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
With all due respect, if the BC's efforts are devoted to trying to revert to the IRT proposals rather than trying to find common ground with those who opposed them (as Zahid is commendably trying to achieve) the result is likely to be an inability to achieve GNSO consensus and the Board's default adoption of the staff assimilations that no one seems happy with. Philip S. Corwin Partner, Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 2026635347/Office 2022556172/Cell "Luck is the residue of design." -- Branch Rickey ________________________________ From: owner-bc-gnso@icann.org <owner-bc-gnso@icann.org> To: Deutsch, Sarah B <sarah.b.deutsch@verizon.com>; mike@rodenbaugh.com <mike@rodenbaugh.com>; Marilyn Cade <marilynscade@hotmail.com>; Liz Williams <lizawilliams@mac.com>; Zahid Jamil <zahid@dndrc.com> Cc: bc - GNSO list <bc-gnso@icann.org> Sent: Mon Oct 26 03:09:17 2009 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 Colleagues, While I am not in Seoul so cannot gauge the dynamics, I suggest that the BC advocate adoption of the IRT's recommendations in their entirety. Thanks, David From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Deutsch, Sarah B Sent: Sunday, October 25, 2009 6:09 PM To: mike@rodenbaugh.com; Marilyn Cade; Liz Williams; Zahid Jamil 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 Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch@verizon.com ________________________________ From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Sunday, October 25, 2009 3:20 AM To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B 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 Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course. Also, I’ve 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 practice’ 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 zone’ 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=...> 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=...> 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 DAG3’s 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 yesterday’s 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 wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman’s 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 didn’t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim – 3 types: (a) The Registry Operator’s 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 complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s 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 complainant’s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s 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 Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s 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 operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s 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 doesn’t 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 staff’s 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 “The Guidebook proposal does not mention a pre‐registration process utilizing the Clearinghouse” 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) It’s 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 ‘you’re preaching to the converted’ and generally said ‘go ahead and scream about it’ – 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 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: owner-bc-gnso@icann.org<mailto: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<mailto: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 (“Specified TM Issues”). 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: owner-gnso-sti@icann.org<mailto: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<mailto: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 GNSO’s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect.
Thanks Phil. If I am not mistaken, there was representation from all of the consitituencies on the IRT and therefore at least some level of agreement. From: Phil Corwin [mailto:pcorwin@butera-andrews.com] Sent: Monday, October 26, 2009 3:17 AM To: Fares, David; 'sarah.b.deutsch@verizon.com'; 'mike@rodenbaugh.com'; 'marilynscade@hotmail.com'; '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 With all due respect, if the BC's efforts are devoted to trying to revert to the IRT proposals rather than trying to find common ground with those who opposed them (as Zahid is commendably trying to achieve) the result is likely to be an inability to achieve GNSO consensus and the Board's default adoption of the staff assimilations that no one seems happy with. Philip S. Corwin Partner, Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 2026635347/Office 2022556172/Cell "Luck is the residue of design." -- Branch Rickey ________________________________ From: owner-bc-gnso@icann.org <owner-bc-gnso@icann.org> To: Deutsch, Sarah B <sarah.b.deutsch@verizon.com>; mike@rodenbaugh.com <mike@rodenbaugh.com>; Marilyn Cade <marilynscade@hotmail.com>; Liz Williams <lizawilliams@mac.com>; Zahid Jamil <zahid@dndrc.com> Cc: bc - GNSO list <bc-gnso@icann.org> Sent: Mon Oct 26 03:09:17 2009 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 Colleagues, While I am not in Seoul so cannot gauge the dynamics, I suggest that the BC advocate adoption of the IRT's recommendations in their entirety. Thanks, David From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Deutsch, Sarah B Sent: Sunday, October 25, 2009 6:09 PM To: mike@rodenbaugh.com; Marilyn Cade; Liz Williams; Zahid Jamil 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 Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch@verizon.com ________________________________ From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Sunday, October 25, 2009 3:20 AM To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B 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 Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course. Also, I’ve 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 practice’ 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 zone’ 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=...> 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=...> 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 DAG3’s 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 yesterday’s 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 wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman’s 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 didn’t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim – 3 types: (a) The Registry Operator’s 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 complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s 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 complainant’s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s 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 Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s 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 operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s 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 doesn’t 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 staff’s 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 “The Guidebook proposal does not mention a pre‐registration process utilizing the Clearinghouse” 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) It’s 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 ‘you’re preaching to the converted’ and generally said ‘go ahead and scream about it’ – 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 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: owner-bc-gnso@icann.org<mailto: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<mailto: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 (“Specified TM Issues”). 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: owner-gnso-sti@icann.org<mailto: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<mailto: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 GNSO’s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect. This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect.
