Re: [gnso-iocrc-dt] preparation of tomorrow's call

[Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>]

On the subject of defensive registrations at the second level, please also see 
the Jun-2012 ICANN staff Briefing Paper 
(link<http://gnso.icann.org/en/correspondence/defensive-registrations-briefing-paper-04jun12-en.pdf>)

This report describes measures to mitigate costs of 2nd-level cybersquatting 
and defensive registrations:

Blocking: Amend the Applicant Guidebook to include a requirement that all new 
gTLD registries that sell second-level domains to registrants must offer a 
one-time, low-cost block for trademark owners to protect their marks in 
perpetuity.

“Do Not Sell List” for Second Level: Establish an appropriate variant of the 
“Do Not Sell List” proposal for new gTLDs, which would allow a right holder to 
enter a name on this list for a fee. The name would be ineligible for 
registration until either an applicant for a second level domain name can 
demonstrate that it has a legitimate right and interest in using that name 
and/or, any dispute is resolved through existing RPMs.

Strengthen Existing RPMs:

     *     PDDRP - Amend the PDDRP to lower the “preponderance of the 
evidence” standard of proof in order to more effectively address instances 
where new registries are acting in bad faith and willfully allowing fraudulent 
and illegal activities as demonstrated on a continued basis in their delegated 
gTLD.

     *     TM Clearinghouse – 1) Require all new gTLD registries to shift the 
burden to potential registrants to provide legal justification for their 
registration and use of the domain name in question. 2) Expand the universe of 
marks “targeted for cybersquatting” to encompass those marks (a) that have been 
the subject of at least five administrative or legal proceedings in which IP 
infringement relating to registration or use of a domain has been found or (b) 
for which the trademark owner has recovered ten or more infringing domain names 
through at least one administrative or legal proceeding. 3) Expand the 
Trademark Claims Service to domains that not only consist of an identical 
trademark in the Clearinghouse but also contain a trademark or are 
misspellings, supersets or phonetic variations of a trademark.

     *     WHOIS - Encourage and work with law enforcement to strengthen an 
accurate WHOIS, and not just through “thick WHOIS.”

     *     URS – 1) Establish a transfer remedy and a lower “preponderance of 
the evidence” standard of proof; remove any requirement that a URS provider 
make any substantive determination about how a trademark owner is “using” its 
mark. 2) Implement a “loser pays” model to all URS proceedings regardless of 
how many domain names one registers in bad faith. 3) Reduce the filing fee to 
make it a relatively inexpensive mechanism (e.g., $300-$500). As an 
alternative, if the URS cannot be offered at this price range, then ICANN 
should consider having its registrars implement a notice and takedown process.

     *     Sunrise Period Registrations - Expand coverage from just domains 
consisting of an identical trademark match to registrations that also contain a 
trademark or are misspellings, supersets or phonetic variations of a trademark.







--
Steve DelBianco
Executive Director
NetChoice
http://www.NetChoice.org and http://blog.netchoice.org
+1.202.420.7482


From: Thomas Rickert <rickert@xxxxxxxxxxx<mailto:rickert@xxxxxxxxxxx>>
Date: Tuesday, July 10, 2012 3:30 PM
To: "gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>" 
<gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>>
Subject: [gnso-iocrc-dt] preparation of tomorrow's call

Dear all,
in preparation of tomorrow's call I would like to summarize some thoughts on 
second level protections. For those who have been present at the early morning 
session in Prague - this is basically what I stated during the meeting.

To start with, the question we are tasked to work on is the protection of the 
IOC/RCRC designations

(i) at the second level;
(ii) for identical strings.

The GNSO has already carried out extensive work with respect to reserved names. 
As can be seen from the final report of the Reserved Names Working Group 
(http://gnso.icann.org/en/issues/new-gtlds/final-report-rn-wg-23may07.htm), 
there was even a minority position mentioned in the report which expressly 
deals with IGOs and other parties criticizing the lack of protection for those 
entities. This shows that comparable scenarios have been discussed and 
considered, but that such protections have ultimately not been included in the 
recommendations.

Thus, the question is whether existing GNSO policy needs to be reconsidered and 
potentially requires alteration. In my view, this would only be the case if

(i) the situation had changed since the original policy recommendations have 
been made or
(ii) new threats have emerged that require the GNSO to reconsider its policy.

ad (i)
To my knowledge, the legal situation as regards the protection of the 
designations in question has not changed.

ad (ii)
The information provided by IOC/RCRC shows that the vast majority of cases 
where the rights of the organizations have allegedly been violated involve 
domain names that are not identical matches, but similar strings or strings 
where the designations in question are combined with additional characters.
I understand that protections for similar strings have been requested by Debbie 
Hughes during the meeting in Prague and on occasion of one telephone 
conference. However, this is not covered by the remit of the discussion group 
(as the drafting team is now called).

In my view, the information provided to the discussion group does not evidence 
special or new threats for the organizations for identical strings at the 
second level.
On the contrary, the risk of identical designations being registered by third 
parties for legitimate or illegal use has existed and still exists for all 
rights holders. In order to address this threat scenario, there are mandatory 
Rights Protection Mechanisms and Dispute Resolution Mechanisms.

The situation for the IOC/RCRC does not seem to differ from the threats other 
rights holders are exposed to. It may well be that the RPMs and the DRMs 
adequately address the threats.

Hence, there are mechanisms in place that are designed to respond to exactly 
the threats in question.
One might not find this result satisfactory, in particular since the use of the 
above mechanisms requires resources and money, but to respond to these 
concerns, other answers rather than a policy answer should be given.
One answer might be to try to address the cost issue.

Also, let's not forget that new gTLDs can deploy more RPMs than the mandatory 
RPMs. Many registries plan to do so. Many, if not all of them will deploy their 
own lists of reserved names.

It may well be that new gTLD Registries are willing to add certain designations 
to their lists of reserved names on a voluntary basis.
It may well be that new gTLD Registries have more RPMs that protect the 
designations in question even more comprehensively than the mandatory RPMs and 
DRMs.
It may well be that (not all) new gTLDs are not an attractive target for 
wrongdoers. We do know that there is a relation between the attractiveness of a 
namespace and the risk of abuse.

On the other hand:

It may also be that we find that the RPMs and DRMs do not provide a sufficient 
level of protection.
It may also be that IOC/RCRC are exposed to special threat scenarios.

However, appropriate responses to that would require empirical data stemming 
from experiences made after the launch of new gTLDs.

Thus, a policy response could be required for the second and subsequent rounds, 
but not for the initial round.

As a consequence, I propose that the DT responds to the GNSO Council that

- no special protection should be granted and no new policy shall be made for 
the first round;
- this may change based on the experiences with the launch of the new gTLDs in 
the first round;
- opportunities to lower costs should be considered for each organization 
separately when implementing RPMs and DRMs;
- a recommendation could be made to new gTLD Registries to respond to request 
to voluntarily protect the designations in question.

I am looking forward to talking to you tomorrow.

Best regards,
Thomas Rickert



___________________________________________________________
Thomas Rickert, Attorney at Law

Managing Partner, Schollmeyer & Rickert Rechtsanwaltsgesellschaft mbH (i.e. law 
firm)
www.anwaelte.de<http://www.anwaelte.de>

Director Names & Numbers, eco Association of the German Internet Industry
www.eco.de