, large trademark holders that register in the 
> clearinghouse will be provided thousands of derivations of their trademarks 
> since each separate country’s registration of the same trademark provides the 
> brand owner with an additional 50 entries in the TMCH.[1]  Entries in the 
> TMCH trigger infringement warning notices to domain name registrants which 
> can lead to increased liability for registrants, discourage lawful 
> registrations, and chill speech on the Internet.
> 
> ICANN’s bottom-up community-developed process for creating policy had 
> approved of a TMCH model that allowed “exact matches” of trademarks only to 
> be placed in the TMCH.  In 2007, ICANN’s GNSO Policy Council, including 
> representatives from the Intellectual Property and Business Constituencies, 
> approved the GNSO recommendations that created special protections for 
> trademark rights by a supermajority vote.[2]  As part of the multi-year 
> consensus process, both the subsequent Special Trademarks Implementation 
> (STI) Team and the Implementation Review Team (IRT) considered the issue of 
> providing rights to exact matches or additional derivations, and both 
> community-developed teams specifically opted for exact matches only to be 
> placed into the TMCH.  ICANN’s CEO testified before U.S. Congress in 2012 
> that expanding the scope of the TMCH further would be inappropriate since it 
> would create new rights that do not exist in law and ICANN should not be 
> creating unprecedented rights.[3]
> 
> Many months after the final TMCH model of exact matches only was published in 
> ICANN’s Applicant Guidebook and new domain businesses relied on it when 
> filing their applications, ICANN’s Intellectual Property and Business 
> Constituencies lobbied ICANN’s new CEO to make drastic changes to the 
> community-developed policy and grant additional trademark rights in the TMCH.
> 
> After the October 2012 Toronto ICANN Meeting, a “strawman solution” was 
> proposed by ICANN’s new CEO which included a number of IPC/BC’s substantive 
> policy proposals to give trademark holders additional privileges in the 
> domain name system, including changing the exact matches only standard 
> approved of by the community. 
> 
> Yet ICANN’s CEO recognized that expanding the scope of the trademark claims 
> service was a policy matter requiring GNSO Council guidance, as he stated on 
> his blog[4] in December 2012; and the CEO did write to the GNSO Council to 
> request guidance on this policy proposal. Under ICANN’s Bylaws, staff may not 
> change GNSO-approved policy, except under a strict process that involves 
> consulting with the GNSO and a 2/3 vote of the Board of Directors.
> 
> NCSG filed comments on the proposed policy changes and warned against 
> re-opening previously closed consensus agreements and circumventing ICANN’s 
> stated bottom-up policy development process.[5]   In addition to the flawed 
> process for adopting this policy, NCSG also detailed substantive concerns 
> with staff’s proposal to expand trademark rights beyond anything that exists 
> in trademark law.  It came as no surprise that only members of the IPC and BC 
> supported the strawman proposals in ICANN’s comment period.[6]
> 
> In the GNSO Council’s February 29, 2013 response to the CEO regarding the 
> proposal to expand the scope of trademark claims, the GNSO Chair wrote, “the 
> majority of the council feels that proposal is best addressed as a policy 
> concern, where the interest of all stakeholders can be considered.”[7]  Thus 
> the GNSO Council also determined this specific proposal to be a policy 
> matter, requiring consultation from the entire community before such a change 
> could be made to existing GNSO Council approved policy.
> 
> Yet with only an email sent on 20 March 2013, ICANN staff announced in an 
> attached memorandum that it would expand the scope of the trademark claims 
> service to give trademark holders rights to 50 additional derivations of 
> their trademark, in contradiction to GNSO developed policy of exact matches 
> only and the subsequent requested GNSO Council guidance on the matter.[8]
> 
> Staff’s only explanation for such a drastic shift in the creation of new 
> rights: “this proposal appears to be a reasonable add on to an existing 
> service, rather than a proposed new service”.  Thus with a single line of 
> evasive text, years of hard-fought community consensus policy was brushed 
> under the rug and the new era of policy development via ICANN staff edict was 
> solidified. 
> 
> On 19 April 2013 NCSG filed this Request for Reconsideration of the staff 
> decision because ICANN did not follow its stated process for changing 
> GNSO-approved policy.  If ICANN wants to deviate from Supermajority 
> GNSO-approved policy, it must follow the process outlined in the 
> organization’s Bylaws, Annex A Section 9.[9]  As an organization that holds 
> itself out as a champion of the bottom-up policy development process, ICANN 
> is obligated to comply with community-developed policies, unless the Board of 
> Directors can muster the necessary 2/3rd vote to over-turn the community 
> decision.  That mandatory process was not followed by ICANN’s staff or Board 
> in over-turning the community-approved policy in favor of staff’s policy to 
> expand the scope of TMCH.
> 
> ICANN’s Board Governance Committee has thirty days in which to make to a 
> recommendation to ICANN’s Board of Directors regarding the NCSG’s Request for 
> Reconsideration or report to the Board on why no final recommendation is 
> available and provide a timeframe for making a final recommendation on the 
> matter.  ICANN’s entire Board should consider the recommendation of the Board 
> Governance Committee at its next regularly-scheduled Board meeting.
