Action Items, Slides and Notes from the Working Group call held earlier today
Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: · Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. · Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? · Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? · Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary
Thanks for this Mary, It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”. While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons. Merely to recall two obvious examples raised in Copenhagen: (i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and (ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)). Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted. Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless. Best regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: • Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. • Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? • Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? • Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Excellent points Brian Susan Payne Head of Legal Policy | Valideus Ltd E: susan.payne@valideus.com<mailto:susan.payne@valideus.com> D: +44 20 7421 8255 T: +44 20 7421 8299 M: +44 7971 661175 From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: 06 April 2017 09:20 To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks for this Mary, It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”. While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons. Merely to recall two obvious examples raised in Copenhagen: (i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and (ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)). Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted. Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless. Best regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: • Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. • Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? • Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? • Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
On this point, what we are really talking about mostly is sunrise registrations. If we had seen evidence that TM owners were making sunrise registrations for descriptive/dictionary words across dozens or hundreds of new gTLDs, and thereby denying an opportunity for others to acquire such useful domains in land rush or general availability periods, I might be convinced that some limitation might be warranted. However, what we have found instead is that for a variety of reasons (pricing; availability of blocking services; adopting a strategy of active monitoring of DN registrations and selective use of UDRP/URS) is that sunrise registrations are substantially below expectations. Given that fact, as well as the administrative burden of creating a system that would be required to determine which particular gTLDs “related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”, and the potentially subjective nature of such determinations, I would not favor the proposed limitation. And I agree that we had a robust and comprehensive discussion of this matter in our F2F meeting in Copenhagen and that prolonging it is unlikely to alter viewpoints. Please note that these views relate only to the TMCH under the present registration rules, and that I might well favor such limitations if we permitted variations of trademarks that were not trademarks in themselves to be registered in the TMCH. I do not favor such expansion as I believe that the main value of the TMCH is that it is a database of registered marks satisfying certain qualitative standards. I also see no rationale to accord trademark holders sunrise registration rights in terms that are not trademarks. And the generation of TM Claims Notices to prospective registrants in such non-TM terms would further discourage legitimate registrations intended for non-infringing purposes. If we accept that the receipt of a TM Claims Notice has a salutary effect in discouraging domain registrations intended to be infringing (and if that is not the case then there is little reason to continue generating such notices to prospective registrants), I think we must also recognize that such receipt is also deterring non-infringing registrations by unsophisticated potential registrants, especially given the very high abandonment rate documented by the Analysis Group. Summing up, on these issues I am pretty much in favor of maintaining the status quo. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Susan Payne Sent: Thursday, April 06, 2017 6:08 AM To: Beckham, Brian; Mary Wong; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Excellent points Brian Susan Payne Head of Legal Policy | Valideus Ltd E: susan.payne@valideus.com<mailto:susan.payne@valideus.com> D: +44 20 7421 8255 T: +44 20 7421 8299 M: +44 7971 661175 From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: 06 April 2017 09:20 To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks for this Mary, It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”. While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons. Merely to recall two obvious examples raised in Copenhagen: (i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and (ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)). Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted. Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless. Best regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: • Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. • Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? • Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? • Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14210 - Release Date: 03/30/17 Internal Virus Database is out of date.
Hi folks, On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-) In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD. "I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors. Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo. The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors." I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it. When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders. Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights). https://www.law.cornell.edu/wex/prior_restraint Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote:
The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality. Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.law.cor...
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com...
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Once again - I have to jump in. Freedom of expression is very much a universal concept: http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx That's why we call them "human" rights. Not "American" rights. On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.law.cor...
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com...
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
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Michael: Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names? Michael R. Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Once again - I have to jump in. Freedom of expression is very much a universal concept: http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx That's why we call them "human" rights. Not "American" rights. On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF D%2Fj6BAXDjiI%3D&reserved=0
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It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections. That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc. However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test. If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot... Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri... Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections. On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF D%2Fj6BAXDjiI%3D&reserved=0
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It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point: http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use... The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives." (It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.) The case mentioned, *Gibson v. Texas*, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that *there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."* (In other words, there can be no "freedom of expression" issue when the speech is not expressive.) Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter. The excerpt is quite instructive: In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” *R.M.J.*, 455 U.S. at 202. Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which *courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment.* The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain. [1] <#_ftn1>* Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark.* See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite. ------------------------------ [1] <#_ftnref1> *In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. *See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)). Greg Shatan *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com
wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/ 02/foe-briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/ 08/Paper-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < brian.beckham@wipo.int> wrote: > Finally, since the chart references the EFF letter, it is worth > mentioning here that the fact that a trademark owner may pay > (sometimes extremely high > amounts) to defensively register a domain name exactly matching > its trademark in a Sunrise process (and thereby taking it “off the > market”) does not prevent free expression, which may be undertaken > in countless other ways. The number of terms that may be appended > to a trademark (not to mention typos) to engage in all manner of > speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF D%2Fj6BAXDjiI%3D&reserved=0
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Michael, Can you please explain this statement: If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), ... I've taken a quick look at this case, which I found at http://hrlibrary.umn.edu/undocs/html/v359385.htm , and I don't see any mention of domain names. Of course, since the case involves activity from 1988-89, that's not surprising. But I don't see how this case can stand for the interpretation you offer, much less a "fairly sure interpretation." (As I understand it, the matter involved a challenge to Quebec's French language laws by 3 Anglophone Quebecers, specifically regarding the then-current requirement that outside advertising signs and business names be solely in French. The law has since changed so that outdoor advertising signs can include English, but it can be no more than half the size of the French text. (Not sure what the current law is on business names.) This change came in response to Canadian Supreme Court decisions; it's unclear what effect, if any, the Human Rights Committee findings had.) Thanks! Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Fri, Apr 7, 2017 at 1:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point: http://www.circleid.com/posts/20170401_human_rights_and_ regular_internet_users/
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, *Gibson v. Texas*, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that *there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."*
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” *R.M.J.*, 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which *courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment.* The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain. [1] <#m_4038584504317147716__ftn1>* Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark.* See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
------------------------------
[1] <#m_4038584504317147716__ftnref1> *In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. *See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas < mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/02 /foe-briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08 /Paper-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: > > Hi folks, > >> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < brian.beckham@wipo.int> wrote: >> Finally, since the chart references the EFF letter, it is worth >> mentioning here that the fact that a trademark owner may pay >> (sometimes extremely high >> amounts) to defensively register a domain name exactly matching >> its trademark in a Sunrise process (and thereby taking it “off the >> market”) does not prevent free expression, which may be undertaken >> in countless other ways. The number of terms that may be appended >> to a trademark (not to mention typos) to engage in all manner of >> speech – fair or otherwise – is, practically-speaking, all but limitless. > > By that "logic", the number of terms that may be appended to a > common dictionary word (not to mention typos) to create a > trademarkable brand is, practically-speaking, all but limitless. > :-) > > In other words, those creating a new brand/trademark certainly had > the opportunity to create a longer (and thus inferior) alternative > to a commonly used dictionary word or other common term. The fact > that they decided instead to choose a common term that is widely > used by the public shouldn't give them any priority access in a > launch of a new gTLD. > > "I created a problem for myself, and I want ICANN to fix it" is the > essence of the sunrise argument for commonly used terms, like > dictionary words and short acronyms. > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww > .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf > a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= > 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm > .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 > c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C > 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF > D%2Fj6BAXDjiI%3D&reserved=0
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Hi, I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me. First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty. Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen. Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech. There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second). With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names. With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make *no law*"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech. So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that *there are free speech issues at play*. To me, that's not a controversial point - and if we can agree on that, then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important. Best, Michael On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point: http://www.circleid.com/posts/20170401_human_rights_and_ regular_internet_users/
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, *Gibson v. Texas*, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that *there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."*
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” *R.M.J.*, 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which *courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment.* The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain. [1] <#m_3120687686914692157__ftn1>* Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark.* See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
------------------------------
[1] <#m_3120687686914692157__ftnref1> *In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. *See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
*Greg Shatan *C: 917-816-6428 <8%20(917)%20816-64-28> S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas < mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/02 /foe-briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08 /Paper-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 <8%20(416)%20588-02-69> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: > > Hi folks, > >> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < brian.beckham@wipo.int> wrote: >> Finally, since the chart references the EFF letter, it is worth >> mentioning here that the fact that a trademark owner may pay >> (sometimes extremely high >> amounts) to defensively register a domain name exactly matching >> its trademark in a Sunrise process (and thereby taking it “off the >> market”) does not prevent free expression, which may be undertaken >> in countless other ways. The number of terms that may be appended >> to a trademark (not to mention typos) to engage in all manner of >> speech – fair or otherwise – is, practically-speaking, all but limitless. > > By that "logic", the number of terms that may be appended to a > common dictionary word (not to mention typos) to create a > trademarkable brand is, practically-speaking, all but limitless. > :-) > > In other words, those creating a new brand/trademark certainly had > the opportunity to create a longer (and thus inferior) alternative > to a commonly used dictionary word or other common term. The fact > that they decided instead to choose a common term that is widely > used by the public shouldn't give them any priority access in a > launch of a new gTLD. > > "I created a problem for myself, and I want ICANN to fix it" is the > essence of the sunrise argument for commonly used terms, like > dictionary words and short acronyms. > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww > .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf > a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= > 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm > .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 > c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C > 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF > D%2Fj6BAXDjiI%3D&reserved=0
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My responses are in-line. G reg On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts. Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech. I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic. There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second). There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from *Gibson*). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in *Ballantyne* and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names *per se*; whether and to what extent it embraces domain names is certainly not a question answered in *Ballantyne*.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make *no law*"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from *Gibson v. Texas* in my prior email shows that this "speech/not speech" analysis is incorrect. *Gibson*, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, *Gibson* mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that *there are free speech issues at play*.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at *Ballantyne* or *Gibson*, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement). As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point: http://www.circleid.com/posts/20170401_human_rights_and_regu lar_internet_users/
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, *Gibson v. Texas*, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that *there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."*
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” *R.M.J.*, 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which *courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment.* The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] <#m_450629144727756903_m_-3779040697164605871_m_3120687686914692157__ftn1>* Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark.* See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
------------------------------
[1] <#m_450629144727756903_m_-3779040697164605871_m_3120687686914692157__ftnref1> *In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. *See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
*Greg Shatan *C: 917-816-6428 <8%20(917)%20816-64-28> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas < mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/02 /foe-briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08 /Paper-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww . law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C81 1dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0 %7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ 4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 <8%20(416)%20588-02-69> https://na01.safelinks.protection.outlook.com/?url=http%3A%2 F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d3 0%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sda ta=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: > The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors. > > Sent from my iPhone > >> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >> >> Hi folks, >> >>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < brian.beckham@wipo.int> wrote: >>> Finally, since the chart references the EFF letter, it is worth >>> mentioning here that the fact that a trademark owner may pay >>> (sometimes extremely high >>> amounts) to defensively register a domain name exactly matching >>> its trademark in a Sunrise process (and thereby taking it “off the >>> market”) does not prevent free expression, which may be undertaken >>> in countless other ways. The number of terms that may be appended >>> to a trademark (not to mention typos) to engage in all manner of >>> speech – fair or otherwise – is, practically-speaking, all but limitless. >> >> By that "logic", the number of terms that may be appended to a >> common dictionary word (not to mention typos) to create a >> trademarkable brand is, practically-speaking, all but limitless. >> :-) >> >> In other words, those creating a new brand/trademark certainly had >> the opportunity to create a longer (and thus inferior) alternative >> to a commonly used dictionary word or other common term. The fact >> that they decided instead to choose a common term that is widely >> used by the public shouldn't give them any priority access in a >> launch of a new gTLD. >> >> "I created a problem for myself, and I want ICANN to fix it" is the >> essence of the sunrise argument for commonly used terms, like >> dictionary words and short acronyms. >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> https://na01.safelinks.protection.outlook.com/?url=http%3A%2 F%2Fwww >> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46 e63%7Cf >> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418 &sdata= >> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A% 2F%2Fmm >> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7 C%7C2b7 >> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178de cee1%7C >> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B 2kWcBkF >> D%2Fj6BAXDjiI%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A% 2F%2Fmm.i cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C% 7C811dc6e 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1 %7C0%7C0% 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhI pZQh1s99f s%3D&reserved=0
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Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are being blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759 On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot...
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: > > I'm not sure where J. Scott is getting his "facts", but my company > doesn't "arbitrage" nor has it registered *any* new gTLD domain > names > (and I have no desire for any), nor is it a "bad actor." If you have > proof that my company is a "bad actor", put it forward, rather than > sling unsupported innuendo. > > The whole point is that the "barriers" are put forth as *required* > to > deal with so-called "bad actors", but are instead used to advantage > certain groups, far beyond the "damage" that is claimed to be caused > by the "bad actors." > > I don't want to delve into politics, but some might see parallels to > certain government measures in some countries, where a "problem" is > claimed, but a Draconian solution is applied to deal with it. > > When it comes to the sunrise periods for new gTLDs, the "problem" is > claimed to be cybersquatting, but instead of relying on curative > rights, the Sunrise policy went too far and gave too many advantages > to TM holders, essentially creating an unlevel playing field between > *good actors* and TM holders. > > Free speech means *no prior restraints* (with very rare exceptions), > but harsh penalties for unlawful speech (curative rights). > > > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. > > law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 > > 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 > > 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC > H7s%3D&reserved=0 > > Sincerely, > > George Kirikos > 416-588-0269 > > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l > > eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 > > b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx > olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 > > >> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >> wrote: >> The same logic applies to you and other domaines, cybersquatters, >> speculators and small businesses. The fact that you want to arbitrage in >> terms that are also trademarks is your choice and you have to deal with the >> barriers put in place to deal with the bad actors. >> >> Sent from my iPhone >> >>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>> >>> Hi folks, >>> >>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>> <brian.beckham@wipo.int> wrote: >>>> Finally, since the chart references the EFF letter, it is worth >>>> mentioning here that the fact that a trademark owner may pay >>>> (sometimes extremely high >>>> amounts) to defensively register a domain name exactly matching >>>> its trademark in a Sunrise process (and thereby taking it “off >>>> the >>>> market”) does not prevent free expression, which may be >>>> undertaken >>>> in countless other ways. The number of terms that may be >>>> appended >>>> to a trademark (not to mention typos) to engage in all manner of >>>> speech – fair or otherwise – is, practically-speaking, all but >>>> limitless. >>> >>> By that "logic", the number of terms that may be appended to a >>> common dictionary word (not to mention typos) to create a >>> trademarkable brand is, practically-speaking, all but limitless. >>> :-) >>> >>> In other words, those creating a new brand/trademark certainly had >>> the opportunity to create a longer (and thus inferior) alternative >>> to a commonly used dictionary word or other common term. The fact >>> that they decided instead to choose a common term that is widely >>> used by the public shouldn't give them any priority access in a >>> launch of a new gTLD. >>> >>> "I created a problem for myself, and I want ICANN to fix it" is >>> the >>> essence of the sunrise argument for commonly used terms, like >>> dictionary words and short acronyms. >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>> >>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>> >>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>> >>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>> >>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>> >>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>> D%2Fj6BAXDjiI%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i > > cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e > > 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% > > 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f > s%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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What do you mean by "blocked"? Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos.
On Apr 9, 2017, at 10:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are being blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot...
