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

  • To: <gnso-iocrc-dt@xxxxxxxxx>
  • Subject: Re: [gnso-iocrc-dt] preparation of tomorrow's call
  • From: Alan Greenberg <alan.greenberg@xxxxxxxxx>
  • Date: Wed, 11 Jul 2012 13:38:11 -0400

One concern with this recommendation might be that since the IOC/RC names may be but are not necessarily registered as trademarks, the existing rights protection mechanisms may not apply.


At 10/07/2012 03:30 PM, Thomas Rickert wrote:
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>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)

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

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