RE: [gnso-iocrc-dt] RE: Red Cross/IOC: List of possible approaches to respond to GAC proposal

["Neuman, Jeff" <Jeff.Neuman@xxxxxxxxxx>]

All,

I just wanted to offer my personal (non-chair) feedback on this although I will 
not be able to make the call today.  Options 1 and 5 are not mutually exclusive 
and I believe should be considered as a joint option if the group is leaning 
towards option 1.

Recall option 1 is maintain the status quo (no changes to reserved names 
schedule) and option 5 is to consider possible additional protections as part 
of broader PDP for international organization.  So, in essence, it is maintain 
the status quo for now, but include this in the broader PDP.

I do also have some questions on Thomas' points.


1.        Thomas states:  "data provided to the DT has shown that abuse 
predominantly takes place with similar strings or where the designations in 
question are combined with more elements and that such abuse cannot be 
prevented by reserving identical strings."  I actually do not believe this is a 
fair statement nor accurate in the new world of the new gTLDs nor really 
relevant when looking at the issue of reserving the exact matches at the second 
level.  Yes, when asked to provide evidence of abuse, the IOC provided evidence 
of marks that are similar or combined.  But one of the reasons could be that 
all of the actual marks themselves were registered by the IOC in the land 
rushes/Sunrise processes of the other TLDs.  Thus, since they already owned the 
identical names, then there could not by definition, be any current abuse.  
This doesn't dilute the argument against adopting options 1 or 5, but rather is 
just an opinion that we should not be issuing any finding about where abuse 
takes place.



2.       While the legal case in Germany is interesting, as another lawyer, I 
am not sure I find it to be particularly relevant when considering the exact 
matches in the domain name context.    We, as a group, are not looking at 
whether to add "olympicdiscounts" to the reserved names list, but rather just 
"Olympic."  I am not familiar with German law, but I would presume that if the 
contact lens dealer changed its name to just "Olympic", and advertised its new 
name as "Olympic" the case may not have turned out the same.  Nor am I so sure 
that a domain name would be viewed merely as a promotional use vs a designation 
of origin.

I agree with the other points - Namely, that:

1.        We need to ensure that the marks contained within the GAC list are 
all eligible for protection under the existing rights protection mechanisms and 
dispute processes.

2.       We can recommend that registries should be encouraged to provide 
additional protections to these organizations where applicable, including 
maintaining these marks on a reserved list; and

3.       A concise summary of the discussions and considerations by the group 
(at both the top and second levels) should be drafted.

Jeffrey J. Neuman
Neustar, Inc. / Vice President, Business Affairs


From: owner-gnso-iocrc-dt@xxxxxxxxx [mailto:owner-gnso-iocrc-dt@xxxxxxxxx] On 
Behalf Of Gomes, Chuck
Sent: Tuesday, August 21, 2012 6:01 PM
To: Thomas Rickert
Cc: Brian Peck; gnso-iocrc-dt@xxxxxxxxx
Subject: RE: [gnso-iocrc-dt] RE: Red Cross/IOC: List of possible approaches to 
respond to GAC proposal

Thanks for the feedback Thomas.  Please see my responses below, including a 
couple questions.

Chuck

From: Thomas Rickert [mailto:rickert@xxxxxxxxxxx]
Sent: Tuesday, August 21, 2012 4:39 PM
To: Gomes, Chuck
Cc: Brian Peck; gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>
Subject: Re: [gnso-iocrc-dt] RE: Red Cross/IOC: List of possible approaches to 
respond to GAC proposal

Chuck, all,
thanks for putting this together.

I believe that option 3 a is not acceptable, unless that were the outcome of a 
PDP. I share Avri's concerns with this. If such protections were the the 
outcome of a PDP, that would be fine, but there should be no shortcut.

Also, I would like to add to the exchange of thoughts between Chuck and Kiran 
on the legal situation that there was a recent court decision in Germany made 
by the regional court of Kiel, which stated that an advertisement of a contact 
lense dealer with "olympic prices" and an "olympic discount" does not 
constitute an infringement of the  Olympiaschutzgesetz (Olympia Protection Act).

Olympic designations cannot be protected against any type of promotional use. 
Combined with the word "discount" and "price" the olympic designation only 
conveys that the offers are very good and according to which current occasion 
such discounts are offered (LG Kiel, Decision of June 21, 2012 - 15 O 158/11).

Thus, the number of cases in which legitimate use of the designations in 
question is possible is getting bigger. We should therefore not shortcut a 
comprehensive assessment. You might say that the court talked about the 
combination of two words while we are talking about identical matches. I would 
think that a the combination of the identical string under a TLD as a 
promotional statement would also constitute legitimate use.

As a consequence, I think that option 1 is the one to go. We could amalgamate 
what Chuck wrote with (some) of the suggestions I made and I am happy to 
discuss this further tomorrow. [Gomes, Chuck]  Should I take this to mean that 
you would support the approach I described from the RySG, i.e., recommending 
that the Council inform the GAC that option 1 is the current position of the 
GNSO Council, provide a rationale for that position (expanded by the discussion 
group) and ask the GAC to provide any additional information they might want to 
provide for Council consideration?

