New subject: Fwd: ICANN's Noncommercial Users Requ est Board Review of Staff Decision to Expand Scop e of Trademark Clearinghouse in Violation of ICAN N's Bylaws

May 2, 2013

      I would strongly suggest that we keep the two issues separate. The 
lack of variant support, but at the DNS level and in the TMCH (two 
separate issues) is not one of ICANN's proudest moments (to 
understate the situation). And it is one that ALAC is in the process 
of speaking on. Hopefully with some positive impact.

The +50 "variations" of trademarks is a completely separate issue. It 
does not change the CH repository or checking for matches 
sunrise/claims time. It allows a TM holder to register additional 
strings based on UDRP/Court decisions for TMs already in the CH. As 
we know, this is a very contentious proposal, and one that has now 
resulted in a request for Board reconsideration. Best to keep this 
issue far away from that of IDN variants. Co-mingling the two can 
only result in slowing the first implementation.

In its earlier statements, the ALAC objected to the process followed 
to create this new rights mechanism as we deemed it to be a policy 
matter without following a reasonable development process. We did 
support the overall intent as it was somewhat related to the ALAC 
minority position taken on the STI, supporting the concept of 
allowing the entry into the CH of TMs plus terms associated with 
products or services (ie EXXON-GAS, Dell-computers). In the draft 
statement that was suggested to be issues along with the NCSG at the 
last open forum, we would have gone on record as saying that we would 
not support 50 variations for EACH copy of an identical TM where an 
entity (or related entities) has multiple entries in the CH for 
registrations in multiple jurisdictions. As Rinalia suggests, this is 
a position that the ALAC certainly could reconsider if it wished.

