Zahid, thanks for your continued hard work on these issues. The GPML is dead. It would have provided extremely narrow protection anyway. It probably would have constituted a ‘prior restraint’ in violation of US law, and probably would have ended up with lawsuits to that effect. I think that a mandatory Clearinghouse, including mandatory IP Claims service, coupled with a mandatory URS, would effectively solve the problem of defensive registrations. And in any event the proposed GPML would only have slightly assisted a few of the most famous TM owners with that problem. TM Clearinghouse - the “Claims” service must be mandatory. There is no reason to make it optional. It should be renamed the “Notice” service. Every domain reg application must be checked against the database, and if a match then a notice goes out as specified in the proposal. I agree we should try to broaden the range of ‘hits’ that would cause a notice, since it is only a notice and there is no ability to block a registration. Notice of typosquats is the largest purpose behind this concept. URS - must be mandatory. There is no reason to make it optional. I agree with Sarah and others that it must permit transfer if elected by the TM owner, and not just suspension and eventual release into the pool. I am also sensitive to the ‘due process’ arguments, so thought we should look for some middle ground. I had he idea that the domains could be suspended for three months after the URS decision, and if no appeal than the TM owner could elect transfer at that point. That should alleviate the due process concerns somewhat, particularly if another notice of the decision is sent every month in the meanwhile. I had a discussion with some of the IRT members last night, and they thought this idea was workable. How do BC members feel of that option? Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 (415) <http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer =http://rodenbaugh.com/contact> 738-8087 http://rodenbaugh.com <http://rodenbaugh.com/> From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Zahid Jamil Sent: Monday, October 26, 2009 9:50 AM To: 'bc - GNSO list' Subject: [Bulk] [bc-gnso] IMPORTANT - Decision BC has to make on new gTLD TM issues Importance: High 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. 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