December 2009 - Bc-gnso - lists.icann.org

Re: [bc-gnso] BC Minority Position re STI Initial Report
by Phil Corwin Dec. 11, 2009

Dec. 11, 2009

As noted previously, ICA respectfully dissents from the BC minority position. I am at a Congressional hearing right now but will provide a fuller rationale later today. Philip S. Corwin Partner, Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 2026635347/Office 2022556172/Cell "Luck is the residue of design." -- Branch Rickey ________________________________ From: owner-bc-gnso(a)icann.org <owner-bc-gnso(a)icann.org> To: Berry Cobb <berrycobb(a)infinityportals.com>; owner-bc-gnso(a)icann.org <owner-bc-gnso(a)icann.org>; Mike Rodenbaugh <icann(a)rodenbaugh.com>; bc-gnso(a)icann.org <bc-gnso(a)icann.org> Cc: 'Margie Milam' <Margie.Milam(a)icann.org> Sent: Fri Dec 11 11:31:16 2009 Subject: Re: [bc-gnso] BC Minority Position re STI Initial Report Wondering how soon we can send this to Margie. The STI report goes to Council any moment. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 www.jamilandjamil.com *** This Message Has Been Sent Using BlackBerry Internet Service from Mobilink *** ________________________________ From: "Berry Cobb" <berrycobb(a)infinityportals.com> Date: Fri, 11 Dec 2009 08:14:09 -0800 To: <icann(a)rodenbaugh.com>; <bc-gnso(a)icann.org> Cc: 'Margie Milam'<Margie.Milam(a)icann.org> Subject: RE: [bc-gnso] BC Minority Position re STI Initial Report I support the BC Minority Position as attached with only one small edit. Page 2, What does a Match Mean? 2nd Sentence.... However, he STI recommends <-- should it be “the STI recommends”? Berry A. Cobb Infinity Portals LLC 866.921.8891 From: owner-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Friday, December 11, 2009 07:14 To: bc-gnso(a)icann.org Cc: 'Margie Milam' Subject: [bc-gnso] BC Minority Position re STI Initial Report Attached please find the Minority Statement that Zahid and I have drafted, based upon the earlier consensus document agreed by the BC, further comments from Members during this STI process, and our own negotiation and participation efforts within the STI team. I also include Zahid’s version 1.0, which I have edited drastically due to focus, length and repetition. He has not had a chance to review my version 2.0 yet, either, as he is hopefully asleep right now. Margie, this is tentative, subject to modification upon formal review of our membership, but Zahid and I believe it represents consensus of the BC. We ask you to please hold it, and do not submit the Initial Report to the Council, until at least 3pm PST today, to allow our members the chance to offer comments to me and Zahid, for possible further editing today. Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 (415) 738-8087<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer…> http://rodenbaugh.com<http://rodenbaugh.com/>

1 0

Gary's Imminent Departure
by Ron Andruff Dec. 11, 2009

Dec. 11, 2009

Dear Gary, I know that I speak on behalf of many in the BC that have interacted with you over the many years that you have provided our secretariat services when I say how grateful that I am for your efforts on our behalf! You have been diligent in fulfilling your tasks, while tolerating some frustrated members from time to time without ruffling feathers yourself. I thank you very much for your dedication to the BC and its work in the important debates. I wish you all the best, and particularly a happy and peaceful holiday season for you and yours! Kind regards, RA Ronald N. Andruff RNA Partners, Inc. 220 Fifth Avenue, 20th floor New York, New York 10001 www.rnapartners.com V: +1 212 481 2820 x 11 F: +1 212 481 2859

1 0

Fw: [gnso-sti] RE: Draft STI Report - V4 for your review
by Zahid Jamil Dec. 11, 2009

Dec. 11, 2009

FYI. Mike and me are drafting a minority report based upon existing BC positions culminating in the consensus at the Seoul meetings and comments from the list. Unfortunately it seems we will probably have one day to submit this. We will be able to post the draft by tomorrow morning and look forward to comments tomorrow and will at day end submit to the STI. Comments today so we can use them in our draft would be appreciated and would help speed matters up. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 www.jamilandjamil.com *** This Message Has Been Sent Using BlackBerry Internet Service from Mobilink *** -----Original Message----- From: Margie Milam <Margie.Milam(a)icann.org> Date: Wed, 9 Dec 2009 11:30:23 To: 'GNSO STI'<gnso-sti(a)icann.org> Subject: [gnso-sti] RE: Draft STI Report - V4 for your review Dear All, Thank you for a very productive call today. Attached for your review is the fourth draft of the STI Report, which attempts to pick up our discussions today. I believe we are very close to a final version of this the report and would appreciate your comments or revisions by the close of business today, so that I can prepare the final report tomorrow morning. Also, please send your minority reports by tomorrow morning to ensure inclusion in the version that will be circulated to the GNSO Council. As discussed, if you need more time to draft a minority report, you would need to send to me next week, so that it can be forwarded to the Board after the GNSO Council vote (if successful) next Thursday. Best Regards, Margie _____________ Margie Milam Senior Policy Counselor ICANN _____________

