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

  • To: Mawaki Chango <ki_chango@xxxxxxxxx>
  • Subject: Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy
  • From: Liz Williams <liz.williams@xxxxxxxxx>
  • Date: Tue, 5 Jun 2007 16:48:18 +0200
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


















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