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European Commission welcomes ratification of the WIPO Copyright Treaties
by Rudi Vansnick Dec. 16, 2009

Dec. 16, 2009

14/12/2009 Today, the European Union and its Member States ratified the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, the so-called "Internet" Treaties. These Treaties were concluded to make the world's copyright laws 'fit for the internet'. Internal Market Commissioner Charlie McCreevy commented on the WIPO ratifications : "Today is an important day for the European Union and its Member States and WIPO. We, as a group have shown our attachment to the international system of protection of copyright and related rights. These two treaties brought protection up to speed with modern technologies. As the technological evolution accelerates, protecting creators and creative industries is more urgent than ever." By ratifying these Treaties, the European Union and its Member States hope to breathe new vigour into the current treaty-making work of WIPO and encourage renewed commitment to moving forward on a high level of protection for creators and creative industries. The European Union and its Member States participated fully in the Diplomatic Conference of 1996 that aimed to upgrade the rights of authors, performers and phonogram producers to withstand the challenges of the digital age. The two WIPO copyright treaties contain rules on distribution, rental, the right of public communication and the "making available" of protected content online. In 2000, the European Union and its Member states took the formal decision ^1 <http://europa.eu/rapid/pressReleasesAction.do?reference=IP/09/1916&format=H…> to ratify the WIPO Treaties together. Indeed, negotiations on these two Treaties marked the first time that the European Union was accorded full Contracting Party status in the field of copyright, as opposed to the observer status it enjoyed so far in WIPO on copyright issues. Immediately after the Diplomatic Conference in 1996, work started at the European level to adapt European copyright law to the WIPO "internet" Treaties. A European Copyright Directive ^2 <http://europa.eu/rapid/pressReleasesAction.do?reference=IP/09/1916&format=H…> was adopted in 2001. All EU Member States have meanwhile transposed the provisions of the 2001 Copyright Directive into their national legislation. The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing an international intellectual property <http://www.wipo.int/about-ip/en/> (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO was established by the WIPO Convention <http://www.wipo.int/treaties/en/convention/> in 1967 with a mandate from its Member States <http://www.wipo.int/members/en/> to promote the protection of IP throughout the world through cooperation among states and in collaboration with other international organizations. Its headquarters are in Geneva, Switzerland. ^1 : Council Decision of 16 March 2000 on the approval, on behalf of the European Community, of the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, Official Journal L 89 of 11 April 2000,p. 6 ^2 : Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. Official Journal L 167 of 22 June 2001. http://europa.eu/rapid/pressReleasesAction.do?reference=IP/09/1916&format=H… Rudi Vansnick President Internet Society Belgium vzw Voorzitter TIK vzw Board member EURALO (ALAC - ICANN)

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STI documents
by Alan Greenberg Dec. 14, 2009

Dec. 14, 2009

The final GNSO STI report and the ALAC minority positions documents can be found at https://st.icann.org/gnso-liaison/index.cgi?gnso_liaison_documents. In the time since the report was distributed (an earlier version but with no substantive changes) along with the 4 proposed minority statements: - No negative comments were received about the report itself, other than a question of how to properly indicate a suspended domain name raised by Patrick. - Replies were received from Name-Issues WG members (Evan, Hong, Carlton, Patrick) which supported submitting minority positions 1, 2 and 3. All recommended not submitting minority position 4. - A reply was received from Wendy Seltzer, who is one of the GNSO STI members representing the NCSG, but also a member of the Name-Issues WG and an individual NA-RALO member. She did not support submitting any of the minority positions. No comments were received from any other member of the Name-Issues WG, the ALAC or At-Large. Accordingly a vote will be started shortly on a motion to support the GNSO STI report and the minority positions 1, 2, and 3. Alan

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Fwd: Re: [Name-Issues] At-Large minority positions to the GNSO STI report
by Alan Greenberg Dec. 12, 2009

