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IMPORTANT - Decision BC has to make on new gTLD TM issues
by Zahid Jamil Oct. 26, 2009

Oct. 26, 2009

Dear All, Have spent a good 3 hours discussing these issues with the far right on the Non-Commercial SG (will update in the BC meeting tomorrow). In the meantime, as promised in the Huddle here is, a short brief to help with discussion on BC strategy in tomorrow’s meeting: Not part of the GNSO work requested in the Board letter: 1. GPML: This has been rejected by the Board and so the Board has not sent this to the GNSO for any consensus. There has been much opposition within the ICANN community to this and was the main target of criticism. It seems there also may be some opposition from the GAC. However, this leaves open the problem of defensive registration. BC has to decide what its position is to be going forward. This would not be an issue we need to decide on with respect to the GNSO working group to work on URSS and IP Clearing House as this is not part of the work assigned by the Board to the GNSO in its letter. But a general position in this regard to be communicated so that the Board is aware of our view may be an idea. 2. Post Delegation: This too has not been sent by the Board to the GNSO for any work on reaching consensus. It is currently open for public comment and the BC can make comments in this regard. The Post Delegation is not in line with the IRT Report (many reasons mentioned in earlier posts so will not repeat here). The Staff Proposal would put the interests of both TM holders and Communities at risk since once the delegation is made they would not have any recourse or rights to institute Post Delegation Disputes under this policy based on: ・ breach of representations in the gTLD application ・ breach of Registry Agreements ・ systemic breach of TMs in the gTLD as a result of omissions or lacunas in Registry Operations or where the Registry can simply turn ‘a blind eye’ to the infringements This is what the Post Delegation was initially designed for and so not having this in the Staff proposal makes the Solution effectively irrelevant. The BC needs to decide on its response to the Staff Proposal for posting of comments Work Board has asked GNSO to work/decide on: 1. IP Clearing House Staff Proposal is not as problematic as other proposals. There are a few important issues though. Here the object of the IRT was to allow IP Rights holders to voluntarily sign up their IP rights (not just TM) with a centralised database (Clearing house to validate rights). It would be mandatory for New gTLD Registries Operators to connect with the Clearing house. In case of a Sunrise the New gTLD Operator would have to provide a Sunrise registration process verified by Clearinghouse data, and incorporates a Sunrise Dispute Resolution Policy (SDRP). In case of a Claims Service, if a registrant applies for a domain name matches with a TM ‘identical’ to one in the IP Clearing house this will prompt a notification to the registrant of the TM and require registrant to make warranties as to the domain name being registered. IRT had recommended that ‘identical match’ mean: In this regard: (a) spaces contained within a trademark that are replaced by hyphens (and vice versa), (b) spaces, hyphens, punctuation or special characters contained within a trademark that are spelt out with appropriate words describing it (Including but not limited to ~ @ # ! § % ^ (c) and &.), and (c) punctuation or special characters contained within a trademark that are omitted or replaced by spaces or hyphens will be considered identical matches. In the Staff Proposal identical match’ means: ‘“identical” is defined to mean that the domain name consists of the complete and identical textual element of the trademark.’ As can be seen the Staff definition of identical match is very narrow. BC needs to decide whether to advocate IRT definition or also seek inclusion of Typosquatting and/or extend match to visual, aural? In the Staff Proposal Pre‐registration complaint process in URS is not included. BC needs to decide whether such pre-registration for use in URS is necessary. Not clear whether IP Clearing house connectivity with New gTLD Registry Operators is mandatory or not. 2. URS: The Staff proposal (different from the IRT) only recommends this as a ‘best practice’ and not mandatory for a New gTLD. Staff suggest this is only an interim solution “until and if policy development work in this area is undertaken by the GNSO which may adopt this or a similar system for use by all registries”. The link of the URS of pre-registration in the IP Clearing house have been removed. The IRT had suggested a fee be imposed on registrant to file an answer if more than 26 domains are at issue. Staff Proposal removes this requirement. Notification under IRT of URS was supposed to be by email. Staff Proposal includes the requirement of paper as well as fax notification in addition to email. Only remedy: “that domain name shall be suspended for the balance of the registration period. It will point to a site with a standardized post stating that it was suspended as a result of a URS proceeding. The Whois record shall be revised to reflect that the domain name is on hold and cannot be transferred for the life of the registration.” This may lead to the same domain name being put back into the pool and snapped up by cybersquatters. BC needs to decide whether transfer of the domain name to the Complainant (for a fee and/or other conditions) is to be advocated. Also should BC advocate this be a mandatory and permanent Rights Protection Mechanism. It may also be an idea to advocate that all these RPMs be reviewed periodically. Once new gTLDs are launched there will be more data to enable revisiting these RPMs for improvement and possibly addressing problems not earlier foreseeable. Getting late now so will post more if necessary in morning. 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.

