FW: [gnso-pro-wg] Suggested Recommendations / Principles

["Rosette, Kristina" <krosette@xxxxxxx>]

Tim,
 
I'm reviewing the email strings to identify "loose ends" before our call
today.  I don't believe you posted a response to my forwarded questions
below.  If that's correct, would you please provide some context or
circumstances in which you believe the second recommendation ("gTLD
operators should not presume motives of potential registrants.") should
be applicable or that you intended it to address?    I have a fairly
good idea, but I think it would be helpful to others (and to me if my
assumption is wrong)?  If you did post a response, would you please
re-send as it doesn't seem to have made its way to me?  
 
Also,  I have additional questions/requests for clarification regarding
your principles 1 and 3.
 
1. "legal rights".  You're correct that the SoW does not define "legal
rights."  However, the introductory paragraph and the "first task" of
the Statement of Work, read together, make it clear that, at a minimum,
"legal rights" encompasses intellectual property and trademark rights.  
 
In past new gTLD rounds, applicants for new gTLDs have been required to 
implement measures that discourage registration of domain names that 
infringe intellectual property rights; reserve specific names to prevent

inappropriate name registrations; minimize abusive registrations; comply

with applicable trademark and anti-cybersquatting legislation; and 
provide protections (other than exceptions that may be applicable during

the start-up period) for famous name and trademark owners. There have 
been a range of approaches used which vary in terms of both cost to 
registrants and third parties affected by registration, and
effectiveness; 
 
(1) Document the additional protections implemented by existing gTLD 
operators beyond the current terms in the registration agreement and 
existing dispute resolution mechanisms to the protect the legal rights 
of others during the domain name registration process, particularly 
during the initial start up of a new gTLD where there is contention for 
what Registrants perceive as the "best" names. The documentation should 
identify the problems that the protections were intended to solve. The 
working group should establish definitions of terms used in this 
document to ensure a common understanding amongst members of the working

group. These definitions would only be in the context of the document, 
and without prejudice to the meaning of these terms in other legal
contexts. 

Based on the TLD summaries, the additional "rights" protected by the
gTLDs appear to include business names, names of public bodies, personal
names, and unregistered trademarks.  There is no consistent combination
of these rights; the only common thread are rights arising from
trademark registrations.  
 
It seems to me that we have two options:  (1) We can use "legal rights"
and definite it to be very specific as to what "rights" we intend that
term to encompass in the context of our report.  Even if we do that,
though, we will still have a problem of "meaning creep."  People reading
the report won't necessarily be referring back and forth to the
definitions and will likely bring their own interpretation of legal
rights to bear. (For example, do any of us intend to include in "legal
rights" any of the rights delineated in the Universal Declaration of
Human Rights?  I doubt it, but there's invariably a fair number of
people out there who will read it that way.)   The magnitude of the
problem increases if portions of our report end up floating around and
readers are not even aware that the report includes definitions.  (2)
We can use a different term (currently Prior Rights) and be very
specific as to what it means.  As a general matter, the term does not
automatically mean solely IP or IP-related rights; simply, rights that
were in existence before a particular event (here, the gTLD
application/agreement/launch, etc.)  If there are other types of rights
you would like to see listed as being included, please do post them.  
 
Your point raises another question that I will post separately to the
list -- whether Prior Rights is the ideal term or not.
 
3.  I acknowledge the concern implicit in your genericness proposal.  I
do not, however, support the proposal.  In trademark law, a term is
generic only in the context of the goods or services to which it refers.
A classic example is apple.  APPLE is generic for apples, but is
"arbitrary" for computers and personal electronics equipment.
(Apologies if you know this; others may not.)   It is my opinion that a
domain name cannot have that "goods/services" context required for a
genericness determination until it is used and then only in examination
of associated content.   Consequently, "generic terms" is not really a
possibility and may not be the correct wording.  "Dictionary words" does
not have that flaw.  However, it may be appropriate to consider that (a)
many proper nouns are used and registered as trademarks; and (b) many
trademarks that would be considered "fanciful" and entitled to the
strongest scope of protection - and that no one would characterize as
generic - have found their way into the dictionary.  See
http://www.m-w.com/dictionary/google
<http://www.m-w.com/dictionary/google>  (Merriam Webster Online
Dictionary definition of GOOGLE).  The other problem with dictionary
words is where do you draw the line - do misspellings count?  what about
combinations of dictionary words (GO DADDY, for example)?  If they don't
count, why not?
 
