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 ~ @ # ! § % ^ © 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
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