Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

[Jon Nevett <jon@xxxxxxxxxx>]

Jeff:

Personally, I always am open to consider changes.

Thanks.

Jon  

On Jul 20, 2010, at 10:08 AM, BRUEGGEMAN, JEFF (ATTSI) wrote:

> Jon, would you be amenable to adding some language explaining why the BC is 
> resubmitting its positions.  In addition to David’s point that ICANN hasn’t 
> provided an explanation for ignoring the BC’s positions, I think both the 
> malicious conduct study and the economic paper support David’s point that the 
> trademark protections should be considered in the context of consumer and 
> economic issues.  It we provided that rationale, then we could stick to the 
> existing approved language but make the comments relevant to the proceeding 
> as it stands now.
>  
> Jeff
>  
> From: Jon Nevett [mailto:jon@xxxxxxxxxx] 
> Sent: Tuesday, July 20, 2010 9:39 AM
> To: Fares, David
> Cc: Zahid Jamil; 'Deutsch, Sarah B'; 'Phil Corwin'; michaelc@xxxxxxxxxxxx; 
> mike@xxxxxxxxxx; BRUEGGEMAN, JEFF (ATTSI); randruff@xxxxxxxxxxxxxxx; 
> ffelman@xxxxxxxxxxxxxxx; bc-GNSO@xxxxxxxxx
> Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4
>  
> Thanks David for that perspective and insight.  After co-chairing a USCIB 
> committee with you for a couple of years, I know that you always are a voice 
> of reason and I think that you probably are correct in this case.
>  
> If we can't agree on consensus comments specific to DAGv4, which I hope is 
> not the case, we probably should reissue the BC DAGv3 comments without any 
> word changes with the following header (or something like it):
>  
> "The Business Constituency did not reach consensus on comments on DAGv4.  As 
> such, the BC's comments on DAGv3 still stand and are being resubmitted for 
> ICANN's review." 
>  
> Is that an acceptable default position for folks should our efforts over the 
> next 24 hours not reach fruition?
>  
> Thanks.
>  
> Best,
>  
> Jon
>  
>  
> On Jul 20, 2010, at 9:21 AM, Fares, David wrote:
> 
> 
> Colleagues,
>  
> News Corporation shares the views of the brand owners that have posted on the 
> list.  We believe strong trademark protection mechanisms are important in and 
> of themselves, but they also facilitate fair competition and prevent consumer 
> fraud, issues about which all businesses should care deeply.
>  
> Also, as a company that is a member of many trade/business associations we 
> recognize that existing policies can and should evolve.  However, as in those 
> other associations, a change from an existing position must follow the same 
> procedures under which the position was originally adopted.  Therefore, in 
> the context of this current debate, past positions should prevail unless a 
> majority of members agree to change/evolve them.  Several members have 
> mentioned that it is pointless to reiterate past positions that have not been 
> adopted by ICANN.  We would note that unfortunately, no explanation has been 
> provided by ICANN as to why the BC's longstanding positions have been 
> ignored.  With this in mind, we think the burden lies with ICANN to 
> articulate its rationale so that the community can assess the rationale's 
> legitimacy and then consider how to proceed.  This is particularly important 
> in light of the economic analysis presented in Brussels.
>  
> Janet and I look forward to working with everyone to find a solution to this 
> within the BC.
>  
> David
>  
>  
> From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of 
> Zahid Jamil
> Sent: Monday, July 19, 2010 5:00 PM
> To: 'Deutsch, Sarah B'; 'Jon Nevett'
> Cc: 'Phil Corwin'; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx; jb7454@xxxxxxx; 
> randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx; bc-GNSO@xxxxxxxxx
> Subject: RE: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4
>  
> Dear All,
>  
> Have been following in this discussion intermittently.  Here are some of my 
> quick thoughts.  The IRT is not and has not been the yard stick by which BC 
> comments or views have been formed in the past.  BC did support the IRT but 
> clearly stated that the IRT had not gone far enough.  If we take the argument 
> that the IRT position should be followed solely then please keep the GPML in.
>  
> We currently have no solutions for the defensive registration problem.  The 
> URS is not Rapid.  There is no transfer of the domain in a URS.  The 
> Trademark Clearinghouse is not a Rights Protection Mechanism (admittedly).  
> So what are we really left with. 
>  
> Jon’s discussions here in the BC are reminiscent of the arguments Jon made in 
> the IRT and the STI where, at the time, Jon was representing Registrar 
> interests.  He has been a valuable member of both groups and I look forward 
> to his arguing in favour of BC positions now with the same, if not greater, 