> 
> Under Article IV Section 2 of ICANN’s Bylaws, the Request for Reconsideration 
> process is a mechanism intended to reinforce ICANN’s accountability to the 
> community for operating in a manner consistent with its Bylaws.[10]  Because 
> the staff’s unilateral decision to change GNSO-approved policy was not 
> consistent with ICANN’s Bylaws and contradicted ICANN stated policy, NCSG 
> filed the Request to correct the error and bring ICANN into compliance with 
> its Bylaws and stated policies.
> 
> NCSG requests that the Board reinstate the community-developed policy of 
> giving trademark holders rights to include exact matches of their trademark 
> only in the TMCH, which was the policy stated in ICANN’s Applicant Guidebook 
> when ICANN accepted applications for new domains.  
> 
> NCSG’s Request for 
> Reconsideration:http://www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf
> Attachments to NCSG’s Request for Reconsideration: 
> http://www.icann.org/en/groups/board/governance/reconsideration/request-attachment-gross-25apr13-en.pdf
> ICANN Website on Requests for Reconsideration: 
> http://www.icann.org/en/groups/board/governance/reconsideration
> [1] 
> http://domainincite.com/12451-loophole-gives-trademark-owners-unlimited-clearinghouse-records
>  
> 
> [2] http://gnso.icann.org/en/issues/new-gtlds/pdp-dec05-fr-parta-08aug07.htm
> 
> [3] http://www.internetcommerce.org/ICANN_Amnesia
> 
> [4] 
> http://blog.icann.org/2012/11/a-follow-up-to-our-trademark-clearinghouse-meetings/
> 
> [5] 
> http://ipjustice.org/wp/2013/01/14/statement-of-icanns-non-commercial-stakeholders-group-ncsg-on-the-trademark-clearinghouse-talks-and-staff-strawman-model/
> 
> [6] http://forum.icann.org/lists/tmch-strawman/msg00096.html  See also:
> 
> Comments of Registrar Stakeholder Group: 
> http://forum.icann.org/lists/tmch-strawman/msg00027.html
> 
> Comments from New TLD Applicant Group: 
> http://forum.icann.org/lists/tmch-strawman/msg00014.html
> 
> Comments of Non-Commercial Stakeholder Group: 
> http://forum.icann.org/lists/tmch-strawman/msg00029.html
> 
> Comments of the Internet Service Provider Constituency: 
> http://forum.icann.org/lists/tmch-strawman/msg00011.html
> 
> Comments of Public Interest Registry: 
> http://forum.icann.org/lists/tmch-strawman/msg00024.html
> 
> [7] 
> http://gnso.icann.org/bitcache/d8eaf7ce8d121b69d340d1d14223520fd7d478b3?vid=46277&disposition=attachment&op=download
> 
> [8] 
> http://newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution-memo-20mar13-en.pdf
> 
> [9]  http://www.icann.org/en/about/governance/bylaws#AnnexA
> 
>             GNSO Policy Development Process
> 
> Section 9.  Board Approval Processes.  a. Any PDP Recommendations approved by 
> a GNSO Supermajority Vote shall be adopted by the Board unless, by a vote of 
> more than two-thirds (2/3) of the Board, the Board determines that such 
> policy is not in the best interests of the ICANN community or ICANN. If the 
> GNSO Council recommendation was approved by less than a GNSO Supermajority 
> Vote, a majority vote of the Board will be sufficient to determine that such 
> policy is not in the best interests of the ICANN community or ICANN.
> 
> b. In the event that the Board determines, in accordance with paragraph a 
> above, that the policy recommended by a GNSO Supermajority Vote or less than 
> a GNSO Supermajority vote is not in the best interests of the ICANN community 
> or ICANN (the Corporation), the Board shall (i) articulate the reasons for 
> its determination in a report to the Council (the "Board Statement"); and 
> (ii) submit the Board Statement to the Council.
> 
> c. The Council shall review the Board Statement for discussion with the Board 
> as soon as feasible after the Council's receipt of the Board Statement. The 
> Board shall determine the method (e.g., by teleconference, e-mail, or 
> otherwise) by which the Council and Board will discuss the Board Statement.
> 
> d. At the conclusion of the Council and Board discussions, the Council shall 
> meet to affirm or modify its recommendation, and communicate that conclusion 
> (the "Supplemental Recommendation") to the Board, including an explanation 
> for the then-current recommendation. In the event that the Council is able to 
> reach a GNSO Supermajority Vote on the Supplemental Recommendation, the Board 
> shall adopt the recommendation unless more than two-thirds (2/3) of the Board 
> determines that such policy is not in the interests of the ICANN community or 
> ICANN. For any Supplemental Recommendation approved by less than a GNSO 
> Supermajority Vote, a majority vote of the Board shall be sufficient to 
> determine that the policy in the Supplemental Recommendation is not in the 
> best interest of the ICANN community or ICANN.
> 
> [10] http://www.icann.org/en/about/governance/bylaws#IV
> 
>