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

["Gomes, Chuck" <cgomes@xxxxxxxxxxxx>]

Thanks Bruce. It seems to me that the focus you add on the dispute
process rather than the overall selection process is helpful.

In San Juan someone mentioned to me that the word "enforceable" may be
not be too helpful because it would be difficult to determine
enforceability.  That makes sense to me.  It might be better to simply
say, "legal rights to a particular string that are generally accepted
under internationally recognized principles of law".

Chuck Gomes
 
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> -----Original Message-----
> From: owner-gtld-council@xxxxxxxxxxxxxx 
> [mailto:owner-gtld-council@xxxxxxxxxxxxxx] On Behalf Of Bruce Tonkin
> Sent: Wednesday, July 04, 2007 4:42 AM
> To: gtld-council@xxxxxxxxxxxxxx
> Subject: RE: [gtld-council] modifications to new gTLD 
> recommendations #3 and 6
> 
> 
> > 
> > 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
> 
>