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Re: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3
by Phil Corwin Oct. 26, 2009

Oct. 26, 2009

With all due respect, if the BC's efforts are devoted to trying to revert to the IRT proposals rather than trying to find common ground with those who opposed them (as Zahid is commendably trying to achieve) the result is likely to be an inability to achieve GNSO consensus and the Board's default adoption of the staff assimilations that no one seems happy with. 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: Deutsch, Sarah B <sarah.b.deutsch(a)verizon.com>; mike(a)rodenbaugh.com <mike(a)rodenbaugh.com>; Marilyn Cade <marilynscade(a)hotmail.com>; Liz Williams <lizawilliams(a)mac.com>; Zahid Jamil <zahid(a)dndrc.com> Cc: bc - GNSO list <bc-gnso(a)icann.org> Sent: Mon Oct 26 03:09:17 2009 Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Colleagues, While I am not in Seoul so cannot gauge the dynamics, I suggest that the BC advocate adoption of the IRT's recommendations in their entirety. Thanks, David From: owner-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Deutsch, Sarah B Sent: Sunday, October 25, 2009 6:09 PM To: mike(a)rodenbaugh.com; Marilyn Cade; Liz Williams; Zahid Jamil Cc: bc - GNSO list Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch(a)verizon.com ________________________________ From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Sunday, October 25, 2009 3:20 AM To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B Cc: 'bc - GNSO list' Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course. Also, I’ve realized just now that the IRT itself did NOT recommend that all domain registrations be checked against the Clearinghouse database, so long as the registry enacts a sunrise perios, and so the URS is enacted and mandatory. Thus Staff has not watered down that aspect of the proposal, except that they have proposed that the URS be denominated a ‘best practice’ rather than a mandatory requirement. I strongly believe that both elements must be mandatory, and urge that as the BC position. Obviously, allowing registries to offer only a sunrise period, and no other RPMs for trademark owners, is no improvement whatsoever over the previous rollouts of TLDs. Of course it will be very difficult to get consensus to something even more stringent than recommended by the IRT, but I think we need to try. A fallback option is to require registries to do Clearinghouse lookups, and provide URS, in order to get the new ‘high security zone’ designation. But my gut feel on that initiative is that it is worthless, few registrants will care, thus few contract parties will care. 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/> From: Marilyn Cade [mailto:marilynscade@hotmail.com] Sent: Saturday, October 24, 2009 11:58 PM To: Mike Rodenbaugh; Liz Williams; Zahid Jamil; Sarah Deutsch Cc: bc - GNSO list Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Have the actual brand holders from large BC members agreed with that perspective? I've added Sarah, who is an expert on these issues -- I think that there was a few that there needed to be a number of safeguards, not only one or two. ________________________________ From: icann(a)rodenbaugh.com To: lizawilliams(a)mac.com; zahid(a)dndrc.com CC: bc-gnso(a)icann.org Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Date: Sat, 24 Oct 2009 22:53:10 -0700 Thanks Zahid. Just want to note my strong opinion that, if the Clearinghouse must be checked against every domain registrations, with conflicts resulting in notice to the applicant, and the URS is mandatory for all new TLD registries, then I believe there will be sufficient protections such that TM owners will not be forced to defensively register their marks. Interested to hear if anyone has a different view, and their reasoning, as I expect the BC will develop a position statement that includes these key points. 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/> From: owner-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Liz Williams Sent: Saturday, October 24, 2009 8:54 PM To: Zahid Jamil Cc: bc-gnso(a)icann.org Subject: Re: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Zahid Thanks very much for this analysis. It is always disturbing when months of community time and organisational resources are of questionable value. It also points again to the difficulty of trying to do what is essentially policy development outside of the normal policy development channels but that is a debate for another day. However, what is your suggestion for a way forward? You make a "scream about it" note at the end but that most likely won't be very productive. It seems to be that the Board is going to be required to be the final decision maker given it is highly unlikely that the Council will reach consensus -- given that lack of consensus was the whole reason why the IRT was established anyway. Following Ron's request for items for tonight's meeting, I suggest that the strategy forward is the subject of tonight's huddle at 6pm in the bar. Gin and tonic will be required! Liz On 25 Oct 2009, at 02:10, Zahid Jamil wrote: This document was prepared for a meeting held yesterday between the IRT and Staff (Kurt, Dan) and a Board Member (Bruce). Here are some points that may interest members: The outcome from Staff in the DAG3 (http://www.icann.org/en/topics/new-gtlds/dag-en.htm) and those mentioned on for Rights Protection Mechanism (http://www.icann.org/en/public-comment/#prpm-new-gtlds -difficult to find on the website and not connected to the DAG3’s website) DO NOT REFLCT the IRT Recommendations. It seems