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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 _____________

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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

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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.

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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

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Request for volunteers for Expert Advisory Groups
by Philip Sheppard Nov. 27, 2009

Nov. 27, 2009

I believe this is a request for individuals in their individual expert capacity. If it is of interest suggest a direct reply and cc the BC. Philip Dear Community Members, As part of ICANN's work on the Applicant Guidebook for new gTLDs and the Board's direction to resolve the potential for malicious conduct over-arching issue, ICANN Staff is soliciting knowledgeable volunteers to serve on two temporary, expert advisory groups to study and develop proposed solutions for: 1. Enhancing access to zone file information; and 2. Establishing a high security TLD verification program. Attached are briefing papers on these topics that will be used for each group's kick-off call that is tentatively scheduled for Tuesday, 8 December (attached in both Word and PDF format). The call time, dial-in information and any associated materials will be provided next week. Additional information about these groups and their activities will be posted via a link on ICANN's new gTLD webpage (<http://icann.org/en/topics/new-gtlds/related-en.htm>). Recordings or minutes from the groups' conference calls will be publicly archived, and their outputs will be publicly posted and considered as part of ongoing Applicant Guidebook work. ICANN Staff invites the participation of experts from GNSO Stakeholder Groups, constituencies, advisory committees, and other interested parties. We look forward to your participation in this work. If you are interested in participating in either or both groups or have any questions, please email me at <craig.schwartz(a)icann.org> by Thursday, 3 December. Thank you. Craig Schwartz Chief gTLD Registry Liaison

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final reminder -- Proposed draft for IRTP-B working group
by Mike O'Connor Nov. 26, 2009

Nov. 26, 2009

hi all, this is a last call for comments on the draft constituency statement that Berry, Chris and i prepared for the IRTP-B working group. i haven't gotten any comments so far, so i thought i'd give it one last go before pushing this along to the working group. my hope is to fold any comments you might have into the draft by late tomorrow, push that revised version (if there is one) back out to you all for final reactions over the weekend and push it to the working group early next week. if there aren't any comments today (loosely defined), this is the draft that i'll send. thanks! mikey - - - - - - - - - phone 651-647-6109 fax 866-280-2356 web www.haven2.com handle OConnorStP (ID for public places like Twitter, Facebook, Google, etc.)

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Re: [bc-gnso] status of elections?
by Marilyn Cade Nov. 25, 2009

Nov. 25, 2009

Sounds pratical and achievable Sent via BlackBerry by AT&T -----Original Message----- From: Philip Sheppard <philip.sheppard(a)aim.be> Date: Wed, 25 Nov 2009 13:47:31 To: <bc-gnso(a)icann.org> Subject: [bc-gnso] status of elections? Yes nominations would probably be wef 4 January. Exact election cycle will be advised in due course. Philip

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BC IRTP-B constituency statement
by Mike O'Connor Nov. 23, 2009

Nov. 23, 2009

hi Marika, here (better late than never) is the BC constituency statement for the IRTP-B working group. could you push this along to the right people? thanks, mikey - - - - - - - - - phone 651-647-6109 fax 866-280-2356 web www.haven2.com handle OConnorStP (ID for public places like Twitter, Facebook, Google, etc.)

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BC Comments on DAG v.3
by Mike Rodenbaugh Nov. 23, 2009

Nov. 23, 2009

Attached comments respectfully submitted by the BC. Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 (415) <http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer =http://rodenbaugh.com/contact> 738-8087 http://rodenbaugh.com <http://rodenbaugh.com/>

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FW: DRAFT BC Comments re New gTLD DAG v.3
by Mike Rodenbaugh Nov. 21, 2009

Nov. 21, 2009

I believe there has not been a single comment on this since posting on the 12th, but Ron has sought to clarify one point as requested. I have tried to clarify further, and will submit the attached v.2 as the BC's adopted position by the deadline this Sunday, the 22d. I will try to consider and incorporate any comments that come in before 5pm PST on Sunday. Thanks, Mike 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: Mike Rodenbaugh [mailto:icann@rodenbaugh.com] Sent: Thursday, November 12, 2009 10:51 AM To: 'bc - GNSO list' Subject: DRAFT BC Comments re New gTLD DAG v.3 Hi all, With many thanks to Ron Andruff, David Fares and Zahid Jamil for their inputs thus far, here is a DRAFT of BC comments to be submitted by the comment deadline of Nov. 22 if possible. Please indicate any objections, questions, suggested edits or adds, etc. ASAP. Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 (415) <http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer =http://rodenbaugh.com/contact> 738-8087 http://rodenbaugh.com <http://rodenbaugh.com/>

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