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: > The law is clear: an exact match isn't free speech. It is trademark > infringement. A domain that coveys a message (e.g., hotels suck.com) is free > speech and protected accordingly. Also, "free speech" is a US constitutional > concept adopted by some countries, but it is not a universal legal concept. > Perhaps universal free speech is aspirational, but it is not reality. > > Sent from my iPhone > >> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >> >> I'm not sure where J. Scott is getting his "facts", but my company >> doesn't "arbitrage" nor has it registered *any* new gTLD domain >> names >> (and I have no desire for any), nor is it a "bad actor." If you have >> proof that my company is a "bad actor", put it forward, rather than >> sling unsupported innuendo. >> >> The whole point is that the "barriers" are put forth as *required* >> to >> deal with so-called "bad actors", but are instead used to advantage >> certain groups, far beyond the "damage" that is claimed to be caused >> by the "bad actors." >> >> I don't want to delve into politics, but some might see parallels to >> certain government measures in some countries, where a "problem" is >> claimed, but a Draconian solution is applied to deal with it. >> >> When it comes to the sunrise periods for new gTLDs, the "problem" is >> claimed to be cybersquatting, but instead of relying on curative >> rights, the Sunrise policy went too far and gave too many advantages >> to TM holders, essentially creating an unlevel playing field between >> *good actors* and TM holders. >> >> Free speech means *no prior restraints* (with very rare exceptions), >> but harsh penalties for unlawful speech (curative rights). >> >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >> >> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >> >> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >> >> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >> H7s%3D&reserved=0 >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> >> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >> >> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >> >> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >> >> >>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >>> wrote: >>> The same logic applies to you and other domaines, cybersquatters, >>> speculators and small businesses. The fact that you want to arbitrage in >>> terms that are also trademarks is your choice and you have to deal with the >>> barriers put in place to deal with the bad actors. >>> >>> Sent from my iPhone >>> >>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>> >>>> Hi folks, >>>> >>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>> <brian.beckham@wipo.int> wrote: >>>>> Finally, since the chart references the EFF letter, it is worth >>>>> mentioning here that the fact that a trademark owner may pay >>>>> (sometimes extremely high >>>>> amounts) to defensively register a domain name exactly matching >>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>> the >>>>> market”) does not prevent free expression, which may be >>>>> undertaken >>>>> in countless other ways. The number of terms that may be >>>>> appended >>>>> to a trademark (not to mention typos) to engage in all manner of >>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>> limitless. >>>> >>>> By that "logic", the number of terms that may be appended to a >>>> common dictionary word (not to mention typos) to create a >>>> trademarkable brand is, practically-speaking, all but limitless. >>>> :-) >>>> >>>> In other words, those creating a new brand/trademark certainly had >>>> the opportunity to create a longer (and thus inferior) alternative >>>> to a commonly used dictionary word or other common term. The fact >>>> that they decided instead to choose a common term that is widely >>>> used by the public shouldn't give them any priority access in a >>>> launch of a new gTLD. >>>> >>>> "I created a problem for myself, and I want ICANN to fix it" is >>>> the >>>> essence of the sunrise argument for commonly used terms, like >>>> dictionary words and short acronyms. >>>> >>>> Sincerely, >>>> >>>> George Kirikos >>>> 416-588-0269 >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>> >>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>> >>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg@icann.org >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>> >>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>> >>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>> >>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>> D%2Fj6BAXDjiI%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >> >> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >> >> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >> >> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >> s%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Blocked as in the holder of a trademark has pre-emotive rights to register the domain and thus preclude its use by others without regard to whether such use would be "infringing". Sent from my iPad
On 9 Apr 2017, at 19:42, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
What do you mean by "blocked"?
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Apr 9, 2017, at 10:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are being blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot...
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote: > Michael: > > Where can I find a discussion how Article 19 and similar "Freedom of > Expression" requirements relate to or impact the registration of domain > names? > > > Michael R. > > Article 19. > Everyone has the right to freedom of opinion and expression; this > right includes freedom to hold opinions without interference and to seek, > receive and impart information and ideas through any media and regardless of > frontiers. > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas > Sent: Thursday, April 06, 2017 5:53 AM > To: J. Scott Evans <jsevans@adobe.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the > Working Group call held earlier today > > Once again - I have to jump in. Freedom of expression is very much a > universal concept: > > http://www.un.org/en/universal-declaration-human-rights/ > http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx > > That's why we call them "human" rights. Not "American" rights. > > > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> The law is clear: an exact match isn't free speech. It is trademark >> infringement. A domain that coveys a message (e.g., hotels suck.com) is free >> speech and protected accordingly. Also, "free speech" is a US constitutional >> concept adopted by some countries, but it is not a universal legal concept. >> Perhaps universal free speech is aspirational, but it is not reality. >> >> Sent from my iPhone >> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >>> >>> I'm not sure where J. Scott is getting his "facts", but my company >>> doesn't "arbitrage" nor has it registered *any* new gTLD domain >>> names >>> (and I have no desire for any), nor is it a "bad actor." If you have >>> proof that my company is a "bad actor", put it forward, rather than >>> sling unsupported innuendo. >>> >>> The whole point is that the "barriers" are put forth as *required* >>> to >>> deal with so-called "bad actors", but are instead used to advantage >>> certain groups, far beyond the "damage" that is claimed to be caused >>> by the "bad actors." >>> >>> I don't want to delve into politics, but some might see parallels to >>> certain government measures in some countries, where a "problem" is >>> claimed, but a Draconian solution is applied to deal with it. >>> >>> When it comes to the sunrise periods for new gTLDs, the "problem" is >>> claimed to be cybersquatting, but instead of relying on curative >>> rights, the Sunrise policy went too far and gave too many advantages >>> to TM holders, essentially creating an unlevel playing field between >>> *good actors* and TM holders. >>> >>> Free speech means *no prior restraints* (with very rare exceptions), >>> but harsh penalties for unlawful speech (curative rights). >>> >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >>> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >>> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >>> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >>> H7s%3D&reserved=0 >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >>> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >>> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>> >>> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >>>> wrote: >>>> The same logic applies to you and other domaines, cybersquatters, >>>> speculators and small businesses. The fact that you want to arbitrage in >>>> terms that are also trademarks is your choice and you have to deal with the >>>> barriers put in place to deal with the bad actors. >>>> >>>> Sent from my iPhone >>>> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>>> >>>>> Hi folks, >>>>> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>> <brian.beckham@wipo.int> wrote: >>>>>> Finally, since the chart references the EFF letter, it is worth >>>>>> mentioning here that the fact that a trademark owner may pay >>>>>> (sometimes extremely high >>>>>> amounts) to defensively register a domain name exactly matching >>>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>>> the >>>>>> market”) does not prevent free expression, which may be >>>>>> undertaken >>>>>> in countless other ways. The number of terms that may be >>>>>> appended >>>>>> to a trademark (not to mention typos) to engage in all manner of >>>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>>> limitless. >>>>> >>>>> By that "logic", the number of terms that may be appended to a >>>>> common dictionary word (not to mention typos) to create a >>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>> :-) >>>>> >>>>> In other words, those creating a new brand/trademark certainly had >>>>> the opportunity to create a longer (and thus inferior) alternative >>>>> to a commonly used dictionary word or other common term. The fact >>>>> that they decided instead to choose a common term that is widely >>>>> used by the public shouldn't give them any priority access in a >>>>> launch of a new gTLD. >>>>> >>>>> "I created a problem for myself, and I want ICANN to fix it" is >>>>> the >>>>> essence of the sunrise argument for commonly used terms, like >>>>> dictionary words and short acronyms. >>>>> >>>>> Sincerely, >>>>> >>>>> George Kirikos >>>>> 416-588-0269 >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>>> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>>> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>>> >>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>>> >>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>>> >>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >>> >>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >>> >>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >>> >>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >>> s%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Paul: I'm pretty sure you meant "preemptive". You also refer to "infringing" although that is not part of the TMCH analysis as I understand it -- which is only for "identical" marks. There is, as you know, a difference. In addition, my understanding is that two or more trademark owners can register the same trademark with the TMCH if they both own registrations or other rights to the trademarks. The "preemptive" right would then remain, as with all domain names, "first to register". In fact, I'm concerned by the entire "first come" registration priority insofar as it gives unreasonable advantage to technically more sophisticated entities regardless of the parties' rights to use the terms. Actually, priority registration seems to beg the question: If trademark registrations and rights -- which are, after all rights that are bestowed only after some level of review and determination of rights by either a government agency or judicially -- violate (or potentially violate) rights of free speech and expression because they preempt registration of domain names consisting of the same words; how much worse is both the potential for gaming and the effect on free expression of the "first come first registered" rule and the control of premium and reserved domain names by registries? Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, April 10, 2017 2:56 PM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Blocked as in the holder of a trademark has pre-emotive rights to register the domain and thus preclude its use by others without regard to whether such use would be "infringing". Sent from my iPad
On 9 Apr 2017, at 19:42, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
What do you mean by "blocked"?
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Apr 9, 2017, at 10:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are being blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_in ternet_users/
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe- briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Pape r-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote: > Michael: > > Where can I find a discussion how Article 19 and similar > "Freedom of Expression" requirements relate to or impact the > registration of domain names? > > > Michael R. > > Article 19. > Everyone has the right to freedom of opinion and expression; > this right includes freedom to hold opinions without > interference and to seek, receive and impart information and > ideas through any media and regardless of frontiers. > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael > Karanicolas > Sent: Thursday, April 06, 2017 5:53 AM > To: J. Scott Evans <jsevans@adobe.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from > the Working Group call held earlier today > > Once again - I have to jump in. Freedom of expression is very > much a universal concept: > > http://www.un.org/en/universal-declaration-human-rights/ > http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx > > That's why we call them "human" rights. Not "American" rights. > > > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> The law is clear: an exact match isn't free speech. It is >> trademark infringement. A domain that coveys a message (e.g., >> hotels suck.com) is free speech and protected accordingly. >> Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. >> Perhaps universal free speech is aspirational, but it is not reality. >> >> Sent from my iPhone >> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >>> >>> I'm not sure where J. Scott is getting his "facts", but my >>> company doesn't "arbitrage" nor has it registered *any* new >>> gTLD domain names (and I have no desire for any), nor is it a >>> "bad actor." If you have proof that my company is a "bad >>> actor", put it forward, rather than sling unsupported >>> innuendo. >>> >>> The whole point is that the "barriers" are put forth as >>> *required* to deal with so-called "bad actors", but are >>> instead used to advantage certain groups, far beyond the >>> "damage" that is claimed to be caused by the "bad actors." >>> >>> I don't want to delve into politics, but some might see >>> parallels to certain government measures in some countries, >>> where a "problem" is claimed, but a Draconian solution is applied to deal with it. >>> >>> When it comes to the sunrise periods for new gTLDs, the >>> "problem" is claimed to be cybersquatting, but instead of >>> relying on curative rights, the Sunrise policy went too far >>> and gave too many advantages to TM holders, essentially >>> creating an unlevel playing field between *good actors* and TM holders. >>> >>> Free speech means *no prior restraints* (with very rare >>> exceptions), but harsh penalties for unlawful speech (curative rights). >>> >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >>> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811d >>> c6e8437 >>> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7 >>> C0%7C63 >>> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g >>> %2FOWfC >>> H7s%3D&reserved=0 >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F% >>> 2Fwww.l >>> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30% >>> 7Cfa7b1 >>> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata >>> =6BJPNx >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>> >>> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans >>>> <jsevans@adobe.com> >>>> wrote: >>>> The same logic applies to you and other domaines, >>>> cybersquatters, speculators and small businesses. The fact >>>> that you want to arbitrage in terms that are also trademarks >>>> is your choice and you have to deal with the barriers put in place to deal with the bad actors. >>>> >>>> Sent from my iPhone >>>> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>>> >>>>> Hi folks, >>>>> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>> <brian.beckham@wipo.int> wrote: >>>>>> Finally, since the chart references the EFF letter, it is >>>>>> worth mentioning here that the fact that a trademark owner >>>>>> may pay (sometimes extremely high >>>>>> amounts) to defensively register a domain name exactly >>>>>> matching its trademark in a Sunrise process (and thereby >>>>>> taking it “off the >>>>>> market”) does not prevent free expression, which may be >>>>>> undertaken in countless other ways. The number of terms >>>>>> that may be appended to a trademark (not to mention typos) >>>>>> to engage in all manner of speech – fair or otherwise – is, >>>>>> practically-speaking, all but limitless. >>>>> >>>>> By that "logic", the number of terms that may be appended to >>>>> a common dictionary word (not to mention typos) to create a >>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>> :-) >>>>> >>>>> In other words, those creating a new brand/trademark >>>>> certainly had the opportunity to create a longer (and thus >>>>> inferior) alternative to a commonly used dictionary word or >>>>> other common term. The fact that they decided instead to >>>>> choose a common term that is widely used by the public >>>>> shouldn't give them any priority access in a launch of a new gTLD. >>>>> >>>>> "I created a problem for myself, and I want ICANN to fix it" >>>>> is the essence of the sunrise argument for commonly used >>>>> terms, like dictionary words and short acronyms. >>>>> >>>>> Sincerely, >>>>> >>>>> George Kirikos >>>>> 416-588-0269 >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2 >>>>> F%2Fwww >>>>> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46 >>>>> e63%7Cf >>>>> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418 >>>>> &sdata= >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved= >>>>> 0 _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A% >>>>> 2F%2Fmm >>>>> >>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7 >>>>> C%7C2b7 >>>>> >>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178de >>>>> cee1%7C >>>>> >>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B >>>>> 2kWcBkF >>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F >>> %2Fmm.i >>> >>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C >>> 811dc6e >>> >>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7 >>> C0%7C0% >>> >>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZ >>> Qh1s99f >>> s%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech. Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression. The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious. So this is not a rabbit hole. The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. We must determine if abuse has occurred. The contents of the TMCH database is very much relevant. If we are to be denied information relevant to the database we must assume the worst. For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, Freedoms of speech is simply too important to ignore. For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson. Sent from my iPad
On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are beingdom blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot...