Dec. 12, 2009

FYI >Date: Sat, 12 Dec 2009 18:40:34 -0500 >To: name-issues <name-issues(a)atlarge-lists.icann.org> >From: Alan Greenberg <alan.greenberg(a)mcgill.ca> >Subject: Re: [Name-Issues] At-Large minority positions to the GNSO STI report > >To date, we have had three people comment. The results are as >follows. Please correct me if I mis-read your comment. By "agree" I >mean that the person generally supported the concept and we should >state it as an At-Large position. > >Additional comments or corrections will be accepted until Sunday, 18:00 UTC > >Alan >---------------------------- > >1. Additional Marks in the Clearinghouse >Evan, Hong and Carlton agree, but do it with caution. > > >2. Transfer of a domain name after a successful URS >Evan, Hong and Carlton agree. > > >3. Post-Launch TM Claims >Evan (I think), Hong and Carlton agree. > > >4. Number of Trademark Clearinghouse (TC) providers > >4a - The two parts of the Trademark Clearinghouse must be separated. > >4b - No strong preference, so STI recommendation of leaving to staff >to decide on merits is ok. >Evan, Hong and Carlton agree. > > > >At 10/12/2009 12:55 PM, Alan Greenberg wrote: >>Olivier and I are suggesting that we issue minority issues on four >>issues. We both agree on the first three, and are divided on the >>last. We seek advice of the name-issues group (and particularly the >>At-Large members) on what to recommend to the ALAC. >> >>Forgive any typos, as there was a great rush to get this out. >> >>Alan and Olivier >> >>-------------------- >> >>1. Additional Marks in the Clearinghouse >> >>The proposal calls for the Clearinghouse at a minimum to included >>just nationally or multi-nationally registered trademarks as well as >>common-law trademarks that have been validated by a court decision. >>Other TM can be included by the TC at registry and/or TM holder >>expense) but their use by a registry is not mandatory. >> >>The Business Constituency has proposed that a limited class of other >>marks be included, and we are proposing that the following types of >>marks be included for the purposes of sunrise processes. The types of >>marks would include a registered TM used in conjunction with: >>- a dictionary word that is associated with the class of services >>trademarked (example: a chemical company XYZ could deposit in the TC >>the name "XYZ-Chemicals". This was allowed in the .asia sunrise. >>- a dictionary word that is regularly used in clear association with >>the TM (example: Yahoo-Finance - see http://finance.yahoo.com/) >>There would need to be careful language, objection processes and >>penalties for depositing names in the TC that do not meet the >>criteria (example: Yahoo-sucks, unless Yahoo starts to manufacture >>vacuum cleaners) >> >>Brand owners want to be able to have clear right-of-first-refusal to >>reduce opportunities for cyber-squatting and to reduce the need for >>URS and UDRP proceedings. We believe that At-Large benefits from such >>legitimate registrations to reduce the opportunity for user confusion >>which results from cyber-squatters obtaining such names. From the >>perspective of a non-sophisticated user, if they enter a name that >>CLEARLY maps to a known brand, it should not resolve to a >>pay-per-click page or someone offering a competing product or service. >> >>The formulation of this proposal eliminates some of the previous >>objections to this type of proposal (the trademark "enom" preventing >>someone from registering "venom"). It also excludes allowing entry >>into the TC of "confusingly similar" typo-squatting type names. >> >>-------------------- >> >>2. Transfer of a domain name after a successful URS >> >>This was included in the original At-Large input into the STI process. >> >>Under the STI proposal, the only remedies following a successful URS >>is that the domain be suspended (not usable) for the remainder of the >>registration period. It also allows the successful URS claimant to >>extend the registration for one year. It does not allow the claimant >>to take over the registration and therefore at the end of the >>registration period, it will be available again (possibly to be used >>for similar cyber-squatting). >> >>The rationale is: >> >>a) The URS was not originally envisioned by the IRT as a transfer >>mechanism - if the TM holder wants to take custody of the name, they >>should use the more expensive and slower UDRP either following a >>successful URS, or instead of the URS. >> >>b) We need to differentiate the URS from the UDRP >> >>c) It may be complex for the registry and/or registrar to implement >>if not carefully designed >> >>d) It may take a generic word domain name (which might have >>legitimate uses over and above those used by the current registrant >>(which resulted in a successful URS). >> >>We believe that the merits of allowing such a transfer are larger >>than the negatives. Specifically: >> >>a) should not be relevant. We have already changed MUCH in the >>original IRT proposal, and rightfully so. And it