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

[Robin Gross <robin@xxxxxxxxxxxxx>]

This is a circular argument because it will only cost an NGO tens of 
thousands of dollars to apply for a tld if we choose to set up 
overly-complicated and restrictive regulations that create the high cost 
in the first place.   And costs will go down over time allowing even 
less-financed projects apply for a tld even if costs are initially high.
I disagree with the idea that there won't be any non-commercial 
interests in the market, so we don't need to build protection for their 
interests into the policy.
Robin


Mike Rodenbaugh 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
> > >
> > >
> > >
> > >
> > >
> > >   
> > >
> > >      
> >
> >
> >    
>
>
>