I think Fadi has made it very clear during the meeting in Amsterdam that he has now understood the BC and IPC requests that led to the strawman as a second bite of the apple, as he called it. The proposed contents of the strawman would certainly constitute an expansion of the rights of a trademark holder in the domain world. I therefore support sending the draft letter as is. Sent from my iPad On 13.02.2013, at 01:11, john@crediblecontext.com wrote:

Mason,

Did I not suggest the "expansion of rights" language is a bit over the top?

Berard

--------- Original Message --------- Subject: [council] Current draft of Fadi's requested communication from council From: Mason Cole <mcole@5x5com.com> Date: 2/12/13 3:00 pm To: "council@gnso.icann.org List" <council@gnso.icann.org>

Council colleagues --

As you know, Fadi requested of the council its input regarding the strawman proposal resulting from the BC's and IPC's request for additional RPMs in new gTLDs. On December 27, I circulated an early draft of a council reply.

The communication is due very shortly, and has been taken up by a small group within the council to ensure that all points of view are represented. Because this is an agenda item for our meeting this week, at Maria Farrell's helpful suggestion, I'm sending the current draft to council so we can be prepared to discuss it then. This draft does not reflect additional input of the BC and IPC -- if this is provided prior to the meeting, I'll be happy to forward it to the council.

Thanks --

Mason

Volker, I will not argue with your metaphor -- I am quite fond of apples. But I do quibble with you saying the strawman is "an expansion of the rights of a trademark holder in the domain world." Trademark rights exist (not always consistently) in all earthly realms. The strawman is not seeking to create new ones, merely to create a method by which those that already exist can be enforced. Cheers, Berard --------- Original Message ---------Subject: Re: [council] Current draft of Fadi's requested communication from council From: Volker Greimann - Key-Systems GmbHz <vgreimann@key-Systems.net> Date: 2/12/13 4:25 pm To: "john@crediblecontext.com" <john@crediblecontext.com> Cc: "Mason Cole" <mcole@5x5com.com>, "council@gnso.icann.org List" <council@gnso.icann.org> I think Fadi has made it very clear during the meeting in Amsterdam that he has now understood the BC and IPC requests that led to the strawman as a second bite of the apple, as he called it. The proposed contents of the strawman would certainly constitute an expansion of the rights of a trademark holder in the domain world. I therefore support sending the draft letter as is. Sent from my iPad On 13.02.2013, at 01:11, john@crediblecontext.com wrote: Mason, Did I not suggest the "expansion of rights" language is a bit over the top? Berard --------- Original Message ---------Subject: [council] Current draft of Fadi's requested communication from council From: Mason Cole <mcole@5x5com.com> Date: 2/12/13 3:00 pm To: "council@gnso.icann.org List" <council@gnso.icann.org> Council colleagues -- As you know, Fadi requested of the council its input regarding the strawman proposal resulting from the BC's and IPC's request for additional RPMs in new gTLDs. On December 27, I circulated an early draft of a council reply. The communication is due very shortly, and has been taken up by a small group within the council to ensure that all points of view are represented. Because this is an agenda item for our meeting this week, at Maria Farrell's helpful suggestion, I'm sending the current draft to council so we can be prepared to discuss it then. This draft does not reflect additional input of the BC and IPC -- if this is provided prior to the meeting, I'll be happy to forward it to the council. Thanks -- Mason

