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

[Thomas Rickert <rickert@xxxxxxxxxxx>]

Jeff, all,
I propose that we discuss Chuck's comments on the phone later, but I would like 
to briefly reply to Jeff as he will not be able to make the call.


Am 22.08.2012 um 11:01 schrieb Neuman, Jeff:

> 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 agree that these could or should be combined.

>  
> 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.

We are discussing potential protections for identical matches now. ICANN is 
already requiring certain RPMs to be implemented by the new registries. In my 
view the risk of identical names being taken by third parties is addressed by 
these new mechanisms - at least this risk also exists for many other rights 
holders. Even if your assumption were correct that identical matches do not 
constitute issues due to the fact that the organizations in question have 
registered them, I guess it is fair to put the issue in perspective. The GAC 
may (or may not) believe that by following their request, we would solve the 
issue of the IOC / RCRC designations being abused. However, I got the 
impression that similar strings or combined strings outnumber the identical 
strings by far. I deem it necessary to clarify that even if the GNSO did follow 
the request, we would not solve the issue, but only address that part of the 
issue (identical names) that ICANN has already responded to with new RPMs/DRMs.


>  
> 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 guess it is relevant as we are not talking about olympicdiscounts.TLD, but I 
could imagine olympic.discount or other combinations that might be legal to 
use. 
Without a profound legal analysis, I guess it would not be appropriate to move 
forward. Also, the would be many follow-up question, such as why - if any - an 
exemption procedure is needed for a use that is permitted by law in the first 
place and who controls such process, to name only two. 


I hopt that even if you might not agree with my statements that this helped 
clarifying my points.

Best,
Thomas

> 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
> 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] On 
> Behalf Of Brian Peck
> Sent: Wednesday, July 25, 2012 6:07 PM
> To: 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

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