True, but for those zones that may benefit from high-security, the proposed ICANN process will dumb-down and commoditize the most complex aspects of running a secure operation. Any applicant needing a high-security capability can simply contract with one of ICANN¹s approved high-security vendors. No need to spend years building an experienced and skilled security team with proven processes and standards .... just check the box! On 10/25/09 3:37 AM, "Marilyn Cade" <marilynscade@hotmail.com> wrote:
very few of the proposed registries are likely to want 'high security zone'.
From: mike@rodenbaugh.com To: marilynscade@hotmail.com; lizawilliams@mac.com; zahid@dndrc.com; sarah.deutsch@verizon.com CC: bc-gnso@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: Sun, 25 Oct 2009 00:20:14 -0700
Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course.
Also, I¹ve 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 practice¹ 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 zone¹ 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=... ttp://rodenbaugh.com/contact>
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@rodenbaugh.com To: lizawilliams@mac.com; zahid@dndrc.com CC: bc-gnso@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=... ttp://rodenbaugh.com/contact>
http://rodenbaugh.com <http://rodenbaugh.com/>
From: owner-bc-gnso@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@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 DAG3¹s 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 yesterday¹s 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 wasn¹t the case.
Instead the staff completely changed the PDDRP (see Jeff Neuman¹s 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 didn¹t let this go to the GNSO)
In short the IRT had recommended that:
Standard for Asserting a Claim 3 types: (a) The Registry Operator¹s 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 complainant¹s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator¹s Agreement and such breach is likely to cause confusion with complainant¹s 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 complainant¹s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant¹s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant¹s mark, or (iii) creating an impermissible likelihood of confusion with Complainant¹s 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 Operator¹s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant¹s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant¹s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant¹s mark, or
(c) creating an impermissible likelihood of confusion with the complainant¹s 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 operator¹s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant¹s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant¹s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant¹s mark, or (iii) creates an impermissible likelihood of confusion with the complainant¹s 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 doesn¹t 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 staff¹s 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 ³The Guidebook proposal does not mention a pre-registration process utilizing the Clearinghouse²
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)
It¹s 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 you¹re preaching to the converted¹ and generally said go ahead and scream about it¹ 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
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Tel: +92 21 5680760 / 5685276 / 5655025
Fax: +92 21 5655026
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From: 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@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 (³Specified TM Issues²).
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=... ttp://rodenbaugh.com/contact>
http://rodenbaugh.com <http://rodenbaugh.com/>
From: 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@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 GNSO¹s work on the Board request.
Best regards,
Margie Milam
Senior Policy Counselor
ICANN
-- Steve DelBianco Executive Director NetChoice http://www.NetChoice.org and http://blog.netchoice.org +1.202.420.7482