Volker, Well, tomorrow's call (3 a.m. Pacific time!) should be worth getting up for. You ask, "Does a trademark allow its owner to prevent the use of the mark by third parties in other classes, or if the mark is their name, etc, etc?" No, but, just as on the Internet no one knows you are a dog (credit to the New Yorker magazine), there are no separate classes or countries, either. I am no lawyer (huzzah!) so I have long been comfortable saying that domain names grant a global trademark without the bother of having to comply with the laws of the 290 or so countries that exist on the planet. That is a pretty good deal. This conflict -- global regime vs. local control -- is the hallmark of many of the current Internet-fueled debates. I don't think the mandate of the GNSO Council covers that. But, we are in a position to have a say in how our little slice of the world ought to approach it. Take a look at how we ask third parties to participate in trademark protection now. The sunrise is a method (by exclusion) and the TMCH as it is currently constituted (by inclusion). Talk to you tomorrow. Cheers, Berard --------- Original Message ---------Subject: Re: [council] Current draft of Fadi's requested communication from council From: Volker Greimann <vgreimann@key-Systems.net> Date: 2/13/13 3:36 pm To: john@crediblecontext.com Cc: "Mason Cole" <mcole@5x5com.com>, "council@gnso.icann.org List" <council@gnso.icann.org> If that were so, there would be less of a problem, but it is not so, in my opinion: -Does a trademark allow its owner to prevent the use of the mark by third parties in other classes, or if the mark is their name, etc, etc? I think not. There are reasons why trademarks are limited to classes and regions and why legitimate use of the same trademarked term cannot be prohibited. Yet LPR would do just that. If any legitimate potential registrant missed the sunrise period or decided to wait for a cheaper registration period, LPR would block even legitimate registrations. -Does a trademark require otherwise unrelated third parties to implement and build and maintain a system at their own costs that is solely used to inform others of a potential legal conflict, confuse customers with information potentially irrelevant to their planned use and that generally interferes with the customary flow of business by scaring away or confusing potential legitimate customers and delaying orders or inquiries? I think not. Yet Claims II does just that to registrants, registrars and registries. I am not aware of any other industry that at their own cost had to create a warning system to inform third parties of potential trademark abuse. These are just the easiest examples of why the Strawman and the attached LPR proposal will, in my opinion create new protections. The claims process in itself is a new right for trademark holders not previously granted by trademark law, so any extension of the time period carefully considered and agreed upon by the community expands the reach of this new right for trademark holders. These proposals have been on the table before in some form or other and have been rejected by the community. Fadi Chehade’s has stated himself in his letter to the U.S. Congress that the 60 days period should not be extended unilaterally by ICANN, yet this is what is proposed now. The extension of claims to non-exact matches was previously rejected by the Special Trademark Issues Review Team, i.e. a GNSO created team. If Trademark law provided the level of protection to automatically include non-exact matches in the manner proposed in the strawman, lawmakers would have implemented such a list. Yet none did. While the trademark protection can be extended to additional near match strings, it is the duty of the courts to decide this. And just because a certain string has been used in an infringing manner, that does not mean that there are not also non-infringing manners in which the same string may legitimately be used. These proposals create a new fence to protect trademark holders from legitimate and illegitimate registrations of their marks alike. Solely the 30 day notice period does not create any new rights specific to trademark holders. The rest is a matter for a PDP, not for a closed door, no outside communication allowed session. ICANN should not deviate from the multi-stakeholder principle. If any outcome of our policy development and consensus building processes is subject to unilateral revision once a small part of the community is no longer sufficiently happy with the consensus results, the multi-stakeholder model is dead. Volker I will not argue with your metaphor -- I am quite fond of apples. But I do quibble with you saying the strawman is "an expansion of the rights of a trademark holder in the domain world." Trademark rights exist (not always consistently) in all earthly realms. The strawman is not seeking to create new ones, merely to create a method by which those that already exist can be enforced. Cheers, Berard --------- Original Message ---------Subject: Re: [council] Current draft of Fadi's requested communication from council From: Volker Greimann - Key-Systems GmbHz <vgreimann@key-Systems.net> Date: 2/12/13 4:25 pm To: "john@crediblecontext.com" <john@crediblecontext.com> Cc: "Mason Cole" <mcole@5x5com.com>, "council@gnso.icann.org List" <council@gnso.icann.org> I think Fadi has made it very clear during the meeting in Amsterdam that he has now understood the BC and IPC requests that led to the strawman as a second bite of the apple, as he called it. The proposed contents of the strawman would certainly constitute an expansion of the rights of a trademark holder in the domain world. I therefore support sending the draft letter as is. Sent from my iPad On 13.02.2013, at 01:11, john@crediblecontext.com wrote: Mason, Did I not suggest the "expansion of rights" language is a bit over the top? Berard --------- Original Message ---------Subject: [council] Current draft of Fadi's requested communication from council From: Mason Cole <mcole@5x5com.com> Date: 2/12/13 3:00 pm To: "council@gnso.icann.org List" <council@gnso.icann.org> Council colleagues -- As you know, Fadi requested of the council its input regarding the strawman proposal resulting from the BC's and IPC's request for additional RPMs in new gTLDs. On December 27, I circulated an early draft of a council reply. The communication is due very shortly, and has been taken up by a small group within the council to ensure that all points of view are represented. Because this is an agenda item for our meeting this week, at Maria Farrell's helpful suggestion, I'm sending the current draft to council so we can be prepared to discuss it then. This draft does not reflect additional input of the BC and IPC -- if this is provided prior to the meeting, I'll be happy to forward it to the council. Thanks -- Mason

All, A reminder that we really need to keep this moving. I’d like to close it off this week if at all possible. Jonathan From: owner-council@gnso.icann.org [mailto:owner-council@gnso.icann.org] On Behalf Of Petter Rindforth Sent: 14 February 2013 10:39 To: john@crediblecontext.com; volker@greimann.de Cc: Mason Cole; council@gnso.icann.org List Subject: Re: [council] Current draft of Fadi's requested communication from council "If Trademark law provided the level of protection to automatically include non-exact matches in the manner proposed in the strawman, lawmakers would have implemented such a list. Yet none did. While the trademark protection can be extended to additional near match strings, it is the duty of the courts to decide this. And just because a certain string has been used in an infringing manner, that does not mean that there are not also non-infringing manners in which the same string may legitimately be used." This is in fact up to each Examiner of each national PTO. That’s why it may take up to 10 months (or more) to pass such trademark examination processes. I do not think such time would be accepted by domain name applicants.... Strawman is dealing with an existing protection system in a more time optimized way. / Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu www.fenixlegal.eu NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu Thank you On 14 feb 2013 00:36 "Volker Greimann" <mailto:vgreimann@key-Systems.net> <vgreimann@key-Systems.net> wrote: If that were so, there would be less of a problem, but it is not so, in my opinion: -Does a trademark allow its owner to prevent the use of the mark by third parties in other classes, or if the mark is their name, etc, etc? I think not. There are reasons why trademarks are limited to classes and regions and why legitimate use of the same trademarked term cannot be prohibited. Yet LPR would do just that. If any legitimate potential registrant missed the sunrise period or decided to wait for a cheaper registration period, LPR would block even legitimate registrations. -Does a trademark require otherwise unrelated third parties to implement and build and maintain a system at their own costs that is solely used to inform others of a potential legal conflict, confuse customers with information potentially irrelevant to their planned use and that generally interferes with the customary flow of business by scaring away or confusing potential legitimate customers and delaying orders or inquiries? I think not. Yet Claims II does just that to registrants, registrars and registries. I am not aware of any other industry that at their own cost had to create a warning system to inform third parties of potential trademark abuse. These are just the easiest examples of why the Strawman and the attached LPR proposal will, in my opinion create new protections. The claims process in itself is a new right for trademark holders not previously granted by trademark law, so any extension of the time period carefully considered and agreed upon by the community expands the reach of this new right for trademark holders. These proposals have been on the table before in some form or other and have been rejected by the community. Fadi Chehade’s has stated himself in his letter to the U.S. Congress that the 60 days period should not be extended unilaterally by ICANN, yet this is what is proposed now. The extension of claims to non-exact matches was previously rejected by the Special Trademark Issues Review Team, i.e. a GNSO created team. If Trademark law provided the level of protection to automatically include non-exact matches in the manner proposed in the strawman, lawmakers would have implemented such a list. Yet none did. While the trademark protection can be extended to additional near match strings, it is the duty of the courts to decide this. And just because a certain string has been used in an infringing manner, that does not mean that there are not also non-infringing manners in which the same string may legitimately be used. These proposals create a new fence to protect trademark holders from legitimate and illegitimate registrations of their marks alike. Solely the 30 day notice period does not create any new rights specific to trademark holders. The rest is a matter for a PDP, not for a closed door, no outside communication allowed session. ICANN should not deviate from the multi-stakeholder principle. If any outcome of our policy development and consensus building processes is subject to unilateral revision once a small part of the community is no longer sufficiently happy with the consensus results, the multi-stakeholder model is dead. Volker I will not argue with your metaphor -- I am quite fond of apples. But I do quibble with you saying the strawman is "an expansion of the rights of a trademark holder in the domain world." Trademark rights exist (not always consistently) in all earthly realms. The strawman is not seeking to create new ones, merely to create a method by which those that already exist can be enforced. Cheers, Berard --------- Original Message --------- Subject: Re: [council] Current draft of Fadi's requested communication from council From: Volker Greimann - Key-Systems GmbHz <mailto:vgreimann@key-Systems.net> <vgreimann@key-Systems.net> Date: 2/12/13 4:25 pm To: <mailto:john@crediblecontext.com> "john@crediblecontext.com" <mailto:john@crediblecontext.com> <john@crediblecontext.com> Cc: "Mason Cole" <mailto:mcole@5x5com.com> <mcole@5x5com.com>, <mailto:council@gnso.icann.orgList> "council@gnso.icann.org List" <mailto:council@gnso.icann.org> <council@gnso.icann.org> I think Fadi has made it very clear during the meeting in Amsterdam that he has now understood the BC and IPC requests that led to the strawman as a second bite of the apple, as he called it. The proposed contents of the strawman would certainly constitute an expansion of the rights of a trademark holder in the domain world. I therefore support sending the draft letter as is. Sent from my iPad On 13.02.2013, at 01:11, john@crediblecontext.com wrote: Mason, Did I not suggest the "expansion of rights" language is a bit over the top? Berard --------- Original Message --------- Subject: [council] Current draft of Fadi's requested communication from council From: Mason Cole <mcole@5x5com.com> Date: 2/12/13 3:00 pm To: "council@gnso.icann.org List" <council@gnso.icann.org> Council colleagues -- As you know, Fadi requested of the council its input regarding the strawman proposal resulting from the BC's and IPC's request for additional RPMs in new gTLDs. On December 27, I circulated an early draft of a council reply. The communication is due very shortly, and has been taken up by a small group within the council to ensure that all points of view are represented. Because this is an agenda item for our meeting this week, at Maria Farrell's helpful suggestion, I'm sending the current draft to council so we can be prepared to discuss it then. This draft does not reflect additional input of the BC and IPC -- if this is provided prior to the meeting, I'll be happy to forward it to the council. Thanks -- Mason