seems mean-spirited >>to force a TM holder to go through the UDRP just because of how the >>URS was originally envisioned. >>b) Why? There is a good probability that over the next few years, the >>two procedures will be reviewed and merged into a single procedure >>with multiple paths. >>c) This can be overcome with careful design. >>d) Chances are that either through successive URS proceedings or a >>UDRP, the name will go out of circulation anyway. >> >>We recommend that a transfer at end-of registration be allowed. Since >>the domain is explicitly flagged as being the subject of a successful >>URS, the process should not be onerous if requested at URS-time by >>the claimant. >> >>Barring that being accepted, we suggest that a transfer be allowed >>after a second successful URS. The main argument against that was >>that it would be difficult to implement with respect to record >>keeping. However, since claimant could indicate that this is a second >>URS when filing the URS (and give a case number), indicating that if >>successful, they want a transfer, there is virtually no record >>keeping needed, other than by the TM holder. >> >>-------------------- >> >>3. Post-Launch TM Claims >> >>The TC will allow (at the decision of the registry) pre-launch TM >>Claims. The process is that if a registrant tries to register a name >>that *might* conflict with an existing TM in the TC, they will be >>notified of the possible conflict and will need to declare that there >>is no infringement if they decide to go ahead with the registration. >>The rationale may by the jurisdiction where the TM is registered, the >>types of goods or services, or fair use and freedom-of-speech reasons. >> >>There is no such provision after launch, so that a domain that would >>require such a declaration pre-launch can be registered without any >>issue after launch. This allows for those inadvertently registering >>an infringing name to do so without being informed ahead of time that >>they may have a problem. In the case of cyber-squatting, a >>post-launch TM Claims service would require that declare that they >>will use the name for non-infringing purposes, and such a declaration >>could be used against them in a later URS or UDRP. On the negative >>side, post-launch TM Claims could have a significant "chilling >>effect" in that someone registering a name for completely legitimate >>uses might decide not to because of the notice. >> >>We suggest that At-Large recommend further investigation with respect >>to efficient and effecting implementation of post-launch IP claims >>and on the potential chilling effect on non-IP-professional registrants. >> >>-------------------- >> >>4. Number of Trademark Clearinghouse (TC) providers >> >>Olivier and I are divided on this issue. >> >>Olivier's position >> >>Whilst the original IRT report does not specify whether the >>Validation of the trademarks included in the TC and the database >>maintenance element of the TC should be separated or not, the staff >>proposals recommends two providers, in order to introduce additional >>safeguards in the process. >> >>Given that the two functions are separate and distinct functions, >>that they each call upon a different skillset, that a concentration >>of responsibility resulting from control of both functions by a >>single provider might ease the possibility of process capture and >>that the performing of these functions by one provider weakens the >>commitment by the STI Team to separate these functions, we also >>recommend that these functions shall be performed by entirely >>different providers. A validation service provider shall not be able >>to maintain the database. Similarly, the provider maintaining the >>database shall not be able to also offer a validation service. This >>separation of functions shall extend to affiliates of the >>respective providers. >> >>Alan's position >> >>It is unclear what the exact harms would be from integrating the two >>functions. Moreover, despite significant discussion, it is not quite >>clear if the input from the TM holders (which must be handled in a >>number of languages) is best handled by the validator or the >>data-base provider. The former will already have the ability to >>interface with registries, the URS providers, and registrants who >>need to obtain information related to URS proceedings. The validator >>must have expertise in validating TM in all jurisdictions of the >>world, but may not be an expert on the technical issues related to >>providing round-the-clock computer systems, help desks, multi-lingual >>support and other aspects that the database provider will have to >>posses. Given that, the STI-RT chose to leave it up to staff to >>balance the desire for separation against the ability to find >>competent provider(s) to implement the overall TM. >> >> >>_______________________________________________ >>Name-Issues mailing list >>Name-Issues(a)atlarge-lists.icann.org >>http://atlarge-lists.icann.org/mailman/listinfo/name-issues_atlarge-lists.i…

