RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3
I don't believe that references to "overwrought pounding on the table by a small extremely vocal set of players!" are helpful. As a BC member who tried and failed to secure one place within the IRT for an expert with the perspective of defending UDRP actions (an omission that occured in part because, as found by the Ombudsman, the BC failed to provide its members with timely notice of the opportunity to apply for IRT membership), as someone who made detailed and thoughtful critiques of the IRT process and Report generally without ever pounding on the table, and as a representative of a group that is genuinely opposed to trademark infringement and would like the opportunity to contribute to a constructive and balanced approach that can be made applicable to all gTLDs, new and incumbent, I take exception to the statement -- and I haven't even mentioned the many overwrought statements that have been made by representatives of TM interests. But let's put all that aside and try to move forward constructively. The staff assimilation of the URS seems to be a proposal that has little support from either side of the issue. I spoke with Zahid earlier today and indicated my belief that there is still a possibility for a balanced and constructive proposal to be put on the table as an alternative. He welcomed that message and advised me to stay engaged. The BC has a number of domain investors as members, and on their behalf I would hope that at least one of the four CSG slots for the STI-DT could reflect that perspective and that we will not again be shut out of any official status as we were for the IRT. Philip S. Corwin Partner Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 202-347-6875 (office) 202-347-6876 (fax) 202-255-6172 (cell) "Luck is the residue of design." -- Branch Rickey ________________________________ From: owner-bc-gnso@xxxxxxxxx [owner-bc-gnso@xxxxxxxxx] On Behalf Of Marilyn Cade [marilynscade@xxxxxxxxxxx] Sent: Sunday, October 25, 2009 1:56 AM To: Liz Williams; Zahid Jamil Cc: bc - GNSO list Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Zahid, your analysis is extremely helpful. I have a few thoughts. One is about how disturbing this is as a 'precedent', as well as the specifics of what has actually taken place in terms of the outcome/content; e.g. what the present proposals are/and the work before the Council on the Board letter. I had understood that this letter would be part of your Council/Board dinner. If that is the case, it would be helpful to keep that in mind and plan to have a discussion with the BC membership again on Monday, BEFORE the Tuesday a.m. breakfast. When we discuss this at the ad hoc huddle tonight, can we also get a debrief from you not only on this, but also on how the discussions go today with the GAC. You are making a point that I have a concern about as well. It appears that due to somewhat overwrought pounding on the table by a small extremely vocal set of players! /people, significant changes have been made. The way that the IRT was set up was driven by a Board resolution. The initial approach to the participants was in fact broadened from the 7-8 IP attorneys chosen by the IPC into a broadened approach that was not totally open, but was composed of 'experts'. The work product was then put out for consultation and comments taken. I am thinking that what we are seeing is that the staff then made major changes, having taken comments 'selectively' into account. I think we have to ask ourselves the following: IRT recommendations, and following on comments. On balance, based on the predominance of comments, do we think that the staff recommendations /proposals reflect the comments fairly and on balance? I ask that question because I am thinking about 'recourse' if we believe that our interests are harmed by this acti! on/failure of action. Will be very good to talk about this tonight. On 25 Oct 2009, at 02:10, Zahid Jamil wrote: This document was prepared for a meeting held yesterday between the IRT and Staff (Kurt, Dan) and a Board Member (Bruce). Here are some points that may interest members: The outcome from Staff in the DAG3 (http://www.icann.org/en/topic! s/new-gtlds/dag-en.htm<http://www.icann.org/en/topics/new-gtlds/dag-en.htm>) and those mentioned on for Rights Protection Mechanism (http://www.icann.org/en/public-comment/#prpm-new-gtlds -difficult to find on the website and not connected to the DAG3’s website) DO NOT REFLCT the IRT Recommendations. It seems that the Staff has completely reengineered the solutions. To a large extent even though the title of the solution may be the same but the contents are effectively not what the IRT recommended. So to give members a feel of the process and what Staff acknowledged in yesterday’s meeting: Focusing on 5 Solutions: 1. Reserved List (GPML) 2. Central IP Database (IP Clearinghouse) 3. Rapid Suspension (URSS) 4. Rights holders right to take a Registry through a Dispute Resolution after the gTLD is launched (Post Delegation Dispute Resolution Procedure PDDRP) 5. Thick Whois Eg. 1 - So for instance, in regards PDDRP: There were no comments from the community The Board agreed at the higher level to a PDDRP In my view this would have mean that Staff would go ahead and incorporate the IRT solution (maybe just maybe filling in some