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

[Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>]

True, but for those zones that may benefit from high-security, the proposed
ICANN process will dumb-down and commoditize the most complex aspects of
running a secure operation.

Any applicant needing a high-security capability can simply contract with
one of ICANN¹s approved high-security vendors.   No need to spend years
building an experienced and skilled security team with proven processes and
standards .... just check the box!


On 10/25/09 3:37 AM, "Marilyn Cade" <marilynscade@xxxxxxxxxxx> wrote:

> 
> very few of the proposed registries are likely to want 'high security zone'.
> 
> 
> From: mike@xxxxxxxxxxxxxx
> To: marilynscade@xxxxxxxxxxx; lizawilliams@xxxxxxx; zahid@xxxxxxxxx;
> sarah.deutsch@xxxxxxxxxxx
> CC: bc-gnso@xxxxxxxxx
> 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
> Date: Sun, 25 Oct 2009 00:20:14 -0700
> 
> Eager to hear opinions of Sarah or any other experts.  I have quite a lot of
> experience with that myself, of course.
> 
>  
> 
> Also, I¹ve realized just now that the IRT itself did NOT recommend that all
> domain registrations be checked against the Clearinghouse database, so long as
> the registry enacts a sunrise perios, and so the URS is enacted and mandatory.
> Thus Staff has not watered down that aspect of the proposal, except that they
> have proposed that the URS be denominated a ?best practice¹ rather than a
> mandatory requirement.  I strongly believe that both elements must be
> mandatory, and urge that as the BC position. Obviously, allowing registries to
> offer only a sunrise period, and no other RPMs for trademark owners, is no
> improvement whatsoever over the previous rollouts of TLDs.
> 
>  
> 
> Of course it will be very difficult to get consensus to something even more
> stringent than recommended by the IRT, but I think we need to try.  A fallback
> option is to require registries to do Clearinghouse lookups, and provide URS,
> in order to get the new ?high security zone¹ designation.  But my gut feel on
> that initiative is that it is worthless, few registrants will care, thus few
> contract parties will care.
> 
>  
> 
> 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=h
> ttp://rodenbaugh.com/contact>
> 
> http://rodenbaugh.com <http://rodenbaugh.com/>
>  
>  
> 
> From: Marilyn Cade [mailto:marilynscade@xxxxxxxxxxx]
> Sent: Saturday, October 24, 2009 11:58 PM
> To: Mike Rodenbaugh; Liz Williams; Zahid Jamil; Sarah Deutsch
> 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
> 
>  
> 
> Have the actual brand holders from large BC members agreed with that
> perspective? I've added Sarah, who is an expert on these issues -- I think
> that there was a few that there needed to be a number of safeguards, not only
> one or two. 
> 
>  
> 
> 
> 
> 
> 
> From: icann@xxxxxxxxxxxxxx
> To: lizawilliams@xxxxxxx; zahid@xxxxxxxxx
> CC: bc-gnso@xxxxxxxxx
> 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
> Date: Sat, 24 Oct 2009 22:53:10 -0700
> 
> Thanks Zahid.  Just want to note my strong opinion that, if the Clearinghouse
> must be checked against every domain registrations, with conflicts resulting
> in notice to the applicant, and the URS is mandatory for all new TLD
> registries, then I believe there will be sufficient protections such that TM
> owners will not be forced to defensively register their marks.  Interested to
> hear if anyone has a different view, and their reasoning, as I expect the BC
> will develop a position statement that includes these key points.
> 
>  
> 
> 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=h
> ttp://rodenbaugh.com/contact>
> 
> http://rodenbaugh.com <http://rodenbaugh.com/>
>  
>  
> 
> From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
> Liz Williams
> Sent: Saturday, October 24, 2009 8:54 PM
> To: Zahid Jamil
> Cc: bc-gnso@xxxxxxxxx
> 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
> 
>  
> 
> Thanks very much for this analysis.  It is always disturbing when months of
> community time and organisational resources are of questionable value.  It
> also points again to the difficulty of trying to do what is essentially policy
> development outside of the normal policy development channels but that is a
> debate for another day.
> 
>  
> 
> However, what is your suggestion for a way forward?  You make a "scream about
> it" note at the end but that most likely won't be very productive.  It seems
> to be that the Board is going to be required to be the final decision maker
> given it is highly unlikely that the Council will reach consensus -- given