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Re: [ALAC] Adjustment of timing for vote on GNSO Trademark Issues report
by Alan Greenberg Dec. 11, 2009

Dec. 11, 2009

At 11/12/2009 12:10 AM, James Seng wrote: >My apologies for not able to attend the call. I tried to stay up for >it but was really tired out after my flight to Taiwan for TWNIC annual >meeting. > >I support the principle that "Brand owners want to be able to have >clear right-of-first-refusal to >reduce opportunities for cyber-squatting and to reduce the need for >URS and UDRP proceedings." and I agree that it is in the interest of >the at-large users. > >The devils is in the detail however. I am concern about over reaching >their rights, by extension into combination of their trademark with >generic words. Indeed, and that is why we have said that there must be tight restrictions on such use and penalties for abuse. But note that this is only with regard to pre-launch sunrise registrations which give the brand owner a right of first refusal. The moment after launch, they are free to acquire those names unless someone else gets there first. Also note that according to the base report, a registry will have the right to include such combinations if it wishes. What the minority opinion adds is that all registries should allow it, in theory, reducing the amount of cyber-squatting, user confusion and the need to file UDRPs and URSs. But your point is exactly the focus of the question. Will the benefits as noted above, be overshadowed by TM holders successfully gaming the system? >I can also understand multi-national trademarks, that I would assumed >would cover most famous mark. However, I am not sure how national TM >is going to apply. Do you mean as a TM owner in China, I have rights >of refusal for a TLD (say .sydney) that primary market is in >Australia? In this context, a "multinational" trademark is a registered trademark issued to cover more than one country. Examples are a Benelux TM which covers Belgium, the Netherlands, and Luxembourg, and Community Trade Mark (CTM) which is valid across the European Union. Regarding a .sydney TLD, the registry will have the right to restrict which trademarks that it allows in its sunrise and in this case might restrict based on geographic area - See item 5.2 (ii) Alan >-James Seng