that the Staff has completely reengineered the solutions. To a large extent even though the title of the solution may be the same but the contents are effectively not what the IRT recommended. So to give members a feel of the process and what Staff acknowledged in yesterday’s meeting: Focusing on 5 Solutions: 1. Reserved List (GPML) 2. Central IP Database (IP Clearinghouse) 3. Rapid Suspension (URSS) 4. Rights holders right to take a Registry through a Dispute Resolution after the gTLD is launched (Post Delegation Dispute Resolution Procedure PDDRP) 5. Thick Whois Eg. 1 - So for instance, in regards PDDRP: There were no comments from the community The Board agreed at the higher level to a PDDRP In my view this would have mean that Staff would go ahead and incorporate the IRT solution (maybe just maybe filling in some holes) into DAG3 or the Rights Protection Mechanism. This wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman’s article http://www.circleid.com/members/2921/ ) So as I put in the meeting yesterday Staff swapped the cards on the IRT, the community, and the Board! (But since this was too tricky they didn’t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim – 3 types: (a) The Registry Operator’s manner of operation or use of a TLD is inconsistent with the representations made in the TLD application as approved by ICANN and incorporated into the applicable Registry Agreement and such operation or use of the TLD is likely to cause confusion with the complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s mark; or (c) The Registry Operator manner of operation or use of the TLD exhibits a bad faith intent to profit from the systemic registration of domain name registrations therein, which are identical or confusingly similar to the complainant’s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s mark. For a Registry Operator to be liable for toplevel infringement, a complainant must assert and prove by clear and convincing evidence that the Registry Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s mark. For a Registry Operator to be liable for the conduct at the second level, the complainant must assert and prove by clear and convincing evidence: (a) that there is substantial ongoing pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) of the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s mark. In this regard, it would not be nearly enough to show that the registry operator was on notice of possible of trademark infringement through registrations in the gTLD. So basically if a Rights holder or a community that doesn’t object at the application stage since the representations in the Application and the Registry Agreement seem fine has no recourse subsequently to assert and challenge in case there is a breach of the Registry Agreement or those representations in the application. ICANN staff’s response was: we will independently deal with enforcement brought to our notice. Basically trust us to enforce Registry contracts. Eg. 2 - In regards the URSS: ICANN staff has changed the Rapid Suspension from MANDATORY to BEST PRACTICE Also delinked URSS from the GPML and Clearing House “The Guidebook proposal does not mention a pre‐registration process utilizing the Clearinghouse” And since the Board was advised that this seems more like Policy the Board has sent a letter to the GNSO to either: a) approve the staff model (details of which can be found here http://www.icann.org/en/topics/new‐gtlds/gnso‐consultations‐reports‐en.htm) which is an assimilation of the IRT work and Board concerns), or b) propose an alternative that is equivalent or more effective and implementable. A six weeks window has been allowed. This basically means that if GNSO cannot reach consensus then Staff Model is likely to go through The IRT proposals thus have been side tracked and swapped. Example 3 – Reserved List (GPML) It’s just gone – Staff had said that they would complete their research (about strongest global brands- get data about global brands and see how many countries these brands are registered in) and then come back – but the GPML was just removed – no explanation and without completing this study. SO NO RESERVED LIST – AND NO SOLUTION TO DEFENSIVE REGISTRATIONS! Generally: In response to protestations Kurt said in regards some aspects ‘you’re preaching to the converted’ and generally said ‘go ahead and scream about it’ – basically do what the Non commercials are doing. Similarly 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<http://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-bc-gnso(a)icann.org<mailto:owner-bc-gnso@icann.org> [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Sunday, October 25, 2009 7:19 AM To: bc-gnso(a)icann.org<mailto:bc-gnso@icann.org> Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Further fyi, re STI (“Specified TM Issues”). 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/> From: owner-gnso-sti(a)icann.org<mailto:owner-gnso-sti@icann.org> [mailto:owner-gnso-sti@icann.org] On Behalf Of Margie Milam Sent: Saturday, October 24, 2009 6:01 PM To: Council GNSO; gnso-sti(a)icann.org<mailto:gnso-sti@icann.org> Subject: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Dear All, As we discussed yesterday, attached is a document that summarizes the key differences between the IRT and the Applicant Guidebook Version 3. This matrix seeks to succinctly present areas of contrast and briefly explain the rationale for the differences. Please review this draft and let me know whether there is any other information that should be included to facilitate the GNSO’s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect.

