RE: [gnso-rn-wg] RE: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy

["Ray Fassett" <ray@xxxxxxxxx>]

I agree with Tim's 4 points below.  However, with regards to gTLD string
allocation - which is the heart of what this PDP is about implementing a
process for - as an observer I have carefully considered Robin's & Mawaki's
comments on behalf of the NCUC.  I agree with Tim that there are elements to
the NCUC comments that are valid.  I also agree with Philip that I think
committee members are very cognizant of, and very much in support of,
freedom of expression rights in a democratic society.

 

I think the NCUC overestimates the capacity of the committee to put forth
recommendations that are completely bullet proof, uncompromising, or
otherwise without possibility of error.  

 

I believe that freedom of expression prevails on the Internet as a result of
its inherent efficiencies to publish content, rather than due to the
existence of the domain name system.  My own opinion is that the NCUC goes
too far to draw a 1 - 1 relationship of string allocation to the ability (or
right) to publish content, as if one is dependent upon the other for freedom
of expression to exist within the Internet medium.  I don't believe that
content publication on the Internet is dependent upon the DNS.  Is the DNS
mutually exclusive to freedom of expression?  Probably not.  Is it a 1 - 1
relationship?  I don't think this is a correct assumption for the committee
to make either with regards to its task.

 

As Chuck Gomes has pointed out, there are a few recommendations that do
require further discussion, including certain wording of recommendations
under question by the NCUC.  Even so, I believe the committee
recommendations need to be taken for what they are - very high level.  We
can't "what if" ourselves to death understanding that the underlying premise
is to implement a process that invites new participants rather than dictate
who the participants will be.  The reality is that any single constituency
interest could "what if" the implementation process into submission.  The
group has worked within this reality from the very beginning and I
compliment Bruce Tonkin's leadership of the PDP in this regard.

 

I believe that ICANN is the proper, private sector venue to implement a
process for new gTLD's.  I believe there are parties not in tune to any of
this PDP discussion that, upon such knowledge, will feel their interests may
be affected by the gTLD expansion process that ICANN implemented.  I feel
these parties should have a right to express their opinion, and have this
opinion heard, such as through a public comment period the committee is
recommending for this reason.  At the same time, I think it is a leap to
infer that the incorporation of a public comment period (to allow views to
be expressed and heard) will have the result of nothing less than a
rejection period.  I believe it is a leap to infer or otherwise offer
conclusion that the incorporation of a public comment period means that the
whole world must agree (and therefore result in an unpredictable
implementation process).  I think it is a misnomer to suggest that the
incorporation of independent panels will favor or otherwise result in
biasness of one interest over another (i.e. not be neutral).  While I am not
myself a huge proponent of establishing independent panels (for different
reasons), I am swayed by the fact that such use has proven to not override
laws of jurisdiction, including outside of the DNS realm.  

 

I hope this comment is constructive to the committee.

 

Ray Fassett

 

 

  _____  

From: owner-gnso-rn-wg@xxxxxxxxx [mailto:owner-gnso-rn-wg@xxxxxxxxx] On
Behalf Of Tim Ruiz
Sent: Tuesday, June 05, 2007 9:15 AM
To: Mike Rodenbaugh
Cc: gtld-council@xxxxxxxxxxxxxx; gnso-rn-wg@xxxxxxxxx; robin@xxxxxxxxxxxxx
Subject: RE: [gnso-rn-wg] RE: [gtld-council] NCUC proposals to amend gnso
recommendations on new gtld policy

 

I think to some degree, while both Mike and Robin make valid points, both
are slightly off point.

 

Whether we're talking about TLDs or SLDs I believe the question is: What
level of protection do trademarks deserve? And I believe the answer to that
should be based on existing laws that apply to the gTLD operator. Those may
be local or International in nature, but they must be applicable to that
operator.

 

For example, the US has the Federal Trademark Dilution Act (FTDA). It would
certainly apply to any gTLD operator that is based in the US. The FTDA
requires that both the *distinctiveness* and *fame* of a trademark in
question be considered when deciding whether a particular use dilutes the
trademark in question.