I would not see any reason why the civil society folks would object to the brand holder being able to get back names that are subject to the URS, rather than have them just picked up again for further abuse. Zahid, do you have any insights on that point? Sarah and you are quite right, in my view, that defensive registrations are now an 'open field'. NOT good. We are missing you, David. as well as others from the BC. I'll leave it to others to bring David up to date on the range of challenges that we face in figuring out the best approaches, AND an effective strategy. The GNSO Policy Council is not a very stable environment right now, due partly to all the changes in players within the Council and the high degree of stress due to time limitations. but, within the BC, we are going to also have to do work on this regarding our positions substantively. It is going to be a very challenging time ahead, and I know all of us, who have strongly held interests, will try our best to work collegially throughout these days.... I think that in some ways, we are now reaping some of the fruits of how the IRT was initially conceptualized and put forward. What is now very clear is that the ability of Bruce and Rita to get support for the creation of the IRT, more or less 'masked' the underlaying skeptism among a larger number of Board members, and perhaps also the legal staff [just speculating]. That means that we actually lost a good deal of time in 'educating' and improving understanding... Fortunately, we actually have a newly strengthened set of concerned potential allies with the GAC clearly expressing its concerns about the 'overarching issues' of protection of IPR in the new gTLDs, and the reference to this issue in the AoC. BUT that doesn't mean that we have actually achieved the level of acceptance of 'our' concerns as business users -- NOT merely IP attorneys/representatives as represented by the IPC, but the broader and aligned concerns about fraud, malicious conduct, etc. BUT, we do have work ahead within the BC; within the Stakeholder group, and then within the "HOUSE". We need to also be thinking about how to further the good relationships that exists in some areas with the Registries. From: DFares@newscorp.com To: pcorwin@butera-andrews.com; sarah.b.deutsch@verizon.com; mike@rodenbaugh.com; marilynscade@hotmail.com; lizawilliams@mac.com; zahid@dndrc.com CC: bc-gnso@icann.org Date: Mon, 26 Oct 2009 03:35:18 -0400 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 Thanks Phil. If I am not mistaken, there was representation from all of the consitituencies on the IRT and therefore at least some level of agreement. From: Phil Corwin [mailto:pcorwin@butera-andrews.com] Sent: Monday, October 26, 2009 3:17 AM To: Fares, David; 'sarah.b.deutsch@verizon.com'; 'mike@rodenbaugh.com'; 'marilynscade@hotmail.com'; '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 With all due respect, if the BC's efforts are devoted to trying to revert to the IRT proposals rather than trying to find common ground with those who opposed them (as Zahid is commendably trying to achieve) the result is likely to be an inability to achieve GNSO consensus and the Board's default adoption of the staff assimilations that no one seems happy with. Philip S. Corwin Partner, Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 2026635347/Office 2022556172/Cell "Luck is the residue of design." -- Branch Rickey From: owner-bc-gnso@icann.org <owner-bc-gnso@icann.org> To: Deutsch, Sarah B <sarah.b.deutsch@verizon.com>; mike@rodenbaugh.com <mike@rodenbaugh.com>; Marilyn Cade <marilynscade@hotmail.com>; Liz Williams <lizawilliams@mac.com>; Zahid Jamil <zahid@dndrc.com> Cc: bc - GNSO list <bc-gnso@icann.org> Sent: Mon Oct 26 03:09:17 2009 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 Colleagues, While I am not in Seoul so cannot gauge the dynamics, I suggest that the BC advocate adoption of the IRT's recommendations in their entirety. Thanks, David From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Deutsch, Sarah B Sent: Sunday, October 25, 2009 6:09 PM To: mike@rodenbaugh.com; Marilyn Cade; Liz Williams; Zahid Jamil 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 Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch@verizon.com From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Sunday, October 25, 2009 3:20 AM To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B 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 Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course. Also, I��ve 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 practice�� 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 zone�� 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://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://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 DAG3��s 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 yesterday��s 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 wasn��t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman��s 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 