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20% of resolutions!???!
by Steve DelBianco Oct. 26, 2009

Oct. 26, 2009

In the Rr/Ry separation session Richard (eNom) said, ³Registry sees only 20% of resolutions due to cached nature of lookups.² But hold on, the Ry sees 100% of non-existing records from type-in traffic. And THAT¹S the data that Registrars want desperately. THAT¹S why they used to use AGP to taste names for 5 days to see what kind of type-in traffic landed there. Isn¹t eNom just trying to find an innovative way to replace Domain Name tasting?

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RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3
by Deutsch, Sarah B Oct. 26, 2009

Oct. 26, 2009

Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch(a)verizon.com ________________________________ From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Sunday, October 25, 2009 3:20 AM To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B Cc: 'bc - GNSO list' Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course. Also, I’ve realized just now that the IRT itself did NOT recommend that all domain registrations be checked against the Clearinghouse database, so long as the registry enacts a sunrise perios, and so the URS is enacted and mandatory. Thus Staff has not watered down that aspect of the proposal, except that they have proposed that the URS be denominated a ‘best practice’ rather than a mandatory requirement. I strongly believe that both elements must be mandatory, and urge that as the BC position. Obviously, allowing registries to offer only a sunrise period, and no other RPMs for trademark owners, is no improvement whatsoever over the previous rollouts of TLDs. Of course it will be very difficult to get consensus to something even more stringent than recommended by the IRT, but I think we need to try. A fallback option is to require registries to do Clearinghouse lookups, and provide URS, in order to get the new ‘high security zone’ designation. But my gut feel on that initiative is that it is worthless, few registrants will care, thus few contract parties will care. 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/> From: Marilyn Cade [mailto:marilynscade@hotmail.com] Sent: Saturday, October 24, 2009 11:58 PM To: Mike Rodenbaugh; Liz Williams; Zahid Jamil; Sarah Deutsch Cc: bc - GNSO list Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Have the actual brand holders from large BC members agreed with that perspective? I've added Sarah, who is an expert on these issues -- I think that there was a few that there needed to be a number of safeguards, not only one or two. ________________________________ From: icann(a)rodenbaugh.com To: lizawilliams(a)mac.com; zahid(a)dndrc.com CC: bc-gnso(a)icann.org Subject: RE: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Date: Sat, 24 Oct 2009 22:53:10 -0700 Thanks Zahid. Just want to note my strong opinion that, if the Clearinghouse must be checked against every domain registrations, with conflicts resulting in notice to the applicant, and the URS is mandatory for all new TLD registries, then I believe there will be sufficient protections such that TM owners will not be forced to defensively register their marks. Interested to hear if anyone has a different view, and their reasoning, as I expect the BC will develop a position statement that includes these key points. 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/> From: owner-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Liz Williams Sent: Saturday, October 24, 2009 8:54 PM To: Zahid Jamil Cc: bc-gnso(a)icann.org Subject: Re: Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Zahid Thanks very much for this analysis. It is always disturbing when months of community time and organisational resources are of questionable value. It also points again to the difficulty of trying to do what is essentially policy development outside of the normal policy development channels but that is a debate for another day. However, what is your suggestion for a way forward? You make a "scream about it" note at the end but that most likely won't be very productive. It seems to be that the Board is going to be required to be the final decision maker given it is highly unlikely that the Council will reach consensus -- given that lack of consensus was the whole reason why the IRT was established anyway. Following Ron's request for items for tonight's meeting, I suggest that the strategy forward is the subject of tonight's huddle at 6pm in the bar. Gin and tonic will be required! Liz On 25 Oct 2009, at 02:10, Zahid Jamil wrote: This document was prepared for a meeting held yesterday between the IRT and Staff (Kurt, Dan) and a Board Member (Bruce). Here are some points that may interest members: The outcome from Staff in the DAG3 (http://www.icann.org/en/topics/new-gtlds/dag-en.htm) and those mentioned on for Rights Protection Mechanism (http://www.icann.org/en/public-comment/#prpm-new-gtlds -difficult to find on the website and not connected to the DAG3’s website) DO NOT REFLCT the IRT Recommendations. It seems that the Staff has completely reengineered the solutions. To a large extent even though the title of the solution may be the same but the contents are effectively not what the IRT recommended. So to give