RE: [gtld-council] modifications to new gTLD recommendations #3 and 6

["Bruce Tonkin" <Bruce.Tonkin@xxxxxxxxxxxxxxxxxx>]

> 
> This may be a good approach but it seems to me that both 
> recommendations
> may apply in the same challenge process.  Is that correct.

I think there is a difference between the basis of a challenge, and the
dispute process that may be used to evaluate the challenge.

SO for example, a holder of trademark rights may challenge an
application.

The dispute process to resolve that challenge would then need to take
into account whether the party proposing the string has a legitimate
right in that string - which could include freedom of expression rights.

The key is that the dispute process needs to have an appropriate balance
- just as a court would evaluate a legal case relating to trademark
infringement.

I think the bar to winning a challenge should be as high or higher than
the bar required to win a court case under the relevant
national/international laws.  This is because the effect of a challenge
being successful is that the string would not be added to the root.   Of
course at any time after a string is placed in the root, a legal process
could be initiated should the challenger believe that the dispute
process was wrong.   


I wonder therefore if we should be more explicit about the challenge and
dispute processes.

E.g Recommendation 3 could become:

"A holder of legal rights to a particular string that are recognized or
enforceable under generally accepted and internationally recognized
principles of law  may initiate a dispute resolution process on the
basis that there is a reasonable expectation that their rights may be
infringed. 

Examples of such legal rights include, but are not limited to, the
rights defined in the Paris Convention for the Protection of Industrial
Property and in particular trade-mark rights.

A dispute process should incorporate the following elements:
- that the applicant could undertake to take steps to minimise any
potential infringement and this undertaking would be incorporated into
the registry agreement with ICANN
- the dispute process must take into account any legitimate rights that
the applicant may have to use the string - including freedom of
expression rights"

Note that the freedom of expression rights presumably come into play in
relatively long domain names.

E.g   .idontlikethefoodatmcdonalds  - or .companynamesucks

I guess alternative they come into play at the second level after a TLD
is granted.

E.g idontlikethefoodat.mcdonalds

A second level infringement is most likely an action against a
registrant of a second level name rather than a registry.


Regards,
Bruce Tonkin