RE: [gnso-igo-ingo] Exception Procedure

[<Mary.Wong@xxxxxxxxxxx>]

I'm sorry I missed our last call and am just catching up. I agree that
exemption procedures should be used sparingly, and limited (if at all)
to reserved names that have a clear legal basis for protection. This is
one reason why a reserved names list - and the geographic names issue
Chuck mentions - is problematic and needs to be clearly defined and
narrow. A broader exemption category would be less justifiable for the
reasons that Robin and others have stated, e.g. placing the burden on a
potential registrant to demonstrate a legitimate interest. 

We discussed this in relation to the TMCH during the IRT process (was
that really in 2009? Wow) and the recommendation even there was for a TM
claims service, which merely gives the potential registrant notice and
requires only a warranty of non-infringement instead of requiring proof
of a right to register.  

For the record, I'm not opposed to David's suggestions; rather, I am
fine with discussing them with the caveat that any such process should
apply only to clear cases where there is a demonstrated legal basis for
protection of an identical match to a reserved name. 

Cheers 
Mary


Mary W S Wong
Professor of Law
Faculty Chair, Global IP Partnerships
Chair, Graduate IP Programs
UNIVERSITY OF NEW HAMPSHIRE SCHOOL OF LAW
Two White Street
Concord, NH 03301
USA
Email: mary.wong@xxxxxxxxxxx
Phone: 1-603-513-5143
Webpage: http://www.law.unh.edu/marywong/index.php


>>> 


From:  
"Gomes, Chuck" <cgomes@xxxxxxxxxxxx> 

To: 
Robin Gross <robin@xxxxxxxxxxxxx>, "gnso-igo-ingo@xxxxxxxxx"
<gnso-igo-ingo@xxxxxxxxx> 

Date:  
3/20/2013 10:27 AM 

Subject:  
RE: [gnso-igo-ingo] Exception Procedure 

Please see my personal responses below, noting that David and I are
working within the RySG to get clear direction from our SG on these
issues but won’t have that for a week or two at the soonest. 
   
Chuck 
   

From: owner-gnso-igo-ingo@xxxxxxxxx
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Robin Gross
Sent: Tuesday, March 19, 2013 9:43 PM
To: gnso-igo-ingo@xxxxxxxxx
Subject: Re: [gnso-igo-ingo] Exception Procedure 

  
I still maintain my objection to any provisions that won't register a
domain unless a registrant can show it has a right to the name. 
   
[Gomes, Chuck] I generally agree with this principle but I would
qualify it in this way: In the case of reserved names or any special
category of protected names that might be approved, I think that there
should be an exception procedure to allow for registrations by entities
that also have rights to the names; in those cases, there would need to
be a way for the entities to demonstrate their rights. Historically we
have an example of this in the case of ISO 3166 2-character country
codes at the second level for gTLDs: such names are not allowed without
the permission of the applicable country. An example of this in our
current discussions is the name Olympic: if some sort of protections are
approved for the name Olympic, then it seems reasonable to allow Olympic
to be registered at the second-level if an organization can demonstrate
that it has rights to that name and will commit to use it in a way that
does not create user confusion with the IOC. 

  

The need for special privileges has not been shown by most of those
seeking it here.  It is not fair to shift the burden over to everyone
else to have to show they are entitled to register a domain because one
of these groups wants it.   
   
[Gomes, Chuck] Whether or not the need for special privileges has been
shown or not is a subjective decision.  As everyone knows, I think we
need to avoid subjectivity as much as possible.  If we go down the path
of requiring organizations to prove their case for protections, we will
end up with some of us thinking they made a strong enough case and
others disagreeing, and we will have spent a lot time to end up back
where we started.  In general I do not think that registrants should
have to show they have rights before registering a name. But in some
cases where there are reserved names or other sorts of protected names,
if there is not a very clear basis for protection (e.g., it is clearly
illegal), then I think it makes sense to have an exception procedure in
which the registrant should have the burden of showing their entitlement
to the name. 
   

  

I don't think there can be consensus on the creation of any privileges
even remotely close to what is outlined below.  Continued work in this
direction is wasted effort.  Those who want privileges should focus on
what they can realistically expect to receive consensus on. 
   
[Gomes, Chuck] I disagree.  I think the process David describes below
has a lot of good elements.  I would tweak it some to make it a little
more objective and implementable but I will talk about that elsewhere. 

  

Thanks, 

Robin 

  

  

On Mar 19, 2013, at 3:18 PM, David Heasley wrote: 




Thomas and All, 
  
Here, as requested, is a more detailed outline of the exception
procedure to follow when an applicant claims a legitimate interest in
using a protected name. 
  
  

Goal: Where an applicant claims a legitimate interest in a second-level
domain name that is a protected name, our goal is to provide a procedure
for determining whether the application should proceed to registration. 


  

          General Principles: The procedure must: 

  

          · Provide immediate notification to the applicant and the
protected organization when an application is refused registration
because a name is protected.  

  

          · Provide a channel of communication between the applicant
and the protected organization;  

  

          · Provide an impartial, expeditious, and inexpensive process
for determining if the applicant has a legitimate interest such that its
application should proceed to registration;   

  

          · Use existing dispute resolution procedures wherever
possible.  

  

  

Outline of Procedure:  

  

 1.  Notification of Conditional Refusal Based on Protected Name.  The
applicant and protected organization will receive immediate electronic
notification if an applied-for second level domain is conditionally
refused registration because of a Protected Name in the Clearinghouse. 


  

2.  Declaration of Legitimate Use.  

  

    2.1  Each protected organization must record and maintain accurate
contact information with the Clearinghouse designating a recipient and
address to be notified electronically.   

  

    2.2  Within ten (10) days of receiving a conditional refusal, an
applicant may file a declaration with the Registry. The declaration must
identify the applicant accurately, provide accurate contact information,
and state that the applicant has a good faith, legitimate interest in
using the domain name that does not violate any treaties, national laws
or other legal entitlement of the protected organization. A standard
form will be provided. The protected organization will receive a copy of
the declaration electronically at its given address when the declaration
is filed with the Registry.  

  

    2.3  If, within ten (10) days after receipt of the above
declaration, the protected organization does not file an objection with
the Registry, the subject application will proceed to registration.  

  

   2.4. If, within ten (10) days after receipt of the above
declaration, the protected organization files an objection with the
Registry, the conditional refusal will be reviewed by an independent
Examiner.  

  

3. Examination.    

  

    The examination procedure (which is under consideration and will be
discussed before this section is filled in) must comply with the
principles above. It must: 

  

        3.1 Be impartial; 

  

        3.2 Give both parties the opportunity to be heard;   

  

        3.3 Be expeditious; and 

  

        3.4 Use existing procedures whenever possible.   

  

  

  

Jim, Kiran, and I look forward to discussing this with the Group. 

  

  

David K. Heasley
Silverberg, Goldman & Bikoff, LLP
1101 30th Street, N.W.
Suite 120
Washington, D.C. 20007
Tel. 202.944.2339
Fax  202.944.3306
dheasley@xxxxxxxxx
  
  

  

   

   

IP JUSTICE 

Robin Gross, Executive Director 

1192 Haight Street, San Francisco, CA  94117  USA 

p: +1-415-553-6261    f: +1-415-462-6451 

w: http://www.ipjustice.org     e: robin@xxxxxxxxxxxxx