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: > The law is clear: an exact match isn't free speech. It is trademark > infringement. A domain that coveys a message (e.g., hotels suck.com) is free > speech and protected accordingly. Also, "free speech" is a US constitutional > concept adopted by some countries, but it is not a universal legal concept. > Perhaps universal free speech is aspirational, but it is not reality. > > Sent from my iPhone > >> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >> >> I'm not sure where J. Scott is getting his "facts", but my company >> doesn't "arbitrage" nor has it registered *any* new gTLD domain >> names >> (and I have no desire for any), nor is it a "bad actor." If you have >> proof that my company is a "bad actor", put it forward, rather than >> sling unsupported innuendo. >> >> The whole point is that the "barriers" are put forth as *required* >> to >> deal with so-called "bad actors", but are instead used to advantage >> certain groups, far beyond the "damage" that is claimed to be caused >> by the "bad actors." >> >> I don't want to delve into politics, but some might see parallels to >> certain government measures in some countries, where a "problem" is >> claimed, but a Draconian solution is applied to deal with it. >> >> When it comes to the sunrise periods for new gTLDs, the "problem" is >> claimed to be cybersquatting, but instead of relying on curative >> rights, the Sunrise policy went too far and gave too many advantages >> to TM holders, essentially creating an unlevel playing field between >> *good actors* and TM holders. >> >> Free speech means *no prior restraints* (with very rare exceptions), >> but harsh penalties for unlawful speech (curative rights). >> >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >> >> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >> >> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >> >> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >> H7s%3D&reserved=0 >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> >> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >> >> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >> >> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >> >> >>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >>> wrote: >>> The same logic applies to you and other domaines, cybersquatters, >>> speculators and small businesses. The fact that you want to arbitrage in >>> terms that are also trademarks is your choice and you have to deal with the >>> barriers put in place to deal with the bad actors. >>> >>> Sent from my iPhone >>> >>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>> >>>> Hi folks, >>>> >>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>> <brian.beckham@wipo.int> wrote: >>>>> Finally, since the chart references the EFF letter, it is worth >>>>> mentioning here that the fact that a trademark owner may pay >>>>> (sometimes extremely high >>>>> amounts) to defensively register a domain name exactly matching >>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>> the >>>>> market”) does not prevent free expression, which may be >>>>> undertaken >>>>> in countless other ways. The number of terms that may be >>>>> appended >>>>> to a trademark (not to mention typos) to engage in all manner of >>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>> limitless. >>>> >>>> By that "logic", the number of terms that may be appended to a >>>> common dictionary word (not to mention typos) to create a >>>> trademarkable brand is, practically-speaking, all but limitless. >>>> :-) >>>> >>>> In other words, those creating a new brand/trademark certainly had >>>> the opportunity to create a longer (and thus inferior) alternative >>>> to a commonly used dictionary word or other common term. The fact >>>> that they decided instead to choose a common term that is widely >>>> used by the public shouldn't give them any priority access in a >>>> launch of a new gTLD. >>>> >>>> "I created a problem for myself, and I want ICANN to fix it" is >>>> the >>>> essence of the sunrise argument for commonly used terms, like >>>> dictionary words and short acronyms. >>>> >>>> Sincerely, >>>> >>>> George Kirikos >>>> 416-588-0269 >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>> >>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>> >>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg@icann.org >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>> >>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>> >>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>> >>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>> D%2Fj6BAXDjiI%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >> >> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >> >> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >> >> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >> s%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Again, I have to ask where is the evidence of widespread abuse. It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation. I have yet to see anything that even remotely proves or suggests this in fact has occurred. Moreover, the idea that you have to see the TMCH data is a bit of a fishing expedition and will not establish that widespread abuse occurred (e.g., if Delta was registered by Delta Airlines in the TMCH it does in and of itself suggest an abuse of the system). What seems to be happening is that folks are positing a position with little to no evidence, then saying they need the data and making everybody spends gobs of time on issues that have previously been debated, esoteric concepts of human rights, natural justice, free speech and god knows what else. Perhaps, instead of throwing out arguments there should be an effort to gather some real evidence for discussion. If we all decide to continue down this path then perhaps one simple idea would be to take a list of common words that could be perceived as being valuable such as business, music, car, travel, sex, money, ski, football, food, boat, truck, website, online etc and cross reference these words with the new gTld registrations to get some sense of who owns these domain names. Once there is some real data, then we can evaluate who owns most of these ( domainers, brand owners, speculators, industry groups etc.). This would not be a difficult exercise to do. Instead of multiple email chains, folks could take on one or two words from a compiled list and conduct this investigation using whois. Original Message From: Paul Keating Sent: Sunday, April 9, 2017 3:31 PM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech. Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression. The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious. So this is not a rabbit hole. The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. We must determine if abuse has occurred. The contents of the TMCH database is very much relevant. If we are to be denied information relevant to the database we must assume the worst. For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, Freedoms of speech is simply too important to ignore. For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson. Sent from my iPad
On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are beingdom blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot...
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: > The law is clear: an exact match isn't free speech. It is trademark > infringement. A domain that coveys a message (e.g., hotels suck.com) is free > speech and protected accordingly. Also, "free speech" is a US constitutional > concept adopted by some countries, but it is not a universal legal concept. > Perhaps universal free speech is aspirational, but it is not reality. > > Sent from my iPhone > >> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >> >> I'm not sure where J. Scott is getting his "facts", but my company >> doesn't "arbitrage" nor has it registered *any* new gTLD domain >> names >> (and I have no desire for any), nor is it a "bad actor." If you have >> proof that my company is a "bad actor", put it forward, rather than >> sling unsupported innuendo. >> >> The whole point is that the "barriers" are put forth as *required* >> to >> deal with so-called "bad actors", but are instead used to advantage >> certain groups, far beyond the "damage" that is claimed to be caused >> by the "bad actors." >> >> I don't want to delve into politics, but some might see parallels to >> certain government measures in some countries, where a "problem" is >> claimed, but a Draconian solution is applied to deal with it. >> >> When it comes to the sunrise periods for new gTLDs, the "problem" is >> claimed to be cybersquatting, but instead of relying on curative >> rights, the Sunrise policy went too far and gave too many advantages >> to TM holders, essentially creating an unlevel playing field between >> *good actors* and TM holders. >> >> Free speech means *no prior restraints* (with very rare exceptions), >> but harsh penalties for unlawful speech (curative rights). >> >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >> >> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >> >> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >> >> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >> H7s%3D&reserved=0 >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> >> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >> >> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >> >> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >> >> >>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >>> wrote: >>> The same logic applies to you and other domaines, cybersquatters, >>> speculators and small businesses. The fact that you want to arbitrage in >>> terms that are also trademarks is your choice and you have to deal with the >>> barriers put in place to deal with the bad actors. >>> >>> Sent from my iPhone >>> >>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>> >>>> Hi folks, >>>> >>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>> <brian.beckham@wipo.int> wrote: >>>>> Finally, since the chart references the EFF letter, it is worth >>>>> mentioning here that the fact that a trademark owner may pay >>>>> (sometimes extremely high >>>>> amounts) to defensively register a domain name exactly matching >>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>> the >>>>> market”) does not prevent free expression, which may be >>>>> undertaken >>>>> in countless other ways. The number of terms that may be >>>>> appended >>>>> to a trademark (not to mention typos) to engage in all manner of >>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>> limitless. >>>> >>>> By that "logic", the number of terms that may be appended to a >>>> common dictionary word (not to mention typos) to create a >>>> trademarkable brand is, practically-speaking, all but limitless. >>>> :-) >>>> >>>> In other words, those creating a new brand/trademark certainly had >>>> the opportunity to create a longer (and thus inferior) alternative >>>> to a commonly used dictionary word or other common term. The fact >>>> that they decided instead to choose a common term that is widely >>>> used by the public shouldn't give them any priority access in a >>>> launch of a new gTLD. >>>> >>>> "I created a problem for myself, and I want ICANN to fix it" is >>>> the >>>> essence of the sunrise argument for commonly used terms, like >>>> dictionary words and short acronyms. >>>> >>>> Sincerely, >>>> >>>> George Kirikos >>>> 416-588-0269 >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>> >>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>> >>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg@icann.org >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>> >>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>> >>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>> >>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>> D%2Fj6BAXDjiI%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >> >> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >> >> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >> >> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >> s%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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+1 George excellent points. Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com> Date: 4/9/17 3:02 PM (GMT-06:00) To: Paul Keating <paul@law.es>, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Again, I have to ask where is the evidence of widespread abuse. It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation. I have yet to see anything that even remotely proves or suggests this in fact has occurred. Moreover, the idea that you have to see the TMCH data is a bit of a fishing expedition and will not establish that widespread abuse occurred (e.g., if Delta was registered by Delta Airlines in the TMCH it does in and of itself suggest an abuse of the system). What seems to be happening is that folks are positing a position with little to no evidence, then saying they need the data and making everybody spends gobs of time on issues that have previously been debated, esoteric concepts of human rights, natural justice, free speech and god knows what else. Perhaps, instead of throwing out arguments there should be an effort to gather some real evidence for discussion. If we all decide to continue down this path then perhaps one simple idea would be to take a list of common words that could be perceived as being valuable such as business, music, car, travel, sex, money, ski, football, food, boat, truck, website, online etc and cross reference these words with the new gTld registrations to get some sense of who owns these domain names. Once there is some real data, then we can evaluate who owns most of these ( domainers, brand owners, speculators, industry groups etc.). This would not be a difficult exercise to do. Instead of multiple email chains, folks could take on one or two words from a compiled list and conduct this investigation using whois. Original Message From: Paul Keating Sent: Sunday, April 9, 2017 3:31 PM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech. Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression. The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious. So this is not a rabbit hole. The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. We must determine if abuse has occurred. The contents of the TMCH database is very much relevant. If we are to be denied information relevant to the database we must assume the worst. For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, Freedoms of speech is simply too important to ignore. For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson. Sent from my iPad
On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are beingdom blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_use...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot...
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: > The law is clear: an exact match isn't free speech. It is trademark > infringement. A domain that coveys a message (e.g., hotels suck.com) is free > speech and protected accordingly. Also, "free speech" is a US constitutional > concept adopted by some countries, but it is not a universal legal concept. > Perhaps universal free speech is aspirational, but it is not reality. > > Sent from my iPhone > >> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >> >> I'm not sure where J. Scott is getting his "facts", but my company >> doesn't "arbitrage" nor has it registered *any* new gTLD domain >> names >> (and I have no desire for any), nor is it a "bad actor." If you have >> proof that my company is a "bad actor", put it forward, rather than >> sling unsupported innuendo. >> >> The whole point is that the "barriers" are put forth as *required* >> to >> deal with so-called "bad actors", but are instead used to advantage >> certain groups, far beyond the "damage" that is claimed to be caused >> by the "bad actors." >> >> I don't want to delve into politics, but some might see parallels to >> certain government measures in some countries, where a "problem" is >> claimed, but a Draconian solution is applied to deal with it. >> >> When it comes to the sunrise periods for new gTLDs, the "problem" is >> claimed to be cybersquatting, but instead of relying on curative >> rights, the Sunrise policy went too far and gave too many advantages >> to TM holders, essentially creating an unlevel playing field between >> *good actors* and TM holders. >> >> Free speech means *no prior restraints* (with very rare exceptions), >> but harsh penalties for unlawful speech (curative rights). >> >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >> >> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >> >> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >> >> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >> H7s%3D&reserved=0 >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> >> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >> >> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >> >> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >> >> >>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >>> wrote: >>> The same logic applies to you and other domaines, cybersquatters, >>> speculators and small businesses. The fact that you want to arbitrage in >>> terms that are also trademarks is your choice and you have to deal with the >>> barriers put in place to deal with the bad actors. >>> >>> Sent from my iPhone >>> >>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>> >>>> Hi folks, >>>> >>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>> <brian.beckham@wipo.int> wrote: >>>>> Finally, since the chart references the EFF letter, it is worth >>>>> mentioning here that the fact that a trademark owner may pay >>>>> (sometimes extremely high >>>>> amounts) to defensively register a domain name exactly matching >>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>> the >>>>> market”) does not prevent free expression, which may be >>>>> undertaken >>>>> in countless other ways. The number of terms that may be >>>>> appended >>>>> to a trademark (not to mention typos) to engage in all manner of >>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>> limitless. >>>> >>>> By that "logic", the number of terms that may be appended to a >>>> common dictionary word (not to mention typos) to create a >>>> trademarkable brand is, practically-speaking, all but limitless. >>>> :-) >>>> >>>> In other words, those creating a new brand/trademark certainly had >>>> the opportunity to create a longer (and thus inferior) alternative >>>> to a commonly used dictionary word or other common term. The fact >>>> that they decided instead to choose a common term that is widely >>>> used by the public shouldn't give them any priority access in a >>>> launch of a new gTLD. >>>> >>>> "I created a problem for myself, and I want ICANN to fix it" is >>>> the >>>> essence of the sunrise argument for commonly used terms, like >>>> dictionary words and short acronyms. >>>> >>>> Sincerely, >>>> >>>> George Kirikos >>>> 416-588-0269 >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>> >>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>> >>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>> _______________________________________________ >>>> gnso-rpm-wg mailing list >>>> gnso-rpm-wg@icann.org >>>> >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>> >>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>> >>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>> >>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>> D%2Fj6BAXDjiI%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >> >> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >> >> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >> >> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >> s%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don’t think anyone is claiming that “brand owners” are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449 <http://uniregistry.link/registry-policies/?file=1449>. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ <http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 Bret Fausett General Counsel ____________________________ <http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com <mailto:bret@uniregistry.com>
Bret: How are you determining which Sunrise registrants are falling into Group 2? TM Registrations without any actual products? Michael R. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Bret Fausett Sent: Monday, April 10, 2017 9:35 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don’t think anyone is claiming that “brand owners” are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com>
Michael, it’s not very scientific. But when I look in my dashboard and see all of the sunrise registrations that came in on TLD, the likely candidates for “Group 2” just sort of leap out at you. I don’t see any issues with the registrations from the brand-centric registrars. The registrations from MarkMonitor, CSC, ComLaude, etc. are exactly what you might expect. Then I see a handful of registrations from a mainstream registrar, for the same customer, where the trademarks are on words like “Christmas”, “Insurance”, “Dating” and “Discount”. Yes, “windows” is a common word, but when I see the Microsoft sunrise registrations come through, they come through with coined marks as well. There are a lot of companies like that, but I don’t count them as ‘Group 2’ since the generic words are typically also part of a bundle of registrations that include coined, fanciful and arbitrary marks. It’s the registrant that only has generic single-word marks that I count as suspicious. In fact, I can’t think of a single brand that only trademarks single, common words that monetize well in PPC, but you can find a handful of such companies in the TMCH. Bret Bret Fausett General Counsel ____________________________ <http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com <mailto:bret@uniregistry.com> From: Michael Graham (ELCA) [mailto:migraham@expedia.com] Sent: Monday, April 10, 2017 8:39 AM To: Bret Fausett <bret@uniregistry.com>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Bret: How are you determining which Sunrise registrants are falling into Group 2? TM Registrations without any actual products? Michael R. From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Bret Fausett Sent: Monday, April 10, 2017 9:35 AM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
It seems like the whole argument is on the basis of some strawman argument that brand owners
are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don’t think anyone is claiming that “brand owners” are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ <http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 Bret Fausett General Counsel ____________________________ <http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com <mailto:bret@uniregistry.com>
Bret: Thanks for the useful information. I don’t think we can necessarily presume that a sunrise registration made via a “mainstream registrar” rather than a “brand-centric registrar” is necessarily suspect. A small business with a perfectly valid trademark registration may well be more likely to use a mass market rather than a brand specialist registrar. So far as Uniregistry’s restrictions on the subsequent sale of sunrise names that may be a good means to reduce “gaming”, but I’m not sure there would be support in this WG to place subsequent restrictions on all registries in regard to domains purchased during sunrise. The administration of the TMCH by Deloitte and IBM has gotten generally high marks, so we should likely presume that the trademarks which were the basis of potentially abusive sunrise registrations were properly found to meet the current verification standards. So do you think we should look at tightening those standards? That might well raise issues on its own, particularly if it led to either extreme vetting or presumed invalidity of registrations made within certain national jurisdictions. Thanks in advance for any further thoughts on this. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Bret Fausett Sent: Monday, April 10, 2017 4:49 PM To: 'Michael Graham (ELCA)'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Michael, it’s not very scientific. But when I look in my dashboard and see all of the sunrise registrations that came in on TLD, the likely candidates for “Group 2” just sort of leap out at you. I don’t see any issues with the registrations from the brand-centric registrars. The registrations from MarkMonitor, CSC, ComLaude, etc. are exactly what you might expect. Then I see a handful of registrations from a mainstream registrar, for the same customer, where the trademarks are on words like “Christmas”, “Insurance”, “Dating” and “Discount”. Yes, “windows” is a common word, but when I see the Microsoft sunrise registrations come through, they come through with coined marks as well. There are a lot of companies like that, but I don’t count them as ‘Group 2’ since the generic words are typically also part of a bundle of registrations that include coined, fanciful and arbitrary marks. It’s the registrant that only has generic single-word marks that I count as suspicious. In fact, I can’t think of a single brand that only trademarks single, common words that monetize well in PPC, but you can find a handful of such companies in the TMCH. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com> From: Michael Graham (ELCA) [mailto:migraham@expedia.com] Sent: Monday, April 10, 2017 8:39 AM To: Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Bret: How are you determining which Sunrise registrants are falling into Group 2? TM Registrations without any actual products? Michael R. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Bret Fausett Sent: Monday, April 10, 2017 9:35 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don’t think anyone is claiming that “brand owners” are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com> ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
We can fix that. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of Bret Fausett <bret@uniregistry.com> Date: Monday, April 10, 2017 at 9:35 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don’t think anyone is claiming that “brand owners” are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Funiregistry.link%2Fregistry-policies%2F%3Ffile%3D1449&data=02%7C01%7C%7Cca5529d72dd9474642bd08d4802f9e49%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274389383109115&sdata=og4jTD530WyU2N22j%2Fd%2FjvmErq18fCz8hauR1yvF0ZI%3D&reserved=0>. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [niregistry]<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.uniregis...> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 Bret Fausett General Counsel ____________________________ [niregistry]<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.uniregis...> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com>
Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013. Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com>> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Kiran, That is correct. All registries must have an SDRP. BTW, Rightside has launched 40 TLDs and not a single SDRP has been filed after any Sunrise. Statton *Statton Hammock* *Vice-President, Business & Legal Affairs* [image: Rightside] *Office | 425-298-2367* *Mobile | 425-891-9297* *statton@rightside.rocks* On Mon, Apr 10, 2017 at 9:57 AM, Kiran Malancharuvil via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013.