> zeal.
>  
> Any argument that amounts to –they didn’t listen to us in the past so let’s 
> give up and settle for what we can does not address the problem.  There is 
> much to be said about consistency.  I would encourage the BC to also take 
> from the existing BC minority position in the STI report.  That is a BC 
> position and hence, it ought to be repeated where appropriate (have attached 
> the STI report – BC minority position is at page 31).  We should be lobbying 
> for better protection, in my view, not less since ICANN staff proposals 
> sideline and ignore business and trademark interests.
>  
> Lets also remember that the BC position has been vindicated in the Economic 
> Analysis which asks that limited rounds be undertaken and clearly underscores 
> the economic cost of the defensive registration problem.  Just because we 
> haven’t worked on how limited rounds would be implemented it doesn’t mean 
> that the concept is flawed.  The Economic study makes cogent arguments in its 
> favour.  Its now up to ICANN staff and possibly community to come up with 
> mechanisms.
>  
> Also the Economic Analysis clearly finds that there need to be surveys and 
> studies (details in the report) which should be conducted and then mechanisms 
> developed based on actual statistics.  Clearly showing that ICANN staff has 
> run away with the new gTLD proposal without adequate study and analysis.  
> Hence, mention of the Analysis is quite pertinent and I support Jeff’s views 
> in this.
>  
>  
> Have pasted my Brussels email below:
> My edits in [...]
>  
>  
>  
> Economic Study:
> In light of the newly released economic study what steps are envisioned by 
> ICANN staff: including:
> Survey (how)
> Study (how)
> Past introductions
> Methodlogies
> In particular re TM, user confusion (notwithstanding the current RPMs)
>  
> P – 16 – 17 :
> Subsidies
> Adjust Fee vs. Favourable approval process
>  
> 25 - Potential consumer confusion or fragmentation of the Internet
> 26 - Increased registration costs for companies that feel the need to be
> in multiple places on the Internet
> 28 - Defensive registrations
> 29 - Increased cost to companies to police new gTLD registrations that
> violate trademarks or copyrights [VIGILANCE]
> 44 - 74 percent of the registered domain names either were “under 
> construction,” for
> sale, returned an error, or did not return a website at all.   Thus, at least 
> in the early stages of .biz, the great majority of registered domain names 
> were not being used to provide content to users, again indicating that the 
> registrations may have been defensive.
>  
> 59 –
> 105. A survey of registrants would likely be needed to disentangle the extent 
> to which
> duplicate registrations are either purely defensive (and constitute external 
> costs) or generate benefits to the registrants. A survey of trademark owners 
> could provide information on the reasons for registration of domain names in 
> multiple gTLDs, such as how registrants use the additional gTLDs (e.g., to 
> provide new content or purely to redirect to another site) and whether the 
> registrants expect to reach a new audience with the new gTLD.115
>  
> [Zahid Note -  SURVEY requested by IRT hasn’t been undertaken by Staff either]
>  
> 61 - We recommend that ICANN consider the potential for consumer confusion in 
> deciding how quickly to proceed with the introduction of gTLDs, possibly 
> incorporating some methodology to measure consume confusion as new gTLDs are 
> rolled out over time.
>  
> 62 - This potential project would use case studies to examine the likely 
> costs and benefits in broad categories of new gTLDs.
>  
> Such studies would lead to recommendations on how ICANN could craft its 
> application process and ongoing rules to lessen the likelihood of delegating 
> gTLDs that will have negative net social benefits and to enhance the net 
> social benefits from gTLDs that are designated.117
>  
> para 117 – end:
>  
> 117. First, it may be wise to continue ICANN’s practice of introducing new 
> gTLDs in discrete, limited rounds. It is impossible to predict the costs and 
> benefits of new gTLDs accurately. By proceeding with multiple rounds, the 
> biggest likely costs—consumer confusion and trademark protection—can be 
> evaluated in the earlier rounds to make more accurate predictions about later 
> rounds.
>  
> 118. Second, in order to derive the greatest informational benefits from the 
> next round of
> gTLD introductions, ICANN should adopt practices that will facilitate the 
> assessment of the net benefits from the initial rollout of additional gTLDs. 
> Specifically, ICANN should require registries, registrars, and domain names 
> registrants to provide information sufficient to allow the estimation of the 
