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

[michael@xxxxxxxxxx]

Lance,

I guess a couple of "actual" (non-theoritical) examples that come to my
mind real quick are some of the reverse domain name decisions that I
have read over the years. Perhaps John Berryhill might be able to
provide quick list of these decisions to the list. However, I believe
the best example relevant to our discussions is the example of sex.biz
which can be found in the new gtld evaluation report, see
http://icann.org/tlds/new-gtld-eval-31aug04.pdf


Schatte v. Sex.biz was filed in April 2003 over rightful ownership of
?sex.biz,?54
following two related STOP actions. The name was registered by a Korean
registrant, known as Peter Jeong or ?Personal,? during the round robin
allocation
of Group 2B names, and first challenged under STOP by Philatelic.Com.
That
case was dismissed when the claimant failed to produce evidence of its
trademark claim. See Philatelic.Com v. Peter I. Jeong, NAF Case
No. FA0204000112547. The domain name was then challenged by Mr Schatte,
who had filed an IP Claim for ?sex? on behalf of his trademarks for
decorated
refrigerator magnets. See Marcus R. Schatte d/b/a Sex v. Personal, NAF
Case
No. FA0209000124756. The second STOP Panel ruled that because Mr.
Schatte had legitimate rights and interests in sex.biz and ?Personal?
did not, the
registration should be transferred. It apparently overlooked that the
marks had
been newly registered several months after the ICANN-NeuLevel Registry
Agreement was concluded. The panel cited respondent?s lack of a business
plan
prior to notification of claimant?s rights. Under the STOP rules, if the
losing party
appealed the decision to a national court within ten days, the Registry
would
have to put a hold on the transfer until the case was resolved. Within a
few days,
Mr. Jeong filed suit in Korean court to block transfer. Several months
later, Mr.
Schatte filed suit in U.S. district court in Virginia to enforce the
transfer order.
The Korean court issued a default judgement in favor of Mr. Jeong, and
the U.S.
court issued one in favor of Mr. Schatte. NeuLevel, feeling caught
between two
jurisdictions, filed a motion for relief from the District Court?s
judgement. Prior to
the court ruling on the motion, Mr. Jeong decided to appear in U.S.
court and
argue for relief from judgment on grounds that he did not have enough
time to
prepare his case. At that point, the U.S. court decided to disregard its
earlier
order and proceed to the merits of the case. Shortly thereafter the
parties
reached a settlement, with Mr. Jeong retaining registration of the
domain.


So this is actual litigation in which a registrant was able to prevail
over a trademark owner's claim notwithstanding an initial adverse
decision through a registry RPM safeguard/mechanism. Other actual
examples in connection with RPM abuses involving "alledged" trademark
rights include music.biz, see portion of the report preceeding the
sex.biz discussion.

I think including this actual example in our report would be beneficial
to illustrate the concerns of Avri, Victoria, Tim and others.  

Just a suggestion.

Best regards,

Michael



> -------- Original Message --------
> Subject: RE: [gnso-pro-wg] Suggested Recommendations / Principles
> From: "Griffin, Lance" <Lance.Griffin@xxxxxxxxxx>
> Date: Thu, May 17, 2007 10:26 am
> To: "Avri Doria" <avri@xxxxxxx>,  "PRO WG" <gnso-pro-wg@xxxxxxxxx>
> 
> Do you have any hard evidence to support your claim of "risk of
> abuse", or is it merely a theroeticaql risk?
> 
> 
> -----Original Message-----
> From: owner-gnso-pro-wg@xxxxxxxxx on behalf of Avri Doria
> Sent: Thu 5/17/2007 1:46 AM
> To: PRO WG
> Subject: Re: [gnso-pro-wg] Suggested Recommendations / Principles
>  
> Hi,
> 
> If I remember the discussion in the Council concerning the creation  
> of this group correctly, one of the reasons it was called protecting  
> the rights of others was specifically because it had to include the  
> rights of those who did not hold Trademarks on generic strings, i.e  
> the general population's rights to use 'words' as strings for non- 
> fraudulent purposes.  I very much support the principles you are  
> proposing as is probably obvious from comments I have made during the  
> calls.
> 
> While I do beleive that consumers need to be protected from deceptive  
> and fraudulent usage, I do not believe it can be done a-priori by  
> granting exclusive rights of generic terms to a particular trademark  
> holder. Nor can it be done by withdrawing all branded generic strings  
> from availability.  I believe the risk of abuse gets even higher when  
> we begin to include 'typosquatting' in the mix of terms to be  
> 'protected'
> 
> thanks
> 
> a.
> 
> 
> On 16 maj 2007, at 18.37, Tim Ruiz wrote:
> 
> > 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 gene! ric - have found their way into the dictionary.  See  
> > 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