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com<mailto:b ret@uniregistry.com>> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1.
At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2.
So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market.
(At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/ registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.)
If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view.
Bret
Bret Fausett General Counsel ____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660
Mobile +1 310 985 1351 Office +1 949 706 2300 x4201
Bret Fausett General Counsel ____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660
Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com>
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Thanks Statton, that’s super helpful information. It seems to me that with a full understanding of how trademark claims notification works (seems like a free clearance search to me – maybe the language can be tweaked to ensure that people aren’t “scared off” although I haven’t seen evidence of that “problem”) and a full understanding that safeguards such as the SDRP exist, there isn’t much argument that TMCH recordals are unfairly restricting free speech. Rebecca: regarding your concerns about evidence, it’s not that there is no amount of evidence that would convince us that there’s a problem, it’s that you have yet to show us any shred of evidence. If there was a problem, there would absolutely be a way to demonstrate it. Instead, you seem to be operating from a hypothesis and you’re searching around for evidence of the problem. We are merely pointing out that you’re searching in places where you only have your hypothesis, no evidence. Policy making is supposed to go from problem to hypothesis to solution. You’ve jumped a step. Please demonstrate the problem. Thanks, Kiran From: Statton Hammock [mailto:statton@rightside.rocks] Sent: Monday, April 10, 2017 10:02 AM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com> Cc: Bret Fausett <bret@uniregistry.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Kiran, That is correct. All registries must have an SDRP. BTW, Rightside has launched 40 TLDs and not a single SDRP has been filed after any Sunrise. Statton Statton Hammock Vice-President, Business & Legal Affairs [Image removed by sender. Rightside] Office | 425-298-2367 Mobile | 425-891-9297 statton@rightside.rocks On Mon, Apr 10, 2017 at 9:57 AM, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013. Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138<tel:415-419-9138> (m) Sent from my mobile, please excuse any typos. On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com><mailto:bret@uniregistry.com<mailto:bret@uniregistry.com>>> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351<tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201<tel:%2B1%20949%20706%202300%20x4201> Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351<tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201<tel:%2B1%20949%20706%202300%20x4201> bret@uniregistry.com<mailto:bret@uniregistry.com><mailto:bret@uniregistry.com<mailto:bret@uniregistry.com>> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 On Mon, Apr 10, 2017 at 2:03 PM, Kiran Malancharuvil via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
Thanks Statton, that’s super helpful information.
It seems to me that with a full understanding of how trademark claims notification works (seems like a free clearance search to me – maybe the language can be tweaked to ensure that people aren’t “scared off” although I haven’t seen evidence of that “problem”) and a full understanding that safeguards such as the SDRP exist, there isn’t much argument that TMCH recordals are unfairly restricting free speech.
Rebecca: regarding your concerns about evidence, it’s not that there is no amount of evidence that would convince us that there’s a problem, it’s that you have yet to show us any shred of evidence. If there was a problem, there would absolutely be a way to demonstrate it. Instead, you seem to be operating from a hypothesis and you’re searching around for evidence of the problem. We are merely pointing out that you’re searching in places where you only have your hypothesis, no evidence. Policy making is supposed to go from problem to hypothesis to solution. You’ve jumped a step. Please demonstrate the problem.
Thanks,
Kiran
*From:* Statton Hammock [mailto:statton@rightside.rocks] *Sent:* Monday, April 10, 2017 10:02 AM *To:* Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com> *Cc:* Bret Fausett <bret@uniregistry.com>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Kiran,
That is correct. All registries must have an SDRP.
BTW, Rightside has launched 40 TLDs and not a single SDRP has been filed after any Sunrise.
Statton
*Statton Hammock*
*Vice-President, Business & Legal Affairs*
[image: Image removed by sender. Rightside]
*Office | 425-298-2367 <(425)%20298-2367>*
*Mobile | 425-891-9297 <(425)%20891-9297>*
*statton@rightside.rocks*
On Mon, Apr 10, 2017 at 9:57 AM, Kiran Malancharuvil via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013.
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com<mailto:b ret@uniregistry.com>> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1.
At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2.
So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market.
(At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/ registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.)
If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view.
Bret
Bret Fausett General Counsel ____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660
Mobile +1 310 985 1351 Office +1 949 706 2300 x4201
Bret Fausett General Counsel ____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660
Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 bret@uniregistry.com<mailto:bret@uniregistry.com>
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Rebecca: I’m sorry – what was that evidence? Michael R. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Monday, April 10, 2017 1:01 PM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 On Mon, Apr 10, 2017 at 2:03 PM, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Thanks Statton, that’s super helpful information. It seems to me that with a full understanding of how trademark claims notification works (seems like a free clearance search to me – maybe the language can be tweaked to ensure that people aren’t “scared off” although I haven’t seen evidence of that “problem”) and a full understanding that safeguards such as the SDRP exist, there isn’t much argument that TMCH recordals are unfairly restricting free speech. Rebecca: regarding your concerns about evidence, it’s not that there is no amount of evidence that would convince us that there’s a problem, it’s that you have yet to show us any shred of evidence. If there was a problem, there would absolutely be a way to demonstrate it. Instead, you seem to be operating from a hypothesis and you’re searching around for evidence of the problem. We are merely pointing out that you’re searching in places where you only have your hypothesis, no evidence. Policy making is supposed to go from problem to hypothesis to solution. You’ve jumped a step. Please demonstrate the problem. Thanks, Kiran From: Statton Hammock [mailto:statton@rightside.rocks<mailto:statton@rightside.rocks>] Sent: Monday, April 10, 2017 10:02 AM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>> Cc: Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Kiran, That is correct. All registries must have an SDRP. BTW, Rightside has launched 40 TLDs and not a single SDRP has been filed after any Sunrise. Statton Statton Hammock Vice-President, Business & Legal Affairs [Image removed by sender. Rightside] Office | 425-298-2367<tel:(425)%20298-2367> Mobile | 425-891-9297<tel:(425)%20891-9297> statton@rightside.rocks<mailto:statton@rightside.rocks> On Mon, Apr 10, 2017 at 9:57 AM, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013. Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138<tel:415-419-9138> (m) Sent from my mobile, please excuse any typos. On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com><mailto:bret@uniregistry.com<mailto:bret@uniregistry.com>>> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351<tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201<tel:%2B1%20949%20706%202300%20x4201> Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351<tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201<tel:%2B1%20949%20706%202300%20x4201> bret@uniregistry.com<mailto:bret@uniregistry.com><mailto:bret@uniregistry.com<mailto:bret@uniregistry.com>> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I don’t see it either Michael. A sunrise registration is not evidence that free speech is restricted. There still isn’t any evidence that any registrations have unfairly restricted any would-be legitimate registrant’s free speech. From: Michael Graham (ELCA) [mailto:migraham@expedia.com] Sent: Monday, April 10, 2017 1:50 PM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com> Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Rebecca: I’m sorry – what was that evidence? Michael R. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Monday, April 10, 2017 1:01 PM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 On Mon, Apr 10, 2017 at 2:03 PM, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Thanks Statton, that’s super helpful information. It seems to me that with a full understanding of how trademark claims notification works (seems like a free clearance search to me – maybe the language can be tweaked to ensure that people aren’t “scared off” although I haven’t seen evidence of that “problem”) and a full understanding that safeguards such as the SDRP exist, there isn’t much argument that TMCH recordals are unfairly restricting free speech. Rebecca: regarding your concerns about evidence, it’s not that there is no amount of evidence that would convince us that there’s a problem, it’s that you have yet to show us any shred of evidence. If there was a problem, there would absolutely be a way to demonstrate it. Instead, you seem to be operating from a hypothesis and you’re searching around for evidence of the problem. We are merely pointing out that you’re searching in places where you only have your hypothesis, no evidence. Policy making is supposed to go from problem to hypothesis to solution. You’ve jumped a step. Please demonstrate the problem. Thanks, Kiran From: Statton Hammock [mailto:statton@rightside.rocks<mailto:statton@rightside.rocks>] Sent: Monday, April 10, 2017 10:02 AM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>> Cc: Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Kiran, That is correct. All registries must have an SDRP. BTW, Rightside has launched 40 TLDs and not a single SDRP has been filed after any Sunrise. Statton Statton Hammock Vice-President, Business & Legal Affairs [Image removed by sender. Rightside] Office | 425-298-2367<tel:(425)%20298-2367> Mobile | 425-891-9297<tel:(425)%20891-9297> statton@rightside.rocks<mailto:statton@rightside.rocks> On Mon, Apr 10, 2017 at 9:57 AM, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013. Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138<tel:415-419-9138> (m) Sent from my mobile, please excuse any typos. On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com<mailto:bret@uniregistry.com><mailto:bret@uniregistry.com<mailto:bret@uniregistry.com>>> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351<tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201<tel:%2B1%20949%20706%202300%20x4201> Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351<tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201<tel:%2B1%20949%20706%202300%20x4201> bret@uniregistry.com<mailto:bret@uniregistry.com><mailto:bret@uniregistry.com<mailto:bret@uniregistry.com>> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com: http://onlinedomain.com/2014/04/15/legal/fake-trademarks- stealing-generic-domains-in-new-gtld-sunrises/ regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet Georgetown Law 703 593 6759
George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do... regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759
Hi Michael, John Berryhill captured it with his comments in the DomainIncite.com blog: "No, the “proof of use” requirement is understood by any US trademark practitioner to exclude what is known as “token use” – in other words a use of the mark which is not representative of actual and substantial commercial activity, but is a feigned use conducted merely for the purpose of attempting to satisfy the “use” requirement. e.g. Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n. 8 (TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997)." and later: "The IPC types, who are given extra credence in the ICANN policy process on these types of issues due to their presumed “expertise” know perfectly well the sorts of shenanigans that go on, which is why they wanted to lock down the TMCH data under a veil of opacity. The only other alternative is that they are so well-intentioned and naive that they assume everyone else is – like the TMCH folks saying, “but they sign a certification when they submit their proof of use”. It’s pretty easy to expose bullshit like US TM Reg. No. 3778825 because the records are accessible, despite the efforts of the IP lobby several years ago to fight tooth and nail against the USPTO putting its data online. While they lost that fight more than a decade ago (after a philanthropic effort was organized to purchase the USPTO data products and put them online for free anyway), they’ve been able to win it in the ICANN arena relative to the TMCH which is a black-box system run on the proposition that “IP attorneys are all honest”. and "Imagine that! Equifax swore, through their attorneys Kilpatrick & Stockton (now Kilpatrick Townsend) that they were using EFX.COM on the Internet, some ten years before “.COM” even existed. It must have been quite lonely for them. Now, they were called out on it when their representative – also a UDRP panelist – tried to enforce that transparently fraudulent piece of crap, but the beauty of the TMCH is that the games being played with it elude the type of scrutiny to which public records are subject. And that is why the IPC fought tooth and nail to make sure the TMCH database, and the paper trail for getting into it, are not accessible. They want to be able to lie without detection, consequence and recourse, and they will fight to keep it that way. Amazing how that was written 3 years ago. It was quite prescient. Last year, I linked to an article on FR.com: https://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-use... which talked about token use, and other "non use". There was also some controversy about Google/Alphabet registering Alphabet.xxx in sunrise, before any US TM registration completed. https://www.thedomains.com/2015/09/05/google-registers-alphabet-sex-in-sunri... Judging by their US TM application at: http://tsdr.uspto.gov/#caseNumber=86877241&caseType=SERIAL_NO&searchType=sta... perhaps they used a TM from the Kingdom of Tonga to secure it? (see "Foreign Information"). By the way, I previously linked to an article by INTA: http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUnde... about incontestability. I note the following text which is quite apt: "But infringers often are not aware of the infirmities that may attend even an incontestable registration. As a result, the biggest benefit from claiming incontestability may be in providing the registrant with the ability to say so in a cease and desist or other objection letter. Stating that a registration is active, valid, in full force and effect and “incontestable” may scare the recipient of the letter into giving up on the thought of attacking the registration without ever even exploring any of the many grounds for cancellation that survive incontestability. " While it's in the context of inconstability, the logic applies to other legal topics where some in the IPC wants this working group to defer to their analysis. Scare tactics, taken advantage of those who don't know any better, seems to be part of the the standard playbook. Folks in this PDP should treat those tactics with skepticism, and counter disinformation using information. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 5:26 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do...