 

For example, words like orange, universal, star, etc. are not distinctive
enough to garner protection under the FTDA. Neither are phrases like gold
medal, bull dog, or blue ribbon. However, completely fanciful or fabricated
terms like Kodak, Exxon, or Mazda are highly distinctive and protectable
under the FTDA. The fame of a mark is really a secondary consideration once
distinctiveness has been established.

 

So it's my belief that US law certainly supports registration of SLDs or
creation of TLDs that are identical to famous marks that are not
distinctive. There are legitimate non-dilutive, non-infringing uses for
universal.tld or goldmedal.tld. And there should be no reason under US law
why someone couldn't apply for and get gTLDs like .star. However, SLDs such
as exxon.tld and gTLDs such as .mazda would clearly violate the FTDA.

 

I believe the FTDA is trying to find a balance between protecting truly
disctinctive marks and yet allowing free use of common words and phrases
that no entity has the right to take out of common use.

 

All that said, there are certainly opposing views about how to interpret the
FTDA. Even the Circuit Courts within the US do not all agree. And that is
just one statute. There are others within US law, and certainly many others
throughout the world. And many of these laws and statutes are based on *use*
to determine whether there is a violation. All of this, I believe, makes it
clear that the following MUST be ICANN's policy going forward considering
its limited mission:

 

1. gTLD operators MUST be allowed to make its own decisions about what, if
any, prior rights protection mechanisms should be used during rollout of new
gTLDs. And gTLD operators who choose to use such mechanisms should be more
diligent in considering the totality of what is and is not protectable under
applicable laws and statues.

 

2. gTLD operators MUST be required to comply with applicable local and
International law (although this should go without saying).

 

3. Interpreting or enforcing IP rights is NOT part of ICANN's mission. 

 

4. ICANN's mission to protect the security and stability of the Internet
should be restricted to those areas that are not otherwise protected. The
plethora of laws, statutes, regulations, etc. already provide sufficient
protection against the concerns raised by Mike and others. The fact that
ICANN also provides the UDRP is a bonus.

 



Tim Ruiz
Vice President
Corp. Development & Policy
The Go Daddy Group, Inc.
tim@xxxxxxxxxxx

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-------- Original Message --------
Subject: [gnso-rn-wg] RE: [gtld-council] NCUC proposals to amend gnso
recommendations on new gtld policy
From: "Mike Rodenbaugh" <mxr@xxxxxxxxxxxxx>
Date: Mon, June 04, 2007 8:12 pm
To: <robin@xxxxxxxxxxxxx>
Cc: <gtld-council@xxxxxxxxxxxxxx>,  <gnso-rn-wg@xxxxxxxxx>

This is a rather silly discussion if it is predicated on the notion that
a non-profit will want to own and operate a TLD, corresponding to a
well-known trademark, for some non-commercial purpose.  It would be an
extremely ridiculous NGO that wanted to spend tens or hundreds of
thousands of dollars to own and operate a TLD for the purpose of
criticizing one company, when it could spend under $100 for any number
of other domain name options.  
 
The only TLDs that non-profit entities are likely to want are TLDs that
correspond to their trademarks, for the same reasons that other
well-known trademark owners might want a corresponding TLD.  
 
Is the NCUC aware of any specific organization interested in registering
a 'gripe TLD'?  Assuming so, I think ICANN would make a much more
reasonable decision to disallow that because activity of registering
domains for others (the function of a registry, after all) would be
inherently commercial, and would be confusing and an aid to criminals as
previously stated.
 
Mike Rodenbaugh
 
Sr. Legal Director
 
Yahoo! Inc.
 
 
 
NOTICE:  This communication is confidential and may be protected by
attorney-client and/or work product privilege.  If you are not the
intended recipient, please notify me by reply, and delete this
communication and any attachments.
 