members a feel of the process and what Staff acknowledged in yesterday’s meeting: Focusing on 5 Solutions: 1. Reserved List (GPML) 2. Central IP Database (IP Clearinghouse) 3. Rapid Suspension (URSS) 4. Rights holders right to take a Registry through a Dispute Resolution after the gTLD is launched (Post Delegation Dispute Resolution Procedure PDDRP) 5. Thick Whois Eg. 1 - So for instance, in regards PDDRP: There were no comments from the community The Board agreed at the higher level to a PDDRP In my view this would have mean that Staff would go ahead and incorporate the IRT solution (maybe just maybe filling in some holes) into DAG3 or the Rights Protection Mechanism. This wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman’s article http://www.circleid.com/members/2921/ ) So as I put in the meeting yesterday Staff swapped the cards on the IRT, the community, and the Board! (But since this was too tricky they didn’t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim – 3 types: (a) The Registry Operator’s manner of operation or use of a TLD is inconsistent with the representations made in the TLD application as approved by ICANN and incorporated into the applicable Registry Agreement and such operation or use of the TLD is likely to cause confusion with the complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s mark; or (c) The Registry Operator manner of operation or use of the TLD exhibits a bad faith intent to profit from the systemic registration of domain name registrations therein, which are identical or confusingly similar to the complainant’s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s mark. For a Registry Operator to be liable for toplevel infringement, a complainant must assert and prove by clear and convincing evidence that the Registry Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s mark. For a Registry Operator to be liable for the conduct at the second level, the complainant must assert and prove by clear and convincing evidence: (a) that there is substantial ongoing pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) of the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s mark. In this regard, it would not be nearly enough to show that the registry operator was on notice of possible of trademark infringement through registrations in the gTLD. So basically if a Rights holder or a community that doesn’t object at the application stage since the representations in the Application and the Registry Agreement seem fine has no recourse subsequently to assert and challenge in case there is a breach of the Registry Agreement or those representations in the application. ICANN staff’s response was: we will independently deal with enforcement brought to our notice. Basically trust us to enforce Registry contracts. Eg. 2 - In regards the URSS: ICANN staff has changed the Rapid Suspension from MANDATORY to BEST PRACTICE Also delinked URSS from the GPML and Clearing House “The Guidebook proposal does not mention a pre‐registration process utilizing the Clearinghouse” And since the Board was advised that this seems more like Policy the Board has sent a letter to the GNSO to either: a) approve the staff model (details of which can be found here http://www.icann.org/en/topics/new‐gtlds/gnso‐consultations‐reports‐en.htm) which is an assimilation of the IRT work and Board concerns), or b) propose an alternative that is equivalent or more effective and implementable. A six weeks window has been allowed. This basically means that if GNSO cannot reach consensus then Staff Model is likely to go through The IRT proposals thus have been side tracked and swapped. Example 3 – Reserved List (GPML) It’s just gone – Staff had said that they would complete their research (about strongest global brands- get data about global brands and see how many countries these brands are registered in) and then come back – but the GPML was just removed – no explanation and without completing this study. SO NO RESERVED LIST – AND NO SOLUTION TO DEFENSIVE REGISTRATIONS! Generally: In response to protestations Kurt said in regards some aspects ‘you’re preaching to the converted’ and generally said ‘go ahead and scream about it’ – basically do what the Non commercials are doing. Similarly 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 <http://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-bc-gnso(a)icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Sunday, October 25, 2009 7:19 AM To: bc-gnso(a)icann.org Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Further fyi, re STI (“Specified TM Issues”). 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/> From: owner-gnso-sti(a)icann.org [mailto:owner-gnso-sti@icann.org] On Behalf Of Margie Milam Sent: Saturday, October 24, 2009 6:01 PM To: Council GNSO; gnso-sti(a)icann.org Subject: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3 Dear All, As we discussed yesterday, attached is a document that summarizes the key differences between the IRT and the Applicant Guidebook Version 3. This matrix seeks to succinctly present areas of contrast and briefly explain the rationale for the differences. Please review this draft and let me know whether there is any other information that should be included to facilitate the GNSO’s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN

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Breakfast
by philip.sheppard＠aim.be Oct. 26, 2009

Oct. 26, 2009

Stakeholder Group Breakfast tomorrow morning at 8:00 until 10:00 in Belle-Vue, Level 36.

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FW: ALAC & BC - can we find common ground on RPMs?
by Zahid Jamil Oct. 26, 2009

Oct. 26, 2009

Dear All, There have been indications from the ALAC that they may be able to find common ground with Business interests in connection the Rights Protection Mechanisms. Have sent them informal email below to see if we can find some common ground to help with the response of the GNSO to the Board’s letter with respect to URSS and IP Clearing house. Am hoping to remain optimistic but realise that there may be detractors on their side so will be cautious. 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: Monday, October 26, 2009 11:17 AM To: 'Cheryl Langdon-Orr' Subject: RE: ALAC & BC - can we find common ground on RPMs? Dear Cheryl, Here are my comments for circulation to your ALAC: The Commercial Business Users Constituency has been and remains concerned about the inadequacy of Rights Protection Mechanisms with respect to the New gTLDs Program. The recent development of the Board Letter to the GNSO and the Staff Proposals for 3 RPMs (URSS, IP Clearing house and Post Delegation). The BC had made a statement supporting the IRT report as going in the right direction although many in the BC thought it may have not gone far enough and some may have had reservations. However, the Staff versions of the RPMs are seen as being nowhere near adequacy. In fact in my personal interactions with many who may have had divergent views regarding the IRT solutions, there seems agreement that the Staff proposals are probably even more tenable. It seems from the Board letter that the Staff recommendations are the default and if the GNSO cannot achieve consensus the staff proposals may be what the Board is left with to implement. I am hoping that possibly the GNSO may be able to achieve some common ground and ward off such a result. I am therefore attempting to see if the ALAC would be willing to informally discuss possibly reaching common ground so we can together and possibly with other in the GNSO hopefully build a consensus on the issues. In this regard here very briefly are some thoughts we may consider in terms of the Rights Protection issues in new gTLDs (beyond just the Board letter to the GNSO): The IRT suggested 5 Solutions: 1. Reserved List (GPML) 2. Central IP Database (IP Clearinghouse) 3. Rapid Suspension (URSS) 4. Rights holders right to take a Registry through a Dispute Resolution after the gTLD is launched (Post Delegation Dispute Resolution Procedure PDDRP) 5. Thick Whois - this was included in the DAG3 However, the outcome from Staff in the DAG3 ( <http://www.icann.org/en/topics/new-gtlds/dag-en.htm> http://www.icann.org/en/topics/new-gtlds/dag-en.htm) and those mentioned in the Staff Rights Protection Mechanism Proposals ( <http://www.icann.org/en/public-comment/#prpm-new-gtlds> http://www.icann.org/en/public-comment/#prpm-new-gtlds only URS & IP Clearing house-difficult to find on the website and not connected to the DAG3’s website) DO NOT REFLCT the IRT Recommendations. One RPM ie the Post Delegation Dispute Resolution Policy difficult to find from the main page is available on <http://icann.org/en/topics/new-gtlds/comments-3-en.htm#files> http://icann. org/en/topics/new-gtlds/comments-3-en.htm#files up for public comments. This I believe is an important RPM and seems to have had less exposure to public discussion and possibly will therefore attract little public comment. I would suggest that we highlight this RPM as well (not being distracted simply by IP Clearing house and URSS) and also comment on this RPM. So of the 5 solutions the GNSO letter only puts forward 2: GPML seems to not have moved much forward and dropped without completing the research that ICANN Staff had promised - (irrespective of whether this was an acceptable solution or not the decision should have followed after such a study had been made public). Thus, the problem of DEFENSIVE REGISTATIONS still remains UNADDRESSED in the DAG3 and the Staff Proposed Rights Protection Mechanisms. Post Delegation has not been sent to the GNSO in the Board letter. Instead the staff version has been put up for public comments at <http://icann.org/en/topics/new-gtlds/comments-3-en.htm#files> http://icann. org/en/topics/new-gtlds/comments-3-en.htm#files (I believe this version does not provide adequate remedies with respect to Rights holders and even communities) Here’s a