Alan

At 5/1/2013 11:06 PM, Rinalia Abdul Rahim wrote:
...
Carlton,
Let me break the issue down so that it can be addressed properly in terms
of determining the course of ALAC action.
*There are 2 fundamental issues being dealt with here:*
1.   The current TMCH model as designed doesn't deal with variants.
2. The ICANN decision to allow 50 variations of trademark names in the TMCH
will have a multiplier effect if variants are factored in the TMCH model
(i.e., it worsens the problem of over-protection).
The statement addresses (1).  Without (1), you don't have the problem of
(2).
The statement is asking for the ICANN board to address the issue of
variants at the root level and in the TMCH model on an urgent and expedited
basis.
The ALAC's course of action regarding 50 variations of trademark names in
the TMCH is to my mind something that warrants a statement of its own that
can be reinforced with the IDN variants argument in terms of how overly
protective the TMCH can be, but it is NOT an argument to compel the board
to ensure variants are factored in the TMCH model or in the root.
Rinalia
On Thu, May 2, 2013 at 10:08 AM, Carlton Samuels
<carlton.samuels@gmail.com>wrote:
...
Hi Hong:
My gut was telling me something  was adrift!  Thanks very much for the
explanation.  I now have a better sense in reason why my gut was carrying
on.
So, following on Rinalia's advice,  I take it Hong believes the Statement
is not reflecting the urgent situation. Might I hear from Edmon on this?
Best,
-Carlton
==============================
Carlton A Samuels
Mobile: 876-818-1799
*Strategy, Planning, Governance, Assessment & Turnaround*
=============================
On Wed, May 1, 2013 at 7:43 PM, Hong Xue <hongxueipr@gmail.com> wrote:
...
Hi, Carlton, 50+ approach makes variants-disabled policy more ironical.
If
ICANN (staff) is even willing to protect 50 "derivations" that are
DIFFERENT from a trademark per se, why does it refuse to entertain the
SAME
trademark in variants. This is illogical by all means. On the other hand,
all 50 derivations, if applied to a Chinese-character trademark, will all
involve variant issues definitely.
Hong
On Thu, May 2, 2013 at 5:56 AM, Carlton Samuels <
carlton.samuels@gmail.com
...
wrote:
...
......from the time the issue of local marks was dismissed as
irrelevant I
lost my juice for this, maybe out of hope it would, in time, be victim
to
 hubris.
So now, was this - +50 - not an issue that increased the peril for the
IDN
variants?  I might be mis-remembering but was this not a concern raised
by
Hong?
Best,
-Carlton
==============================
Carlton A Samuels
Mobile: 876-818-1799
*Strategy, Planning, Governance, Assessment & Turnaround*
=============================
On Wed, May 1, 2013 at 12:34 PM, Evan Leibovitch <evan@telly.org>
wrote:
...
---------- Forwarded message ----------
From: Robin Gross <robin@ipjustice.org>
Date: 1 May 2013 13:24
Subject: ICANN's Noncommercial Users Request Board Review of Staff
Decision
to Expand Scope of Trademark Clearinghouse in Violation of ICANN's
Bylaws
To: NCSG-DISCUSS@listserv.syr.edu
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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*ICANN's Noncommercial Users Request Board Review of Staff Decision to
Expand Scope of Trademark Clearinghouse in Violation of ICANN's
Bylaws*
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ICANN's Non-Commercial Stakeholders Group (NCSG) has filed a Request
for
...
Reconsideration<
http://www.icann.org/en/groups/board/governance/reconsideration/request-gros...
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with
ICANN's Board of Directors regarding the staff's decision to expand
the
scope of the trademark claims service beyond that provided by
community
consensus policy and in contradiction to ICANN Bylaws.
Specifically at issue is ICANN staff's unilateral decision to adopt
the
"trademark +50" proposal for new domains, which would provide
trademark
holders who have previously won a UDRP or court decision with rights
to
50
additional derivations of their trademark in ICANN's Trademark
Clearinghouse (TMCH).   Under staff's plan, large trademark holders
that
register in the clearinghouse will be provided thousands of
derivations
of
their trademarks since each separate country's registration of the
same
trademark provides the brand owner with an additional 50 entries in
the
TMCH.[1]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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Entries in the TMCH trigger infringement warning notices to domain
name
registrants which can lead to increased liability for registrants,
discourage lawful registrations, and chill speech on the Internet.
ICANN's bottom-up community-developed process for creating policy had
approved of a TMCH model that allowed "exact matches" of trademarks
only to
be placed in the TMCH.  In 2007, ICANN's GNSO Policy Council,
including
representatives from the Intellectual Property and Business
Constituencies,
approved the GNSO recommendations that created special protections for
trademark rights by a supermajority
vote.[2]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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As part of the multi-year consensus process, both the subsequent
Special
Trademarks Implementation (STI) Team and the Implementation Review
Team
(IRT) considered the issue of providing rights to exact matches or
additional derivations, and both community-developed teams
specifically
opted for exact matches only to be placed into the TMCH.  ICANN's CEO
testified before U.S. Congress in 2012 that expanding the scope of the
TMCH
further would be inappropriate since it would create new rights that
do
not
exist in law and ICANN should not be creating unprecedented