8 12

FW: [council] FW: [REGYCON] FW: March 2009 Meeting in Kenya - Warnings
by Mike Rodenbaugh Dec. 10, 2009

Dec. 10, 2009

Members considering travel to Kenya may like to note the following information. I will pass along any other info I get. Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 <http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer =http://rodenbaugh.com/contact> (415) 738-8087 <http://rodenbaugh.com/> http://rodenbaugh.com From: owner-council(a)gnso.icann.org [mailto:owner-council@gnso.icann.org] On Behalf Of Gomes, Chuck Sent: Wednesday, December 09, 2009 11:28 AM To: GNSO Council Subject: [council] FW: [REGYCON] FW: March 2009 Meeting in Kenya - Warnings The issues of safety and security in Nairobi were discussed today in the RySG meeting. As a result, Jeff Neuman as Vice Chair of the RySG sent the following message to Craig Schwartz, Chief Registry Liaison. I am sending this to the full Council because I am sure that all of us considering attending the meetings in Kenya have similar concerns and like to receive the type of information that the RySG has requested. Chuck From: Neuman, Jeff Sent: Wednesday, December 09, 2009 1:39 PM To: Craig Schwartz Cc: doug.brent(a)icann.org; Kurt Pritz; greg.rattray(a)icann.org; Neuman, Jeff Subject: March 2009 Meeting in Kenya - Warnings Craig, On the RySG call this morning, a number of members of the RySG expressed significant concerns about the meeting in Kenya and on what security measures are being taken by ICANN to protect the attendees. This includes not only at the Venue site, but also transportation to and from the airport to the hotels as well as travel between the hotels and the venue site (since they are not in the same location). We note that a number of countries including the United States, Australia, Germany, the UK, Canada and New Zealand have all issues incredibly strong warnings against travel to Kenya. See some excerpts we have provided below. We also understand that ICANN intends on spending a considerable amount of money on security measures, but to date, we do not know what those are and whether those protections will be made available to the attendees other than the ICANN Board and staff. A number of registries have decided to either not attend or send a significant lesser number of representatives to the meeting as a result of the travel warnings simply because they do not have the resources to spend on the security measures that may be required. We would appreciate a prompt response on this as we are all in the process of making our decisions on whether to attend the meeting and making the appropriate accommodations. Thanks. ********************************* United States The U.S. Department of State warns U.S. citizens of the risks of travel to Kenya. American citizens in Kenya and those considering travel to Kenya should evaluate their personal security situation in light of continuing threats from terrorism and the high rate of violent crime. Violent and sometimes fatal criminal attacks, including armed carjackings and home invasions/burglaries, can occur at any time and in any location, particularly in Nairobi. As recently as June 2008, U.S. Embassy personnel were victims of carjackings. In the short-term, the continued displacement of thousands of people by the recent civil unrest combined with endemic poverty and the availability of weapons could result in an increase in crime, both petty and violent. Kenyan authorities have limited capacity to deter or investigate such acts or prosecute perpetrators. American citizens in Kenya should be extremely vigilant with regard to their personal security, particularly in public places frequented by foreigners such as clubs, hotels, resorts, upscale shopping centers, restaurants, and places of worship. *CRIME:* There is a high rate of crime in all regions of Kenya, particularly Nairobi, Mombasa, Kisumu, and at coastal beach resorts. There are regular reports of attacks against tourists by groups of armed assailants. Pickpockets and thieves carry out "snatch and run" crimes on city streets and near crowds. Visitors have found it safer not to carry valuables, but rather to store them in hotel safety deposit boxes or safe rooms. However, there have been reports of safes being stolen from hotel rooms and hotel desk staff being forced to open safes. Walking alone or at night, especially in downtown areas, public parks, along footpaths, on beaches, and in poorly lit areas, is dangerous and discouraged. Violent criminal attacks, including armed carjacking and home invasions/burglary, can occur at any time and in any location, and are becoming increasingly frequent, brazen, vicious, and often fatal. In early 2007, two American citizens were killed and one critically injured in two separate carjacking incidents. Nairobi averages about ten vehicle hijackings per day and Kenyan authorities have limited capacity to deter and investigate such acts. Matatus (public transportation) tend to be targeted since they carry up to 14 passengers. Although these attacks are often violent, victims are generally not injured if they do not resist. There is also a high incidence of residential break-ins and occupants should take additional security measures to protect their property. Thieves and con artists have been known to impersonate police officers, thus Americans are strongly encouraged to ask for identification if approached by individuals identifying themselves as police officials, uniformed or not. Thieves routinely snatch jewelry and other objects from open vehicle windows while motorists are either stopped at traffic lights or in heavy traffic. Vehicle windows should be up and doors locked regardless of the time of day or weather. Thieves on matatus, buses and trains may steal valuables from inattentive passengers. Americans should guard their backpacks or hand luggage and ensure these items are not left unattended. Purchasing items from street vendors is strongly discouraged - visitors should only use reputable stores or businesses. Many scams, perpetrated against unsuspecting tourists, are prevalent in and around the city of Nairobi. Many of these involve people impersonating police officers and using fake police ID badges and other credentials. Nevertheless, police checkpoints are common in Kenya and all vehicles are required to stop if directed to do so. Highway banditry is common in much of North Eastern Province, Eastern Province, the northern part of Coast Province, and the northern part of the Rift Valley Province. These areas are remote and sparsely populated. Incidents also occur occasionally on Kenya's main highways, particularly after dark. Due to increased bandit activity, air travel is the recommended means of transportation when visiting any of the coastal resorts north of Malindi. Travelers to North Eastern Kenya and the North Rift Valley Region should travel with the police escorts or convoys