didn��t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim �C 3 types: (a) The Registry Operator��s 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 complainant��s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator��s Agreement and such breach is likely to cause confusion with complainant��s 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 complainant��s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant��s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant��s mark, or (iii) creating an impermissible likelihood of confusion with Complainant��s 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 Operator��s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant��s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant��s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant��s mark, or (c) creating an impermissible likelihood of confusion with the complainant��s 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 operator��s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant��s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant��s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant��s mark, or (iii) creates an impermissible likelihood of confusion with the complainant��s 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 doesn��t 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 staff��s 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 ��The Guidebook proposal does not mention a pre�\registration process utilizing the Clearinghouse�� 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 �C Reserved List (GPML) It��s just gone �C 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 �C but the GPML was just removed �C no explanation and without completing this study. SO NO RESERVED LIST �C AND NO SOLUTION TO DEFENSIVE REGISTRATIONS! Generally: In response to protestations Kurt said in regards some aspects ��you��re preaching to the converted�� and generally said ��go ahead and scream about it�� �C 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 Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 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: 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 (��Specified TM Issues��). Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 (415) 738-8087 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 GNSO��s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect. This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect.
Comments below: 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 <http://www.jamilandjamil.com/> 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: Marilyn Cade [mailto:marilynscade@hotmail.com] Sent: Monday, October 26, 2009 2:31 PM To: David Fares; Phil Corwin; sarah.b.deutsch@verizon.com; Mike Rodenbaugh; Liz Williams; Zahid Jamil 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 I would not see any reason why the civil society folks would object to the brand holder being able to get back names that are subject to the URS, rather than have them just picked up again for further abuse. Zahid, do you have any insights on that point? [Zahid Jamil] this is one of the issues I will be trying to get resolved. If there is a successful URSS application then the TM holder should have a way in which to have the domain transferred on payment of fee otherwise if the domain goes back into the pool it will be snapped up again by cybersquatters. Sarah and you are quite right, in my view, that defensive registrations are now an 'open field'. NOT good. [Zahid Jamil] Well we need to speak up about it. No one is speaking to this issue at the moment. If a GPML isn’t the answer then what is - that’s ICANN problem to solve. We should continue to lobby this. We are missing you, David. as well as others from the BC. I'll leave it to others to bring David up to date on the range of challenges that we face in figuring out the best approaches, AND an effective strategy. The GNSO Policy Council is not a very stable environment right now, due partly to all the changes in players within the Council and the high degree of stress due to time limitations. but, within the BC, we are going to also have to do work on this re garding our positions substantively. It is going to be a very challenging time ahead, and I know all of us, who have strongly held interests, will try our best to work collegially throughout these days.... I think that in some ways, we are now reaping some of the fruits of how the IRT was initially conceptualized and put forward. What is now very clear is that the ability of Bruce and Rita to get support for the creation of the IRT, more or less 'masked' the underlaying skeptism among a larger number of Board members, and perhaps also the legal staff [just speculating]. That means that we actually lost a good deal of time in 'educating' and improving understanding... Fortunately, we actually have a newly strengthened set of concerned potential allies with the GAC clearly expressing its concerns about the 'overarching issues' of