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

[Mawaki Chango <ki_chango@xxxxxxxxx>]

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
> >>
> >>
> >>
> >> 
> >>
> >>    
> >>
> >
> >
> >
> >  
> >
> 
> 
> 
>