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
George: Thank you for your response. Its faults -- its inclusion of Berryhill's hyperbolic and insulting statements -- tell me all I need to know about argument for now. Michael R. -----Original Message----- From: George Kirikos [mailto:icann@leap.com] Sent: Monday, April 10, 2017 2:57 PM To: Michael Graham (ELCA) <migraham@expedia.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi Michael, John Berryhill captured it with his comments in the DomainIncite.com blog: "No, the “proof of use” requirement is understood by any US trademark practitioner to exclude what is known as “token use” – in other words a use of the mark which is not representative of actual and substantial commercial activity, but is a feigned use conducted merely for the purpose of attempting to satisfy the “use” requirement. e.g. Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n. 8 (TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997)." and later: "The IPC types, who are given extra credence in the ICANN policy process on these types of issues due to their presumed “expertise” know perfectly well the sorts of shenanigans that go on, which is why they wanted to lock down the TMCH data under a veil of opacity. The only other alternative is that they are so well-intentioned and naive that they assume everyone else is – like the TMCH folks saying, “but they sign a certification when they submit their proof of use”. It’s pretty easy to expose bullshit like US TM Reg. No. 3778825 because the records are accessible, despite the efforts of the IP lobby several years ago to fight tooth and nail against the USPTO putting its data online. While they lost that fight more than a decade ago (after a philanthropic effort was organized to purchase the USPTO data products and put them online for free anyway), they’ve been able to win it in the ICANN arena relative to the TMCH which is a black-box system run on the proposition that “IP attorneys are all honest”. and "Imagine that! Equifax swore, through their attorneys Kilpatrick & Stockton (now Kilpatrick Townsend) that they were using EFX.COM on the Internet, some ten years before “.COM” even existed. It must have been quite lonely for them. Now, they were called out on it when their representative – also a UDRP panelist – tried to enforce that transparently fraudulent piece of crap, but the beauty of the TMCH is that the games being played with it elude the type of scrutiny to which public records are subject. And that is why the IPC fought tooth and nail to make sure the TMCH database, and the paper trail for getting into it, are not accessible. They want to be able to lie without detection, consequence and recourse, and they will fight to keep it that way. Amazing how that was written 3 years ago. It was quite prescient. Last year, I linked to an article on FR.com: https://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-use... which talked about token use, and other "non use". There was also some controversy about Google/Alphabet registering Alphabet.xxx in sunrise, before any US TM registration completed. https://www.thedomains.com/2015/09/05/google-registers-alphabet-sex-in-sunri... Judging by their US TM application at: http://tsdr.uspto.gov/#caseNumber=86877241&caseType=SERIAL_NO&searchType=sta... perhaps they used a TM from the Kingdom of Tonga to secure it? (see "Foreign Information"). By the way, I previously linked to an article by INTA: http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUnde... about incontestability. I note the following text which is quite apt: "But infringers often are not aware of the infirmities that may attend even an incontestable registration. As a result, the biggest benefit from claiming incontestability may be in providing the registrant with the ability to say so in a cease and desist or other objection letter. Stating that a registration is active, valid, in full force and effect and “incontestable” may scare the recipient of the letter into giving up on the thought of attacking the registration without ever even exploring any of the many grounds for cancellation that survive incontestability. " While it's in the context of inconstability, the logic applies to other legal topics where some in the IPC wants this working group to defer to their analysis. Scare tactics, taken advantage of those who don't know any better, seems to be part of the the standard playbook. Folks in this PDP should treat those tactics with skepticism, and counter disinformation using information. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 5:26 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-perio ds
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-gene ric-domains-in-new-gtld-sunrises/
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
Before I comment, let me first apologize for parachuting into this working group every so often. I admittedly don’t have the context for the entire conversation. I have great respect for those who contribute to this group on a regular basis, from each of the groups represented, and I thank you for considering these comments, for whatever they are worth. I don’t understand the vehemence of the debate, on either side. It strikes me that (1) we had a sunrise process that more or less worked as intended, but (2) had some notable, identifiable flaws. From that, I would obviously retain the sunrise for subsequent rounds but try to articulate why a California company with a Swiss trademark (but no U.S. trademark) on a generic word like “Christmas" (see whois record for Christmas.guru) or “Online” (see whois record for Online.Plumbing) should have been ineligible for the sunrise. There is too much brainpower on this list not to be able to fashion a bright-line rule that takes the gamers out of the equation. Bret
One solution would be to revisit the concept of a globally protected marks list. This would help ensure the system isn't gamed as in the example Bret cited with Christmas. Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: Bret Fausett <bret@uniregistry.com> Date: 4/10/17 7:17 PM (GMT-06:00) To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Before I comment, let me first apologize for parachuting into this working group every so often. I admittedly don’t have the context for the entire conversation. I have great respect for those who contribute to this group on a regular basis, from each of the groups represented, and I thank you for considering these comments, for whatever they are worth. I don’t understand the vehemence of the debate, on either side. It strikes me that (1) we had a sunrise process that more or less worked as intended, but (2) had some notable, identifiable flaws. From that, I would obviously retain the sunrise for subsequent rounds but try to articulate why a California company with a Swiss trademark (but no U.S. trademark) on a generic word like “Christmas" (see whois record for Christmas.guru) or “Online” (see whois record for Online.Plumbing) should have been ineligible for the sunrise. There is too much brainpower on this list not to be able to fashion a bright-line rule that takes the gamers out of the equation. Bret _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________
Query: what is the date of registration for the Swiss mark? Query: when did the applicable Sunrise open? I agree. Flaws can be fixed. Sent from my iPhone
On Apr 10, 2017, at 5:17 PM, Bret Fausett <bret@uniregistry.com> wrote:
Before I comment, let me first apologize for parachuting into this working group every so often. I admittedly don’t have the context for the entire conversation. I have great respect for those who contribute to this group on a regular basis, from each of the groups represented, and I thank you for considering these comments, for whatever they are worth.
I don’t understand the vehemence of the debate, on either side.
It strikes me that (1) we had a sunrise process that more or less worked as intended, but (2) had some notable, identifiable flaws. From that, I would obviously retain the sunrise for subsequent rounds but try to articulate why a California company with a Swiss trademark (but no U.S. trademark) on a generic word like “Christmas" (see whois record for Christmas.guru) or “Online” (see whois record for Online.Plumbing) should have been ineligible for the sunrise.
There is too much brainpower on this list not to be able to fashion a bright-line rule that takes the gamers out of the equation.
Bret
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do...
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet Georgetown Law 703 593 6759
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Hi Paul, And in my prior email, note that John Berryhill correctly pointed out that all the arguments that some are using to advocate that the TMCH be kept secret were REJECTED in the same debate as to whether the USPTO databases should be kept secret. We should learn from the past, and open things up. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 6:05 PM, Paul Keating <paul@law.es> wrote:
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do...
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Huh? USPTO records have always been open to the public -- except in exceptional cases where they may be made confidential. When was the potential confidentiality of these debated with the confidentiality of the TMCH database? Michael R. -----Original Message----- From: George Kirikos [mailto:icann@leap.com] Sent: Monday, April 10, 2017 3:11 PM To: Paul Keating <paul@law.es> Cc: Michael Graham (ELCA) <migraham@expedia.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi Paul, And in my prior email, note that John Berryhill correctly pointed out that all the arguments that some are using to advocate that the TMCH be kept secret were REJECTED in the same debate as to whether the USPTO databases should be kept secret. We should learn from the past, and open things up. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 6:05 PM, Paul Keating <paul@law.es> wrote:
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-perio ds
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-gene ric-domains-in-new-gtld-sunrises/
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
MIchael: the USPTO debate may have been whether they should be "put online", for everyone to be able to view them from the convenience of their home over the internet, rather than being forced to go to a certain office physically to view them. i.e. *maximum* transparency. In contrast, the TMCH doesn't even have any transparency. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 6:16 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Huh? USPTO records have always been open to the public -- except in exceptional cases where they may be made confidential. When was the potential confidentiality of these debated with the confidentiality of the TMCH database?
Michael R.
-----Original Message----- From: George Kirikos [mailto:icann@leap.com] Sent: Monday, April 10, 2017 3:11 PM To: Paul Keating <paul@law.es> Cc: Michael Graham (ELCA) <migraham@expedia.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi Paul,
And in my prior email, note that John Berryhill correctly pointed out that all the arguments that some are using to advocate that the TMCH be kept secret were REJECTED in the same debate as to whether the USPTO databases should be kept secret. We should learn from the past, and open things up.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Mon, Apr 10, 2017 at 6:05 PM, Paul Keating <paul@law.es> wrote:
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-perio ds
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-gene ric-domains-in-new-gtld-sunrises/
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Yes, Georges -- but you have conflated the discussion and drawn some false analogies which are not really useful to discussing the issues, and not supportive of a debate. I will join with others to ask: Please submit evidence that the TMCH, Claims or Sunrise have had the effect of prior constraint or other restriction of free expression of ideas, thought, or comment on the internet. Michael R. -----Original Message----- From: George Kirikos [mailto:icann@leap.com] Sent: Monday, April 10, 2017 3:21 PM To: Michael Graham (ELCA) <migraham@expedia.com> Cc: Paul Keating <paul@law.es>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today MIchael: the USPTO debate may have been whether they should be "put online", for everyone to be able to view them from the convenience of their home over the internet, rather than being forced to go to a certain office physically to view them. i.e. *maximum* transparency. In contrast, the TMCH doesn't even have any transparency. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 6:16 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Huh? USPTO records have always been open to the public -- except in exceptional cases where they may be made confidential. When was the potential confidentiality of these debated with the confidentiality of the TMCH database?
Michael R.
-----Original Message----- From: George Kirikos [mailto:icann@leap.com] Sent: Monday, April 10, 2017 3:11 PM To: Paul Keating <paul@law.es> Cc: Michael Graham (ELCA) <migraham@expedia.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi Paul,
And in my prior email, note that John Berryhill correctly pointed out that all the arguments that some are using to advocate that the TMCH be kept secret were REJECTED in the same debate as to whether the USPTO databases should be kept secret. We should learn from the past, and open things up.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Mon, Apr 10, 2017 at 6:05 PM, Paul Keating <paul@law.es> wrote:
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-peri o ds
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-gen e ric-domains-in-new-gtld-sunrises/
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 Paul. I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward. We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that. On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es> wrote:
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Monday, April 10, 2017 2:18 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks- stealing-generic-domains-in-new-gtld-sunrises/
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269 <8%20(416)%20588-02-69>
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
The problem with this approach is that the whole basis of the alleged abuse is ancedotal evidence of a couple of speculators that is being used to cast all brand owners as abusing the system and then demanding that there be a far flung fishing expedition to find some alleged evidence to justify an effort to dismantle a system that was carefully put in place after much prior discussion and debate . As I said before and will repeat again, the whole basis of the argument is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already. From: Michael Karanicolas Sent: Monday, April 10, 2017 11:06 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Paul. I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward. We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that. On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote: George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com<http://DomainIncite.com>: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com<http://OnlineDomain.com>: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do... regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269<tel:8%20(416)%20588-02-69> http://www.leap.com/ On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
++1 Sent from my iPhone On Apr 10, 2017, at 9:38 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote: The problem with this approach is that the whole basis of the alleged abuse is ancedotal evidence of a couple of speculators that is being used to cast all brand owners as abusing the system and then demanding that there be a far flung fishing expedition to find some alleged evidence to justify an effort to dismantle a system that was carefully put in place after much prior discussion and debate . As I said before and will repeat again, the whole basis of the argument is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already. From: Michael Karanicolas Sent: Monday, April 10, 2017 11:06 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Paul. I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward. We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that. On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote: George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainIncite...>: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainincite.com%2F16492-how-one-guy-games-new-gtld-sunrise-periods&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=nYij1cBDe577AhKIg5Njk5aJtzXWSE%2FI6mWHxlfpSBU%3D&reserved=0> DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FOnlineDomain...>: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fonlinedomain.com%2F2014%2F04%2F15%2Flegal%2Ffake-trademarks-stealing-generic-domains-in-new-gtld-sunrises%2F&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=T%2FGzvo0mjgU99IepO4h15wsc4l76vmSUSF9D4t64uoA%3D&reserved=0> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269<tel:8%20(416)%20588-02-69> http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=Xb5xFUlHc1tEF%2Fis40P5aWV%2BxoObmMoNyvb4whJEtLg%3D&reserved=0> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=7VC7PwllYJHfrWGq3SlReaqh0hI%2FwFL5mn0lWuRIqpU%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=7VC7PwllYJHfrWGq3SlReaqh0hI%2FwFL5mn0lWuRIqpU%3D&reserved=0> ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
+1 to Georges’ comment from me too. I agree that edge use cases and hypotheticals should not drive overhaul. -Brian Brian Scarpelli Senior Policy Counsel 517-507-1446<tel:517-507-1446> | bscarpelli@actonline.org<mailto:bscarpelli@actonline.org> ACT | The App Association From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Tuesday, April 11, 2017 2:45 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today ++1 Sent from my iPhone On Apr 10, 2017, at 9:38 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote: The problem with this approach is that the whole basis of the alleged abuse is ancedotal evidence of a couple of speculators that is being used to cast all brand owners as abusing the system and then demanding that there be a far flung fishing expedition to find some alleged evidence to justify an effort to dismantle a system that was carefully put in place after much prior discussion and debate . As I said before and will repeat again, the whole basis of the argument is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already. From: Michael Karanicolas Sent: Monday, April 10, 2017 11:06 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Paul. I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward. We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that. On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote: George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainIncite...>: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainincite.com%2F16492-how-one-guy-games-new-gtld-sunrise-periods&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=nYij1cBDe577AhKIg5Njk5aJtzXWSE%2FI6mWHxlfpSBU%3D&reserved=0> DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FOnlineDomain...>: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fonlinedomain.com%2F2014%2F04%2F15%2Flegal%2Ffake-trademarks-stealing-generic-domains-in-new-gtld-sunrises%2F&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=T%2FGzvo0mjgU99IepO4h15wsc4l76vmSUSF9D4t64uoA%3D&reserved=0> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269<tel:8%20(416)%20588-02-69> http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=Xb5xFUlHc1tEF%2Fis40P5aWV%2BxoObmMoNyvb4whJEtLg%3D&reserved=0> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=7VC7PwllYJHfrWGq3SlReaqh0hI%2FwFL5mn0lWuRIqpU%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C5e6208e1062748e0312d08d48094983f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274823093936437&sdata=7VC7PwllYJHfrWGq3SlReaqh0hI%2FwFL5mn0lWuRIqpU%3D&reserved=0> ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Georges, When transparency is lacking evidence is always anecdotal. The issue of Nixon having bugged the offices of the Democratic Party was anecdotal also. Sent from my iPad
On 11 Apr 2017, at 06:38, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
The problem with this approach is that the whole basis of the alleged abuse is ancedotal evidence of a couple of speculators that is being used to cast all brand owners as abusing the system and then demanding that there be a far flung fishing expedition to find some alleged evidence to justify an effort to dismantle a system that was carefully put in place after much prior discussion and debate . As I said before and will repeat again, the whole basis of the argument is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already.
From: Michael Karanicolas Sent: Monday, April 10, 2017 11:06 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
+1 Paul.
I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward.
We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that.
On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es> wrote: With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do...
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
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Hi folks, I believe I've found a "smoking gun", see below: On Tue, Apr 11, 2017 at 12:37 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already.
According to the launch schedule for the .DELIVERY TLD at: https://ie.godaddy.com/help/about-delivery-domain-names-12395 Sunrise period was from 12/2/14 at 16:00 UTC to 1/31/15 at 16:00 UTC, and EAP (Landrush) didn't begin until 2/4/15 at 16:00 UTC Consider the domain name FLOWERS.DELIVERY, registered to 1-800-FLOWERS.COM Inc., via DomainTools: https://whois.domaintools.com/flowers.delivery Its creation date/time was 2015-02-03T22:14:41Z, which was BEFORE the EAP/Landrush date, which is strong evidence it was registered in the sunrise period. [I'm aware that the date is after the close of sunrise, however, I believe that's because all the sunrise domains were created in a batch after the sunrise period was completed; that way, if there were multiple applications for the same string, they could be auctioned, etc.] Note that Yahoo.delivery was created at the same time (within a few seconds): https://whois.domaintools.com/yahoo.delivery Creation Date: 2015-02-03T22:14:58Z Once again predating EAP/Landrush (I'm confident that's a sunrise registration, as it would be cheaper than paying the Day 1 EAP price!). And it's the same date/time stamp as that of the US Postal Service's registration: https://whois.domaintools.com/usps.delivery Creation Date: 2015-02-03T22:14:26Z which once again, should have been a sunrise registration too. And in case anyone suggests that "maybe someone else gamed the system, and 1-800-Flowers.com bought it from them", the earliest WHOIS history record from DomainTools is dated 2015-02-04 (i.e. the next day) and is: https://research.domaintools.com/research/whois-history/search/?q=flowers.de... Domain Name: flowers.delivery Domain ID: 9f91e929ec1c4bc09eaeccd278f2652f-D WHOIS Server: http://www.whois.corporatedomains.com Referral URL: http://www.cscglobal.com Updated Date: 2015-02-03T22:14:41Z Creation Date: 2015-02-03T22:14:41Z Registry Expiry Date: 2016-02-03T22:14:41Z Sponsoring Registrar: Corporation Service Company Sponsoring Registrar IANA ID: 299 Domain Status: ok https://www.icann.org/epp#ok Registrant ID: 1800flower Registrant Name: Domain Administrator Registrant Organization: 1-800-FLOWERS.COM, INC. Registrant Street: One Old Country Road, Suite 500 Registrant City: Carle Place Registrant State/Province: NY Registrant Postal Code: 11514 Registrant Country: US Registrant Phone: +1.5162376000 Registrant Phone Ext: Registrant Fax: +1.5162376101 Registrant Fax Ext: Registrant Email: domainadmin@1800flowers.com This is evidence that cannot be ignored, and is likely just the tip of the iceberg. There you have it, a "smoking gun". I can see why some people wanted to "move on", to perhaps prevent us from digging deep to find evidence like this, not by a "handful of speculators", but by a large brand owner like 1-800-FLOWERS.com seeking to gain priority access to a common dictionary word that is descriptive to its entire industry. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
A quick followup, TMview shows that 1-800-Flowers.com has a registered trademark in Tunisia for the word mark "FLOWERS" https://www.tmdn.org/tmview/get-detail?st13=TN501998E00002040 Here are the essential fields (not all copied/pasted): Application numberTN/E/1998/2040 Application date1998-12-29 Trade mark officeTunisia - INNORPI Registration numberTN/E/1998/2040 Registration date 1998-12-29 Trade mark type Word Current trade mark status Registered They have multiple classes of registered goods and services, but the English translation of class 31 is incredible: EN (511)Nice class number31 List of goods and servicesAgricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt. In other words, in Tunisia, 1-800-Flowers.com has a trademark for the brand "FLOWERS" for the goods flowers!!!!!! Let's see the TMCH entry for FLOWERS, please. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 8:18 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
I believe I've found a "smoking gun", see below:
On Tue, Apr 11, 2017 at 12:37 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already.