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Adjustment of timing for vote on GNSO Trademark Issues report
by Alan Greenberg Dec. 11, 2009

Dec. 11, 2009

During today's teleconference on New gTLD Draft Applicant Guidebook V3, we discussed the timing regarding the vote on supporting the report (see http://atlarge-lists.icann.org/pipermail/name-issues_atlarge-lists.icann.or…) and At-Large minority position statements (see http://atlarge-lists.icann.org/pipermail/name-issues_atlarge-lists.icann.or…) With the agreement of all on the teleconference, Cheryl agreed to shorten the voting period from our normal "short" poll of 5 days to 3 days. This will allow additional time for discussion, and based on recent voting history, should not adversely impact the number of ALAC members voting. According, to allow the vote to complete in time for the GNSO meeting on Thursday morning, the vote will begin Monday morning, 14 Dec 2009 (the exact time to be determined). This will allow the discussion on the report and minority positions to be extended until approximately 18:00 UTC on Sunday. If you have any interest at all in the issues, please do look at the documents and send your questions or comments. Olivier and I will do our best to address them. And please do remember that the question asked by the Board was not whether to implement a Clearinghouse and URS, but rather how to best do it. Alan

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Fwd: At-Large minority positions to the GNSO STI report
by Alan Greenberg Dec. 10, 2009