> that lack of consensus was the whole reason why the IRT was established
> anyway.
> 
>  
> 
> Following Ron's request for items for tonight's meeting, I suggest that the
> strategy forward is the subject of tonight's huddle at 6pm in the bar.  Gin
> and tonic will be required!
> 
>  
> 
> Liz
> 
> 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/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 DAG3¹s 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
> yesterday¹s 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 wasn¹t the case.
> 
>  
> 
> Instead the staff completely changed the PDDRP (see Jeff Neuman¹s 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 didn¹t let this go to the GNSO)
> 
>  
> 
> In short the IRT had recommended that:
> 
>  
>  
>    Standard for Asserting a Claim ­ 3
>   types: 
>   (a) The Registry Operator¹s 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 complainant¹s mark; or
>   (b) The Registry Operator is in
>   breach of the specific rights
>   protection mechanisms
>   enumerated in such Registry
>   Operator¹s Agreement and such
>   breach is likely to cause
>   confusion with complainant¹s
>   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 similar to the
> complainant¹s mark, meeting any of the following conditions: (i) taking unfair
> advantage of the distinctive character or the reputation of
>   the complainant¹s mark, or (ii) unjustifiably impairing the distinctive
> character or the 
>   reputation of the complainant¹s mark, or (iii) creating an impermissible
> likelihood of 
>   confusion with Complainant¹s 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 Operator¹s affirmative
>   conduct in its operation or use of its gTLD, that is identical or
> confusingly similar to the
>   complainant¹s mark, causes or materially
>   contributes to the gTLD: (a) taking unfair
>   advantage of the distinctive character or the
>   reputation of the complainant¹s mark, or (b)
>   unjustifiably impairing the distinctive character
>   or the reputation of the complainant¹s mark, or
>     
>     
>     
>     
>     
>     
>     
>     
>   (c) creating an impermissible likelihood of
>   confusion with the complainant¹s 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 operator¹s bad faith intent to profit from the
> systematic registration of
>   domain names within the gTLD, that are
>   identical or confusingly similar to the
>   complainant¹s mark, which: (i) takes unfair
>   advantage of the distinctive character or the
>   reputation of the complainant¹s mark, or (ii)
>   unjustifiably impairs the distinctive character or the reputation of the
> complainant¹s mark, or (iii) creates an impermissible likelihood of
>   confusion with the complainant¹s 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 doesn¹t 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 staff¹s response was:  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 ³The Guidebook proposal
> does not mention a pre-registration process utilizing the Clearinghouse²
> 
>  
> 
> 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 assimilation 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.
> 
>  
> 
> 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 ­ Reserved List (GPML)
> 
> It¹s just gone ­ 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 back ­ but the GPML
> was just removed ­ no explanation and without completing this study.
> 
> SO NO RESERVED LIST ­ AND NO SOLUTION TO DEFENSIVE REGISTRATIONS!
> 
>  
> 
>  
> 
> Generally:
> 
>  
> 
> In response to protestations Kurt said in regards some aspects ?you¹re
> preaching to the converted¹  and generally said ?go ahead and scream about it¹
> ­ 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/>
> 
>  
> 
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> 
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>  
> 
> From: 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
> Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between
> IRT Report and Applicant Guidebook Version 3
> 
>  
> 
> Further fyi, re STI (³Specified TM Issues²).
> 
>  
> 
> 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=h
> ttp://rodenbaugh.com/contact>
> 
> http://rodenbaugh.com <http://rodenbaugh.com/>
> 
> From: owner-gnso-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
> 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 GNSO¹s work on the Board request.
> 
>  
> 
> Best regards,
> 
>  
> 
> Margie Milam
> 
> Senior Policy Counselor
> 
> ICANN
> 
>  
>        
> 
> -- 
> Steve DelBianco
> Executive Director
> NetChoice
> http://www.NetChoice.org and http://blog.netchoice.org
> +1.202.420.7482 
>