According to the launch schedule for the .DELIVERY TLD at:
https://ie.godaddy.com/help/about-delivery-domain-names-12395
Sunrise period was from 12/2/14 at 16:00 UTC to 1/31/15 at 16:00 UTC, and EAP (Landrush) didn't begin until 2/4/15 at 16:00 UTC
Consider the domain name FLOWERS.DELIVERY, registered to 1-800-FLOWERS.COM Inc., via DomainTools:
https://whois.domaintools.com/flowers.delivery
Its creation date/time was 2015-02-03T22:14:41Z, which was BEFORE the EAP/Landrush date, which is strong evidence it was registered in the sunrise period. [I'm aware that the date is after the close of sunrise, however, I believe that's because all the sunrise domains were created in a batch after the sunrise period was completed; that way, if there were multiple applications for the same string, they could be auctioned, etc.]
Note that Yahoo.delivery was created at the same time (within a few seconds):
https://whois.domaintools.com/yahoo.delivery
Creation Date: 2015-02-03T22:14:58Z
Once again predating EAP/Landrush (I'm confident that's a sunrise registration, as it would be cheaper than paying the Day 1 EAP price!).
And it's the same date/time stamp as that of the US Postal Service's registration:
https://whois.domaintools.com/usps.delivery
Creation Date: 2015-02-03T22:14:26Z
which once again, should have been a sunrise registration too.
And in case anyone suggests that "maybe someone else gamed the system, and 1-800-Flowers.com bought it from them", the earliest WHOIS history record from DomainTools is dated 2015-02-04 (i.e. the next day) and is:
https://research.domaintools.com/research/whois-history/search/?q=flowers.de...
Domain Name: flowers.delivery Domain ID: 9f91e929ec1c4bc09eaeccd278f2652f-D WHOIS Server: http://www.whois.corporatedomains.com Referral URL: http://www.cscglobal.com Updated Date: 2015-02-03T22:14:41Z Creation Date: 2015-02-03T22:14:41Z Registry Expiry Date: 2016-02-03T22:14:41Z Sponsoring Registrar: Corporation Service Company Sponsoring Registrar IANA ID: 299 Domain Status: ok https://www.icann.org/epp#ok Registrant ID: 1800flower Registrant Name: Domain Administrator Registrant Organization: 1-800-FLOWERS.COM, INC. Registrant Street: One Old Country Road, Suite 500 Registrant City: Carle Place Registrant State/Province: NY Registrant Postal Code: 11514 Registrant Country: US Registrant Phone: +1.5162376000 Registrant Phone Ext: Registrant Fax: +1.5162376101 Registrant Fax Ext: Registrant Email: domainadmin@1800flowers.com
This is evidence that cannot be ignored, and is likely just the tip of the iceberg.
There you have it, a "smoking gun". I can see why some people wanted to "move on", to perhaps prevent us from digging deep to find evidence like this, not by a "handful of speculators", but by a large brand owner like 1-800-FLOWERS.com seeking to gain priority access to a common dictionary word that is descriptive to its entire industry.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
Oops, I forgot to include the "owner of that trademark" in the prior email. It is: Name 1-800- FLOWERS.COM, INC. (811)Applicant nationality code US Address country US Address One Old Country Road, Suite 500, Carle Place, New York, 11514, USA Q.E.D. Boom goes the dynamite! Pick your own meme. :-) Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 8:35 AM, George Kirikos <icann@leap.com> wrote:
A quick followup, TMview shows that 1-800-Flowers.com has a registered trademark in Tunisia for the word mark "FLOWERS"
https://www.tmdn.org/tmview/get-detail?st13=TN501998E00002040
Here are the essential fields (not all copied/pasted):
Application numberTN/E/1998/2040 Application date1998-12-29 Trade mark officeTunisia - INNORPI Registration numberTN/E/1998/2040 Registration date 1998-12-29 Trade mark type Word Current trade mark status Registered
They have multiple classes of registered goods and services, but the English translation of class 31 is incredible:
EN (511)Nice class number31 List of goods and servicesAgricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt.
In other words, in Tunisia, 1-800-Flowers.com has a trademark for the brand "FLOWERS" for the goods flowers!!!!!!
Let's see the TMCH entry for FLOWERS, please.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 8:18 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
I believe I've found a "smoking gun", see below:
On Tue, Apr 11, 2017 at 12:37 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already.
According to the launch schedule for the .DELIVERY TLD at:
https://ie.godaddy.com/help/about-delivery-domain-names-12395
Sunrise period was from 12/2/14 at 16:00 UTC to 1/31/15 at 16:00 UTC, and EAP (Landrush) didn't begin until 2/4/15 at 16:00 UTC
Consider the domain name FLOWERS.DELIVERY, registered to 1-800-FLOWERS.COM Inc., via DomainTools:
https://whois.domaintools.com/flowers.delivery
Its creation date/time was 2015-02-03T22:14:41Z, which was BEFORE the EAP/Landrush date, which is strong evidence it was registered in the sunrise period. [I'm aware that the date is after the close of sunrise, however, I believe that's because all the sunrise domains were created in a batch after the sunrise period was completed; that way, if there were multiple applications for the same string, they could be auctioned, etc.]
Note that Yahoo.delivery was created at the same time (within a few seconds):
https://whois.domaintools.com/yahoo.delivery
Creation Date: 2015-02-03T22:14:58Z
Once again predating EAP/Landrush (I'm confident that's a sunrise registration, as it would be cheaper than paying the Day 1 EAP price!).
And it's the same date/time stamp as that of the US Postal Service's registration:
https://whois.domaintools.com/usps.delivery
Creation Date: 2015-02-03T22:14:26Z
which once again, should have been a sunrise registration too.
And in case anyone suggests that "maybe someone else gamed the system, and 1-800-Flowers.com bought it from them", the earliest WHOIS history record from DomainTools is dated 2015-02-04 (i.e. the next day) and is:
https://research.domaintools.com/research/whois-history/search/?q=flowers.de...
Domain Name: flowers.delivery Domain ID: 9f91e929ec1c4bc09eaeccd278f2652f-D WHOIS Server: http://www.whois.corporatedomains.com Referral URL: http://www.cscglobal.com Updated Date: 2015-02-03T22:14:41Z Creation Date: 2015-02-03T22:14:41Z Registry Expiry Date: 2016-02-03T22:14:41Z Sponsoring Registrar: Corporation Service Company Sponsoring Registrar IANA ID: 299 Domain Status: ok https://www.icann.org/epp#ok Registrant ID: 1800flower Registrant Name: Domain Administrator Registrant Organization: 1-800-FLOWERS.COM, INC. Registrant Street: One Old Country Road, Suite 500 Registrant City: Carle Place Registrant State/Province: NY Registrant Postal Code: 11514 Registrant Country: US Registrant Phone: +1.5162376000 Registrant Phone Ext: Registrant Fax: +1.5162376101 Registrant Fax Ext: Registrant Email: domainadmin@1800flowers.com
This is evidence that cannot be ignored, and is likely just the tip of the iceberg.
There you have it, a "smoking gun". I can see why some people wanted to "move on", to perhaps prevent us from digging deep to find evidence like this, not by a "handful of speculators", but by a large brand owner like 1-800-FLOWERS.com seeking to gain priority access to a common dictionary word that is descriptive to its entire industry.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
Many, many new TLD registries offer “premium registrations” for names they held back from both Sunrise and Landrush. While I don’t know for sure, I suspect that Flower.deliver may have been obtained as a premium registration. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/11/17, 5:18 AM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote: Hi folks, I believe I've found a "smoking gun", see below: On Tue, Apr 11, 2017 at 12:37 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: > > To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already. According to the launch schedule for the .DELIVERY TLD at: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fie.godaddy.... Sunrise period was from 12/2/14 at 16:00 UTC to 1/31/15 at 16:00 UTC, and EAP (Landrush) didn't begin until 2/4/15 at 16:00 UTC Consider the domain name FLOWERS.DELIVERY, registered to 1-800-FLOWERS.COM Inc., via DomainTools: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwhois.domai... Its creation date/time was 2015-02-03T22:14:41Z, which was BEFORE the EAP/Landrush date, which is strong evidence it was registered in the sunrise period. [I'm aware that the date is after the close of sunrise, however, I believe that's because all the sunrise domains were created in a batch after the sunrise period was completed; that way, if there were multiple applications for the same string, they could be auctioned, etc.] Note that Yahoo.delivery was created at the same time (within a few seconds): https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwhois.domai... Creation Date: 2015-02-03T22:14:58Z Once again predating EAP/Landrush (I'm confident that's a sunrise registration, as it would be cheaper than paying the Day 1 EAP price!). And it's the same date/time stamp as that of the US Postal Service's registration: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwhois.domai... Creation Date: 2015-02-03T22:14:26Z which once again, should have been a sunrise registration too. And in case anyone suggests that "maybe someone else gamed the system, and 1-800-Flowers.com bought it from them", the earliest WHOIS history record from DomainTools is dated 2015-02-04 (i.e. the next day) and is: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fresearch.do... Domain Name: flowers.delivery Domain ID: 9f91e929ec1c4bc09eaeccd278f2652f-D WHOIS Server: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.whois.co... Referral URL: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.cscgloba... Updated Date: 2015-02-03T22:14:41Z Creation Date: 2015-02-03T22:14:41Z Registry Expiry Date: 2016-02-03T22:14:41Z Sponsoring Registrar: Corporation Service Company Sponsoring Registrar IANA ID: 299 Domain Status: ok https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.icann.o... Registrant ID: 1800flower Registrant Name: Domain Administrator Registrant Organization: 1-800-FLOWERS.COM, INC. Registrant Street: One Old Country Road, Suite 500 Registrant City: Carle Place Registrant State/Province: NY Registrant Postal Code: 11514 Registrant Country: US Registrant Phone: +1.5162376000 Registrant Phone Ext: Registrant Fax: +1.5162376101 Registrant Fax Ext: Registrant Email: domainadmin@1800flowers.com This is evidence that cannot be ignored, and is likely just the tip of the iceberg. There you have it, a "smoking gun". I can see why some people wanted to "move on", to perhaps prevent us from digging deep to find evidence like this, not by a "handful of speculators", but by a large brand owner like 1-800-FLOWERS.com seeking to gain priority access to a common dictionary word that is descriptive to its entire industry. Sincerely, George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I think you are right that these were likely premium names. Many registries, including Donuts and Minds & Machines offered names for sale in advance of a landrush at a premium (and some even after general availability periods started). If free speech is really the "concern" here then how does premium pricing not chill speech or skew the marketplace of ideas by favoring the rich over the poor. As an aside, on the flowers example, 1-800 Flowers obtained a number of their names well after the sunrise periods ended (e.g., flowers.london, flowers.today, flowers.country and flowers.website). Moreover, a bunch of flowers extensions have either been registered to other parties or are still available (e.g., flowers.xyz, flowers.guru, flowers.nyc, flowers.domains, flowers.pet, flowers.photography, flowers.photo, flowers.place, flowers.poker. flowers.property, flowers.republican, flowers.repair etc.) It hardly seems like there has been a conspiracy to take out common words. At best you have a trademark owner that registered and acquired some domain names (including flowers.com) that correlate to its legitimate business of ordering and delivering flowers, gift baskets etc. As others have already noted, we have hashed this issue ad nauseum. Can we move on. Georges Nahitchevansky Kilpatrick Townsend & Stockton LLP The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 office 212 775 8720 | fax 212 775 8820 ghn@kilpatricktownsend.com | www.kilpatricktownsend.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Tuesday, April 11, 2017 12:13 PM To: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Importance: High Many, many new TLD registries offer “premium registrations” for names they held back from both Sunrise and Landrush. While I don’t know for sure, I suspect that Flower.deliver may have been obtained as a premium registration. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/11/17, 5:18 AM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote: Hi folks, I believe I've found a "smoking gun", see below: On Tue, Apr 11, 2017 at 12:37 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: > > To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already. According to the launch schedule for the .DELIVERY TLD at: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fie.godaddy.... Sunrise period was from 12/2/14 at 16:00 UTC to 1/31/15 at 16:00 UTC, and EAP (Landrush) didn't begin until 2/4/15 at 16:00 UTC Consider the domain name FLOWERS.DELIVERY, registered to 1-800-FLOWERS.COM Inc., via DomainTools: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwhois.domai... Its creation date/time was 2015-02-03T22:14:41Z, which was BEFORE the EAP/Landrush date, which is strong evidence it was registered in the sunrise period. [I'm aware that the date is after the close of sunrise, however, I believe that's because all the sunrise domains were created in a batch after the sunrise period was completed; that way, if there were multiple applications for the same string, they could be auctioned, etc.] Note that Yahoo.delivery was created at the same time (within a few seconds): https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwhois.domai... Creation Date: 2015-02-03T22:14:58Z Once again predating EAP/Landrush (I'm confident that's a sunrise registration, as it would be cheaper than paying the Day 1 EAP price!). And it's the same date/time stamp as that of the US Postal Service's registration: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwhois.domai... Creation Date: 2015-02-03T22:14:26Z which once again, should have been a sunrise registration too. And in case anyone suggests that "maybe someone else gamed the system, and 1-800-Flowers.com bought it from them", the earliest WHOIS history record from DomainTools is dated 2015-02-04 (i.e. the next day) and is: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fresearch.do... Domain Name: flowers.delivery Domain ID: 9f91e929ec1c4bc09eaeccd278f2652f-D WHOIS Server: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.whois.co... Referral URL: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.cscgloba... Updated Date: 2015-02-03T22:14:41Z Creation Date: 2015-02-03T22:14:41Z Registry Expiry Date: 2016-02-03T22:14:41Z Sponsoring Registrar: Corporation Service Company Sponsoring Registrar IANA ID: 299 Domain Status: ok https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.icann.o... Registrant ID: 1800flower Registrant Name: Domain Administrator Registrant Organization: 1-800-FLOWERS.COM, INC. Registrant Street: One Old Country Road, Suite 500 Registrant City: Carle Place Registrant State/Province: NY Registrant Postal Code: 11514 Registrant Country: US Registrant Phone: +1.5162376000 Registrant Phone Ext: Registrant Fax: +1.5162376101 Registrant Fax Ext: Registrant Email: domainadmin@1800flowers.com This is evidence that cannot be ignored, and is likely just the tip of the iceberg. There you have it, a "smoking gun". I can see why some people wanted to "move on", to perhaps prevent us from digging deep to find evidence like this, not by a "handful of speculators", but by a large brand owner like 1-800-FLOWERS.com seeking to gain priority access to a common dictionary word that is descriptive to its entire industry. Sincerely, George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
By that argument, all the HOTEL.TLD and HOTELS.TLD domain names registered by Dirk, or all the other examples by "domain name speculators" abusing the sunrise periods could have just as easily have been bought by those registrants legitimately as "premium domains" too! The registry operators were "too smart" to let Flowers.TLD go through in sunrise to 1-800-Flowers.com, without a premium sale, but were "too dumb" and let all those other desirable names slip through the cracks to be registered by "speculators". Implausible. So, by Georges' argument "we'll just never know" the truth, because it can be explained away by some unlikely scenarios, and we shouldn't dig any deeper, because this working group (or the positions of some members) is better off in ignorance of the truth. Perhaps some people can't handle the truth. "See no evil, hear no evil, speak no evil." https://en.wikipedia.org/wiki/Three_wise_monkeys We shouldn't be turning a blind eye to what's wrong, but instead, as Bret suggested, use all the brain power here to fix things. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Apr 11, 2017 at 12:53 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
I think you are right that these were likely premium names. Many registries, including Donuts and Minds & Machines offered names for sale in advance of a landrush at a premium (and some even after general availability periods started). If free speech is really the "concern" here then how does premium pricing not chill speech or skew the marketplace of ideas by favoring the rich over the poor. As an aside, on the flowers example, 1-800 Flowers obtained a number of their names well after the sunrise periods ended (e.g., flowers.london, flowers.today, flowers.country and flowers.website). Moreover, a bunch of flowers extensions have either been registered to other parties or are still available (e.g., flowers.xyz, flowers.guru, flowers.nyc, flowers.domains, flowers.pet, flowers.photography, flowers.photo, flowers.place, flowers.poker. flowers.property, flowers.republican, flowers.repair etc.) It hardly seems like there has been a conspiracy to take out common words. At best you have a trademark owner that registered and acquired some domain names (including flowers.com) that correlate to its legitimate business of ordering and delivering flowers, gift baskets etc.