Dec. 10, 2009

FYI - Discussion should be on this list. >To: name-issues(a)atlarge-lists.icann.org >From: Alan Greenberg <alan.greenberg(a)mcgill.ca> >Subject: At-Large minority positions to the GNSO STI report > >Olivier and I are suggesting that we issue minority issues on four >issues. We both agree on the first three, and are divided on the >last. We seek advice of the name-issues group (and particularly the >At-Large members) on what to recommend to the ALAC. > >Forgive any typos, as there was a great rush to get this out. > >Alan and Olivier > >-------------------- > >1. Additional Marks in the Clearinghouse > >The proposal calls for the Clearinghouse at a minimum to included >just nationally or multi-nationally registered trademarks as well as >common-law trademarks that have been validated by a court decision. >Other TM can be included by the TC at registry and/or TM holder >expense) but their use by a registry is not mandatory. > >The Business Constituency has proposed that a limited class of other >marks be included, and we are proposing that the following types of >marks be included for the purposes of sunrise processes. The types >of marks would include a registered TM used in conjunction with: >- a dictionary word that is associated with the class of services >trademarked (example: a chemical company XYZ could deposit in the TC >the name "XYZ-Chemicals". This was allowed in the .asia sunrise. >- a dictionary word that is regularly used in clear association with >the TM (example: Yahoo-Finance - see http://finance.yahoo.com/) >There would need to be careful language, objection processes and >penalties for depositing names in the TC that do not meet the >criteria (example: Yahoo-sucks, unless Yahoo starts to manufacture >vacuum cleaners) > >Brand owners want to be able to have clear right-of-first-refusal to >reduce opportunities for cyber-squatting and to reduce the need for >URS and UDRP proceedings. We believe that At-Large benefits from >such legitimate registrations to reduce the opportunity for user >confusion which results from cyber-squatters obtaining such names. > From the perspective of a non-sophisticated user, if they enter a >name that CLEARLY maps to a known brand, it should not resolve to a >pay-per-click page or someone offering a competing product or service. > >The formulation of this proposal eliminates some of the previous >objections to this type of proposal (the trademark "enom" preventing >someone from registering "venom"). It also excludes allowing entry >into the TC of "confusingly similar" typo-squatting type names. > >-------------------- > >2. Transfer of a domain name after a successful URS > >This was included in the original At-Large input into the STI process. > >Under the STI proposal, the only remedies following a successful >URS is that the domain be suspended (not usable) for the remainder >of the registration period. It also allows the successful URS >claimant to extend the registration for one year. It does not allow >the claimant to take over the registration and therefore at the end >of the registration period, it will be available again (possibly to >be used for similar cyber-squatting). > >The rationale is: > >a) The URS was not originally envisioned by the IRT as a transfer >mechanism - if the TM holder wants to take custody of the name, they >should use the more expensive and slower UDRP either following a >successful URS, or instead of the URS. > >b) We need to differentiate the URS from the UDRP > >c) It may be complex for the registry and/or registrar to implement >if not carefully designed > >d) It may take a generic word domain name (which might have >legitimate uses over and above those used by the current registrant >(which resulted in a successful URS). > >We believe that the merits of allowing such a transfer are larger >than the negatives. Specifically: > >a) should not be relevant. We have already changed MUCH in the >original IRT proposal, and rightfully so. And it seems mean-spirited >to force a TM holder to go through the UDRP just because of how the >URS was originally envisioned. >b) Why? There is a good probability that over the next few years, >the two procedures will be reviewed and merged into a single >procedure with multiple paths. >c) This can be overcome with careful design. >d) Chances are that either through successive URS proceedings or a >UDRP, the name will go out of circulation anyway. > >We recommend that a transfer at end-of registration be allowed. >Since the domain is explicitly flagged as being the subject of a >successful URS, the process should not be onerous if requested at >URS-time by the claimant. > >Barring that being accepted, we suggest that a transfer be allowed >after a second successful URS. The main argument against that was >that it would be difficult to implement with respect to record >keeping. However, since claimant could indicate that this is a >second URS when filing the URS (and give a case number), indicating >that if successful, they want a transfer, there is virtually no >record keeping needed, other than by the TM holder. > >-------------------- > >3. Post-Launch TM Claims > >The TC will allow (at the decision of the registry) pre-launch TM >Claims. The process is that if a registrant tries to register a name >that *might* conflict with an existing TM in the TC, they will be >notified of the possible conflict and will need to declare that >there is no infringement if they decide to go ahead with the >registration. The rationale may by the jurisdiction where the TM is >registered, the types of goods or services, or fair use and >freedom-of-speech reasons. > >There is no such provision after launch, so that a domain that would >require such a declaration pre-launch can be registered without any >issue after launch. This allows for those inadvertently registering >an infringing name to do so without being informed ahead of time >that they may have a problem. In the case of cyber-squatting, a >post-launch TM Claims service would require that declare that they >will use the name for non-infringing purposes, and such a >declaration could be used against them in a later URS or UDRP. On >the negative side, post-launch TM Claims could have a significant >"chilling effect" in that someone registering a name for completely >legitimate uses might decide not to because of the notice. > >We suggest that At-Large recommend further investigation with >respect to efficient and effecting implementation of post-launch IP >claims and on the potential chilling effect on non-IP-professional registrants. > >-------------------- > >4. Number of Trademark Clearinghouse (TC) providers > >Olivier and I are divided on this issue. > >Olivier's position > >Whilst the original IRT report does not specify whether the >Validation of the trademarks included in the TC and the database >maintenance element of the TC should be separated or not, the staff >proposals recommends two providers, in order to introduce additional >safeguards in the process. > >Given that the two functions are separate and distinct functions, >that they each call upon a different skillset, that a concentration >of responsibility resulting from control of both functions by a >single provider might ease the possibility of process capture and >that the performing of these functions by one provider weakens the >commitment by the STI Team to separate these functions, we also >recommend that these functions shall be performed by entirely >different providers. A validation service provider shall not be able >to maintain the database. Similarly, the provider maintaining the >database shall not be able to also offer a validation service. This >separation of functions shall extend to affiliates of the respective providers. > >Alan's position > >It is unclear what the exact harms would be from integrating the two >functions. Moreover, despite significant discussion, it is not quite >clear if the input from the TM holders (which must be handled in a >number of languages) is best handled by the validator or the >data-base provider. The former will already have the ability to >interface with registries, the URS providers, and registrants who >need to obtain information related to URS proceedings. The validator >must have expertise in validating TM in all jurisdictions of the >world, but may not be an expert on the technical issues related to >providing round-the-clock computer systems, help desks, >multi-lingual support and other aspects that the database provider >will have to posses. Given that, the STI-RT chose to leave it up to >staff to balance the desire for separation against the ability to >find competent provider(s) to implement the overall TM.

