RE: [gnso-iocrc-dt] preparation of tomorrow's call
- To: Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>, Thomas Rickert <rickert@xxxxxxxxxxx>, "gnso-iocrc-dt@xxxxxxxxx" <gnso-iocrc-dt@xxxxxxxxx>
- Subject: RE: [gnso-iocrc-dt] preparation of tomorrow's call
- From: "Neuman, Jeff" <Jeff.Neuman@xxxxxxxxxx>
- Date: Tue, 10 Jul 2012 16:49:14 -0400
Thanks Thomas and Steve. Glad you got the discussions going. I just want us
to be careful to make sure that we stay on the subject of the protections
proposed by the GAC paper to the Council in September 2011. The protections
Steve has aptly pointed out relate to a separate effort that can be
incorporated into the full PDP on IGOs (which is currently in the reply period
for the preliminary issues report) or through a separate process referred to
the GNSO by the Board as a result of the briefing paper (which the council has
not taken up yet).
Jeffrey J. Neuman
Neustar, Inc. / Vice President, Business Affairs
From: owner-gnso-iocrc-dt@xxxxxxxxx [mailto:owner-gnso-iocrc-dt@xxxxxxxxx] On
Behalf Of Steve DelBianco
Sent: Tuesday, July 10, 2012 3:49 PM
To: Thomas Rickert; gnso-iocrc-dt@xxxxxxxxx
Subject: Re: [gnso-iocrc-dt] preparation of tomorrow's call
On the subject of defensive registrations at the second level, please also see
the Jun-2012 ICANN staff Briefing Paper
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
“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:
o • 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.
o • 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.
o • WHOIS - Encourage and work with law enforcement to strengthen an
accurate WHOIS, and not just through “thick WHOIS.”
o • 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.
o • 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.
http://www.NetChoice.org and http://blog.netchoice.org
From: Thomas Rickert <rickert@xxxxxxxxxxx<mailto:rickert@xxxxxxxxxxx>>
Date: Tuesday, July 10, 2012 3:30 PM
Subject: [gnso-iocrc-dt] preparation of tomorrow's call
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
(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
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
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.
To my knowledge, the legal situation as regards the protection of the
designations in question has not changed.
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
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
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.
Thomas Rickert, Attorney at Law
Managing Partner, Schollmeyer & Rickert Rechtsanwaltsgesellschaft mbH (i.e. law
Director Names & Numbers, eco Association of the German Internet Industry