organized by the government of Kenya. There has been an increase in armed banditry in or near many of Kenya's national parks and game reserves, particularly the Samburu, Leshaba, and Masai Mara game reserves. In response, the Kenya Wildlife Service and police have taken some steps to strengthen security in the affected areas, but the problem has not been eliminated. Travelers who do not use the services of reputable travel firms or knowledgeable guides or drivers are especially at risk. Safaris are best undertaken with a minimum of two vehicles so that there is a backup in case of mechanical failure or other emergency. Solo camping is always risky. Australia Crime The level of crime in Nairobi is high. Violent crime against Westerners, including armed carjacking, kidnapping for ransom and home invasions, occurs frequently and can be brazen and brutal. There have been fatalities. Anecdotal evidence suggests that foreigners are increasingly being targeted in homes, tourist areas and while travelling by road. You should avoid walking or travelling after dark or on isolated roads, especially in downtown areas, public parks, along footpaths or on beaches, and remain vigilant during daylight hours. Muggings and burglaries are common, particularly after dark. Jewellery and bag-snatching from open vehicle windows frequently occur while motorists are either stopped at traffic lights or in heavy traffic. When driving, you should ensure that windows are up, doors are locked and valuables are out of sight. * We advise you to exercise a high degree of caution in Kenya at this time due to the high risk of terrorist attack, civil unrest and high crime levels. * We are receiving an increasing number of reports that terrorists may be planning attacks against a range of targets in Kenya, including Kenyan or Western interests. Western embassies, UN premises, shopping areas frequented by Westerners, hotels, tourist resorts, safari lodges and other places frequented by foreigners may be particular targets. In planning your activities, you should avoid the kinds of places known to be terrorist targets. * Foreign embassies, hotels and commercial airlines in Kenya have been targeted by terrorists in the past and remain potential targets. See Safety and Security: Terrorism <http://www.smartraveller.gov.au/zw-cgi/view/Advice/Kenya#Safety_and_Securit y> for details. Canada Canadians are advised to exercise a high degree of caution because of the potential of terrorist actions against Western interests throughout Kenya. Attacks could occur at any time and could target areas frequented by expatriates and foreign travellers. Canadians should be aware that the U.S. embassies in Kenya and Tanzania were bombed simultaneously in 1998. The potential for carjackings and robberies of tourists travelling to and from Jomo Kenyatta International Airport (JKIA) and Nairobi, particularly at night, continues to be of concern. Travellers arriving at JKIA should only use transportation organized by reputable tour companies or well-marked taxis. Currency should not be exchanged in the public areas of the airport. Checked luggage may be pilfered at the airport. Travellers should store their valuables in securely locked hand luggage and suitcases. Nairobi and its surrounding regions have experienced an increase in violent incidents in recent months. There has been a particularly high number of incidents involving the Mungiki criminal gang and police forces, following the death of several high-level members of the Mungiki sect in April 2008. Although the majority of Mungiki-related incidents have been located in and around Nairobi, this sect has spread its activities to other parts of the country. In April 2009, fighting erupted between residents of the town of Karatina in Central province and members of this gang. More than 20 people were reportedly killed and several others injured. In recent months, foreign nationals have been the victims of daytime carjackings and kidnappings in neighbourhoods normally deemed safe during daylight hours. Travellers should be vigilant and avoid heavily populated areas of major cities to minimize the risk of being caught up in violent clashes. In Nairobi, travellers should particularly avoid the Kibera, Mathare, Kasirani, and Eastleigh neighbourhoods. New Zealand There is high risk to your security throughout Kenya and we advise against all tourist and other non-essential travel due to the threat from terrorism, civil unrest and violent crime. Violent crime including car-jacking, home invasion and armed robbery is increasing. These attacks can occur anywhere at anytime and can be fatal. New Zealanders are advised to be extremely security conscious at all times and avoid travelling at night. There is a high threat from terrorism in Kenya. Previous terrorist attacks in Kenya have been against visibly Western targets. Particular care should be taken in public and commercial areas known to be frequented by foreigners including airports, hotels, bars, restaurants, clubs, tourist areas, embassies, shopping areas, outdoor recreation events and expatriate housing areas. UK *There is a high threat from terrorism in Kenya. Attacks could be indiscriminate, including in places frequented by expatriates and foreign travelers. Previous attacks have included a bomb attack on a hotel, which resulted in significant loss of life, and an unsuccessful attempt to bring down a civilian airliner in Mombasa, both in November 2002. Terrorism There is a high threat from terrorism in Kenya. Attacks could be indiscriminate, including in places frequented by expatriates and foreign travelers. While there have not been any terrorist attacks in Kenya since 2002, we know that Al-Qaeda has the potential to carry out attacks against Western targets. The leadership of Al-Shabaab, a Somalia based Islamist insurgency group, have publicly threatened to attack Kenya should the Kenyan government provide support to the Somali Transitional Federal Government (TFG). Muggings and armed attacks by gangs can occur at any time, particularly in Nairobi and Mombasa. Do not carry credit cards or cash cards unless you must: people have been forced by thieves to withdraw cash. Beware of thieves posing as police officers; always ask to see identification. Jeffrey J. Neuman Neustar, Inc. / Vice President, Law & Policy 46000 Center Oak Plaza Sterling, VA 20166 Office: +1.571.434.5772 Mobile: +1.202.549.5079 Fax: +1.703.738.7965 / <mailto:jeff.neuman@neustar.biz> jeff.neuman(a)neustar.biz / <http://www.neustar.biz/> www.neustar.biz _____ The information contained in this e-mail message is intended only for the use of the recipient(s) named above and may contain confidential and/or privileged information. If you are not the intended recipient you have received this e-mail message in error and any review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately and delete the original message.

5 4

FW: [gnso-sti] FW:
by Zahid Jamil Dec. 8, 2009

Dec. 8, 2009

Dear Members, Here are my edits to the STI Recommendations. It seems on the Clearinghouse BC finds itself in the minority but have stated positions for the record. The IPC is of the view that they should let the Clearinghouse through as it stands in the Recommendation. Since BC position is in the minority this seems as the likely result. ISPC has been absent from the STI proceedings. Am currently under heavy fire from Ry/Rr on the list for my edits - they want to push the edits out to the bottom of the document. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 <http://www.jamilandjamil.com/> www.jamilandjamil.com Notice / Disclaimer This message contains confidential information and its contents are being communicated only for the intended recipients . If you are not the intended recipient you should not disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited. From: owner-gnso-sti(a)icann.org [mailto:owner-gnso-sti@icann.org] On Behalf Of Zahid Jamil Sent: Tuesday, December 08, 2009 7:37 PM To: 'GNSO STI' Cc: 'Margie Milam' Subject: [gnso-sti] FW: Dear Margie, Am attaching edits again. For some reason they aren't getting posted to the list. Please note that these draft edits are also being shared with the BC today and will revert if there are any changes. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 <http://www.jamilandjamil.com/> www.jamilandjamil.com Notice / Disclaimer This message contains confidential information and its contents are being communicated only for the intended recipients . If you are not the intended recipient you should not disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited. From: Zahid Jamil [mailto:zahid@dndrc.com] Sent: Tuesday, December 08, 2009 7:26 PM To: 'GNSO STI'; 'Margie Milam' Subject: Dear All, Here are the BC edits. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 <http://www.jamilandjamil.com/> www.jamilandjamil.com Notice / Disclaimer This message contains confidential information and its contents are being communicated only for the intended recipients . If you are not the intended recipient you should not disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited.