Kristina
 
 

________________________________

From: owner-gnso-pro-wg@xxxxxxxxx [mailto:owner-gnso-pro-wg@xxxxxxxxx]
On Behalf Of Rosette, Kristina
Sent: Friday, May 11, 2007 3:14 PM
To: Tim Ruiz
Cc: gnso-pro-wg@xxxxxxxxx
Subject: RE: [gnso-pro-wg] Suggested Recommendations / Principles


Tim,
 
Thank you for posting these recommendations.  They'll be helpful for our
discussions on Monday.
 
I do have two follow-up questions:
 
1.  Would you please clarify whose recommendations these are?  Are they
yours in your individual capacity?  In your capacity as Vice Chair of
the Registrar Constituency?  The informal views of the Registrar
Constituency?  The contextual information would be helpful to have.
 
2.   Would you mind elaborating on the context or circumstances in which
you believe the second recommendation ("gTLD operators should not
presume motives of potential registrants.") should be applicable or that
you intended it to address?    I have a fairly good idea, but I think it
would be helpful to others (and to me if my assumption is wrong).
 
Many thanks.
 
Kristina 
 


________________________________

        From: owner-gnso-pro-wg@xxxxxxxxx
[mailto:owner-gnso-pro-wg@xxxxxxxxx] On Behalf Of Tim Ruiz
        Sent: Thursday, May 10, 2007 1:54 PM
        To: Griffin,Lance
        Cc: gnso-pro-wg@xxxxxxxxx
        Subject: RE: [gnso-pro-wg] Suggested Recommendations /
Principles
        
        
        See the attached.
         
        1. I changed it to legal rights, the same term used in the SOW.
And show me where in the SOW certain legal rights are exempted from
consideration? Also, this WG, to my understanding, is not engaged in
consideration of top level labels.
         
        2. I attempted to define what I meant by Generic in the attached
revision. There may be no *legal* or *policy* definition of Generic
right now but there should be. A better definition could be crafted if
the Council decides to actually initiate a PDP on this subject.
         
        3. Cute. The typo has been fixed, again using the terminology of
the SOW.
         
        4. There are no ICANN documents for a lot of things that happen
on a pretty regular basis, no should there be any attempt to have one
for everything. Clearly, there are costs associated with implementing
and supporting any of the mechanisms being comtemplated. As any other
business, registries should be expected to recoup that cost and make a
profit. While I am sure Disney doesn't want to dip into its billions to
pay for the privilege that such mechanisms affords them, what
justification is there for not doing so?
         

        Tim 
        



                -------- Original Message --------
                Subject: RE: [gnso-pro-wg] Suggested Recommendations /
Principles
                From: "Griffin, Lance" <Lance.Griffin@xxxxxxxxxx>
                Date: Thu, May 10, 2007 11:41 am
                To: "Tim Ruiz" <tim@xxxxxxxxxxx>,
<gnso-pro-wg@xxxxxxxxx>
                
                
                Tim:
                 
                I think you need to provide some definitions before your
suggestion can be considered.  Also, I had understood that the
Registries/Registrars were only seeking guidelines, and not using the
words "best practices."  However, most of your suggestions seem to go
way beyond a guideline.  
                 
                1. What do you mean by "prior rights" in the following
phrase?  Where in the SOW does it say this WG should consider any prior
rights an applicant may have?  Who would determine what prior rights an
applicant has?  Does an applicant who has no travel business have a
prior right to use .travel?  Has ICANN issued a statement on the prior
rights of applicants?
                 
                All potential registrants have prior rights. 
                 
                2. What do you mean by " generic labels"?  Who would
determine what is generic and what is not.  On what basis.  Has ICANN
issued a statement on "generic labels"?  
                 
                3. In the title of your suggestion, what is a PRIO
right? 
                 
                4.  What is the basis for requesting costs plus
reasonable fees in a "prior rights mechanism"?  Is there an ICANN
document which provides for these reasonable fees?  If everyone has
prior rights, isn't this fee just a cost of doing business?
                 
                These are just a few initial thoughts.   

________________________________

                From: owner-gnso-pro-wg@xxxxxxxxx
[mailto:owner-gnso-pro-wg@xxxxxxxxx] On Behalf Of Tim Ruiz
                Sent: Thursday, May 10, 2007 8:20 AM
                To: gnso-pro-wg@xxxxxxxxx
                Subject: [gnso-pro-wg] Suggested Recommendations /
Principles
                
                
                Attached.
                
                Tim