It would be imperative to write a comprehensive rationale.[Gomes, Chuck]  
Definitely agree.   In addition to what Chuck wrote, we should add that:

- there is a GNSO policy on reserved names, which does not grant special 
treatment to certain groups or rights holders[Gomes, Chuck]  I would word this 
a little differently.  There is a GNSO approved policy for introducing new 
gTLDs  that includes a list of reserved names that 'does not grant special 
treatment to certain groups or rights holders'.
- that where the use of RPMs and DRMs may not be accessible to IOC-RCRC, such 
use should be made possible[Gomes, Chuck]  I don't understand what you mean 
here.  Please explain.
- data provided to the DT has shown that abuse predominantly takes place with 
similar strings or where the designations in question are combined with more 
elements and that such abuse cannot be prevented by reserving identical strings
- that ICANN staff should help the organizations to reach out to applicants to 
encourage voluntary inclusion in the reserved names lists of the new 
registries. [Gomes, Chuck]  Are you suggesting that this be part of the 
discussion group recommendation to the Council?  I am fine with that but want 
to make sure that is your intent.
[Gomes, Chuck] If the discussion group decides to pursue this approach further, 
I encourage others to add to the rationale.

Also, a summary of the discussions and considerations of the DT should be 
included so show the level of complexity and thinking that went into this 
subject. [Gomes, Chuck]  Agreed, although I think we should make it as concise 
as possible, while still being thorough.


Thanks,
Thomas


Am 08.08.2012 um 23:47 schrieb Gomes, Chuck:

There has been a lot of discussion about the various IOC/RC Discussion Group 
approaches in the RySG the past several weeks including in the last two 
teleconference meetings.  In the meeting today, a somewhat new approach gained 
quite a bit of traction and I will try to describe it here:
a.      Communicate to the GAC that Discussion Group Option 1 is the GNSO's 
starting position for second-level names in the first round of new gTLDs: 
"Maintain the status quo and not provide any new special protections for the 
RCRC/IOC names (i.e., no changes to the current schedule of second-level 
reserved names in the new gTLD Registry Agreement)."
b.      Provide a rationale for this position
*        Possible reasons could include but need not be limited to the 
following:
                                                    i.     Reserving names for 
the IOC or RC could set excessive precedents and motivate unlimited numbers of 
other organizations to see special protections even though the GAC did a 
commendable job of trying to narrowly qualify the organizations for which names 
would be reserved.
                                                   ii.     Lots of input has 
been received since the GAC request that makes it less clear that the list of 
organizations could be sufficiently narrow.
                                                  iii.     National laws vary 
regarding their implementation of international treaties including variances 
about what exceptions are made.
                                                  iv.     Existing rights 
protection mechanisms can be used by the IOC and RC just like other 
organizations who have rights to names.
                                                   v.     Reserving the finite 
list of names recommended by the GAC opens the door to expanding that list to 
include acronyms, similar strings, etc., and these become even more problematic 
from an operational and policy perspective.
                                                  vi.     There are 
organizations besides the IOC and RC that have legitimate rights to some of the 
GAC recommended strings.
                                                vii.     The complexities of 
this issue warrant a thorough vetting in a GNSO multi-stakeholder, bottom-up 
PDP and, because of the complexities and competing interests, a PDP may not be 
able to be completed before new gTLDs are delegated.
*        The work of the IOC/RC discussion group should be reviewed to identify 
other reasons.
*        The RySG is ready and willing to contribute to better refining the 
rational if there is support for this approach.
c.      Give the GAC the opportunity to address the concerns expressed in the 
rationale (i.e., 'fill in the holes').
Many in the RySG would not be disappointed if, even without a PDP, the above 
resulted in a GNSO recommendation of Discussion Group Approach 3.a:  "Develop 
recommendations to respond to the GAC proposal by suggesting extending 
protection for all of the GAC recommended IOC and RCRC names provided there is 
an exception procedure for allowing names in to-be-defined circumstances."  But 
we believe that justification for doing it based on current information has too 
many weaknesses at this time.
Chuck

From: owner-gnso-iocrc-dt@xxxxxxxxx<mailto:owner-gnso-iocrc-dt@xxxxxxxxx> 
[mailto:owner-gnso-iocrc-dt@xxxxxxxxx] On Behalf Of Brian Peck
Sent: Wednesday, July 25, 2012 6:07 PM
To: gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>
Subject: [gnso-iocrc-dt] FW: Red Cross/IOC: List of possible approaches to 
respond to GAC proposal

Please find attached an updated, corrected version of the document provided 
below reflecting Avri's earlier message regarding some initial input from the 
NCSG.


------ Forwarded Message
From: Brian Peck <brian.peck@xxxxxxxxx>
Date: Wed, 25 Jul 2012 12:58:16 -0700
To: "gnso-iocrc-dt@xxxxxxxxx" <gnso-iocrc-dt@xxxxxxxxx>
Subject: Red Cross/IOC: List of possible approaches to respond to GAC proposal

To all DT members:

Please find attached a document that was prepared for and discussed during 
today's IOC/RCRC Drafting Team call.  This document briefly summarizes a list 
of possible approaches that have been proposed to date within the DT for moving 
forward in responding to the GAC proposal to protect the RCRC and IOC names at 
the second level in new gTLDS, as well as some initial comments received 
regarding this list of approaches which was sent to the group on 18 July.

Please not that this current draft is what was prepared and posted for today's 
call and is being provided so that you can go back to your individual groups 
and solicit comments on which approach(es) your group would support as a way 
for the DT to move forward.  This draft does not include comments that were 
raised during the call, we ask that any comments representing your individual 
groups be shared and sent via email to the list.

This is a fluid document and we will be periodically updating and distributing 
it with any submitted comments on the individual proposed approaches prior to 
the next scheduled call on 15 August.  Thanks.

Best Regards,

Brian

Brian Peck
Policy Director
ICANN



------ End of Forwarded Message