 
-----Original Message-----
From: Robin Gross [mailto:robin@xxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> ] 
Sent: Monday, June 04, 2007 5:59 PM
To: Mike Rodenbaugh
Cc: gtld-council@xxxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> ; gnso-rn-wg@xxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> 
Subject: Re: [gtld-council] NCUC proposals to amend gnso recommendations
on new gtld policy
 
There are at least 2 faulty assumptions in your statement.  You assume 
that all tlds will be businesses, but surely nonprofits will want to 
apply for tlds and there are countless other non-commercial 
possibilities.  A consumer watch-dog group that monitors irresponsible 
corporate behavior may want to register a tld such as ".enron" to 
provide the public with information about Enron, Inc.  The NGO would not
 
violate any trademark rules as the case law makes clear since people 
have a free expression right to use a trademark to discuss a company or 
its products.
 
The other faulty assumption is that the law would treat a top-level 
domain differently from other domains and grant a lower level of 
protection for free expression at the top-level.   There is no legal 
precedent to support that argument.
 
Robin
 
 
Mike Rodenbaugh wrote:
 
>None of those cases are on point, all involve 2d or higher-level
>domains.  I do not dispute that there are many non-commercial uses of
>trademarks that are legit.  On the other hand, operating a TLD that
>corresponds to a well-known trademark, without consent of trademark
>holder, would be an inherently commercial activity likely to cause
>confusion and enable criminal conduct.  Such commercial activity would
>not be protected by any of the precedents you cite, or any other
>principal of law that I am aware of.
> 
>Mike Rodenbaugh
> 
>Sr. Legal Director
> 
>Yahoo! Inc.
> 
> 
> 
>NOTICE:  This communication is confidential and may be protected by
>attorney-client and/or work product privilege.  If you are not the
>intended recipient, please notify me by reply, and delete this
>communication and any attachments.
> 
> 
>-----Original Message-----
>From: Robin Gross [mailto:robin@xxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> ] 
>Sent: Monday, June 04, 2007 4:08 PM
>To: Mike Rodenbaugh
>Cc: gtld-council@xxxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> ; gnso-rn-wg@xxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> 
>Subject: Re: [gtld-council] NCUC proposals to amend gnso
recommendations
>on new gtld policy
> 
>Hi Mike,
> 
>Well US courts have consistently disagreed with your view and ruled
that
> 
>there are numerous lawful uses of a trademark in a domain name by 
>someone other than a trademark holder.  Trademark law has never granted
 
>a monopoly on language.  It only regulates specific uses of words or 
>symbols, and only commercial uses.  Non-commercial expression is not 
>regulated by trademark rules under the law.
> 
>One of the most cited US legal precedents to examine the boundary of 
>free expression rights and trademark rights is Taubman v. Webfeats 319 
>F.3d 770 (6th Circuit 2003), an early "cyber-gripe case".   The court 
>explained, "we will first explain the interrelation between the First 
>Amendment and the Lanham Act. ... The Lanham Act is constitutional 
>because it only regulates commercial speech, which is entitled to 
>reduced protections under the First Amendment."   In Taubman the 
>appellate court held that many expressions of a mark were not a 
>'trademark use' and not likely to cause confusion and  therefore 
>"outside the jurisdiction of the Lanham Act and necessarily protected
by
> 
>the First Amendment." 
> 
>The 6th Circuit spoke directly to our issue, "The rooftops of our past 
>have evolved into the Internet domain names of our present.  We find 
>that the domain name is a type of public expression, no different in 
>scope than a billboard or a pulpit, and [defendant] has a First 
>Amendment right to express his opinion about [plaintiff], as long as
his
> 
>speech is not commercially misleading, the Lanham Act cannot be
summoned
> 
>to prevent it."  Taubman explicitly held there First Amendment 
>protection to use a trademark in a domain name to criticize a business.
> 
>See:
>  http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06
> 
>Another US circuit, the 9th, has also set similar precedent in Bosley 
>Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a
non-commercial
> 
>gripe-site using a trademark in its domain name.  Again the court
agreed
> 
>that the non-commercial expression of opinion was not a "trademark use"
 
>subject to regulation by the mark holder. "[Defendant] is not 
>[plaintiff's] competitor; he is their critic.  His use of [plaintiff's]
 
>mark is not in connection with a sale of goods or service - it is in 
>connection with the expression of his opinion about [plaintiff's] goods
 