comparison: From IRT Recommendation: Standard for Asserting a Claim - 3 types: (a) The Registry Operator’s manner of operation or use of a TLD is inconsistent with the representations made in the TLD application as approved by ICANN and incorporated into the applicable Registry Agreement and such operation or use of the TLD is likely to cause confusion with the complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s mark; or (c) The Registry Operator manner of operation or use of the TLD exhibits a bad faith intent to profit from the systemic registration of domain name registrations therein, which are identical or confusingly similar to the complainant’s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s mark. From Staff Proposal up for Comments: For a Registry Operator to be liable for toplevel infringement, a complainant must assert and prove by clear and convincing evidence that the Registry Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s mark. For a Registry Operator to be liable for the conduct at the second level, the complainant must assert and prove by clear and convincing evidence: (a) that there is substantial ongoing pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) of the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s mark. In this regard, it would not be nearly enough to show that the registry operator was on notice of possible of trademark infringement through registrations in the gTLD. So basically if a Rights holders or a community (if that is allowed) doesn’ t object at the application stage possibly taking comfort from the representations in the Application and the Registry Agreement they have no recourse subsequently to assert and challenge under this Proposal, in case there is a breach of those representations or the Registry Agreement in the application. The use of the words ‘affirmative conduct’ in the Staff proposal to my mind imply that TM owners can only trigger Post Delegation if there is clear and convincing proof that the Registry Operator actually and positively acted in a manner as described. However, this leaves open omission and recklessness or turning a ‘blind eye’ to systemic abuse on the gTLD. Moreover, if there is a change in the nature of use of the gTLD in breach of the representations made in the new gTLD application or the Registry Agreement (which the IRT had recommendation had addressed), the TM Owner / aggrieved party cannot trigger a Post Delegation Dispute Resolution. So there seems no protection awarded to TM Owners and even communities (if this is allowed) in case any of this happens once the gTLD has been delegated. Staff’s response to this issue has been - ‘Registry Agreement is a bilateral contract and ICANN would enforce it’ - basically we should trust ICANN to enforce the Registry Agreements. In regards the URS: ICANN staff has changed the Rapid Suspension from MANDATORY to BEST PRACTICE Also delinked URSS from the Clearing House. Staff admits that “The Guidebook proposal does not mention a pre‐registration process utilizing the Clearinghouse” And since the Board was advised that this seems more like Policy the Board has sent a letter to the GNSO to either: a) approve the staff model (details of which can be found here http://www.icann.org/en/topics/new‐gtlds/gnso‐consultations‐reports‐ en.htm), which is an assimilation of the IRT work and Board concerns), or b) propose an alternative that is equivalent or more effective and implementable. A six weeks window has been allowed. This basically means that if GNSO cannot reach consensus then Staff Model is likely to go through. It would help to see if we can reach common ground on the URSS being a fair, due process, quick, cost effective and balanced process and also see if we can reach common ground as to which cases will it apply. The intent, I believe, was that it apply to egregious or clear cut cases of cyber squatting and related malicious abuse (I paraphrase). So if we can agree through maybe a list of illustrations or some other means what that means to all sides then we would have been able to move forward together. Sorry for the rushed note. I hope to be able also provide more insight on the IP Clearing house some time later - just pressed for time so sending this out to you asap. I would welcome the possibility to informally meet with ALAC reps to see if we can find common ground. It is vital that we reject the Staff Model as it stands at the 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 <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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CSG agenda
by philip.sheppard＠aim.be Oct. 26, 2009