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Fwd: At-Large minority positions to the GNSO STI report
by Alan Greenberg Dec. 10, 2009

Dec. 10, 2009

FYI - discussion if any should be on the At-large list. >To: name-issues(a)atlarge-lists.icann.org >From: Alan Greenberg <alan.greenberg(a)mcgill.ca> >Subject: At-Large minority positions to the GNSO STI report > >Olivier and I are suggesting that we issue minority issues on four >issues. We both agree on the first three, and are divided on the >last. We seek advice of the name-issues group (and particularly the >At-Large members) on what to recommend to the ALAC. > >Forgive any typos, as there was a great rush to get this out. > >Alan and Olivier > >-------------------- > >1. Additional Marks in the Clearinghouse > >The proposal calls for the Clearinghouse at a minimum to included >just nationally or multi-nationally registered trademarks as well as >common-law trademarks that have been validated by a court decision. >Other TM can be included by the TC at registry and/or TM holder >expense) but their use by a registry is not mandatory. > >The Business Constituency has proposed that a limited class of other >marks be included, and we are proposing that the following types of >marks be included for the purposes of sunrise processes. The types >of marks would include a registered TM used in conjunction with: >- a dictionary word that is associated with the class of services >trademarked (example: a chemical company XYZ could deposit in the TC >the name "XYZ-Chemicals". This was allowed in the .asia sunrise. >- a dictionary word that is regularly used in clear association with >the TM (example: Yahoo-Finance - see http://finance.yahoo.com/) >There would need to be careful language, objection processes and >penalties for depositing names in the TC that do not meet the >criteria (example: Yahoo-sucks, unless Yahoo starts to manufacture >vacuum cleaners) > >Brand owners want to be able to have clear right-of-first-refusal to >reduce opportunities for cyber-squatting and to reduce the need for >URS and UDRP proceedings. We believe that At-Large benefits from >such legitimate registrations to reduce the opportunity for user >confusion which results from cyber-squatters obtaining such names. > From the perspective of a non-sophisticated user, if they enter a >name that CLEARLY maps to a known brand, it should not resolve to a >pay-per-click page or someone offering a competing product or service. > >The formulation of this proposal eliminates some of the previous >objections to this type of proposal (the trademark "enom" preventing >someone from registering "venom"). It also excludes allowing entry >into the TC of "confusingly similar" typo-squatting type names. > >-------------------- > >2. Transfer of a domain name after a successful URS > >This was included in the original At-Large input into the STI process. > >Under the STI proposal, the only remedies following a successful >URS is that the domain be suspended (not usable) for the remainder >of the registration period. It also allows the successful URS >claimant to extend the registration for one year. It does not allow >the claimant to take over the registration and therefore at the end >of the registration period, it will be available again (possibly to >be used for similar cyber-squatting). > >The rationale is: > >a) The URS was not originally envisioned by the IRT as a transfer >mechanism - if the TM holder wants to take custody of the name, they >should use the more expensive and slower UDRP either following a >successful URS, or instead of the URS. > >b) We need to differentiate the URS from the UDRP > >c) It may be complex for the registry and/or registrar to implement >if not carefully designed > >d) It may take a generic word domain name (which might have >legitimate uses over and above those used by the current registrant >(which resulted in a successful URS). > >We believe that the merits of allowing such a transfer are larger >than the negatives. Specifically: > >a) should not be relevant. We have already changed MUCH in the >original IRT proposal, and rightfully so. And it seems mean-spirited >to force a TM holder to go through the UDRP just because of how the >URS was originally envisioned. >b) Why? There is a good probability that over the next few years, >the two procedures will be reviewed and merged into a single >procedure with multiple paths. >c) This can be overcome with careful design. >d) Chances are that either through successive URS proceedings or a >UDRP, the name will go out of circulation anyway. > >We recommend that a transfer at end-of registration be allowed. >Since the domain is explicitly flagged as being the subject of a >successful URS, the process should not be onerous if requested at >URS-time by the claimant. > >Barring that being accepted, we suggest that a transfer be allowed >after a second successful URS. The main argument against that was >that it would be difficult to implement with respect to record >keeping. However, since claimant could indicate that this is a >second URS when filing the URS (and give a case number), indicating >that if successful, they want a transfer, there is virtually no >record keeping needed, other than by the TM holder. > >-------------------- > >3. Post-Launch TM Claims > >The TC will allow (at the decision of the registry) pre-launch TM >Claims. The process is that if a registrant tries to register a name >that *might* conflict with an existing TM in the TC, they will be >notified of the possible conflict and will need to declare that >there is no infringement if they decide to go ahead with the >registration. The rationale may by the jurisdiction where the TM is >registered, the types of goods or services, or fair use and >freedom-of-speech reasons. > >There is no such provision after launch, so that a domain that would >require such a declaration pre-launch can be registered without any >issue after launch. This allows for those inadvertently registering >an infringing name to do so without being informed ahead of time >that they may have a problem. In the case of cyber-squatting, a >post-launch TM Claims service would require that declare that they >will use the name for non-infringing purposes, and such a >declaration could be used against them in a later URS or UDRP. On >the negative side, post-launch TM Claims could have a significant >"chilling effect" in that someone registering a name for completely >legitimate uses might decide not to because of the notice. > >We suggest that At-Large recommend further investigation with >respect to efficient and effecting implementation of post-launch IP >claims and on the potential chilling effect on non-IP-professional registrants. > >-------------------- > >4. Number of Trademark Clearinghouse (TC) providers > >Olivier and I are divided on this issue. > >Olivier's position > >Whilst the original IRT report does not specify whether the >Validation of the trademarks included in the TC and the database >maintenance element of the TC should be separated or not, the staff >proposals recommends two providers, in order to introduce additional >safeguards in the process. > >Given that the two functions are separate and distinct functions, >that they each call upon a different skillset, that a concentration >of responsibility resulting from control of both functions by a >single provider might ease the possibility of process capture and >that the performing of these functions by one provider weakens the >commitment by the STI Team to separate these functions, we also >recommend that these functions shall be performed by entirely >different providers. A validation service provider shall not be able >to maintain the database. Similarly, the provider maintaining the >database shall not be able to also offer a validation service. This >separation of functions shall extend to affiliates of the respective providers. > >Alan's position > >It is unclear what the exact harms would be from integrating the two >functions. Moreover, despite significant discussion, it is not quite >clear if the input from the TM holders (which must be handled in a >number of languages) is best handled by the validator or the >data-base provider. The former will already have the ability to >interface with registries, the URS providers, and registrants who >need to obtain information related to URS proceedings. The validator >must have expertise in validating TM in all jurisdictions of the >world, but may not be an expert on the technical issues related to >providing round-the-clock computer systems, help desks, >multi-lingual support and other aspects that the database provider >will have to posses. Given that, the STI-RT chose to leave it up to >staff to balance the desire for separation against the ability to >find competent provider(s) to implement the overall TM.

