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

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

Tim,
 
This is helpful clarification.  (I still don't agree, but that's
probably not a surprise.)
 
The use of "legal rights" was deliberate only to the extent that the
primary drafters did not know what term to use and left it for us to
decide.
 
K 


________________________________

        From: Tim Ruiz [mailto:tim@xxxxxxxxxxx] 
        Sent: Wednesday, May 16, 2007 12:37 PM
        To: Rosette, Kristina
        Cc: gnso-pro-wg@xxxxxxxxx
        Subject: RE: FW: [gnso-pro-wg] Suggested Recommendations /
Principles
        
        
        Kristina,
         
        All of your questions below are related, as my principles about
generic lables and presumed motives are related. To try and clarify:
         
        Whatever you want to call the label APPLE (generic word,
dicutionary word, etc.), there are perfectly legitimate uses (hundreds
no doubt, maybe more) for that label as a domain name that do not
infringe on any IP rights (or Prior Rights if you want to use that
term).
         
        The intent of my principles is that making the assumption that
registration of that label would be in bad faith, infringing, whatever,
is not appropriate. And yes, certain combinations of those types of
labels could result in an equally generic (or whatever you want to call
it) label.
         
        All potential registrants should have an equal opportunity to
register and use those labels for lawful, non-infringing purposes. The
fact that a particular entity has voluntarily made the decision to TM or
otherwise protect a generic label for one or more classes of goods or
services doesn't bestow upon them ownership of the label for every other
conceivalbe use.
         
        I concede that the focus of TM law is consumer protection. But
TM holders who choose to use labels from among the common words and
phrases in the public domain are only entitled to protection to the
extent that other uses of the mark do not create public or consumer
confusion. Again, it does not bestow upon them the right to deprive
everyone else of useful common words and phrases. I believe this concept
has been upheld in a number of court cases.
         
        The Legal Rights of others should be considered in that context.
And while I agree that the SOW includes TM holders and other IP holders
in its implied definition of Legal Rights, I don't see where it excludes
everyone else. I believe the choice of the term Legal Rights by the
Council was deliberate, and for that reason. Perhaps the Council can
clarify their intent with a definition.


        Tim
        



                -------- Original Message --------
                Subject: FW: [gnso-pro-wg] Suggested Recommendations /
Principles
                From: "Rosette, Kristina" <krosette@xxxxxxx>
                Date: Wed, May 16, 2007 10:45 am
                To: <gnso-pro-wg@xxxxxxxxx>
                
                
                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