protection of IPR in the new gTLDs, and the reference to this issue in the AoC. BUT that doesn't mean that we have actually achieved the level of acceptance of 'our' concerns as business users -- NOT merely IP attorneys/representatives as represented by the IPC, but the broader and aligned concerns about fraud, malicious conduct, etc. BUT, we do have work ahead within the BC; within the Stakeholder group, and then within the "HOUSE". We need to also be thinking about how to further the good relationships that exists in some areas with the Registries. _____ From: DFares@newscorp.com To: pcorwin@butera-andrews.com; sarah.b.deutsch@verizon.com; mike@rodenbaugh.com; marilynscade@hotmail.com; lizawilliams@mac.com; zahid@dndrc.com CC: bc-gnso@icann.org Date: Mon, 26 Oct 2009 03:35:18 -0400 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 Ver sion 3 Thanks Phil. If I am not mistaken, there was representation from all of the consitituencies on the IRT and therefore at least some level of agreement. From: Phil Corwin [mailto:pcorwin@butera-andrews.com] Sent: Monday, October 26, 2009 3:17 AM To: Fares, David; 'sarah.b.deutsch@verizon.com'; 'mike@rodenbaugh.com'; 'marilynscade@hotmail.com'; '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 With all due respect, if the BC's efforts are devoted to trying to revert to the IRT proposals rather than trying to find common ground with those who opposed them (as Zahid is commendably trying to achieve) the result is likely to be an inability to achieve GNSO consensus and the Board's default adoption of the staff assimilations that no one seems happy with. Philip S. Corwin Partner, Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 2026635347/Office 2022556172/Cell "Luck is the residue of design." -- Branch Rickey _____ From: owner-bc-gnso@icann.org <owner-bc-gnso@icann.org> To: Deutsch, Sarah B <sarah.b.deutsch@verizon.com>; mike@rodenbaugh.com <mike@rodenbaugh.com>; Marilyn Cade <marilynscade@hotmail.com>; Liz Williams <lizawilliams@mac.com>; Zahid Jamil <zahid@dndrc.com> Cc: bc - GNSO list <bc-gnso@icann.org> Sent: Mon Oct 26 03:09:17 2009 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 Colleagues, While I am not in Seoul so cannot gauge the dynamics, I suggest that the BC advocate adoption of the IRT's recommendations in their entirety. Thanks, David From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Deutsch, Sarah B Sent: Sunday, October 25, 2009 6:09 PM To: mike@rodenbaugh.com; Marilyn Cade; Liz Williams; Zahid Jamil 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 Merely requiring a registry to offer a sunrise period is actually worse than the status quo given that trademark owners' defensive registration costs will skyrocket in direct proportion to the number of new TLDs introduced. The URS was one way to avoid such costs. But the URS as proposed by the IRT was only a partial solution unless trademark owners also have the right to request back the transfer of valuable domain names into their portfolio. For such valuable domain names, trademark owners will face increased litigation costs to win back the names, or be placed in a perpetual monitoring situation, also increasing costs. But, as Mike says, if the URS is a so-called "best practice," it will be mere window dressing and trademark owners will be left without any practical remedy. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch@verizon.com _____ From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Sunday, October 25, 2009 3:20 AM To: 'Marilyn Cade'; 'Liz Williams'; 'Zahid Jamil'; Deutsch, Sarah B 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 Eager to hear opinions of Sarah or any other experts. I have quite a lot of experience with that myself, of course. Also, I’ve 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 practice’ 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 zone’ 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) <http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer =http://rodenbaugh.com/contact> 738-8087 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) <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 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 DAG3’s 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 yesterday’s 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 wasn’t the case. Instead the staff completely changed the PDDRP (see Jeff Neuman’s 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 didn’t let this go to the GNSO) In short the IRT had recommended that: Standard for Asserting a Claim - 3 types: (a) The Registry Operator’s 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 complainant’s mark; or (b) The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s 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 complainant’s mark, meeting any of the following conditions: (i) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (iii) creating an impermissible likelihood of confusion with Complainant’s 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 Operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: (a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant’s mark, or (c) creating an impermissible likelihood of confusion with the complainant’s 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 operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainant’s mark, or (ii) unjustifiably impairs the distinctive character or the reputation of the complainant’s mark, or (iii) creates an impermissible likelihood of confusion with the complainant’s 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 doesn’t 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 staff’s 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 “The Guidebook proposal does not mention a pre‐registration process utilizing the Clearinghouse” 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) It’s 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 ‘you’re preaching to the converted’ and generally said ‘go ahead and scream about it’ - 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 Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 <http://www.jamilandjamil.com/> 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: 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 (“Specified TM Issues”). 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-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 GNSO’s work on the Board request. Best regards, Margie Milam Senior Policy Counselor ICANN This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. If you are not the addressee indicated in this message (or responsible for delivery of the message to the addressee), you may not copy or deliver this message or its attachments to anyone. Rather, you should permanently delete this message and its attachments and kindly notify the sender by reply e-mail. Any content of this message and its attachments that does not relate to the official business of News America Incorporated or its subsidiaries must be taken not to have been sent or endorsed by any of them. No representation is made that this email or its attachments are without defect. This message and its attachments may contain legally privileged or confidential information. It is intended solely for the named addressee. 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well. i had great plans to stay up late and try to participate in the various meetings, but it's clear that's not going to happen -- the Constituency meetings are going to kick off at midnight my time and carry on through the rest of the night. i'm just not as young as i used to be i guess. :-) i've been avidly following the conversation and hope that you will continue to post to the list. no detail is too minute for us fans who are following the play by play. a few thoughts regarding the IRT findings i'm very impressed with the emphasis on collegiality and collaboration that i've seen in the comments so far. i hope that you can continue in that vein and thus make a broadly-supported substantive proposal in that area. kudos to all, and especially Zahid for his periodic "Scoop" posts. Phil Corwin speaks with my voice on that issue. regarding the charter spread the work -- the more the better -- many hands make light work and provide opportunities for sunlight to shine in (i like all of Marilyn's suggestions, especially the one about separate CSG representation) elect rather than appoint -- more opportunities to get to know new people and their points of view provide due process -- another opportunity for sunlight, especially when it comes to dealing with issues of conflict with existing members strengthen accountability -- i know, a touchy subject, but it needs to be addressed. again, i like Marilyn's suggestion of moving from 2- year to 1-year terms. perhaps there are other things we can consider as well. treat this as an interim step -- i have a feeling we'll want to reopen this discussion once the dust has settled. but we need a charter in order to meet the requirements of the moment and leaving some of these issues for another day may be the best way through this patch. regarding the secretariat shed as much work as possible -- there are lots of creative avenues to explore before we determine whether we need a dedicated Secretariat like we have today. leave options open -- this is the wrong time to nail down this one, there are fast-breaking policy issues that you need to concentrate on this week. carry on people. i'm really sorry i can't be there, but the final meeting of my Minnesota Broadband Taskforce is this week and, since i drafted most of the report, i've got a lot on my plate this week. but you're doing great, and navigating well through a complex situation. i'm REALLY keen on those nightly "huddles" that seem to be emerging. mikey - - - - - - - - - phone 651-647-6109 fax 866-280-2356 web www.haven2.com handle OConnorStP (ID for public places like Twitter, Facebook, Google, etc.)
participants (5)
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Fares, David -
Marilyn Cade -
Mike O'Connor -
Phil Corwin -
Zahid Jamil