> costs and benefits of new gTLDs. For example, there might be mandatory 
> reporting of trademark disputes.
>  
>  
>  
>  
>  
>  
>  
>  
> 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 35680760 / 35685276 / 35655025
> Fax: +92 21 35655026
> www.jamilandjamil.com
>  
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> From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of 
> Deutsch, Sarah B
> Sent: 19 July 2010 15:26
> To: Jon Nevett
> Cc: Zahid Jamil; Phil Corwin; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx; 
> jb7454@xxxxxxx; randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx; 
> bc-GNSO@xxxxxxxxx
> Subject: RE: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4
>  
>  
> Jon,
>  
> Thanks for clarifying.  If this is the case, then it looks like ICANN kept 
> the high burden of proof for trademark owners on the one hand and ditched 
> other parts of the deal, including that it be in exchange for a rapid (hence 
> the "R" in the name URS) process.
>  
> As a practical matter, I don't see how any trademark owner will be able to 
> prove anything more than they already prove in filing a UDRP case.  For 
> example, in most cases, you'll know the infringer took your domain name, 
> which is identical or confusingly similar to your trademark.  You may or may 
> not have screen shots of ads on their infringing webpages.  You may or may 
> not have accurate WHOIS information about the infringer.  You may or may not 
> have evidence that the infringer stole other third party trademarks.  
> 
> There is no certainty for trademark owners about what is meant by "clear and 
> convincing evidence" and how to meet that standard over the evidence we 
> typically submit in the UDRP process.  Obviously, there's no way to know the 
> subjective intent of the infringer without full blown litigation and 
> discovery.  At a minimum, ICANN needs to give more guidance on this issue.
>  
> This burden of evidence standard is just one more reason why brand owners 
> will avoid using the URS.   
>  
> Sarah
> 
> Sarah B. Deutsch 
> Vice President & Associate General Counsel 
> Verizon Communications 
> Phone: 703-351-3044 
> Fax: 703-351-3670
>  
>  
> From: Jon Nevett [mailto:jon@xxxxxxxxxx] 
> Sent: Monday, July 19, 2010 3:10 PM
> To: Deutsch, Sarah B
> Cc: Zahid Jamil; Phil Corwin; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx; 
> jb7454@xxxxxxx; randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx; 
> bc-GNSO@xxxxxxxxx
> Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4
> 
> Sarah:
>  
> Sorry if I was unclear.  The intent of the IRT was to have the same legal 
> standard for the UDRP and URS (the same elements -- registration with bad 
> fait intent, etc.), but having a higher burden of proof (clear and convincing 
> vs. preponderance.
>  
> Here are the relevant quotes from the IRT report -- 
> http://www.icann.org/en/announcements/announcement-4-29may09-en.htm
>  
> "The Final Evaluation analysis involves consideration of three basic issues, 
> similar to the standards for a UDRP decision, but requires a much higher 
> burden of proof." (emphasis added)
>  
> "If the Examiner finds that all of these elements are satisfied by clear and 
> convincing evidence and that there is no genuine contestable issue, then the 
> Examiner shall issue a decision in favor of the Complainant." (emphasis added)
>  
> http://www.icann.org/en/announcements/announcement-4-29may09-en.htm
>  
> These positions had a unanimous consensus of the IRT.  Not sure the relevance 
> of my status on the IRT, but for the record I was told by the IPC that I 
> wasn't representing registrars on the IRT.  If you had heard the crap that I 
> got from my former registrar colleagues, you would understand that I 
> definitely wasn't representing them on the IRT :-).
>  
> As I don't believe that the BC complained about this burden of proof in the 
> past on the IRT, on the STI, or any public comments thereafter, I don't think 
> that we should raise it here.  If we think that the URS was changed in a way 
> that is problematic, let's focus on those changes instead of trying to go 
> back on issues that had complete consensus and haven't changed at all.
>  
> Thanks!
>  
> jon
>  
>  
>  
> On Jul 19, 2010, at 2:39 PM, Deutsch, Sarah B wrote:
>  
> 
> Jon,
>  
> Thank you for your many constructive changes.  I want to respond to one 
> suggested edit you made below:
>  
> *I deleted the clear and convincing evidence issue with regard to the URS.  
> As a member of the IRT, I can say that it clearly was our intent for the URS 
> to have a higher burden of proof  than the UDRP -- the legal standard is 
> exactly the same.  We wanted the URS to be for "slam dunk" cases.  The URS 