rights.[3]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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Many months after the final TMCH model of exact matches only was
published
in ICANN's Applicant Guidebook and new domain businesses relied on it
when
filing their applications, ICANN's Intellectual Property and Business
Constituencies lobbied ICANN's new CEO to make drastic changes to the
community-developed policy and grant additional trademark rights in
the
TMCH.
After the October 2012 Toronto ICANN Meeting, a "strawman solution"
was
proposed by ICANN's new CEO which included a number of IPC/BC's
substantive
policy proposals to give trademark holders additional privileges in
the
domain name system, including changing the exact matches only standard
approved of by the community.
Yet ICANN's CEO recognized that expanding the scope of the trademark
claims
service was a policy matter requiring GNSO Council guidance, as he
stated
on his blog[4]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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in
December 2012; and the CEO did write to the GNSO Council to request
guidance on this policy proposal. Under ICANN's Bylaws, staff may not
change GNSO-approved policy, except under a strict process that
involves
consulting with the GNSO and a 2/3 vote of the Board of Directors.
NCSG filed comments on the proposed policy changes and warned against
re-opening previously closed consensus agreements and circumventing
ICANN's
stated bottom-up policy development
process.[5]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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In addition to the flawed process for adopting this policy, NCSG also
detailed substantive concerns with staff's proposal to expand
trademark
rights beyond anything that exists in trademark law.  It came as no
surprise that only members of the IPC and BC supported the strawman
proposals in ICANN's comment
period.[6]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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In the GNSO Council's February 29, 2013 response to the CEO regarding
the
proposal to expand the scope of trademark claims, the GNSO Chair
wrote,
"the majority of the council feels that proposal is best addressed as
a
policy* *concern, where the interest of all stakeholders can be
considered."
[7]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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Thus the GNSO Council also determined this specific proposal to be a
policy
matter, requiring consultation from the entire community before such a
change could be made to existing GNSO Council approved policy.
Yet with only an email sent on 20 March 2013, ICANN staff announced in
an
attached memorandum that it would expand the scope of the trademark
claims
service to give trademark holders rights to 50 additional derivations
of
their trademark, in contradiction to GNSO developed policy of exact
matches
only and the subsequent requested GNSO Council guidance on the
matter.[8]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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Staff's only explanation for such a drastic shift in the creation of
new
rights: "this proposal appears to be a reasonable add on to an
existing
service, rather than a proposed new service".  Thus with a single line
of
evasive text, years of hard-fought community consensus policy was
brushed
under the rug and the new era of policy development via ICANN staff
edict
was solidified.
On 19 April 2013 NCSG filed this Request for Reconsideration of the
staff
decision because ICANN did not follow its stated process for changing
GNSO-approved policy.  If ICANN wants to deviate from Supermajority
GNSO-approved policy, it must follow the process outlined in the
organization's Bylaws, Annex A Section
9.[9]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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As
an organization that holds itself out as a champion of the bottom-up
policy
development process, ICANN is obligated to comply with
community-developed
policies, unless the Board of Directors can muster the necessary 2/3rd
vote
to over-turn the community decision.  That mandatory process was not
followed by ICANN's staff or Board in over-turning the
community-approved
policy in favor of staff's policy to expand the scope of TMCH.
ICANN's Board Governance Committee has thirty days in which to make
to a
recommendation to ICANN's Board of Directors regarding the NCSG's
Request
for Reconsideration or report to the Board on why no final
recommendation
is available and provide a timeframe for making a final recommendation
on
the matter.  ICANN's entire Board should consider the recommendation
of
the
Board Governance Committee at its next regularly-scheduled Board
meeting.
Under Article IV Section 2 of ICANN's Bylaws, the Request for
Reconsideration process is a mechanism intended to reinforce ICANN's
accountability to the community for operating in a manner consistent
with
its Bylaws.[10]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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Because the staff's unilateral decision to change GNSO-approved policy
was
not consistent with ICANN's Bylaws and contradicted ICANN stated
policy,
NCSG filed the Request to correct the error and bring ICANN into
compliance
with its Bylaws and stated policies.
NCSG requests that the Board reinstate the community-developed policy
of
giving trademark holders rights to include exact matches of their
trademark
only in the TMCH, which was the policy stated in ICANN's Applicant
Guidebook when ICANN accepted applications for new domains.
- NCSG's Request for Reconsideration:
http://www.icann.org/en/groups/board/governance/reconsideration/request-gros...