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UNESCO & ICANN
by Sébastien Bachollet Dec. 10, 2009

Dec. 10, 2009

http://portal.unesco.org/ci/en/ev.php-URL_ID=29372 <http://portal.unesco.org/ci/en/ev.php-URL_ID=29372&URL_DO=DO_TOPIC&URL_SECT ION=201.html> &URL_DO=DO_TOPIC&URL_SECTION=201.html For your information. I am sorry that the ICANners (like you ALAC VC) leaving in Paris were not invited. I have a question: who is ICANN? All the best Sébastien Bachollet Président d'honneur - Isoc France <mailto:sebastien.bachollet@isoc.fr> sebastien.bachollet(a)isoc.fr <http://www.egeni.org/> www.egeni.org <http://www.isoc.fr/> www.isoc.fr

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Fwd: GNSO Selected Trademark Issues Review Team draft report
by Alan Greenberg Dec. 10, 2009

Dec. 10, 2009

Please note that this message is also being forwarded to the At-Large list. Alan >To: name-issues(a)atlarge-lists.icann.org >From: Alan Greenberg <alan.greenberg(a)mcgill.ca> >Subject: GNSO Selected Trademark Issues Review Team draft report > >I am attaching a copy of the GNSO STI draft report. It is still >undergoing revision. A final version is expected sometime today and >I will forward it when available. > >PLEASE NOTE THAT ACCORDING TO THE CURRENT PLAN WE ONLY HAVE 1.5 DAYS >TO DECIDE ON THE WAY FORWARD - SEE MESSAGE AT END. > >For background and references to previous documents, I refer you to >my e-mail of 28Nov09 - >http://atlarge-lists.icann.org/pipermail/name-issues_atlarge-lists.icann.or…. > >The discussions which led to this draft involved something well over >20 hours of teleconferences and innumerable e-mails, side >discussions and sub-group work. So I will not try to describe it all >here. But it is important to note a few things: > >- this is a compromise proposal - no one has come out of this with >their "perfect" result >- it has been discussed negotiated and crafted with an immense >amount of effort and cooperation and goof faith. Some of the more >contentious parts were crafted by small teams often involving the >Intellectual Property Constituency and NCSG and the results are >models for how people with quite different perspectives and >end-points can reach consensus. >- all of that being said, there will be "minority statements" >submitted by a number of groups (perhaps most) allow them to >emphasize for the Board issues that they feel are important but on >which a unanimous consensus could not be reached. Olivier and I will >be suggesting that At-Large submit a minority position on the following issues: > > + Whether the Trademark Clearing house should be operated by a > single provider, or should the two functional parts of the > Clearinghouse be divided into two arms-length providers > > + To what extent should trademarks that are not formally > registered be allowed in the Clearinghouse > > + Whether there should be a TM Claims process for all > registrations post-launch (TM claims allows a registrant to be > "warned" if there is potential overlap between their requested name > and some mark in the Clearinghouse > > + Whether a transfer of the domain to the trademark holder > should be allowed following a successful URS. > >I will be sending out a more detailed description of these four >minority positions soon, but did not want to delay getting the core >document out first. > >Timing is critical. The GNSO meets to decide whether to forward this >document to the Board on Thursday, 17 December at 16:00 UTC. We >decided that the ALAC should conduct a vote to complete prior to >that time to decide on: >- whether to endorse the report >- What, if any, minority positions to take. > >If this is to be a standard 5-day "short" vote, it needs to start by >late Friday. That means we need a recommendation from the >name-issues group prior to that time - in short, in the next 1.5 days at most. > >This message will also be forwarded to the ALAC and At-Large lists. >I would suggest that to the extent possible, the discussion be >carried out on the At-Large list to involve the largest number of people. > >Alan

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Voting for At-Large Director
by Alan Greenberg Dec. 7, 2009

Dec. 7, 2009

One of the issues that we must address in determining the overall process governing the selection of the At-Large Board Director is the adoption of a voting mechanism. It has been suggested that we use the Instant-Runoff voting as called for in our Rules of Procedure for other elections. I disagree (in fact I disagree that we should use it in the other elections, but that is not the subject of this discussion). I will present several separate arguments. First, I believe that the process is difficult for many people to get their mind around, unless they are VERY used to this process. With an Instant Runoff ballot, you need to rank the candidates in your order of preference. That sounds easy, but understanding HOW the votes will be ranked makes it a lot more difficult. Here is what you need to do: 1. To fill the first ballot position, put in the candidate that you want to win. That is easy. 2. To fill the second candidate position, assume that the candidate that you put in above actually comes in dead last - who would you want to win in that case. 3. To fill the third slot, assume that the after your first candidate came in dead last and was eliminated, your next choice above also came in dead last in the next round. and so forth. I believe that the above process is very hard for people to actually think through. It is difficult to select the 2nd and 3rd candidate, having to accept that the candidate(s) that you REALLY want to win will come in at the bottom of the poll each time. Second, if you look at the current Bylaws for the election of the GNSO and ccNSO Directors, you will find: GNSO: ... any such selection must have affirmative votes compromising sixty percent (60%) of all the respective voting House members. ccNSO: ... any such selection must have affirmative votes of a majority of all the members of the ccNSO Council then in office. Aside from the nicety of having a process which is in line with these two very visible ICANN bodies, I think that it is CRUCIALLY important that everyone and especially the other Board members know that the person put on the Board by At-Large was consciously and actively voted for by at least a majority of those eligible to vote. I do not believe that an Instant Runoff meets these criteria. Third, the Instant Runoff voting method is convenient, but to quote Robert's Rules of Order, one of the authorities on such procedural matters: "...especially useful and fair in an election by mail if it is impractical to take more than one ballot. . . . In such cases it makes possible a more representative result than that under a rule that a plurality shall elect. . . . Preferential voting has many variations. [Instant runoff voting is the example given.] ...Although this type of preferential ballot is preferable to an election by plurality, it affords less freedom of choice than repeated balloting [the exhaustive ballot system], because it denies voters the opportunity of basing their second or lesser choices on the results of earlier ballots, and because the candidate in last place is automatically eliminated and may thus be prevented from becoming a compromise choice." In the case of the vote for At-Large Director, we are NOT under a particularly tight time constraint and we could allow for runoff ballots. Such runoffs not only allow a person to make an enlightened choice in the sure knowledge that their original choice has been disqualified, but ensures that the final choice was THE candidate selected by the majority (or more if we wish) of the voters in the final round. ============================= There will be a presentation and discussion of this at our teleconference - https://st.icann.org/alac-docs/index.cgi?7_december_2009_community_call_at_…. You can find more information on Instant Runoffs at http://en.wikipedia.org/wiki/Instant_runoff. Note that the link within our Rules of Procedure is incorrect. Alan

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