Re: [At-Large] Fwd: Status update on GNSI STI Progress - including draft proposals

Dec. 1, 2009

      Thanks, Vanda.

It seems that we are discussing the same issue on the different lists. I
guess Adam or Oliver must be talking about this on the ALAC internal list,
which cannot be viewed by the large community. Could someone forward the
internal one to this public list? We have very limited time and may wish to
converge the discussions for more fruitful outcome.

Hong

On Tue, Dec 1, 2009 at 1:04 AM, Vanda UOL <vanda@uol.com.br> wrote:
...
Hi Hong/Adam
I am in favor to adopt the expression suggested by Hong, make it more
clear - "except for court validated common law marks (with
appropriate reasons for validation)"
I understood the reasons for mandatory, but still prefer it as  best
practices.
I am a little concerned with the US rule but can not collaborate much more
with the debate. I will rely on Hong's points.
Best
Vanda Scartezini
NEXTi_v1.jpg
Alameda Santos 1470/1407
tel: + 55 11 3266.6253
mob:+ 55 11 8181.1464
-----Original Message-----
From: at-large-bounces@atlarge-lists.icann.org
[mailto:at-large-bounces@atlarge-lists.icann.org] On Behalf Of Hong Xue
Sent: Monday, November 30, 2009 1:14 AM
To: At-Large Worldwide
Subject: Re: [At-Large] Fwd: Status update on GNSI STI Progress - including
draft proposals
Thanks so much to Alan and his team for doing such a wonderful job. I went
through the two strawman proposals carefully and found that many of the
ALAC's suggestions are properly reflected.
I've the following thoughts for the community to consider.
1. With respect to the Strawman proposal on Clearing House, I can see
significant improvements, such as the item on "identical match", which is
basically consistent at-large discussions.
But the following issue still concerns me:
"Nationally Registered Marks, from all jurisdictions, including countries
where there is no substantive evaluation, and no common law rights except
for court validated common law marks (with appropriate fees for
validation)."
When comparing nationally registered marks and common law marks, I
mentioned
that the advantage of adopting "nationally registered marks" is that they
have clear specifications (territory, presentation of the mark, classes of
goods or services, term of protection) shown on the registration
certificates and can easily be tabled into the database.
The common law rights are comparatively ambiguous. If a court validation
can
remedy their ambiguity, then it is not the "appropriate fees" but  clear
decisions with the reasons of validation of the marks, from which we can
see
the goods or services on which the marks are used, duration of use and
territorial protection (nationally or only locally).
I suggest change into "except for court validated common law marks (with
appropriate reasons for validation)"
2. With respect to the URS, I can see improvements, such as 20-day notice,
applicable to registered marks only and specially "answers after default."
On the other hand, I have still a couple questions and concerns.
a) Mandatory URS
Although it seems consensually agreed by all the stakeholder, I still
believe it should be best-practice rather than mandatory.
b) Element of complaint & evaluation
Interestingly, Rule 56 of U.S. Fed. Rule of Civil Procedure on summary
judgment is cited as the standard of evaluation. Summary judgments are not
common in civil proceedings of all jurisdictions, It is puzzling to adopt
such an American-center approach. In addition, evaluation standards
 involve
not only procedures but substances. Does Citation of Rule 56 of U.S. Fed.
Rule of Civil Procedure mean that the Examiners of a service provider will
only make decisions procedurally?
Previously, the standards were focusing on "clear-cut" cybersquatting
cases,
which are inherently and inevitably controversial but at least combine both
procedural and substantive elements. I therefore suggest the "standards" be
resumed to "clear-cut cases" subject to thoughtful definition.
In addition, I wonder the feasibility of applying Rule 56 of U.S. Fed. Rule
of Civil Procedure. The prerequisite of summary judgment proceeding is that
there is "no genuine issue for trial" so that the court may quickly move to
judgment based on both parties' submissions (even without supporting
affidavits). However, there will be several issues or material facts that
need to be verified in URS. Most obviously, how would the examiner assess
the elements of complaints (domain name is identical or confusingly similar
to a mark in which Complainant holds a valid registration issued by a
jursidction that conducts a substantive examination of trademark
applications prior to registration and The Registrant has no legitimate
right or interest to the domain name; and/or the the domain was registered
and is being used in bad faith) in a contested case?
c) Appeal
I don't understand the complicated appeal system. In previous version, a
URS
decision can be appealed externally to an Ombudsman or a court. Now is
there
appealing system available internally? Will it be maintained by the same
service provider?
After a decision in any case (default or
contested), either party has a right to seek a de
novo appeal within the URS process for a
reasonable fee to cover the costs of the appeal.
Since we have only limited time to respond, I tried to write down all I
thought about for further modifications and criticisms.
Hong
On Sun, Nov 29, 2009 at 11:29 AM, Alan Greenberg
<alan.greenberg@mcgill.ca>wrote:
...
Following is a message just sent to the Names Issues Working Group. It
was
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also be sent to the ALAC list.
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Input and comments welcome from all, but please note the tight timeline.
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...
Alan
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To: name-issues@atlarge-lists.icann.org
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...
From: Alan Greenberg <alan.greenberg@mcgill.ca>
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...
Subject: Status update on GNSI STI Progress - including draft proposals
...
...
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...
I am attaching the current working "strawman" proposals for a Trademark
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Clearinghouse and a Uniform Rapid Suspension (URS) service associated
with
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new gTLDs. PLEASE NOTE LAST PARAGRAPH.
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...
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For completeness I am including pointers to previous documents, all of
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which have substantially influenced what you see today and a description
of
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the process which has been followed.
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In June 2009, the final report of the IRT on trademark protection
measures
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was issued. It can be found at
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http://www.icann.org/en/public-comment/public-comment-200906.html#irt-report
.
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Among the measures contained in the report were a Intellectual Property
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Clearinghouse to facilitate pre-launch handling of trademarks issues,
and
a
...
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URS process to address such issues after launch.
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...
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Based on a variety of consultations, ICANN staff were requested to
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formulate revised Clearinghouse and URS proposals. The specific
proposals
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can be found at