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- Attachments to NCSG's Request for Reconsideration:
http://www.icann.org/en/groups/board/governance/reconsideration/request-atta...
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- ICANN Website on Requests for Reconsideration:
   http://www.icann.org/en/groups/board/governance/reconsideration
------------------------------
[1]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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http://domainincite.com/12451-loophole-gives-trademark-owners-unlimited-clea...
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[2]
http://gnso.icann.org/en/issues/new-gtlds/pdp-dec05-fr-parta-08aug07.htm
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[3] http://www.internetcommerce.org/ICANN_Amnesia
[4]
http://blog.icann.org/2012/11/a-follow-up-to-our-trademark-clearinghouse-mee...
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ngs/
[5]
http://ipjustice.org/wp/2013/01/14/statement-of-icanns-non-commercial-stakeh...
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[6] http://forum.icann.org/lists/tmch-strawman/msg00096.html  See
also:
...
Comments of Registrar Stakeholder Group:
http://forum.icann.org/lists/tmch-strawman/msg00027.html
Comments from New TLD Applicant Group:
http://forum.icann.org/lists/tmch-strawman/msg00014.html
Comments of Non-Commercial Stakeholder Group:
http://forum.icann.org/lists/tmch-strawman/msg00029.html
Comments of the Internet Service Provider Constituency:
http://forum.icann.org/lists/tmch-strawman/msg00011.html
Comments of Public Interest Registry:
http://forum.icann.org/lists/tmch-strawman/msg00024.html
[7]
http://gnso.icann.org/bitcache/d8eaf7ce8d121b69d340d1d14223520fd7d478b3?vid=...
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[8]
http://newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution...
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[9]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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http://www.icann.org/en/about/governance/bylaws#AnnexA
GNSO Policy Development Process
Section 9.  Board Approval Processes.  a. Any PDP Recommendations
approved
by a GNSO Supermajority Vote shall be adopted by the Board unless, by
a
vote of more than two-thirds (2/3) of the Board, the Board determines
that
such policy is not in the best interests of the ICANN community or
ICANN.
If the GNSO Council recommendation was approved by less than a GNSO
Supermajority Vote, a majority vote of the Board will be sufficient to
determine that such policy is not in the best interests of the ICANN
community or ICANN.
b. In the event that the Board determines, in accordance with
paragraph
a
above, that the policy recommended by a GNSO Supermajority Vote or
less
than a GNSO Supermajority vote is not in the best interests of the
ICANN
community or ICANN (the Corporation), the Board shall (i) articulate
the
reasons for its determination in a report to the Council (the "Board
Statement"); and (ii) submit the Board Statement to the Council.
c. The Council shall review the Board Statement for discussion with
the
Board as soon as feasible after the Council's receipt of the Board
Statement. The Board shall determine the method (e.g., by
teleconference,
e-mail, or otherwise) by which the Council and Board will discuss the
Board
Statement.
d. At the conclusion of the Council and Board discussions, the Council
shall meet to affirm or modify its recommendation, and communicate
that
conclusion (the "Supplemental Recommendation") to the Board, including
an
explanation for the then-current recommendation. In the event that the
Council is able to reach a GNSO Supermajority Vote on the Supplemental
Recommendation, the Board shall adopt the recommendation unless more
than
two-thirds (2/3) of the Board determines that such policy is not in
the
interests of the ICANN community or ICANN. For any Supplemental
Recommendation approved by less than a GNSO Supermajority Vote, a
majority
vote of the Board shall be sufficient to determine that the policy in
the
Supplemental Recommendation is not in the best interest of the ICANN
community or ICANN.
[10]<
https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsi...
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http://www.icann.org/en/about/governance/bylaws#IV
--
Evan Leibovitch
Toronto Canada
Em: evan at telly dot org
Sk: evanleibovitch
Tw: el56
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At-Large Online: http://www.atlarge.icann.org
ALAC Working Wiki:
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_______________________________________________
ALAC mailing list
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At-Large Online: http://www.atlarge.icann.org
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...
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...
--
Professor Dr. Hong Xue
Director of Institute for the Internet Policy & Law (IIPL)
Beijing Normal University
http://www.iipl.org.cn/
19 Xin Jie Kou Wai Street
Beijing 100875 China
_______________________________________________
ALAC mailing list
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Re: [ALAC] Fwd: ICANNs Noncommercial Users Requ est Board Review of Staff Decision to Expand Scop e of Trademark Clearinghouse in Violation of ICAN Ns Bylaws

Alan Greenberg

Olivier MJ Crepin-Leblond

tags

participants (2)

Re: [ALAC] Fwd: ICANNs Noncommercial Users Requ est Board Review of Staff Decision to Expand Scop e of Trademark Clearinghouse in Violation of ICAN Ns Bylaws

Alan Greenberg

Olivier MJ Crepin-Leblond

tags

participants (2)

Re: [ALAC] Fwd: ICANNs Noncommercial Users Requ est Board Review of Staff Decision to Expand Scop e of Trademark Clearinghouse in Violation of ICAN Ns Bylaws