I find it simply amazing that the side arguing to keep the TMCH database secret has nothing but suspicions and supposition to support their positIon, what are you afraid of? If what you believe to be true is in fact true then exposing the TMCH database to the light shouldn't cause any issues. I am not fond of Trump but his bi-line "clean the swamp" comes to mind. Sent from my iPad
On 11 Apr 2017, at 20:10, George Kirikos <icann@leap.com> wrote:
By that argument, all the HOTEL.TLD and HOTELS.TLD domain names registered by Dirk, or all the other examples by "domain name speculators" abusing the sunrise periods could have just as easily have been bought by those registrants legitimately as "premium domains" too! The registry operators were "too smart" to let Flowers.TLD go through in sunrise to 1-800-Flowers.com, without a premium sale, but were "too dumb" and let all those other desirable names slip through the cracks to be registered by "speculators". Implausible.
So, by Georges' argument "we'll just never know" the truth, because it can be explained away by some unlikely scenarios, and we shouldn't dig any deeper, because this working group (or the positions of some members) is better off in ignorance of the truth. Perhaps some people can't handle the truth.
"See no evil, hear no evil, speak no evil."
https://en.wikipedia.org/wiki/Three_wise_monkeys
We shouldn't be turning a blind eye to what's wrong, but instead, as Bret suggested, use all the brain power here to fix things.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:53 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
I think you are right that these were likely premium names. Many registries, including Donuts and Minds & Machines offered names for sale in advance of a landrush at a premium (and some even after general availability periods started). If free speech is really the "concern" here then how does premium pricing not chill speech or skew the marketplace of ideas by favoring the rich over the poor. As an aside, on the flowers example, 1-800 Flowers obtained a number of their names well after the sunrise periods ended (e.g., flowers.london, flowers.today, flowers.country and flowers.website). Moreover, a bunch of flowers extensions have either been registered to other parties or are still available (e.g., flowers.xyz, flowers.guru, flowers.nyc, flowers.domains, flowers.pet, flowers.photography, flowers.photo, flowers.place, flowers.poker. flowers.property, flowers.republican, flowers.repair etc.) It hardly seems like there has been a conspiracy to take out common words. At b est you have a trademark owner that registered and acquired some domain names (including flowers.com) that correlate to its legitimate business of ordering and delivering flowers, gift baskets etc.
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I think there's a pretty clear difference between the information in the TMCH and a family's household belongings and bank accounts. On Tue, Apr 11, 2017 at 1:37 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
The problem with this approach is that the whole basis of the alleged abuse is ancedotal evidence of a couple of speculators that is being used to cast all brand owners as abusing the system and then demanding that there be a far flung fishing expedition to find some alleged evidence to justify an effort to dismantle a system that was carefully put in place after much prior discussion and debate . As I said before and will repeat again, the whole basis of the argument is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already.
From: Michael Karanicolas Sent: Monday, April 10, 2017 11:06 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
+1 Paul.
I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward.
We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that.
On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es> wrote:
With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach:
1. I fail to see any reason why we should not be allowed to view the database; or
2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision.
I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency.
I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused.
Sent from my iPad
On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com> wrote:
George:
Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”?
The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration.
Michael R. Graham
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Some more examples of gaming of the TMCH sunrises, via public blog posts:
1. via Kevin Murphy of DomainIncite.com:
http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
DIRECT, CLOUD, and SOCIAL
Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?"
implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading.
2. via Konstantinos Zournas of OnlineDomain.com:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do...
regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too.
I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group.
Sincerely,
George Kirikos 416-588-0269
On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me.
Rebecca Tushnet
Georgetown Law
703 593 6759
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Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.
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***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
+100 Best regards, Scott [vlp_logo][IntellectualPropertyLaw 100] [microbadge[1]] <http://www.avvo.com/attorneys/33308-fl-scott-austin-1261914.html> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Nahitchevansky, Georges Sent: Tuesday, April 11, 2017 12:38 AM To: Michael Karanicolas <mkaranicolas@gmail.com>; Paul Keating <paul@law.es> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today The problem with this approach is that the whole basis of the alleged abuse is ancedotal evidence of a couple of speculators that is being used to cast all brand owners as abusing the system and then demanding that there be a far flung fishing expedition to find some alleged evidence to justify an effort to dismantle a system that was carefully put in place after much prior discussion and debate . As I said before and will repeat again, the whole basis of the argument is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. To put it bluntly, there hea been no evidence presented that bona fide brand owners are abusing the TMCH system in order to horde common terms or stiffle free speech. At best, you have a handful of speculators that gamed the system to some extent. This might be a fix or a tweek to the existing regime, but should not be a wholesle questioning of the entire system. Let' move on already. From: Michael Karanicolas Sent: Monday, April 10, 2017 11:06 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Paul. I hate to sound like a broken record on the transparency stuff, but it feels like we're at an impasse, and this is the avenue forward. We have one side insisting that abuses of the system are taking place, while the other insists that they're not. Isn't the answer here to open things up and allow for an honest accounting of the system? And if the side that denies there's a problem is correct, they'll be proven so. Misinformation and rumour thrive in a climate of secrecy. So let's figure out what's actually going on, and chart a path forward based on that. On Mon, Apr 10, 2017 at 7:05 PM, Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: With information like that below, and recognizing that the TMCH sunrise and notice programs were intended to provide a balanced approach: 1. I fail to see any reason why we should not be allowed to view the database; or 2. Treat the failure to be transparent as conclusive evidence that the system is being gamed beyond the balance point, thus justifying revision. I have seen several emails protesting such transparency but although having asked several times, I have never seen any evidence contradicting the facts noted below, or any legal basis for precluding transparency. I join George in asking that this issue be opened to the air so to speak and that we push for disclosure of the TMCH database so that we can perform our job to determine if the programs are being abused. Sent from my iPad On 10 Apr 2017, at 23:27, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote: George: Again, apologies for coming into this conversation late, but could you clarify what you meaning by the term “gaming”? The only usage I can call to mind in connection with the TMCH would be (1) the acquisition of a trademark registration without actual or intended use of the trademark in order to register the registration in the TMCH, or (2) the fabrication of evidence of Use and its submission to the TMCH in order to entitle one to Sunrise registration. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 2:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com<https://linkprotect.cudasvc.com/url?a=http://DomainIncite.com&c=E,1,yOJl1Zct...>: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods<https://linkprotect.cudasvc.com/url?a=http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods&c=E,1,r0sSZKhqTtBqLHIppSImjtUH83A3OkaZBJNslpCdCoUHS3fEwog5r5CaSx0Suy7IztmDp7U6Luw5g_Ri9vMwZpSqErZW0BmiqrpnEomeaxs,&typo=1> DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com<https://linkprotect.cudasvc.com/url?a=http://OnlineDomain.com&c=E,1,JXFbs3qV...>: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/<https://linkprotect.cudasvc.com/url?a=http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/&c=E,1,I01ivwa4fEoVYto4LPmZOo1-vf51e2-fnavoFu4Tj7gNQkXeSHYn1GeNWMLQlEd0XAGNNYZBR6O9HcWbRzV4r4OVSv6QhF0zU-jITz2BZKCSyfvqiW8,&typo=1> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269<tel:8%20(416)%20588-02-69> http://www.leap.com/<https://linkprotect.cudasvc.com/url?a=http://www.leap.com/&c=E,1,1SxeKQZfiEwvGok7UcgC76GS9a1NCT0z4oxd5TpYrxNDcM8aYYbWqU2_UbZaldd8y28JZGKtcwZU8vZI6EZBBQuzasApkz4Y5QMk81E,&typo=1> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. 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So apparently you have an alleged anecdotal example of gaming the system by a speculator/domainer (your earlier evidence on .casino was incorrect as I noted in a prior email to you). I note that the examples do not show a widespread practice of abuse by brand owners. Indeed, the second example of What Box ultimately relates to, in part, 495 total domain names that have registered by that speculator outfit – a number of which are not single word domains but combinations of words. If you track some of their registrations you will find that only a handful of domain names were registered in regards to any one of the common words you site to (for example, they registered 18 “ilove” new extension domains). So again this is anecdotal and not proof that folks are registering trademarks to take all common words out of commission or to stifle free speech. Look, there is always going to be some bad apples in any system you devise (e.g. trolls), but to then take this limited example and try lump all brand owners into the same mix to try and gut the TMCH sunrise provisions is really appalling. I think the problem with the argument that is being posited is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 5:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-do... regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
George K: Yeah. We’re reading the same list. +1. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com> Date: Monday, April 10, 2017 at 3:37 PM To: George Kirikos <icann@leap.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today So apparently you have an alleged anecdotal example of gaming the system by a speculator/domainer (your earlier evidence on .casino was incorrect as I noted in a prior email to you). I note that the examples do not show a widespread practice of abuse by brand owners. Indeed, the second example of What Box ultimately relates to, in part, 495 total domain names that have registered by that speculator outfit – a number of which are not single word domains but combinations of words. If you track some of their registrations you will find that only a handful of domain names were registered in regards to any one of the common words you site to (for example, they registered 18 “ilove” new extension domains). So again this is anecdotal and not proof that folks are registering trademarks to take all common words out of commission or to stifle free speech. Look, there is always going to be some bad apples in any system you devise (e.g. trolls), but to then take this limited example and try lump all brand owners into the same mix to try and gut the TMCH sunrise provisions is really appalling. I think the problem with the argument that is being posited is like saying that there must be abuse in family X because some humans around the world over the past year have committed bad acts, and we must investigate the mom dad and children of family X and see if abuse exists. And if you don't let us investigate everything -and go into their house and look at all their belongings and activities and bank accounts etc etc - then you are obviously hiding something and the abuse must exist in family X and be rampant. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 5:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Some more examples of gaming of the TMCH sunrises, via public blog posts: 1. via Kevin Murphy of DomainIncite.com: http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainincite.com%2F16492-how-one-guy-games-new-gtld-sunrise-periods&data=02%7C01%7C%7C25fcfecbc05849e8ef8908d48062449f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274606948787033&sdata=oOsSMkJDyzEulLow3tmob3G0%2BAimPgCQM4eMUef1WU4%3D&reserved=0> DIRECT, CLOUD, and SOCIAL Note the comments below that blog post by John Berryhill, who wrote "…and the attorney who was unable to use her client’s US registration for “PHYSICS” with the inconvenient disclaimer, and who then obtained a late change in the TMCH rules allowing figurative registrations, so that her client could use a foreign logo registration to obtain the TMCH entry for that word… is she an IPC member, Kristina?" implying that the common term "PHYSICS" might also be gamed, by an IPC member. And there are other comments by him and others on that page that are worth reading. 2. via Konstantinos Zournas of OnlineDomain.com: http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fonlinedomain.com%2F2014%2F04%2F15%2Flegal%2Ffake-trademarks-stealing-generic-domains-in-new-gtld-sunrises%2F&data=02%7C01%7C%7C25fcfecbc05849e8ef8908d48062449f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274606948787033&sdata=cWiwKmHwvPqAiPMfrCr%2FQMPZEVFkEWDBm88JT4obONg%3D&reserved=0> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others (...etc.) More than 30 TMs of very common terms are mentioned, and over 300 domains were found by that one blogger. There are 46 comments to that blog post, too. I renew the call for a public comment period, so that more of these kinds of examples of can be submitted to the working group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7C25fcfecbc05849e8ef8908d48062449f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274606948787033&sdata=TkcxkmO%2BD6pFa4SLbj4s7J8e%2BaSwOMgLv95DAH%2FZ%2FnI%3D&reserved=0> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: When you refuse to say what you would count as evidence of a problem, that leaves us with the evidence I, and George, and Bret, and others have offered--if we want to call them "Group 2" TMCH registrants that would make sense to me. Rebecca Tushnet Georgetown Law 703 593 6759 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
Georges: On Mon, Apr 10, 2017 at 6:37 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
So apparently you have an alleged anecdotal example of gaming the system by a speculator/domainer (your earlier evidence on .casino was incorrect as I noted in a prior email to you). I note that the examples do not show a widespread practice of abuse by brand owners.
You keep calling them "speculator/domainers", to try to distance them from what they are, namely *trademark owners*. That's the camp where the problem comes from, not from "domainers/speculators". Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
No, I think the reference is correct in this context. Domain name speculators/investors and even Cybersquatters can also be trademark owners. However, the reference is accurate in reflecting their principal reason for participating in the domain name ecology. Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 3:42 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Georges: On Mon, Apr 10, 2017 at 6:37 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
So apparently you have an alleged anecdotal example of gaming the system by a speculator/domainer (your earlier evidence on .casino was incorrect as I noted in a prior email to you). I note that the examples do not show a widespread practice of abuse by brand owners.
You keep calling them "speculator/domainers", to try to distance them from what they are, namely *trademark owners*. That's the camp where the problem comes from, not from "domainers/speculators". Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 Sent from my iPhone
On Apr 10, 2017, at 3:49 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
No, I think the reference is correct in this context. Domain name speculators/investors and even Cybersquatters can also be trademark owners. However, the reference is accurate in reflecting their principal reason for participating in the domain name ecology.
Michael R.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, April 10, 2017 3:42 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Georges:
On Mon, Apr 10, 2017 at 6:37 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: So apparently you have an alleged anecdotal example of gaming the system by a speculator/domainer (your earlier evidence on .casino was incorrect as I noted in a prior email to you). I note that the examples do not show a widespread practice of abuse by brand owners.
You keep calling them "speculator/domainers", to try to distance them from what they are, namely *trademark owners*. That's the camp where the problem comes from, not from "domainers/speculators".
