Fwd: Status update on GNSI STI Progress - including draft proposals
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... and 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
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
_______________________________________________ At-Large mailing list At-Large@atlarge-lists.icann.org
http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann...
At-Large Official Site: http://atlarge.icann.org
-- 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
At 29/11/2009 10:14 PM, Hong Xue wrote:
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)"
We seem to be using the same word in two different contexts. The fees were not in relation to the court validation, but rather the validation of the TM that the Clearinghouse would have to do. The reason that was included is that for the Clearinghouse to validate a regular registered trademark is a relatively simple process. To validate a court-"validated" trademark means reviewing the entire court judgement that might be quite large, and verifying that there was not a subsequent appeal of this court decision. This is a far more expensive process, and we wanted to make sure that such a process was not funded by those submitting registered trademarks. Overall, I do not think that this is a process that will be followed by many. Some people on the group felt strongly that they should be included, so they were (with the proviso that the fees charged cover the cost of doing so. Regarding geographic area, presumably it would be for whatever the jurisdiction is of the court, which could be national or even a region of the country (in Canada we have provincial courts with jurisdiction only in Quebec). So the geographic area is no wider than it would be with a national trademark. Does this help any?
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 consenually agreed by all the stakeholder, I still believe it should be best-practice rather than mandatory.
Understood. This was a point of contention, but the reality is that if it is deemed a "best practice", then any registry which does not implement it could be held liable. Specifically, safe harbor provisions in their contracts (I think that is the correct term - my not being a lawyer is showing) are only applicable if they have taken all reasonable measures. In the end it seemed that this was a acceptable compromise.
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?
This provision needs to be fleshed out. Reference to Rule 56 was not meant as invoking a US law, but rather a shorthand to illustrate the intent. In short, to address the substantive issues that you raise, the intent of the URS is not to consider complex cases of "confusingly similar" but to address the really clear-cut cases as you suggest. The short-hand that I use is that if the case is not immediately obvious, it should not win a URS. Validation of the TM is part of the process, although I believe the IRT suggested that registration with the Clearinghouse (which must do its own validation) could cover that part. As I understand it, a large part of the recognition of bad faith would be the contents of the web site.
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.
Same service provider? Good question. Not yet discussed, but I suspect the answer is yes. But a three person panel instead of one examiner. Ombusdman was very strongly objected to by NCSG. Court option is still available in jurisdictions that allow it.
Since we have only limited time to respond, I tried to write down all I thought about for further modifications and criticisms.
Hong
On Mon, Nov 30, 2009 at 1:05 PM, Alan Greenberg <alan.greenberg@mcgill.ca>wrote:
At 29/11/2009 10:14 PM, Hong Xue wrote:
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)"
We seem to be using the same word in two different contexts.
The fees were not in relation to the court validation, but rather the validation of the TM that the Clearinghouse would have to do. The reason that was included is that for the Clearinghouse to validate a regular registered trademark is a relatively simple process. To validate a court-"validated" trademark means reviewing the entire court judgement that might be quite large, and verifying that there was not a subsequent appeal of this court decision. This is a far more expensive process, and we wanted to make sure that such a process was not funded by those submitting registered trademarks.
Overall, I do not think that this is a process that will be followed by many. Some people on the group felt strongly that they should be included, so they were (with the proviso that the fees charged cover the cost of doing so.
Regarding geographic area, presumably it would be for whatever the jurisdiction is of the court, which could be national or even a region of the country (in Canada we have provincial courts with jurisdiction only in Quebec). So the geographic area is no wider than it would be with a national trademark.
Does this help any?
Thanks! It seems a good idea to charge some fees and thus set up a bar for invalidating a common law mark confirmed by a court judgment (hopefully in final instance). I had concerned that court judgments can be gamed. But gaming could also occur in TM registrations. There is no way to completely avoid that. Hong
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 consenually agreed by all the stakeholder, I still
believe it should be best-practice rather than mandatory.
Understood.
This was a point of contention, but the reality is that if it is deemed a "best practice", then any registry which does not implement it could be held liable. Specifically, safe harbor provisions in their contracts (I think that is the correct term - my not being a lawyer is showing) are only applicable if they have taken all reasonable measures. In the end it seemed that this was a acceptable compromise.
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?
This provision needs to be fleshed out. Reference to Rule 56 was not meant as invoking a US law, but rather a shorthand to illustrate the intent.
In short, to address the substantive issues that you raise, the intent of the URS is not to consider complex cases of "confusingly similar" but to address the really clear-cut cases as you suggest. The short-hand that I use is that if the case is not immediately obvious, it should not win a URS. Validation of the TM is part of the process, although I believe the IRT suggested that registration with the Clearinghouse (which must do its own validation) could cover that part. As I understand it, a large part of the recognition of bad faith would be the contents of the web site.
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.
Same service provider? Good question. Not yet discussed, but I suspect the answer is yes. But a three person panel instead of one examiner. Ombusdman was very strongly objected to by NCSG. Court option is still available in jurisdictions that allow it.
Since we have only limited time to respond, I tried to write down all I
thought about for further modifications and criticisms.
Hong
_______________________________________________ At-Large mailing list At-Large@atlarge-lists.icann.org
http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann...
At-Large Official Site: http://atlarge.icann.org
-- 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
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
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 ghouse-04oct09-en.pdfand
http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct0 9-en.pdf.
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 f
.
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
_______________________________________________
At-Large mailing list
At-Large@atlarge-lists.icann.org
http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann .org
At-Large Official Site: http://atlarge.icann.org
-- 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 _______________________________________________ At-Large mailing list At-Large@atlarge-lists.icann.org http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann .org At-Large Official Site: http://atlarge.icann.org
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
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 ghouse-04oct09-en.pdfand
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...> .
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 f<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
_______________________________________________
At-Large mailing list
At-Large@atlarge-lists.icann.org
http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann .org<http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann...>
At-Large Official Site: http://atlarge.icann.org
--
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
_______________________________________________
At-Large mailing list
At-Large@atlarge-lists.icann.org
http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann .org<http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann...>
At-Large Official Site: http://atlarge.icann.org
_______________________________________________ At-Large mailing list At-Large@atlarge-lists.icann.org
http://atlarge-lists.icann.org/mailman/listinfo/at-large_atlarge-lists.icann...
At-Large Official Site: http://atlarge.icann.org
-- 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
participants (3)
-
Alan Greenberg -
Hong Xue -
Vanda UOL