holes) into DAG3 or the Rights Protection Mechanism. This wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman’s article http://www.circleid.com/members/2921/ ) So as I put in the meeting yesterday Staff swapped the cards on the IRT, the community, and the Board! (But since this was too tricky they didn’t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim ?C 3 types: (a) The Registry Operator’s manner of operation or use of a TLD is inconsistent with the representations made in the TLD application as approved by ICANN and incorporated into the applicable Registry Agreement and such operation or use of the TLD is likely to cause confusion with the complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s mark; or (c) The Registry Operator manner of operation or use of the TLD exhibits a bad faith intent to profit from the systemic registration of domain name registrations therein, which are identical or confusingly si! milar to the complainant’s mark, meeting any of the following conditi ons: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s mark. For a Registry Operator to ! be liable for toplevel infringement, a complainant must assert and prove by clear and convincing evidence that the Registry Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s mark. For a Registry Operator to be liable for the conduct at the second level, the complainant must assert and prove by clear and convincing evidence: (a) that there is substantial ongoing pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) of the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s mark. In this regard, it would not be nearly enough to show that the registry operator was on notice of possible of trademark infringement through registrations in the gTLD. So basically if a Rights holder or a community that doesn’t object at the application stage since the representations in the Application and the Registry Agreement seem fine has no recourse subsequently to assert and challenge in case there is a breach of the Registry Agreement or those representations in the application. ICANN staff’s response was:&nb! sp; we will independently deal with enforcement brought to our notice. Basically trust us to enforce Registry contracts. Eg. 2 - In regards the URSS: ICANN staff has changed the Rapid Suspension from MANDATORY to BEST PRACTICE Also delinked URSS from the GPML and Clearing House “The Guidebook proposal does not mention a pre?\registration process utilizing the Clearinghouse” And since the Board was advised that this seems more like Policy the Board has sent a letter to the GNSO to either: a) approve the staff model (details of which can be found here http://www.icann.org/en/topics/new?\gtlds/gnso?\consultations?\reports?\en.htm), which is an as similation of the IRT work and Board concerns), or b) propose an alternative that is equivalent or more effective and implementable. A six weeks window has been allowed. &nbs! p; This basically means that if GNSO cannot reach consensus then Staff Model is likely to go through The IRT proposals thus have been side tracked and swapped.! Example 3 ?C Reserved List (GPML) It’s just gone ?C Staff had said that they would complete their research (about strongest global brands- get data about global brands and see how many countries these brands are registered in) and then come b! ack ?C but the GPML was just removed ?C no explanation and without completing this study. SO NO RESERVED LIST ?C AND NO SOLUTION TO DEFENSIVE REGISTRATIONS! Generally! : In response to protestations Kurt said in regards some aspects ‘you’re preaching to the converted’ and generally said ‘go ahead and scream about it’ ?C basically do what the Non commercials are doing. Similarly Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 www.jamilandjamil.com<http://www.jamilandjamil.com/> Notice / Disclaimer This message contains confidential information and its contents are being communicat! ed only for the intended recipients . If you are not the intended reci pient you should not disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited. ! From: owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx> [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Mike Rodenbaugh Sent: Sunday, October 25, 2009 7: 19 AM To: bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx> Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Further fyi, re STI (“Specified TM Issues”). Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 ( 415) 738-8087<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://! %20rodenbaugh.com/contact> http://rodenbaugh.com<http://rodenbaugh.com/> From: owner-gnso-sti@xxxxxxxxx<mailto:owner-gn! %20so-sti@xxxxxxxxx> [mailto:owner-gnso-sti@xxxxxxxxx] On Behalf Of Margie Milam Sent: Saturday, October 24, 2009 6:01 PM To: Council GNSO; gnso-sti@xxxxxxxxx<mailto:gnso-sti@xxxxxxxxx> Subject: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Dear All, As we discussed yesterday, attached is a document that summarizes the key differences between the IRT and the Applicant Guidebook Version 3. This matrix seeks to succinctly present areas of contrast and briefly explain the rationale for the differences. Please review this draft and let me know whether there is any other information that should be included to facilitate the GNSO’s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN !