October 2013 - Bc-gnso - lists.icann.org

BC GNSO Councilor & Small Business Seat on Nominating Committee Elections: Nominations close on Friday, Oct. 18th
by Benedetta Rossi 17 Oct '13

17 Oct '13

From: BC Secretariat Date: October 16th, 2013 CC: Glen De Saint Gery, Returning Officer ,Robert Hoggarth, Verifying Officer, <mailto:bcvotes@hotmail.com> bcvotes(a)hotmail.com Re: BC GNSO Councilor & Small Business NomCom Seat Elections: Reminder - Nominations Close on Friday, Oct.18th Please note that this is the announcement for the BC elections for one of the two BC GNSO Councilor seats and the Small Business Seat on the Nominating Committee . Please note that the nomination period will close on Friday, October 18th. If you would like to submit a nomination, please follow the procedure outlined in the election procedure attached, and submit your nomination to the <mailto:bcvotes@hotmail.com> bcvotes(a)hotmail.com email address prior to Friday COB. Candidate statements should also be sent to the <mailto:bcvotes@hotmail.com> bcvotes(a)hotmail.com no later than Sunday, Oct. 20th. Once again, please refer to the attachment for the full details regarding this election. Transmitted by the BC Secretariat: Benedetta Rossi, serving as Voting Officer -- Kind Regards, Benedetta Rossi BC Secretariat bc-secretariat(a)icann.org <https://community.icann.org/display/gnsobc/Home> https://community.icann.org/display/gnsobc/Home www.bizconst.org

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RV: [bc-gnso] BC GNSO Councilor & Small Business Seat on Nominating Committee Elections: Nominations close on Friday, Oct. 18th
by Chris Chaplow 16 Oct '13

16 Oct '13

Stephane, Thanks for your thoughts. I cant comment about historical aspects as I have only been a member a few years. You or the person nominated are at liberty to go public and post the nomination to the list. It is the voting officer who will not do so. Is it best to be bold and nominate at the beginning, or perhaps in the middle, or in the last few minutes at the very end when you know who the opposition is or isnt? I am not convinced it is a good idea to add the time dimension to the nominating process. Best Chris Chaplow Managing Director Andalucia.com S.L. Avenida del Carmen 9 Ed. Puertosol, Puerto Deportivo 1ª Planta, Oficina 30 Estepona, 29680 Malaga, Spain Tel: + (34) 952 897 865 Fax: + (34) 952 897 874 E-mail: <mailto:chris@andalucia.com> chris(a)andalucia.com Web: <http://www.andalucia.com/> www.andalucia.com Information about Andalucia, Spain. De: owner-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org] En nombre de Stephane Van Gelder Consulting Enviado el: miércoles, 16 de octubre de 2013 22:40 Para: Benedetta Rossi; bc-gnso(a)icann.org Asunto: Re: [bc-gnso] BC GNSO Councilor & Small Business Seat on Nominating Committee Elections: Nominations close on Friday, Oct. 18th Hi everyone, I would like te reiterate that I find it very odd that as a group, we prefer to have private nominations. If I am willing to support someone, I have no qualms about making that support public. Moreover, I find it troublesome that as a BC member, I do not know until the nomination deadline has passed whether someone has been nominated for a position or not. I am left with having to try to read into a reminder message such as this one whether it is being sent two days before the deadline because there have been no nominations, or because it's just two days before the deadline. And if I did know what nominations had been made, especially if none had been made, I might be spurred on to reach out to other potential candidates and try to get them on board. But with the current private nomination system, I just don't know. Is there a historical reason for having private nominations? Do others feel, like I do, that it's time to put an end to the secrecy and to run fully transparent election processes? Thanks, Stéphane Van Gelder Chairman and Managing Director/Fondateur STEPHANE VAN GELDER CONSULTING T (FR): +33 (0)6 20 40 55 89 T (UK): +44 (0)7583 457053 Skype: SVANGELDER www.StephaneVanGelder.com ---------------- Follow us on Twitter: @stephvg and "like" us on Facebook: www.facebook.com/DomainConsultant LinkedIn: fr.linkedin.com/in/domainconsultant/ On 16 October 2013 18:47, Benedetta Rossi <bc-secretariat(a)icann.org> wrote: From: BC Secretariat Date: October 16th, 2013 CC: Glen De Saint Gery, Returning Officer ,Robert Hoggarth, Verifying Officer, bcvotes(a)hotmail.com Re: BC GNSO Councilor & Small Business NomCom Seat Elections: Reminder Nominations Close on Friday, Oct.18th Please note that this is the announcement for the BC elections for one of the two BC GNSO Councilor seats and the Small Business Seat on the Nominating Committee . Please note that the nomination period will close on Friday, October 18th. If you would like to submit a nomination, please follow the procedure outlined in the election procedure attached, and submit your nomination to the bcvotes(a)hotmail.com email address prior to Friday COB. Candidate statements should also be sent to the bcvotes(a)hotmail.com no later than Sunday, Oct. 20th. Once again, please refer to the attachment for the full details regarding this election. Transmitted by the BC Secretariat: Benedetta Rossi, serving as Voting Officer -- Kind Regards, Benedetta Rossi BC Secretariat <http://bc-secretariat@icann.org> bc-secretariat(a)icann.org <https://community.icann.org/display/gnsobc/Home> https://community.icann.org/display/gnsobc/Home www.bizconst.org

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Cross-dot Cybersquatting Cases
by Andy Abrams 15 Oct '13

15 Oct '13

Resurrecting this earlier thread with an update: http://www.thedomains.com/2013/10/09/in-a-udrp-with-wide-implications-in-ne… The decision is here: http://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2013-0017 While UDRP decisions don't have direct precedential effect, I suspect that this is the start of a trend to consider TLDs when determining cybersquatting cases. As stated by the panel: Indeed, the WIPO Overview 2.0<http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#20> clearly contemplates the TLD being taken into account. There is nothing novel or improper in doing so. ... At paragraph 1.2<http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#12>, which deals with the test for identity or confusing similarity, it is said “[…] *The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark*.” [emphasis added]. On Tue, Aug 6, 2013 at 11:11 AM, Phil Corwin <psc(a)vlaw-dc.com> wrote: > Thanks for the input, Mary Jo; I’m gaining new knowledge and insight as > this dialogue continues.**** > > ** ** > > Interesting that in the two non-.com cases that you cite six.net and > channel.tv, the visual appearance was sufficient to clear the first UDRP > hurdle but ultimately the respondent prevailed. That was the point of my > hypothetical federal.express example of a domain used to promote skateboard > clothing, that visual similarity (in fact identical visual match but for > the dot) is not sufficient to decide the elements of bad faith registration > and use.**** > > ** ** > > With all the new genetic terms coming along as TLDs this will certainly be > a most interesting area to watch and discuss – with preventing consumer > confusion, much less exploitation, as the main goal.**** > > ** ** > > Best, Philip**** > > ** ** > > *Philip S. Corwin, Founding Principal***** > > *Virtualaw LLC***** > > *1155 F Street, NW***** > > *Suite 1050***** > > *Washington, DC 20004***** > > *202-559-8597/Direct***** > > *202-559-8750/Fax***** > > *202-255-6172/cell*** > > * * > > *Twitter: @VlawDC***** > > **** > > *"Luck is the residue of design" -- Branch Rickey***** > > ** ** > > *From:* Mari Jo Keukelaar [mailto:mj@johnberryhill.com] > *Sent:* Tuesday, August 06, 2013 1:14 PM > *To:* Phil Corwin; 'Andy Abrams'; jscottevans(a)yahoo.com; 'bc - GNSO list' > > *Subject:* RE: [bc-gnso] FW: New ICA Post on the LRO**** > > ** ** > > Phil, where you state that**** > > ** ** > > these “side issues” are complex and would represent a fundamental change > in UDRP and subsidiary URS policy, which today only contemplates the name > to the left or the dot with no consideration of the top level domain on the > right side.**** > > ** ** > > The facts do not support your broad assertion to the effect that the UDRP > "only contemplates the name to the left of the dot". There have been many > cases in which that is just not an accurate assertion.**** > > ** ** > > In UDRP proceedings where a trademark ends in "NET", domain name > registrations in the .net TLD have been determined "identical or > confusingly similar" under the UDRP rules. For example, in WIPO Case No. > D2000-0008, the domain name "SIX.NET" was found to be identical or > confusingly similar to the registered trademark "SIXNET". That was in the > first year of operation of the UDRP. While the case was decided on other > grounds, it cleared the first element of the UDRP.**** > > ** ** > > In disputes under ".tv", which is one of the existing TLDs you mention, > the fact that the TLD is perceived to communicate "television" has indeed > been a factor in UDRP disputes involving .tv names. For example WIPO > DTV2011-0008 involved a dispute over "channel.tv" -**** > > http://www.wipo.int/amc/en/domains/search/text.jsp?case=DTV2011-0008 . > While the domain registrant had excellent legal representation and > prevailed on other grounds, under the first element of the Policy, the > domain name "channel.tv" was indeed found to be "identical" to the > alleged mark "Channel TV".**** > > ** ** > > What is generally true is that where the second-level domain name matches > the alleged trademark, the TLD is typically ignored. That has been > appropriate, since the bulk of disputes have involved .com names, and > ".com" has no particular meaning. For example in Cello Holdings v. > Lawrence-Dahl Cos., 89 F.Supp.2d 464, 472-75 (S.D.N.Y. 2000), the court > discussed a hypothetical situation in which "apple.com" were used to sell > apples, which would not violate the mark of the computer company. However, > it should be apparent that in a circumstance where .computers was a TLD, > and one was looking at the domain name apple.computers, then the TLD > signifies a class of goods such that the entire domain name > "apple.computers" unambiguously identifies a trademark owner. In other > words, where TLD's have had little or no meaning apart from signifying an > address of "something on the internet", they were not important. Likewise, > in forward comparisons of a domain name to a mark, the TLD itself was > generally not signaling anything of consequence. However, in "reverse" > comparisons of a mark to a domain name, in an environment where TLD's do > carry meaning, then it does not make sense to mechanically apply a rule > that was developed under a different set of assumptions about TLD's > themselves.**** > > ** ** > > There can be no question that domain names such as wal.mart or walm.art > both "look like Wal-Mart". Outcomes under trademark law have always been > based on consumer perception, not mechanical rules for parsing strings, and > it is not reasonable to expect mechanical application of a perceived rule, > when the rationale for the "general rule" is no longer valid. I am certain > that UDRP providers, and at least some panelists, have given this the > consideration it deserves. **** > > ** ** > > Just some thoughts, Mari Jo**** > > ** ** > > ** ** > > *From:* owner-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org<owner-bc-gnso(a)icann.org>] > *On Behalf Of *Phil Corwin > *Sent:* Tuesday, August 06, 2013 6:25 AM > *To:* Andy Abrams; jscottevans(a)yahoo.com; bc - GNSO list > *Subject:* RE: [bc-gnso] FW: New ICA Post on the LRO**** > > ** ** > > You are most welcome, Andy. I’m glad that you thought my post captured the > LRO process well. **** > > ** ** > > In regard to your comment – “However, an interesting side-issue is whether > the UDRP and URS panels will start to include TLDs as a factor in > determining cybersquatting at the second level (e.g., cross-dot trademarks > such as federal.express or you.tube). And if so, perhaps cross-dot > trademarks should be included in Sunrise?’ – these “side issues” are > complex and would represent a fundamental change in UDRP and subsidiary URS > policy, which today only contemplates the name to the left or the dot with > no consideration of the top level domain on the right side. Consideration > of the right side in either UDRP or URS proceedings or as a matter of > sunrise protection would be, I believe, a significant change in policy that > requires extensive consideration, perhaps even a PDP, prior to any > contemplated change in the scope of these protections. This isn’t just a > new gTLD issue – there are existing TLDs, especially ccTLDs like .me and > .tv, that can raise similar questions. So far as I know there was > absolutely no consideration or discussion of inclusion of right of the dot > considerations in the development of the URS or TMC. Changes of this > consequence should not be considered, much less implemented, on the fly > absent adequate consideration.**** > > ** ** > > The GNSO decided in December 2011 that any PDP related to alteration of > the UDRP should not be initiated until eighteen months after the > introduction of new gTLDs. That may forestall any consideration of your > suggestion unless there is a broad community desire to accelerate the > timetable.**** > > ** ** > > Best regards,**** > > Philip**** > > ** ** > > ** ** > > *Philip S. Corwin, Founding Principal***** > > *Virtualaw LLC***** > > *1155 F Street, NW***** > > *Suite 1050***** > > *Washington, DC 20004***** > > *202-559-8597/Direct***** > > *202-559-8750/Fax***** > > *202-255-6172/cell* > > * * > > *Twitter: @VlawDC***** > > **** > > *"Luck is the residue of design" -- Branch Rickey***** > > ** ** > > *From:* Andy Abrams [mailto:abrams@google.com <abrams(a)google.com>] > *Sent:* Monday, August 05, 2013 8:22 PM > *To:* Phil Corwin; jscottevans(a)yahoo.com; bc - GNSO list > *Subject:* Re: [bc-gnso] FW: New ICA Post on the LRO**** > > ** ** > > Thanks to Phil for forwarding us his article - it captures the LRO process > well. For what it's worth, I'm another trademark attorney that agrees with > J. Scott that the system is actually working well, and brand owners > shouldn't expect to preemptively stop the use of a generic term for an open > TLD prior to any commercial activity. However, an interesting side-issue > is whether the UDRP and URS panels will start to include TLDs as a factor > in determining cybersquatting at the second level (e.g., cross-dot > trademarks such as federal.express or you.tube). And if so, perhaps > cross-dot trademarks should be included in Sunrise?**** > > ** ** > > Andy**** > > ** ** > > On Mon, Aug 5, 2013 at 8:08 AM, J. Scott Evans <jscottevans(a)yahoo.com> > wrote:**** > > Phil:**** > > ** ** > > The remedy provided is not more narrow than that provided under current > national and international laws. If trademark owners want an absolute > monopoly on a term then, yes, they will have to file for a top level domain > in round two. Paul McGrady has been saying that the first come, first > served method of distribution of top level domains by ICANN could lead to > "permanent string preclusion" for those brands who have a dictionary term > as a trademark. He has been saying this since 2008. Unfortunately, some > brands don't listen. Go figure!**** > > **** > > *j. scott evans - head of global brand, domains & copyright - Yahoo! > Inc. - 408.349.1385 - jscottevans(a)yahoo.com***** > > ** ** > ------------------------------ > > *From:* Phil Corwin <psc(a)vlaw-dc.com> > *To:* J. Scott Evans <jscottevans(a)yahoo.com> > *Cc:* "bc-gnso(a)icann.org" <bc-gnso(a)icann.org> **** > > *Sent:* Monday, August 5, 2013 7:58 AM > *Subject:* RE: [bc-gnso] FW: New ICA Post on the LRO**** > > ** ** > > Agree that it’s working as intended, but doubt that most perceived how > narrow a remedy it would be. **** > > **** > > Main takeaway for TM owners is that if you want to control your generic > brand or product at top level of the DNS you need to submit a defensive > application in 2nd round.**** > > **** > > As for adding LRO to acronym list – well of course! **** > > **** > > *Philip S. Corwin, Founding Principal***** > > *Virtualaw LLC***** > > *1155 F Street, NW***** > > *Suite 1050***** > > *Washington, DC 20004***** > > *202-559-8597/Direct***** > > *202-559-8750/Fax***** > > *202-255-6172/cell***** > > * ***** > > *Twitter: @VlawDC***** > > **** > > *"Luck is the residue of design" -- Branch Rickey***** > > **** > > *From:* J. Scott Evans [mailto:jscottevans@yahoo.com] > *Sent:* Sunday, August 04, 2013 11:41 PM > *To:* Phil Corwin > *Cc:* bc-gnso(a)icann.org > *Subject:* Re: [bc-gnso] FW: New ICA Post on the LRO**** > > **** > > That's correct you don't, but the article seems to imply that the LRO sets > too high a burden or is somehow flawed and, for this reason, trademark > owners are getting the proverbial "shaft." I think a LRO would work if a > trademark owner could prove a likelihood of confusion or some actual harm. > I don't think you are sufficiently harmed just because someone plans to > use the a generic term (that may also serve as someone's trademark) for > non-infringing purposes. I would argue to you the the LRO is working > perfectly, much like the UDRP works perfectly when trademark owners that > can meet the high burden win.**** > > **** > > In sum, I think the system is working as it was intended. I know these > results are making some trademark owners unhappy, but trademark law is > basically a consumer protection statute, so a complainant should have to > show some consumer harm or confusion, not the angst of a marketing > department that was asleep at the wheel since June 2008.**** > > **** > > J. Scott**** > > **** > > *j. scott evans - head of global brand, domains & copyright - Yahoo! > Inc. - 408.349.1385 - jscottevans(a)yahoo.com***** > > **** > ------------------------------ > > *From:* Phil Corwin <psc(a)vlaw-dc.com> > *To:* J. Scott Evans <jscottevans(a)yahoo.com> > *Cc:* "bc-gnso(a)icann.org" <bc-gnso(a)icann.org> > *Sent:* Sunday, August 4, 2013 8:14 PM > *Subject:* Re: [bc-gnso] FW: New ICA Post on the LRO**** > > **** > > I don't disagree, and never said they were. > > Philip S. Corwin, Founding Principal **** > > Virtualaw LLC**** > > 1155 F Street, NW**** > > Suite 1050**** > > Washington, DC 20004**** > > 202-559-8597/Direct**** > > 202-559-8750/Fax**** > > 202-255-6172/Cell**** > > **** > > Twitter: @VLawDC**** > > **** > > "Luck is the residue of design" -- Branch Rickey**** > > **** > > Sent from my iPad**** > > > On Aug 4, 2013, at 10:51 PM, "J. Scott Evans" <jscottevans(a)yahoo.com> > wrote:**** > > I am not so sure any of these cases were wrongly decided. > > Sent from Yahoo! Mail for iPhone**** > > **** > ------------------------------ > > *From: *Phil Corwin <psc(a)vlaw-dc.com>; > *To: *bc-gnso(a)icann.org <bc-gnso(a)icann.org>; > *Subject: *[bc-gnso] FW: New ICA Post on the LRO > *Sent: *Sun, Aug 4, 2013 10:05:16 PM **** > > **** > > FYI/BC members may find my latest opinion piece of some interest---**** > > **** > > http://internetcommerce.org/LROlooksDOA**** > > **** > > *LRO Looks DOA***** > > * ***** > > The Legal Rights Objection (LRO) mechanism administered by the World > Intellectual Property Organization (WIPO) on behalf of ICANN is starting to > look like the reverse FISA Court of domain name system (DNS) rights > protection mechanisms (RPMs) at the top level. In FISA Court, the > government always wins – at WIPO, the LRO complainant always loses.**** > > The FISA Court is of course the venue in which the U.S. government > requests a surveillance warrant against a suspected foreign intelligence > agent and is never denied (well, almost never – since the process started > in 1979, 11 requests have been denied out of a total of 33,942 received > through the end of 2012[1] <https://us-mg6.mail.yahoo.com/neo/#_ftn1>). > FISA Court proceedings are secret and non-adversarial, with only government > lawyers presenting arguments. In contrast, the decisions resulting from LRO > proceedings are published, and both complainant and respondent have equal > ability to present their arguments. Yet, as of Friday, August 2nd all 28 > of the decided LRO complaints, out of a total of 69 filed, resulted in > losses for the complainants[2] <https://us-mg6.mail.yahoo.com/neo/#_ftn2>. > **** > > The lopsided results arouse suspicions that trademark interests may have > been fighting the last war and too intensely focused on potential > cybersquatting at the second level (a concern that we believe is overblown > due to the low traffic prospects for many new gTLDs). They consequently > sought and obtained the Trademark Clearinghouse (TMC), Uniform Rapid > Suspension (URS) RPMs – and also proposed other second level remedies such > as a Global Protected Marks List (GPML) that ICANN did not grant. Yet they > may have failed to adequately consider whether top level protections were > sufficient, and in particular whether the threshold standard for > successfully prosecuting a LRO was unattainably high. **** > > As Thomas O’Toole observed in an excellent analysis recently posted on > Bloomberg BNA’s E-Commerce and Tech Law Blog[3]<https://us-mg6.mail.yahoo.com/neo/#_ftn3> > :**** > > *[T]he only surprise the future might hold is the faint prospect that a > WIPO panelist might actually rule in favor of a trademark owner…The biggest > lesson so far has been that the Legal Rights Objection process is wholly > ineffective for trademark owners seeking to knock down proposed domains > containing generic strings. In many cases, companies owning marks for terms > such as EXPRESS, HOME, VIP, LIMITED, MAIL, TUNES have lost LROs to domain > applicants with no intellectual property rights in those terms whatsoever. > Pinterest's failed challenge to Amazon's proposed .pin domain was > particularly ominous for mark owners, because Amazon seems pretty clearly > to be moving in on Pinterest's business…***** > > *The reason for this dour outlook can be found in passages from two early > LRO rulings: the first one, Right at Home v. Johnson Shareholdings Inc., > No. LRO2013-0300 (WIPO, July 3, 2013); and the second, my favorite, Express > LLC v. Sea Sunset LLC, No. LRO2013-0022 (WIPO, July 9, 2013)…***** > > *In Right at Home, panelist Robert A. Badgley offered the first > interpretation of key terms in Section 3.5 of ICANN's New gTLD Applicant > Guidebook <http://newgtlds.icann.org/en/applicants/agb>. The guidebook > uses highly qualified language, directing LRO panelists to decide whether > the proposed new domain "takes unfair advantage" of the trademark owner's > rights, or "unjustifiably impairs" the value of the mark, or creates an > "impermissible likelihood of confusion" between the mark and the proposed > domain.***** > > *In Badgley's view, this language creates a very high burden for > trademark-based objections…Obviously, it is going to be very difficult for > any trademark owner to demonstrate that a proposed domain is so fishy it > satisfies the "something untoward ... if not to the level of bad faith" > standard…***** > > *The second opinion, Express LLC v. Sea Sunset LLC, was one of the better > opinions (and I am including the federal court stuff that we wade through > every day) I have read in a while. Panelist Frederick M. Abbott carefully > summarized the arguments on each side (there are good lessons here for > attorneys working on the next round of legal rights objections), and the > law that he was required to apply to the dispute. When Abbott turned to the > reasoning behind his decision to reject Express LCC's objection to the > proposed .express top-level domain, I got that sense that this panelist was > a teeny bit irked that ICANN itself had not made the hard policy choices > that the LRO had just dropped in his lap. It's one thing to ask a panelist > to transfer a domain name that might have cost the registrant $10 or so; > and it's quite another to ask a panelist to upset an investment of at least > a half-million dollars in a new top-level domain. All based on a trademark > registration for a generic term, in a single market, issued by a single > government entity. Abbott declined to do it…***** > > *These two opinions, taken together, look like a terminal diagnosis for > trademark owners with rights in generic terms. Right at Home creates a very > permissive standard for what constitutes "unfair advantage" by a domain > applicant. Express LLC states, almost categorically, that it is "not > reasonable" to allow a trademark owner for a generic term to prevent that > term from being used as a top-level domain.***** > > O’Toole goes on to speculate that a trademark owner like Express LLC will > have equally poor chances of success if it attempts to block others’ use of > such hypothetical second level domains as clothing.express, > fashion.express, or shoes.express using the traditional UDRP or the new TMC > and URS RPMs -- because all of them focus on the domain name to the left of > the dot and pay no heed to the gTLD to the right – and because Express > holds no trademark rights in those hypothetical generic terms on the left > side. We largely agree with his analysis, and suspect that this could be > the next big trademark protection issue looming on ICANN’s horizon as > brands complain about the necessity and cost of registering relevant > domains at a gTLD that matches one of its trademarks but is operated by a > third party (and, by the way, it’s not clear that a brand like Express > would have any special “sunrise” registration priority for potential second > level domains along the lines of O’Toole’s speculation). Other questions > arise, such as whether Federal Express should have priority rights to, or a > potential infringement claim against, federal.express.**** > > Of course, no one was reckless enough to pay a $185,000 gTLD application > fee, plus multiple related legal, consulting, and technical costs, to try > to “squat’ at the top level on a unique trademark like Google or Microsoft. > But when it comes to a dictionary word like Express, unless the applicant > was so clueless as to propose its use solely for fashionable clothing, the > LRO is essentially useless – and that may be the correct result. Indeed, > short of halting the program, it’s not really clear how one can have a > generic word TLD program without allowing the addition of top level domains > that are identical to someone’s trademark for something; and that alone is > not sufficient to prove trademark infringement.**** > > Domain industry observers such as Andrew Allemann have opined that “The > LRO is working just fine, thank you”[4]<https://us-mg6.mail.yahoo.com/neo/#_ftn4>, > weighing in with this analysis:**** > > *The LRO was created to assuage fears that someone would cybersquat on a > top level domain…Objections were filed against .VIP, .mail, and .home. Now, > you tell me: when you hear these terms, what brand do you think is being > cybersquatted?***** > > *Many of the objections were filed by competing applicants that engaged > in trademark frontrunning by obtaining dubious trademarks for the string. > Others, such as the United States Postal Service’s objection to .mail, were > based on stretched interpretations of a trademark (and that’s being > generous).***** > > Another industry analyst, Kevin Murphy, has just declared that he will no > longer report automatically on forthcoming WIPO decisions in LRO cases, > stating[5] <https://us-mg6.mail.yahoo.com/neo/#_ftn5>:**** > > *The Legal Rights Objection has, I think, said pretty much everything > it’s going to say in this new gTLD application round. I’m feeling pretty > confident we can predict that all outstanding LROs will fail.***** > > *This prediction is based largely on the fact that the 69 LROs filed in > this round all pretty much fall into three categories.***** > > · *Front-running.** These are the cases where the objector is an > applicant that secured a trademark on its chosen gTLD string, usually with > the dot, just in order to game the LRO process…***** > > · *Brand v Brand.** The objector may or may not be an applicant > too, but both it and the respondent both own legit trademarks on the string > in question. WIPO’s LRO panelists have made it clear, most recently > yesterday in Merck v Merck (pdf<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0068.p…>) > and Merck v Merck (pdf<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0069.p…>), > that having a famous brand does not give you the right to block somebody > else from owning a matching famous brand as a gTLD.***** > > · *Generic trademarks.** Cases where an owner of a legit brand > that matches a dictionary word files an objection against an applicant for > the same string that proposes to use it in its generic sense. See Express > v Donuts<http://domainincite.com/13691-donuts-beats-dot-brand-in-fight-over-express-…>, > for example. Panelists have found that unless there’s some nefarious intent > by the applicant, the mandatory second-level rights protection mechanisms > new gTLD registries must abide by are sufficient to protect trademark > rights.***** > > *In short, the LRO may be one of many deterrents to top-level > cybersquatting, but has proven itself an essentially useless cash sink if > you want to prevent the use of a trademark at the top level.***** > > *The impact of this, I believe, will be to give new gTLD consultants > another excellent reason to push defensive gTLD applications on big brands > in future new gTLD rounds.***** > > * ***** > > We largely agree with Murphy’s analysis. There may well be a few cases in > the remaining objections to be adjudicated by WIPO in which the complainant > prevails. But we suspect that they will be such unique outliers that they > will actually reinforce what an exceedingly narrow remedy the LRO has > turned out to be. That limited utility has already led one disgruntled > complainant/competing applicant to declare, *“Seems the entire WIPO LRO > process was set-up to fail by ICANN with the guidelines they gave the > Panelists.”[6] <https://us-mg6.mail.yahoo.com/neo/#_ftn6>***** > > And, as Murphy observes, filing a LRO with WIPO is not inexpensive. Total > filing fees for a single objection to a single new gTLD application can > range from $10,000 for a single-expert panel, and up to $23,000 for a > 3-expert panel[7] <https://us-mg6.mail.yahoo.com/neo/#_ftn7>. On top of > the fees there are of course legal costs for the attorney preparing the > complaint and related expenses for amassing documentation. If the LRO > continues to be a preordained shutout for complainants then it is unlikely > that it will be used very much at all in the second round of gTLD > applications unless significant – and undoubtedly controversial – changes > are made in the adjudication standard to give complainants a higher > probability of prevailing.**** > > As for the other objection procedure available to third parties, the > Community Objection[8] <https://us-mg6.mail.yahoo.com/neo/#_ftn8>administered by the International > Centre for Expertise of the ICC (International Chamber of Commerce), no > judgment can yet be rendered on its efficacy because the Center has yet to > issue a single decision on the dozens of cases[9]<https://us-mg6.mail.yahoo.com/neo/#_ftn9>filed with it. However, with standing limited to established institutions > associated within a clearly defined community objectors first have to > surmount that procedural hurdle, and then make the string substantive case > that there is substantial opposition to the gTLD application from a > significant portion of the community to which the gTLD string may be > explicitly or implicitly targeted. Additionally, complaints were voiced at > the recent Public Forum in Durban that ICC fees[10]<https://us-mg6.mail.yahoo.com/neo/#_ftn10>, which begin at 17,000 Euro but can quickly mount given the 450 Euro > hourly rate for expert arbitrators, are not affordable for many community > organizations.**** > > Summing up, the LRO may well have been an effective deterrent against > applications for unique trademarked terms but has so far been useless in > regard to applications for generic word trademarks, regardless of the > trademark’s strength and legitimacy. Its lack of general applicability also > seems to be setting up a series of second level domain disputes that may > well be outside the existing scope of the UDRP, URS, TMC, or other > available rights protection and prioritization mechanisms. All of this may > lead to further debate within ICANN on the appropriate scope of trademark > rights protections– as well as litigation being filed by unsuccessful > complainants who refuse to take WIPO’s decision as the final judgment on > their claims. **** > > The clear lesson to brand owners of generic word trademarks is this: If > and when the second round of new gTLD applications commences, if you wish > to own your trademark at the top level of the DNS (or at least stop others > from owning it) you had better open your wallet and apply for it. That > compulsion toward unwanted defensive registrations is almost sure to > generate further controversy amid charges that ICANN has developed a Midas > Touch-like mechanism for generating perpetual revenues for application and > use fees for the protection of dictionary words. **** > > Of course, the inflow of defensive applications for generic word > trademarks could be a mere trickle compared to the potential surge of > defensive and offensive applications for non-trademarked generic words if > ICANN ultimately spurs the Governmental Advisory Committee (GAC) advice to > prohibit “closed generic” gTLDs unless they satisfy a high public interest > standard. In that scenario, every company of any heft will have to > seriously consider gTLD applications for the major language words > describing its key activities and products, lest a competitor do so first > and lock them away. But that’s an issue falling outside any trademark > protection debate and a discussion for another day.**** > > [1]http://en.wikipedia.org/wiki/FISA_Court**** > > [2]http://www.wipo.int/amc/en/domains/lro/cases/**** > > [3]http://www.bna.com/icann-legal-rights-b17179875369/**** > > [4] > http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/ > **** > > [5]http://domainincite.com/13949-thats-all-folks-no-more-lro-news**** > > [6] > http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limit… > **** > > [7]http://www.wipo.int/amc/en/domains/lro/fees/**** > > [8] > http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/i… > **** > > [9]http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883**** > > [10] > http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/i… > **** > > **** > > **** > > *Philip S. Corwin, Founding Principal***** > > *Virtualaw LLC***** > > *1155 F Street, NW***** > > *Suite 1050***** > > *Washington, DC 20004***** > > *202-559-8597/Direct***** > > *202-559-8750/Fax***** > > *202-255-6172/cell***** > > * ***** > > *Twitter: @VlawDC***** > > **** > > *"Luck is the residue of design" -- Branch Rickey***** > > **** > > > **** > ------------------------------ > ------------------------------ > > No virus found in this message. > Checked by AVG - www.avg.com > Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13* > *** > > > **** > ------------------------------ > ------------------------------ > > No virus found in this message. > Checked by AVG - www.avg.com > Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13* > *** > > -- > You received this message because you are subscribed to the Google Groups > "ICA Mail" group. > To unsubscribe from this group and stop receiving emails from it, send an > email to ica-mail+unsubscribe(a)googlegroups.com. > To post to this group, send email to ica-mail(a)googlegroups.com. > Visit this group at http://groups.google.com/group/ica-mail. > To view this discussion on the web visit > https://groups.google.com/d/msgid/ica-mail/8E84A14FB84B8141B0E4713BAFF5B84E… > . > For more options, visit https://groups.google.com/groups/opt_out. > > **** > > > **** > ------------------------------ > > [1] <https://us-mg6.mail.yahoo.com/neo/#_ftnref1> > http://en.wikipedia.org/wiki/FISA_Court **** > > [2] <https://us-mg6.mail.yahoo.com/neo/#_ftnref2> > http://www.wipo.int/amc/en/domains/lro/cases/ **** > > [3] <https://us-mg6.mail.yahoo.com/neo/#_ftnref3> > http://www.bna.com/icann-legal-rights-b17179875369/ **** > > [4] <https://us-mg6.mail.yahoo.com/neo/#_ftnref4> > http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/ > ** ** > > [5] <https://us-mg6.mail.yahoo.com/neo/#_ftnref5> > http://domainincite.com/13949-thats-all-folks-no-more-lro-news **** > > [6] <https://us-mg6.mail.yahoo.com/neo/#_ftnref6> > http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limit… > **** > > [7] <https://us-mg6.mail.yahoo.com/neo/#_ftnref7> > http://www.wipo.int/amc/en/domains/lro/fees/ **** > > [8] <https://us-mg6.mail.yahoo.com/neo/#_ftnref8> > http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/i… > **** > > [9] <https://us-mg6.mail.yahoo.com/neo/#_ftnref9> > http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883 **** > > [10] <https://us-mg6.mail.yahoo.com/neo/#_ftnref10> > http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/i… > **** > > **** > ------------------------------ > > No virus found in this message. > Checked by AVG - www.avg.com > Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13* > *** > > ** ** > > > > **** > > ** ** > > -- > Andy Abrams | Trademark Counsel > *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043*** > * > > (650) 669-8752 <https://www.google.com/voice#phones>**** > ------------------------------ > > No virus found in this message. > Checked by AVG - www.avg.com > Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13* > *** > ------------------------------ > > No virus found in this message. > Checked by AVG - www.avg.com > Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13* > *** > -- Andy Abrams | Trademark Counsel *Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752 <https://www.google.com/voice#phones>

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Monthly Status Report - Oct. 15th 2013
by Benedetta Rossi 15 Oct '13

15 Oct '13

Dear BC Members, Please find below the monthly Status Reports submitted by the Executive Committee and myself - BC Secretariat on October 15th, 2013. Elisa Cooper, BC Chair . Hosted two BC member calls . Developed first draft of singular / plural comments with support from Andy Abram, Ron Andruff and Steve DelBianco . Met with Credentials Committee to discuss membership applications . Privacy / Proxy Service Abuse Report comments - in process Steve DelBianco, Vice Chair for Policy Coordination * Prepared policy calendars (19-Sep and 3-Oct) and led policy discussion on member calls * Joined call with Credentials Committee * Presented BC comment at gTLD Security Forum in Washington DC * Drafted talking points and edited letter on singular/plural versions of new TLDs * Solicited drafting help for BC comments on WHOIS study, Risk Management Framework, IGO/INGO Recommendations, PIC DRP Chris Chaplow, Vice Chair for Finance and Operations . Prepared ICANN Finance update for BC member call . Reviewed material and joined call with Credentials Committee . IRTP-D Working Group . Meeting and calls with bank over SO/AC support xfers. . BC budget update prep with Secretariat. Marilyn Cade, CSG Representative . Ongoing engagement with CSG Excomm to finalize agenda for CSG for ICANN 48 . Reviewed Charter and advised Credential Committee of relevant sections /in their assessment of two applications . Identified issues with election of V.Chair/House, and engaged CSG Excomm . Responded to member questions about election procedures on BC list . Participated in BC ExComm call with CC . Participated in ICANN Advisory Group calls on ICANN Labs . Participated in BC Calls . Reviewed materials posted on Collision of Names . Supported Newsletter outline planning with Secretariat Benedetta Rossi, BC Secretariat: . Drafted election procedure for GNSO Councilor Election followed by NomCom Small Seat position . Liaised with ICANN staff as Returning and Verifying Officers for the elections . Worked on Newsletter outline and background work for Buenos Aires Newsletter . Worked on Budget documents in support of V. Chair Finance & Operations . Attended and facilitated BC member calls & CSG Executive Committee calls . Drafted minutes for BC member calls . Updated BC website with positions . Updated BC Wiki (conference call information, recordings, minutes, presentations, transcripts) . Responded to member queries . Liaised with Credentials Committee regarding two new applications. . Prepared materials and joined Excomm Call with Credentials Committee . Continued BC invoicing round for 2013 to close the round for 2013 and followed up with outstanding members . Submitted payments from BC bank account Thank you, -- Kind Regards, Benedetta Rossi BC Secretariat bc-secretariat(a)icann.org <https://community.icann.org/display/gnsobc/Home> https://community.icann.org/display/gnsobc/Home www.bizconst.org

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Re: [bc-gnso] EC launches consultation on Internet Governance
by Marilyn Cade 10 Oct '13

10 Oct '13

Thanks for this, Caroline. I met w some WC officials last week and got a bit of a flavor, but this is extremely useful to have for all BC members. The longer blog from Neelie is worth a reed, especially for BC members who are actively engaged in Internet governance and IGF, recalling that she has been a strong champion of the IGF. Sent via BlackBerry by AT&T -----Original Message----- From: Caroline Greer <greer(a)etno.be> Date: Thu, 10 Oct 2013 12:58:00 To: <bc-gnso(a)icann.org> Subject: [bc-gnso] EC launches consultation on Internet Governance Dear all, Of possible interest to some members - The European Commission has today launched a consultation on Internet Governance, which will run for 4 weeks. In her blog post of yesterday, Commissioner Kroes recalled recent events that have inspired the consultation, including the EU's 'legitimate concerns' regarding some TLD applications - see http://ec.europa.eu/commission_2010-2014/kroes/en/content/internet-governan…. The consultation document addresses some ICANN issues and the role of Governments within the GAC. Kind regards, Caroline Greer Regulatory and Public Affairs Manager ETNO (European Telecommunications Network Operators' Association) Avenue Louise, 54 Brussels 1000, Belgium + 32 2 227 1083

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EC launches consultation on Internet Governance
by Caroline Greer 10 Oct '13

10 Oct '13

Dear all, Of possible interest to some members – The European Commission has today launched a consultation on Internet Governance, which will run for 4 weeks. In her blog post of yesterday, Commissioner Kroes recalled recent events that have inspired the consultation, including the EU’s ‘legitimate concerns’ regarding some TLD applications – see http://ec.europa.eu/commission_2010-2014/kroes/en/content/internet-governan…. The consultation document addresses some ICANN issues and the role of Governments within the GAC. Kind regards, Caroline Greer Regulatory and Public Affairs Manager ETNO (European Telecommunications Network Operators’ Association) Avenue Louise, 54 Brussels 1000, Belgium + 32 2 227 1083