2 1

FW: [gnso-sti] RE: Draft STI Report- Part II
by Zahid Jamil Dec. 7, 2009

Dec. 7, 2009

FYI Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 <http://www.jamilandjamil.com/> www.jamilandjamil.com Notice / Disclaimer This message contains confidential information and its contents are being communicated only for the intended recipients . If you are not the intended recipient you should not disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited. From: owner-gnso-sti(a)icann.org [mailto:owner-gnso-sti@icann.org] On Behalf Of Margie Milam Sent: Sunday, December 06, 2009 10:58 AM To: 'GNSO STI' Subject: [gnso-sti] RE: Draft STI Report- Part II Dear All, Attached for your review is the second draft of the STI Report, that includes the Trademark Clearinghouse and URS recommendations. Although I have received a number of comments already to the first draft, this version does not address any of them except to change the references of "broad consensus" to "rough consensus." I thought it would be more appropriate to wait for additional comments before circulating the next draft. Best Regards, Margie _____________ Margie Milam Senior Policy Counselor ICANN _____________

1 0

ICA Letter to ICANN re:WIPO and CAC Expedited UDRP Proposals
by Phil Corwin Dec. 4, 2009

Dec. 4, 2009

FYI, on November 30th the Internet Commerce Association sent a letter to Chairman Thrush and CEO Beckstrom to request that ICANN enjoin WIPO and CAC from implementing any form of expedited UDRP through amendment to their Supplemental Rules. The letter has been posted to ICANN's Correspondence page and can be viewed at: http://www.icann.org/correspondence/corwin-to-beckstrom-dengate-thrush-30no… As stated in the letter, ICA is not opposed to the concept of an expedited UDRP process for existing gTLDs, but we do believe that this is a significant policy matter that must undergo GNSO review and ICANN Board approval. I have already received messages of agreement, both as regards our position on this matter and the general concept of establishing a PDP on UDRP reform, from members of other constituencies. I would also note that the STI-RT on the URS is considering making a general advisory recommendation for UDRP reform (while recognizing that this is outside the scope of its immediate task). I would hope that members of the BC would start considering the benefits for complainants, registrants, and the ICANN policy process that could result from such a PDP. Philip S. Corwin Partner Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 202-347-6875 (office) 202-347-6876 (fax) 202-255-6172 (cell) "Luck is the residue of design." -- Branch Rickey

2 1

Re: Urgent! Do we kill the Trademark Clearinghouse - being sold as Christmas Gift to TM Holders
by Zahid Jamil Dec. 3, 2009