>and services.  [Plaintiff] cannot use the Lanham Act either as a shield
 
>from ... criticism, or as a sword to shut [defendant] up."
>See:
> 
>http://www.ca9.uscourts.gov/ca9/newopinions.nsf/3B0C93358B88F28D88256FD
9
>0056994B/$file/0455962.pdf?openelement
> 
>The US 2nd Circuit has also provided strong protection for
noncommercial
> 
>speech and recognized that words and phrases are used in many different
 
>ways in a digital environment, to serve differing goals, and that not 
>all of these uses are controlled by trademark law.  In 1-800 Contacts
v.
> 
>WhenU.com 414 F3d 400 (2d Cir. 2005), the 2nd Circuit ruled that the 
>vast majority of such uses were outside the scope of trademark law and 
>only those specific uses visually associated with the sale of 
>goods/services could be regulated by trademark. 
>See:
>www.eff.org/legal/cases/1800*contacts*_v_whenu/decision.pdf
> 
>So the US law is clear in permitting numerous non-commercial uses of a 
>trademark in a domain name, to discuss, criticize, compare, provide 
>general information about a company or  product.  Freedom of expression
 
>is a legally recognized value that trademark rights do not supersede.
 
>The current gnso draft recommendations diverge significantly from the 
>law on this point.
> 
>Robin
> 
>Mike Rodenbaugh wrote:
> 
>  
> 
>>I disagree with the NCUC's suggested change to Reco #3.  There are
>>    
>> 
>ample
>  
> 
>>numbers of 2d and higher lever domains that can be used for freedom of
>>expression, with exponentially more to come.  NCUC seems to suggest
>>    
>> 
>that
>  
> 
>>some prospective TLD operator would want to run an entire TLD full of
>>gripe sites as to one trademark.  Such a business would not be
>>    
>> 
>protected
>  
> 
>>under the guise of 'freedom of expression' under any nation's law that
>>    
>> 
>I
>  
> 
>>am aware of.  
>> 
>>The current Reco is tied to a core ICANN value of protecting security
>>and stability.  If a TLD corresponding to a well-known trademark were
>>awarded to any entity other than the trademark owner, it is highly
>>likely that many users would be confused and placed at higher risk of
>>crime through activity at that TLD.  This is the same security and
>>stability concern that underlies the UDRP, as to 2d level and higher
>>domains.
>> 
>> 
>>Mike Rodenbaugh
>> 
>>Sr. Legal Director
>> 
>>Yahoo! Inc.
>> 
>> 
>> 
>>NOTICE:  This communication is confidential and may be protected by
>>attorney-client and/or work product privilege.  If you are not the
>>intended recipient, please notify me by reply, and delete this
>>communication and any attachments.
>> 
>> 
>>-----Original Message-----
>>From: owner-gtld-council@xxxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> 
>>[mailto:owner-gtld-council@xxxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> ] On Behalf Of Robin Gross
>>Sent: Saturday, June 02, 2007 10:23 AM
>>To: gtld-council@xxxxxxxxxxxxxx
<https://email.secureserver.net/pcompose.php?aEmlPart=0&type=replyall&folder
=INBOX&uid=98999#Compose> 
>>Subject: [gtld-council] NCUC proposals to amend gnso recommendations
on
>>new gtld policy
>> 
>>NCUC has developed 5 new proposals to amend the draft gnso 
>>recommendations on new gtld policy.  
>> 
>>These proposals are meant to give some recognition to freedom of 
>>expression values in our recommendations.  The proposals also address 
>>concerns about ICANN becoming enmeshed in national policy debates and 
>>would keep the Internet core neutral of such conflicts. 
>> 
>>The 5 proposals are not meant to be accepted only as a package, but 
>>should be considered individually also.
>> 
>>NCUC proposals to amend draft GNSO recommendations:
>> http://www.ipjustice.org/ICANN/062007.html
>> 
>>I welcome an opportunity to discuss the amendments at greater length
>>    
>> 
>and
>  
> 
>>will try to answer any questions you may have on them.
>> 
>>Thank you for considering them.
>> 
>>Best,
>>Robin
>> 
>> 
>> 
>> 
>> 
>>    
>> 
> 
> 
> 
>  
>