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 also be sent to the ALAC list.
Input and comments welcome from all, but please note the tight timeline.
Alan
To: name-issues@atlarge-lists.icann.org
From: Alan Greenberg <alan.greenberg@mcgill.ca> Subject: Status update on GNSI STI Progress - including draft proposals
I am attaching the current working "strawman" proposals for a Trademark Clearinghouse and a Uniform Rapid Suspension (URS) service associated with new gTLDs. PLEASE NOTE LAST PARAGRAPH.
For completeness I am including pointers to previous documents, all of which have substantially influenced what you see today and a description of the process which has been followed.
In June 2009, the final report of the IRT on trademark protection measures was issued. It can be found at http://www.icann.org/en/public-comment/public-comment-200906.html#irt-report. Among the measures contained in the report were a Intellectual Property Clearinghouse to facilitate pre-launch handling of trademarks issues, and a URS process to address such issues after launch.
Based on a variety of consultations, ICANN staff were requested to formulate revised Clearinghouse and URS proposals. The specific proposals can be found at http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-tm-clearin... http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct0.... Additional material including a comparison of these proposals and those in the IRT Report can be found at http://www.icann.org/en/topics/new-gtlds/gnso-consultations-reports-en.htm .
Following initial comments on the staff proposals, the ICANN Board requested that the GNSO review these proposals and (optimally) present a consensus view of how ICANN should proceed. In the absence of such consensus, staff and the Board would come to its own decision of how to proceed (factoring in any input received including non-consensus views from the GNSO). The letter requesting this input can be found at http://gnso.icann.org/correspondence/beckstrom-to-gnso-council-12oct09-en.pd... .
The GNSO was given until 14 December 2009 to deliberate and deliver a report (2 months from receipt of the letter). During the Seoul ICANN meeting, a group was created to take on this task - the Selected Trademark Issues Review Team (STI-RT). The group includes two representatives from each of the Registry and Registrar Stakeholder Groups, four from each of the Commercial and Non-commercial Stakeholder Groups, one GNSO NomCom appointee, and one representative from At-Large. Several of these groups have Alternates who can participate in the absence of one of the prime delegates. I (Alan Greenberg) am the formal At-Large representative, and Olivier Crepin-Leblond is the Alternate.
It is important to remember that the question being asked is not whether a Clearinghouse or URS should be implemented, but rather how to best do it in light of conflicting needs of the various parties.
The STI-RT was asked to report back to the GNSO Council in time for its 23 November meeting. This target was viewed by some as being unreasonably tight, which proved to be correct.
To date, the STI-RT has met 9 times, once in Seoul, and two teleconferences in each week since Seoul (1 on the Clearinghouse, and 1 on the URS per week). In total, there have been about 14 hours of formal meetings and many informal and sub-group meetings. At this point, we have consensus on many but not all of the issues. To reach consensus, for each of the two themes, a number of critical issues and processes were identified. A "strawman" proposal was drafted for each (see http://en.wikipedia.org/wiki/Straw_man_proposal) and for the last two weeks, the STI-RT has been reviewing and adjusting this proposal, with the intent of finding some middle ground which meets the overall needs of all of the parties.
The current plan is to keep refining these proposals over the next week (4 teleconferences are scheduled) and to deliver a final proposal to the GNSO on 07 December 2009. There is some chance that this target may slip by a couple of days. This will give the GNSO Constituencies and At-Large a week (or perhaps a few days more) to review the proposal and to decide whether to ratify it during the GNSO Council meeting on 17 December 2009. The GNSO has been told that this slippage of three days from the original requested target is acceptable.
There is a possibility that if full consensus is not reached, but is felt that it is possible given more time, the report will be submitted on the above schedule, but a face-to-face meeting in early January may be scheduled to finalize it.
Current versions of the two strawman proposals are attached. They may be a bit cryptic, but reference to the documents mentioned above will explain much of this.
Since the ALAC, just as the GNSO Constituencies, will have just one week to support or not support the report to be issued on 07 December, these draft copies should be used to begin the evaluation on those items where consensus has been reached, and to provide any comments or advice on those items where common ground has not yet been reached.
Alan
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