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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