Oct. 26, 2009

Based on some ISP and IPC input please note a small revision to the CSG agenda. ------------------------- 1. Unresolved issues for new gTLDs: IRT recommendations, anti-malicious conduct, Q&A Kurt Pritz & Doug Brent (lead IPC) 2. R&R separation / dot brand : do we have a joint view? (lead ISP) 3. How do we work towards policy and other coordination within the CSG? (lead BC) 4 Abstentions Wolf Ulrich 5. APWG - RR

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Revised BC agenda Seoul
by philip.sheppard＠aim.be Oct. 26, 2009

Oct. 26, 2009

A slight revision as a function on discussions that have been running in Seoul. ------------------- 1. Contractual compliance role in addressing malicious conduct as part of the new gTLD program - Q&A David Giza, Compliance 15 min 2. Unresolved issues new TLDS IRT and GNSO work Zahid Draft guidebook 3 Mike 3. Charter remaining issue 4. Council chair and vice chair - folo-on from CSG 5. Progress anti-abuse mechanisms Mike 6. Oversight: AOC Philip 7. Larger BC members and the e-mail list 8. Secretariat

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NetChoice blog post from Seoul ICANN meeting
by Steve DelBianco Oct. 26, 2009

Oct. 26, 2009

My first post form ICANN meeting, regarding IDN fast track and the Guitar hero. http://blog.netchoice.org -- Steve DelBianco Executive Director NetChoice http://www.NetChoice.org and http://blog.netchoice.org +1.202.420.7482

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Monday Night Huddle in Seoul
by Ron Andruff Oct. 26, 2009

Oct. 26, 2009

Hello everyone, The nightly huddles are becoming an effective method for catching up on the various dialogues we are having with other community members, discussing the hot issues of the day and strategizing a way forward vis-à-vis how we best manage goals we set to best serve the Business Constituency members. For those who have just arrived here in Seoul, we meet at days end (tonight at 18:00) in the lobby bar and look forward to seeing you. For those who are following remotely, if there are issues you would like us to discuss or pursue, please send them through to me and I will be sure to bring them to the attention of those on site. Looking forward to seeing everyone again this evening. 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

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