See my initial comments on behalf of ICA below -- 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 ________________________________ From: owner-bc-gnso@icann.org [owner-bc-gnso@icann.org] On Behalf Of Zahid Jamil [zahid@dndrc.com] Sent: Tuesday, October 27, 2009 10:13 PM To: 'BC gnso' Subject: [bc-gnso] FW: STI-DT -- BC preliminary position statements Dear All, Will be sending out a draft of our position on the STI. Here’s something helpful Mike R put together. 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: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Wednesday, October 28, 2009 11:08 AM To: 'Zahid Jamil' Cc: 'Philip Sheppard' Subject: RE: STI-DT -- BC preliminary position statements TM Clearinghouse: 1. Sunrise processes must be standardized and mandatory. 2. TM notices (misnamed “IP claims”) must be mandatory: a. All applications for newTLD domain registrations will be checked against the TMC, regardless whether application is during sunrise period or thereafter b. If applied-for domain string anywhere contains text of trademark listed in TMC, then TM notice given to applicant per proposal listed in Staff recommendation, if domain is registered then TM owner is notified c. TM owners will have option also to trigger notices in the event that applied-for domain string includes the trademark string altered by typographical errors, as determined by an algorithmic tool. For example, yaho0.new would trigger a notice if Yahoo! elected to exercise this option. -- The range of typos must be narrowly circumscrined/otherwise a single trademark will show up against tens of thousands or more potential registrations, and a registrant may receive notice that his sought after domain bumps up against multiple marks. d. Domain applicant must affirmatively respond to the TM notice, either on screen or email, and registrar must maintain written records of such responses for every domain name. TM owner must get notice of every registration that occurs. URS: 1. Process as detailed by Staff must be mandatory in all newTLD registries --As we think the "optional" nature of URS as proposed is illusory because of the evaluation point loss and the heightened potential liability, no objection if the URS is a narrowly defined supplement to rather than substitute for the UDRP that preserves registrant due process. a. Substantive standard of UDRP must be exactly replicated in URS -- Thank you. The unexplained "and/or" in the staff version is unacceptable and must be repleaced by just "and". 2. Successful complainant must have option to transfer the name or cancel, if no appeal filed within 90 days from date of URS decision. -- Stll thinking about this one, as we have some concern that a transfer option heightens the potential for URS to displace UDRP. a. Successful complainant must also have option to have domain suspended until end of its current registration term, and then indefinitely flagged--Indefinite flagging problematic -- a given domain could well be used in a noninfringing way by a future registrant -- but again, our position is dependent on the scope of the URS. b. Flag shall be recorded in clearinghouse so that if anyone seeks to register such name(s) again, they would get a notice. 3. Complainant abuse shall be defined same as Reverse Domain Name Hijacking under UDRP.-- We continue to be very concerned that the sanctions for complainant abuse are inadequate -- especially since 5 abusive complaints in an initial batch of 25 domains charged against a single registrant would only count as 1 abuse. 4. Meaningful appeal process required, Staff hasn’t made any proposal on that yet, so we cannot comment. 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: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Monday, October 26, 2009 11:56 PM To: 'Zahid Jamil' Cc: 'Philip Sheppard' Subject: STI-DT -- BC preliminary position statements BC position on TM Clearinghouse and URS, notes for preliminary statement: Note the attendance at the meeting (Philip has it). TMC -- sunrise processes must be standard AND mandatory IP claims, POST-launch – unanimous except Palage -- scope of what triggers a hit, proposal is vague as to ‘yahoo’, or ‘yahoomail’ or ‘yaho0’ or ‘yahhoo’?? We require notice if TM string is replicated anywhere in the domain name that is applied for (except Palage). TM owners can elect how widely the notices would be sent, either to exact matches anywhere in the name, or also algorithmic typos. Domain applicant MUST affirmatively respond to the notice, either on screen or email. TM owner must get notice of every registration that occurs. URS – mandatory in all newTLD registries (unanimous except for ICA, who thinks in effect it will be adopted by everyone anyway); substantive standard of UDRP must be exactly replicated in URS; procedural elements and evidentiary threshold of Staff proposal; sanctions for complainant abuse (abuse defined same as Reverse Domain Name Hijacking under UDRP); meaningful appeal process required, Staff hasn’t made any proposal on that yet, so we cannot comment. Successful complainant must have option to transfer the name or cancel, if no appeal filed within 90 days from date of URS decision. Some members also would support an indefinite suspension, recorded in clearinghouse so that if anyone seeks to register again, they would get a notice. GPML – VRZN, Nokia, NetChoice & Marilyn think it should still be on the table, but not a deal-breaker, nobody else supports leaving it on the table. PDDM 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/>