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New Developments with implications for business and role of governments within ICANN
by Marilyn Cade 10 Oct '13

10 Oct '13

This week, two interesting developments in the road to determining more -or less intergovernmental influence or simply more governments oversight at ICANN took place. Some BC members are following these developments closely, but others may be just becoming aware, so I am calling these developments to BC members attention, and suggest that we include a discussion about this, in our preparation for ICANN 48, along with our work on policy priorities. There are undoubtedly some interesting views on how this move by the CEO of ICANN will impact ICANN focus and perhaps the implications or larger external agendas geopolitically that implicate business interests both within and external to ICANN. It is definately a shift away from the Crocker earlier hope that ICANN would stay narrowly focused on its own agenda and seek co existence with other players. What happened this week: First, the I* organizations (ICANN, ISOC, IETF, IAB, RIRs, W3C) announced the Montevideo Agreement. Members will have already read this on the ICANN front page of website and perhaps wondered what it meant, and why there was no consultation with ICANN stakeholders before such an announcement. Then, just yesterday, the ICANN CEO/President flew to Brasil for a face to face with Brasil President and announced a new Summit to determine the fate and future of governance and oversight of ICANN and the IANA functions, stating a call for more governments to be engaged in governance of ICANN. http://blog.planalto.gov.br/brasil-vai-sediar-encontro-mundial-sobre-govern… This email does not include my personal perspective on whether this is a wise strategy, but is an attempt to make other BC members aware of new developments. What does this mean for the long run at ICANN in terms of focus on issues of priority to BC members is a good question. Where did this come from, and how did it get so well developed, without a consultation with the broader community of stakeholders I am just leaving the open consultation at the ITU on WSIS + 10 follow up, which of course, does include discussions about coordination fucntions, such as those performed by ICANN, but are much broader. This process culminates in a high level event presently scheduled for Egypt, April 2014, following the two week ITU Development Conference. Allies to the multi stakeholder approach to governance of the Internet public policy issues were successful at this just past meeting in resisting suggestions by a country -or three - to directly address IG, agreeing that these issues belong at Commission for Science and Technology, and at the IGF. ICC-BASIS and USCIB are following the Open consultation closely, as well as some individual BC members, and both may have additional comments. I suggest that the BC membership, and leadership will want to be aware of the external activities driven by the CEO that call for a change in both oversight, a change in the role of governments within ICANN. Surprise announcements of this nature mean a lot of questions will develop. If anyone wants more details, I am happy to respond. Marilyn Cade

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Minutes, Transcript, MP3 Recording & Policy Calendar: BC Members Call Oct. 4, 2013
by Benedetta Rossi 08 Oct '13

08 Oct '13

Dear BC Members, Please find attached the minutes, transcript and policy calendar for the BC members call which took place on Friday, Oct. 4th, 2013 at 11 a.m. EDT (3 p.m. UTC). The MP3 Recording can be found here: <https://icann.box.com/shared/static/ab01vx87bk8se7scpqaa.mp3> https://icann.box.com/shared/static/ab01vx87bk8se7scpqaa.mp3 Please note that all of these materials can also be found on the BC wiki here: https://community.icann.org/x/0YHbAQ Thank you, Kind Regards, Benedetta Rossi BC Secretariat bc-secretariat(a)icann.org <https://community.icann.org/display/gnsobc/Home> https://community.icann.org/display/gnsobc/Home www.bizconst.org

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{String similarity decision -- 5e2cea81-3212-45ed-b422-8e47a2b5364e}_50_504_T_00243_13_determination.pdf
by Phil Corwin 04 Oct '13

04 Oct '13

Google has prevailed in its string similarity objection against Donuts' .games... http://images.go.adr.org/Web/AmericanArbitrationAssociation/%7B5e2cea81-321…

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BC GNSO Councilor & Small Business Seat on Nominating Committee Elections: Nominations now open
by Benedetta Rossi 04 Oct '13

04 Oct '13

From: BC Secretariat Date: October 4, 2013 CC: Glen De Saint Gery, Returning Officer ,Robert Hoggarth, Verifying Officer, <mailto:bcvotes@hotmail.com> bcvotes(a)hotmail.com Re: BC GNSO Councilor & Small Business NomCom Seat Elections: Nominations now open Please note that this is the announcement for the BC elections for one of the two BC GNSO Councilor seats and the Small Business Seat on the Nominating Committee . The election process opens today, Oct. 4th, 2013. The election will be conducted by myself, BC Secretariat, fulfilling the role of Voting Officer for the duration of the election process. For the election process, all communications regarding elections will go to this email address: <mailto:bcvotes@hotmail.com> bcvotes(a)hotmail.com The attached election procedure covers: . time-frames for the three stage process outlined in the BC Charter . who is eligible to nominate, or accept a nomination . candidate statements . when the elections will be held, . as exception: ties in any election Please note that the nomination period opens today, Oct. 4th, 2013, and will close in two weeks, on Oct. 18th, 2013. The detailed description of the Elections and Voting process is provided in the attached document so that all members are fully informed of the Elections Process and can avail themselves fully of the opportunity to nominate or stand for office, and vote, if eligible. Once again, please refer to the attachment for the full details regarding this election. Transmitted by the BC Secretariat: Benedetta Rossi, serving as Voting Officer -- Kind Regards, Benedetta Rossi BC Secretariat bc-secretariat(a)icann.org <https://community.icann.org/display/gnsobc/Home> https://community.icann.org/display/gnsobc/Home www.bizconst.org

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