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http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-tm-clearin
ghouse-04oct09-en.pdfand
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http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct0
9-en.pdf<http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct0...>
.
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Additional material including a comparison of these proposals and those
in
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the IRT Report can be found at
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http://www.icann.org/en/topics/new-gtlds/gnso-consultations-reports-en.htm
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.
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Following initial comments on the staff proposals, the ICANN Board
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requested that the GNSO review these proposals and (optimally) present a
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consensus view of how ICANN should proceed. In the absence of such
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consensus, staff and the Board would come to its own decision of how to
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proceed (factoring in any input received including non-consensus views
from
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the GNSO). The letter requesting this input can be found at
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http://gnso.icann.org/correspondence/beckstrom-to-gnso-council-12oct09-en.pd
f<http://gnso.icann.org/correspondence/beckstrom-to-gnso-council-12oct09-en.pd...>
...
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.
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The GNSO was given until 14 December 2009 to deliberate and deliver a
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report (2 months from receipt of the letter). During the Seoul ICANN
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meeting, a group was created to take on this task - the Selected
Trademark
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Issues Review Team (STI-RT). The group includes two representatives from
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each of the Registry and Registrar Stakeholder Groups, four from each of
the
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Commercial and Non-commercial Stakeholder Groups, one GNSO NomCom
appointee,
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and one representative from At-Large. Several of these groups have
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Alternates who can participate in the absence of one of the prime
delegates.
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I (Alan Greenberg) am the formal At-Large representative, and Olivier
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Crepin-Leblond is the Alternate.
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It is important to remember that the question being asked is not whether
a
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Clearinghouse or URS should be implemented, but rather how to best do it
in
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light of conflicting needs of the various parties.
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...
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The STI-RT was asked to report back to the GNSO Council in time for its
23
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November meeting. This target was viewed by some as being unreasonably
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tight, which proved to be correct.
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To date, the STI-RT has met 9 times, once in Seoul, and two
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teleconferences in each week since Seoul (1 on the Clearinghouse, and 1
on
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the URS per week). In total, there have been about 14 hours of formal
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meetings and many informal and sub-group meetings. At this point, we
have
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consensus on many but not all of the issues. To reach consensus, for
each
of
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the two themes, a number of critical issues and processes were
identified. A
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"strawman" proposal was drafted for each (see
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http://en.wikipedia.org/wiki/Straw_man_proposal) and for the last two
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weeks, the STI-RT has been reviewing and adjusting this proposal, with
the
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intent of finding some middle ground which meets the overall needs of
all
of
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the parties.
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The current plan is to keep refining these proposals over the next week
(4
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teleconferences are scheduled) and to deliver a final proposal to the
GNSO
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on 07 December 2009. There is some chance that this target may slip by a
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couple of days. This will give the GNSO Constituencies and At-Large a
week
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(or perhaps a few days more) to review the proposal and to decide
whether
to
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ratify it during the GNSO Council meeting on 17 December 2009. The GNSO
has
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been told that this slippage of three days from the original requested
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target is acceptable.
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There is a possibility that if full consensus is not reached, but is
felt
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that it is possible given more time, the report will be submitted on the
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above schedule, but a face-to-face meeting in early January may be
scheduled
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to finalize it.
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Current versions of the two strawman proposals are attached. They may be
a
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bit cryptic, but reference to the documents mentioned above will explain
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much of this.
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Since the ALAC, just as the GNSO Constituencies, will have just one week
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to support or not support the report to be issued on 07 December, these
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draft copies should be used to begin the evaluation on those items where
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consensus has been reached, and to provide any comments or advice on
those
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items where common ground has not yet been reached.
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...
Alan
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...
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At-Large Official Site: http://atlarge.icann.org
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--
Dr. Hong Xue
Professor of Law
Director of Institute for the Internet Policy & Law (IIPL)
Beijing Normal University
www.iipl.org.cn
19 Xin Jie Kou Wai Street
Beijing 100875 China
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Dr. Hong Xue
Professor of Law
Director of Institute for the Internet Policy & Law (IIPL)
Beijing Normal University
www.iipl.org.cn
19 Xin Jie Kou Wai Street
Beijing 100875 China