Dec. 3, 2009

Not sure if this got to the list. Gary, would it possible to make sure this gets posted. Thanks. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 www.jamilandjamil.com *** This Message Has Been Sent Using BlackBerry Internet Service from Mobilink *** -----Original Message----- From: "Zahid Jamil" <zahid(a)jamilandjamil.com> Date: Tue, 1 Dec 2009 21:44:11 To: 'bc - GNSO list'<bc-gnso(a)icann.org> Subject: Urgent! Do we kill the Trademark Clearinghouse - being sold as Christmas Gift to TM Holders Dear All, As you all know that Trademark protection is a major issue for launch of new gTLDs. The concern: There is a concern that the IP clearing house (the way its developing in the Special TM Implementation-STI Working Group which is supposed to send recommendations to the GNSO for being placed before the ICANN Board) may be an eyewash/placebo. It doesn't address any of the pre-launch concerns of Trademark Mark Holders (TM Holders) such as defensive registrations. But it is being presented as a great compromise/favour and 'Christmas gift' to TM Holders. Here are some of the aspects that may be useful for you to know and provide views on: Who pays: TM Holders have to PAY ANNULLAY to be in the TM Clearinghouse - (Registry's suggest that only TM Holders pick up the cost even though Registry's get a windfall cost saving for pre-launch for sunrise and pre-launch IP claims) What is included in it: The IP Clearinghouse ONLY includes Nationally Registered Marks (NO common law marks can be included nor any other types of protected names) With what does my brand match: One would expect that as in Mark Monitor and even self-searches not only the brand name but variants would be matched. NO. The match is defined as ONLY IDENTICAL/EXACT match i.e. If the brand is "Yahoo", the only time a match for the services mentioned below would be triggered is if someone tried to register the domain name "yahoo.TLD" - and that's it. However, "yahoos.TLD", "yahoosearch.TLD" or "yahoosports.TLD" or "searchyahoo.TLD" etc. would NOT be matched. What is this database used for: For only PRE-LAUNCH (so it serves no purpose to be in the Clearing house POST-launch): Sunrise - for which a TM Holder may have to PAY for dispute resolution in case another TM holder's rights conflicts with theirs - AND - forcing TM Holders to defensively PAY for registering domain names as abundant caution to ensure that registrants don't get them once the gTLD is launched - remember, however, the match is only for IDENTICAL Or IP Claims Notice- this is nothing more than a notice provision to people attempting to register the IDENTICAL domain as the brand in PRE-LAUNCH ONLY. In Pre-launch, if someone tries to register 'yahoo.TLD', then they get a notice telling them that their application matches with a brand in the IP Clearinghouse. They are asked if they affirm that they will only use this for legitimate purposes (paraphrase) - they accept by clinking 'affirm' and they get the domain name. The TM holder only gets a notice that such a registration has been allowed once the new gTLD has launched to then decide whether to file a UDS, UDRP or Court case. No notices, however, in case someone tries to register "yahoosearch.TLD". How can this be gamed: As a bad actor I wait and don't register any domains with are EXACT matches in PRE-LAUNCH such as "yahoo.TLD" and wait for the first 30 seconds of the new gTLD being launched and register then to CIRCUMVENT the entire "WHITE ELEPHANT" for which as Brand holder I am being forced to PAY to keep it running. But as a bad actor I can register "yahoos.TLD", "yahoosearch.TLD" or "yahoosports.TLD" or "searchyahoo.TLD" etc. in PRE-LAUNCH and POST-LAUNCH and I won't get a notice and the Brand holder won't get a notice. One advantage is that there will be one registration of TM (ANNUALLY PAID FOR RENEWALS) for Sunrise and so all new Registry's won't have to spend money on Consultancy/Admin etc. for Sunrise - so it's really a SUNRISE CLEARING HOUSE for cutting Registry costs. My opinion: This doesn't help small businesses nor does it help developing country Brand owners since they probably won't be participating in Sunrise and pre-launch. This IP CLEARINGHOUSE is being presented as a great compromise by Registries, Registrars and Non-Commercials. One even described it offline as a 'Christmas Gift' to Trademark Holders. Options: We state our objections but let it go through. This then becomes for the Board a solution for defensive registrations by TM holders and so seemingly, for the record, addresses Brand holders' concerns in Pre-Launch and defensive registrations. OR We state clearly that we as TM Holders don't want this solution since it fails to address/solve the real problems identified by Brand Holders. A thought: would not being in the IP CLEARINGHOUSE be seen as not being vigilant in protecting your brand name thus creating a legal imperative to forcibly have to register and PAY to be in it? I don't know. Just as background. This Clearing house was an adjunct and ancillary piece of technology/database to facilitate the Globally Protected Marks List (GPML). Now that the GPML has been jettisoned, this ancillary to GPML (byproduct) is still being proposed by the Board & Staff as a solution for Trademark protection in for new gTLDs. A Solution looking for a problem to solve? This is my humble and very quick attempt to try and simplify the issue and would welcome any additions or clarifications or corrections. The STI is supposed to have a conference call on this in 2 days. Hope this helps and looking for feedback. Best regards, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 <http://www.jamilandjamil.com/> www.jamilandjamil.com Notice / Disclaimer This message contains confidential information and its contents are being communicated only for the intended recipients . If you are not the intended recipient you should not disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this message by mistake and delete it from your system. The contents above may contain/are the intellectual property of Jamil & Jamil, Barristers-at-Law, and constitute privileged information protected by attorney client privilege. The reproduction, publication, use, amendment, modification of any kind whatsoever of any part or parts (including photocopying or storing it in any medium by electronic means whether or not transiently or incidentally or some other use of this communication) without prior written permission and consent of Jamil & Jamil is prohibited.

4 5

mails
by BC Secretariat Dec. 2, 2009

Dec. 2, 2009

Dear Members May I remind you that there is no need to include people in copy on this automated list? I've been receiving multiple copies of recent mails as they have been sent to the bc-gnso list, the owner of the bc-gnso list and the secretariat address. Many thanks Gary

1 0