Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy

[Mawaki Chango <ki_chango@xxxxxxxxx>]

Thanks Liz for this information. I'll take careful look in due
time.

Mawaki

--- Liz Williams <liz.williams@xxxxxxxxx> wrote:

> Mawaki
> 
> The recently posted proposed budget will provide you with some
>  
> background about the costs of running a gTLD application
> process.
> 
> Whilst the budget is not yet approved formally you'll see that
> the  
> costs are significant and, as we are operating on a cost
> recovery  
> model, the application fees for a new TLD need to recoup those
> costs  
> in some way.
> 
> http://www.icann.org/financials/proposed-budget-v1- 
> fy07-08-23may07.htm#_Toc167180735 -- go the section on the
> live link  
> at the contents page for the gTLD process.
> 
> Liz
> 
> .....................................................
> 
> Liz Williams
> Senior Policy Counselor
> ICANN - Brussels
> +32 2 234 7874 tel
> +32 2 234 7848 fax
> +32 497 07 4243 mob
> 
> 
> 
> 
> On 05 Jun 2007, at 05:48, Mawaki Chango wrote:
> 
> > Mike,
> >
> > I have failed to see any sound cost modeling that makes it a
> > necessity for a tld application to cost the applicant
> several
> > dozens of thousands dollars. Such cost derives from a policy
> > decision that has its own assumptions, and even its own
> biases
> > (all economies are not equal, yet it's practically possible
> to
> > operate a tld from or within most of them.)
> >
> > So the cost, on which you seem to base your whole reasoning
> as
> > per your email below, is not an act of God; not even the
> most
> > unchallengeable human act. And please be aware that there
> are
> > serious people, not necessarily from within NCUC, including
> > individual ICANN Board member(s), who argue for the
> structure of
> > tld application cost to be revised and adapted. After all,
> why a
> > uniformly, not to say arbitrarily, high cost should ever be
> the
> > unique reason that would prevent a grassroots community,
> e.g.,
> > with a sizeable base and an identity, to apply for a gtld?
> >
> > A collateral remark here: with a universal-like tld such as
> > .com, at least for businesses and most trademark holders
> (though
> > this is less and less the case), the same problem migrates
> at
> > 2nd level, and among all those quickly labeled
> cybersquatters, I
> > believe there were a few individuals who registered the same
> > names as trademarks with no commercial intentions or use,
> but
> > were still dispossessed of their 2nd level tld based on
> > ICANN-related policies. I don't have any specific reference
> at
> > hand to provide, but I stand to be corrected if I'm wrong
> here.
> > In the mean time, this makes me wonder whether you're not
> too
> > optimistic in thinking that things are or will be
> fondamentally
> > different between tld and second level, and on the other
> hand
> > whether you're not taking too quick a shortcut by implying
> that
> > the difference in policy for different levels of the dns
> (which
> > makes some sense in commercial terms) will necessarily lead
> to a
> > difference in the rights warranted to individuals by the
> law.
> >
> > Anyway, it may be silly to predicate that a horde of
> applicants
> > are standing the queue to apply for a trademark tld, but I
> don't
> > think it's wise to assume that this will never ever happen.
> With
> > such assumption, we surely do everything possible to ban
> that
> > from hapening (without even noticing it), which is a clear
> > stance against those rights Robin has been talking about.
> Your
> > call for ICANN to disallow such possibility is interesting
> in
> > that regard. However, I fail to see the *legal* grounds for
> > rights that you recognize at second and lower level of the
> dns
> > to be banned from the top level.
> >
> > Mawaki
> >
> >
> >
> > --- Mike Rodenbaugh <mxr@xxxxxxxxxxxxx> wrote:
> >
> >>
> >> 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]
> >> Sent: Monday, June 04, 2007 5:59 PM
> >> To: Mike Rodenbaugh
> >> Cc: gtld-council@xxxxxxxxxxxxxx; gnso-rn-wg@xxxxxxxxx
> >> 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]
> >>> Sent: Monday, June 04, 2007 4:08 PM
> >>> To: Mike Rodenbaugh
> >>> Cc: gtld-council@xxxxxxxxxxxxxx; gnso-rn-wg@xxxxxxxxx
> >>> 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
> >>>> [mailto:owner-gtld-council@xxxxxxxxxxxxxx] On Behalf Of
> >> Robin Gross
> >>>> Sent: Saturday, June 02, 2007 10:23 AM
> >>>> To: gtld-council@xxxxxxxxxxxxxx
> >>>> 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
> >>>>
> >>>>
> >>>>
> >>>>
> >>>>
> >>>>
> >>>>
> >>>
> >>>
> >>>
> >>>
> >>>
> >>
> >>
> >>
> >>
> 
>