> was to be a less expensive alternative to the UDRP cognizant of the fact that 
> 70% of UDRPs go unanswered.  
> 
>  
> 1.  I don't disagree that the URS, like the UDRP, should be used for slam 
> dunk cases.  I'm glad you confirmed that the legal standard was supposed to 
> be exactly the same.  It's my understanding that proof under the UDRP is in 
> fact based on a preponderance of the evidence standard, not a clear and 
> convincing evidence standard.  See below. 
>  
> Section 1.3.1.1 – Burden of Proof (How much proof is necessary?)
> In the administrative proceeding, the Complainant must prove that each of the 
> three elements contained in Section 4(a) of the Policy are present.
> 
> Comment:  In general, the Panels recognize a preponderance of the evidence 
> standard.  Preponderance of the evidence means that a fact is proved when it 
> is more likely than not that the fact is true.
> 
> 2. Rather than delete this sentence in its entirety, I would recommend 
> inserting back in the following single sentence: "The BC recommends that 
> while the URS is intended to deal with "slam dunk," cases, we ask ICANN to 
> clarify that the legal standard remain the exactly the same as that found in 
> the UDRP.  ICANN should clarify that while proof of bad faith must be clear, 
> the evidence generally can be established by a proponderance of evidence 
> standard."
> 
> 3.  I know that you were a valuable member of the IRT and at that time you 
> were representing registrars' views.  Other IRT members point out to me one 
> additional point.  The "slam dunk" aspect of the URS was in exchange for a 
> quick and cheap process.  No one knows how cheap this will wind up being, but 
> there is no question that the "quick" part of this trade off has disappeared. 
>  Many IRT participants confirm that the DAG4 doesn't represent anything akin 
> to the deal they thought they had struck. 
> 
>  
> Sarah
> 
> 
> Sarah B. Deutsch 
> Vice President & Associate General Counsel 
> Verizon Communications 
> Phone: 703-351-3044 
> Fax: 703-351-3670
>  
>  
> From: Jon Nevett [mailto:jon@xxxxxxxxxx] 
> Sent: Sunday, July 18, 2010 9:40 PM
> To: Zahid Jamil
> Cc: Deutsch, Sarah B; 'Phil Corwin'; michaelc@xxxxxxxxxxxx; mike@xxxxxxxxxx; 
> jb7454@xxxxxxx; randruff@xxxxxxxxxxxxxxx; ffelman@xxxxxxxxxxxxxxx; 
> bc-GNSO@xxxxxxxxx
> Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4
> 
> Folks:
>  
> Attached is a suggested redraft to bridge the gap.  I personally don't agree 
> with some of the arguments I left in the attached, but I tried to keep the 
> longstanding BC positions while toning down the anti-TLD language.  I also 
> deleted a couple of the arguments that were objected to in some of the notes 
> I reviewed.
>  
> Here are some of the highlights:
>  
> *I deleted the GPML section.
>  
> *I deleted the clear and convincing evidence issue with regard to the URS.  
> As a member of the IRT, I can say that it clearly was our intent for the URS 
> to have a higher burden of proof  than the UDRP -- the legal standard is 
> exactly the same.  We wanted the URS to be for "slam dunk" cases.  The URS 
> was to be a less expensive alternative to the UDRP cognizant of the fact that 
> 70% of UDRPs go unanswered.  Has this issue even been raised before by the BC?
>  
> *Based on Sarah's helpful e-mail, I left alone the complaint about 
> transferring names after a successful URS as that has been an issue that 
> Zahid, Mike and others in the BC have argued consistently.  I do note, 
> however, that transfer was not in the IRT recommendation and the STI agreed 
> to add a year to the registration at the request of the complainant as a 
> compromise.  
>  
> *Again based on Sarah's e-mail, I left the PDDRP section pretty much alone 
> except for an argument about registries warehousing names, but not using 
> them, as that argument didn't make much sense to me.  That's exactly the 
> function of a registry to warehouse names until they are sold by registrars.  
> If a registry "reserves" a name and it is not in use at all, the mark holder 
> should be thrilled that it can't be registered by a squatter.
>  
> *I also deleted the paragraph about the Director of Compliance.  I don't 
> think it appropriate to comment on those kinds of personnel matters. 
>  
> *I didn't touch the arguments related to community and 13 points (though I 
> personally favor 14 points to avoid gaming -- sorry Ron), as that seems to be 
> longstanding BC position.
>  
> *I didn't do much on the Market Differentiation section either other than 
> soften some of the language.
>  
> I have no idea if my attempt will get consensus or not, but I thought it 
> worthwhile to offer alternative language and I tried hard to find a balance.  
>  
> Thanks.
>  
> Jon
>  
>  
> 
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