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Thank you Michael G, this is absolutely a correct distinction to draw. A few thoughts: On the “issue”: George K, perhaps for some context, when we looked at the Spec 13 (".brand") issue with ICANN, this same issue of bona fide trademark owners was central to our discussions. Among other specific language aimed at addressing this, ICANN's FAQ's (https://newgtlds.icann.org/en/applicants/agb/base-agreement-spec-13-faqs-15j...) state: "Specification 13 defines a .Brand TLD as: the TLD [corresponding to] a registered trademark valid under applicable law, which registered trademark …is owned and used by the Registry Operator …in the ordinary course of Registry Operator’s …business in connection with the offering of any of the goods and/or services claimed in the trademark registration;" Drawing guidance from that definition, and to paraphrase Michael G: is the principal reason someone is participating in the TMCH and Sunrise to obtain a (dictionary word) domain name (for speculation/resale), or to execute a (pre-existing) trademark protection strategy? As Georges N said, there will always be bad actors who game systems (here, by “overclaiming”), but this does not justify throwing the whole system out. Bona fide trademark owners should not be penalized for abuse by speculators. And as has already been noted, to address such gaming, aside from the rather obvious possibility of challenging the underlying trademark registration inappropriately invoked for a Sunrise, there is also a challenge process contemplated for such disputes amongst speculators. See 1.2 (2 and 3) at: www.trademark-clearinghouse.com/dispute<http://www.trademark-clearinghouse.com/dispute>. Finally, in terms of Michael K’s question, no one is suggesting that gaming is not occurring. It is difficult however to see what new light will be shed on this by continuing to insist on additional data. On the data: In terms of drawing conclusions about the correlation between not-yet-registered domain names – which here, we assume are subject to a Claims Notice – this would require a case-by-case subjective assessment of the reason(s) a potential registration may have been abandoned. This is not so much a failing of the “amount of evidence” but the type of evidence available. That said, recall that Claims Notices presuppose that some would-be infringers are going to be deterred from undertaking a registration (but again knowing that this has occurred would require knowing the subjective reason(s) a registration was not undertaken). Moreover, in the case of a registration, it is potentially relevant in enforcement actions to address an unawareness defense. The mere possibility that anyone, be it a trademark owner or otherwise, may register a particular domain name using a dictionary word (e.g., <“cloud”.newgTLD>) necessarily means that everyone else in the entire world will be excluded from expressing themselves via that particular dictionary word in that TLD. Some hopefully useful info/data: · There are just over 42,000 entries in the TMCH (www.trademark-clearinghouse.com/content/stats-0<http://www.trademark-clearinghouse.com/content/stats-0>). · There are roughly 30 million domain names registered in about 1,200 new gTLDs (https://ntldstats.com/ and https://newgtlds.icann.org/en/program-status/delegated-strings) for an average of about 25,000 domain names registered in each new gTLD (though ICANN’s CCT excel sheet says more like 20,000 on average). · With one notable outlier (.adult) at 2,049, a high-water mark for Sunrise registrations seems so-far to be about 1,000 (notably, 950 from .BLOG: www.thedomains.com/2016/10/20/blog‑gets‑almost‑950-domain-registrations-sunrise-period/<http://www.thedomains.com/2016/10/20/blog-gets%1ealmost%1e950-domain-registr...>). · The average number of sunrise registrations per new gTLD seems to be about 130 (https://www.icann.org/resources/pages/cct-metrics-rpm-2016-06-27-en#2.8). Even ignoring the fact that just a casual glance at the .BLOG Sunrise list makes it clear that many of these registrations are for well-known brands (i.e., this is not merely a list of dictionary terms, or as Bret calls it “Group 2”), and even recognizing that there are actors out there gaming the TMCH and Sunrise system (and moreover noting that apparently some registration actors have bulk pinged the TMCH), it is somewhat difficult to understand the sweeping conclusion that free speech is being chilled or that free expression is somehow being blocked – the numbers simply don’t bear this conclusion out. And there is, I think, another distinction that needs to be drawn: that between those wishing to engage in speech, and those seeking an advantage in purchasing domain names for commercial purposes. For the former group, with an average of 130 registrations in Sunrise, even if we accept that some of those registrations take domain names from individuals wishing to engage in “free speech” it is difficult to see how much closer to zero we can realistically hope to get. Finally, the latter group is engaged in abuse of the RPMs beyond their intended purpose, and this WG should not be discussing limitations on the RPMs (to the detriment of bona fide trademark owners) merely to address the competitive concerns of their domain name speculation comrades. There are already challenge processes in place for this. Regards, Brian -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Tuesday, April 11, 2017 1:53 AM To: Michael Graham (ELCA) Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Sent from my iPhone
On Apr 10, 2017, at 3:49 PM, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote:
No, I think the reference is correct in this context. Domain name speculators/investors and even Cybersquatters can also be trademark owners. However, the reference is accurate in reflecting their principal reason for participating in the domain name ecology.
Michael R.
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>
[mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos
Sent: Monday, April 10, 2017 3:42 PM
To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
Working Group call held earlier today
Georges:
On Mon, Apr 10, 2017 at 6:37 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote:
So apparently you have an alleged anecdotal example of gaming the
system by a speculator/domainer (your earlier evidence on .casino was
incorrect as I noted in a prior email to you). I note that the
examples do not show a widespread practice of abuse by brand owners.
You keep calling them "speculator/domainers", to try to distance them from what they are, namely *trademark owners*. That's the camp where the problem comes from, not from "domainers/speculators".
Sincerely,
George Kirikos
416-588-0269
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le
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a7b34438794aed2c178decee1%7C0%7C0%7C636274613434873114&sdata=X30byD5qI
E3NivHllO3VI0vwcRiFX%2BR9BcpTlPJ9wik%3D&reserved=0
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Hello, On Tue, Apr 11, 2017 at 6:11 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
· The average number of sunrise registrations per new gTLD seems to be about 130 (https://www.icann.org/resources/pages/cct-metrics-rpm-2016-06-27-en#2.8). .... For the former group, with an average of 130 registrations in Sunrise, even if we accept that some of those registrations take domain names from individuals wishing to engage in “free speech” it is difficult to see how much closer to zero we can realistically hope to get.
Given those stats, then they're actually demonstrating that the *benefits* of the sunrise periods have been marginal, only attracting on average 130 domain name registrations (and probably even fewer unique registrants, given some large brand owners routinely register multiple domains matching their marks in the sunrise periods). In other words, the deleterious effects of eliminating it entirely will only impact a relatively small number of domain name buyers (be they legitimate defensive registrations by bona fide brand owners or 'gaming' registrations made by others). Furthermore, the series of data observations presented so far demonstrates a pattern of *at least* 30 or 40 strings that are routinely being gamed in sunrises (it's possibly even higher, if they've flown below the radar). 30 or 40 out of 130 would be a very high percentage of 20%+ !! Other benefits (besides the level playing field) of completely eliminating the sunrise period would include: 1. lower costs for registry operators (i.e. no need to develop technology to handle that separate registration period), and also registrars; the savings can also be passed on to registrants 2. faster launch times for registry operators (this benefits all registrants too, since they'll get their domain names earlier under general availability). Thank you for reminding us of the stats, Brian. They help to show that the benefits of the sunrise period to a handful of organizations don't exceed the costs imposed upon everyone else. Another "Brian" (Scarpelli) later wrote that "edge use cases" shouldn't drive overhaul. Well, 130 sunrise registrations seem like "edge use cases" to me. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Sunrise periods were created for a series of reasons (I edited the booklet The Perfect Sunrise back in 2005) including: To limit the liability of registries To limit the liability of registrars To limit consumer confusion because most internet users naturally expect a domain name matching a brand to carry genuine content To prevent internet users who registered a name matching a trademark being dragged into long and drawn out proceedings You can hunt for smoking guns and decry Sunrise and try and stop the debate from moving on but the majority of Governments, registries, registrars, IP, business and non-commercial interests value Sunrise. It may not be a perfect mechanism but the protection of trademarks registered under national and international law in the domain name system is one of the aims of the new gTLD program Let's move on Nick -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: 11 April 2017 12:40 To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello, On Tue, Apr 11, 2017 at 6:11 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
· The average number of sunrise registrations per new gTLD seems to be about 130 (https://www.icann.org/resources/pages/cct-metrics-rpm-2016-06-27-en#2.8). .... For the former group, with an average of 130 registrations in Sunrise, even if we accept that some of those registrations take domain names from individuals wishing to engage in “free speech” it is difficult to see how much closer to zero we can realistically hope to get.
Given those stats, then they're actually demonstrating that the *benefits* of the sunrise periods have been marginal, only attracting on average 130 domain name registrations (and probably even fewer unique registrants, given some large brand owners routinely register multiple domains matching their marks in the sunrise periods). In other words, the deleterious effects of eliminating it entirely will only impact a relatively small number of domain name buyers (be they legitimate defensive registrations by bona fide brand owners or 'gaming' registrations made by others). Furthermore, the series of data observations presented so far demonstrates a pattern of *at least* 30 or 40 strings that are routinely being gamed in sunrises (it's possibly even higher, if they've flown below the radar). 30 or 40 out of 130 would be a very high percentage of 20%+ !! Other benefits (besides the level playing field) of completely eliminating the sunrise period would include: 1. lower costs for registry operators (i.e. no need to develop technology to handle that separate registration period), and also registrars; the savings can also be passed on to registrants 2. faster launch times for registry operators (this benefits all registrants too, since they'll get their domain names earlier under general availability). Thank you for reminding us of the stats, Brian. They help to show that the benefits of the sunrise period to a handful of organizations don't exceed the costs imposed upon everyone else. Another "Brian" (Scarpelli) later wrote that "edge use cases" shouldn't drive overhaul. Well, 130 sunrise registrations seem like "edge use cases" to me. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Nick Wood Sent: Tuesday, April 11, 2017 5:50 AM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Sunrise periods were created for a series of reasons (I edited the booklet The Perfect Sunrise back in 2005) including: To limit the liability of registries To limit the liability of registrars To limit consumer confusion because most internet users naturally expect a domain name matching a brand to carry genuine content To prevent internet users who registered a name matching a trademark being dragged into long and drawn out proceedings You can hunt for smoking guns and decry Sunrise and try and stop the debate from moving on but the majority of Governments, registries, registrars, IP, business and non-commercial interests value Sunrise. It may not be a perfect mechanism but the protection of trademarks registered under national and international law in the domain name system is one of the aims of the new gTLD program Let's move on Nick -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: 11 April 2017 12:40 To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello, On Tue, Apr 11, 2017 at 6:11 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
· The average number of sunrise registrations per new gTLD seems to be about 130 (https://www.icann.org/resources/pages/cct-metrics-rpm-2016-06-27-en#2.8). .... For the former group, with an average of 130 registrations in Sunrise, even if we accept that some of those registrations take domain names from individuals wishing to engage in “free speech” it is difficult to see how much closer to zero we can realistically hope to get.
Given those stats, then they're actually demonstrating that the *benefits* of the sunrise periods have been marginal, only attracting on average 130 domain name registrations (and probably even fewer unique registrants, given some large brand owners routinely register multiple domains matching their marks in the sunrise periods). In other words, the deleterious effects of eliminating it entirely will only impact a relatively small number of domain name buyers (be they legitimate defensive registrations by bona fide brand owners or 'gaming' registrations made by others). Furthermore, the series of data observations presented so far demonstrates a pattern of *at least* 30 or 40 strings that are routinely being gamed in sunrises (it's possibly even higher, if they've flown below the radar). 30 or 40 out of 130 would be a very high percentage of 20%+ !! Other benefits (besides the level playing field) of completely eliminating the sunrise period would include: 1. lower costs for registry operators (i.e. no need to develop technology to handle that separate registration period), and also registrars; the savings can also be passed on to registrants 2. faster launch times for registry operators (this benefits all registrants too, since they'll get their domain names earlier under general availability). Thank you for reminding us of the stats, Brian. They help to show that the benefits of the sunrise period to a handful of organizations don't exceed the costs imposed upon everyone else. Another "Brian" (Scarpelli) later wrote that "edge use cases" shouldn't drive overhaul. Well, 130 sunrise registrations seem like "edge use cases" to me. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Excellent points and analysis, Brian. George’s “gaming” concern does, however, raise an interesting opportunity: Although as you point out the empirical evidence does not support scrapping Sunrise, it could support imposing a “use in the ordinary course of trade” requirement for domain names. This would require registrants of domain names (or domain names registered in Sunrise?) to submit proof that they are using the domain name in the ordinary course of offering and selling the goods or services for which they registered their trademark. This could be 3 years or some other appropriate period. If the registrant fails to submit proof, the domain name registration is cancelled and the name returned to the registry for re-registration. This would prevent the sort of monopolization of speech for non-consumer use that George seems concerned by. If adopted, this same proof test could be applied to all domains to ensure that once registered they are used to further the purpose and goals of the Internet: Choice, Trust, Competition, and Diversity in information transmission and sharing, and free and open speech. This would have the salutary effect of preventing gaming, reducing cybersquatting, and removing deadwood and merely speculative registrations which do not benefit the DNS. Michael R. From: Beckham, Brian [mailto:brian.beckham@wipo.int] Sent: Tuesday, April 11, 2017 3:12 AM To: J. Scott Evans <jsevans@adobe.com>; Michael Graham (ELCA) <migraham@expedia.com>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thank you Michael G, this is absolutely a correct distinction to draw. A few thoughts: On the “issue”: George K, perhaps for some context, when we looked at the Spec 13 (".brand") issue with ICANN, this same issue of bona fide trademark owners was central to our discussions. Among other specific language aimed at addressing this, ICANN's FAQ's (https://newgtlds.icann.org/en/applicants/agb/base-agreement-spec-13-faqs-15j...) state: "Specification 13 defines a .Brand TLD as: the TLD [corresponding to] a registered trademark valid under applicable law, which registered trademark …is owned and used by the Registry Operator …in the ordinary course of Registry Operator’s …business in connection with the offering of any of the goods and/or services claimed in the trademark registration;" Drawing guidance from that definition, and to paraphrase Michael G: is the principal reason someone is participating in the TMCH and Sunrise to obtain a (dictionary word) domain name (for speculation/resale), or to execute a (pre-existing) trademark protection strategy? As Georges N said, there will always be bad actors who game systems (here, by “overclaiming”), but this does not justify throwing the whole system out. Bona fide trademark owners should not be penalized for abuse by speculators. And as has already been noted, to address such gaming, aside from the rather obvious possibility of challenging the underlying trademark registration inappropriately invoked for a Sunrise, there is also a challenge process contemplated for such disputes amongst speculators. See 1.2 (2 and 3) at: www.trademark-clearinghouse.com/dispute<http://www.trademark-clearinghouse.com/dispute>. Finally, in terms of Michael K’s question, no one is suggesting that gaming is not occurring. It is difficult however to see what new light will be shed on this by continuing to insist on additional data. On the data: In terms of drawing conclusions about the correlation between not-yet-registered domain names – which here, we assume are subject to a Claims Notice – this would require a case-by-case subjective assessment of the reason(s) a potential registration may have been abandoned. This is not so much a failing of the “amount of evidence” but the type of evidence available. That said, recall that Claims Notices presuppose that some would-be infringers are going to be deterred from undertaking a registration (but again knowing that this has occurred would require knowing the subjective reason(s) a registration was not undertaken). Moreover, in the case of a registration, it is potentially relevant in enforcement actions to address an unawareness defense. The mere possibility that anyone, be it a trademark owner or otherwise, may register a particular domain name using a dictionary word (e.g., <“cloud”.newgTLD>) necessarily means that everyone else in the entire world will be excluded from expressing themselves via that particular dictionary word in that TLD. Some hopefully useful info/data: · There are just over 42,000 entries in the TMCH (www.trademark-clearinghouse.com/content/stats-0<http://www.trademark-clearinghouse.com/content/stats-0>). · There are roughly 30 million domain names registered in about 1,200 new gTLDs (https://ntldstats.com/ and https://newgtlds.icann.org/en/program-status/delegated-strings) for an average of about 25,000 domain names registered in each new gTLD (though ICANN’s CCT excel sheet says more like 20,000 on average). · With one notable outlier (.adult) at 2,049, a high-water mark for Sunrise registrations seems so-far to be about 1,000 (notably, 950 from .BLOG: www.thedomains.com/2016/10/20/blog‑gets‑almost‑950-domain-registrations-sunrise-period/<http://www.thedomains.com/2016/10/20/blog-gets%1ealmost%1e950-domain-registr...>). · The average number of sunrise registrations per new gTLD seems to be about 130 (https://www.icann.org/resources/pages/cct-metrics-rpm-2016-06-27-en#2.8). Even ignoring the fact that just a casual glance at the .BLOG Sunrise list makes it clear that many of these registrations are for well-known brands (i.e., this is not merely a list of dictionary terms, or as Bret calls it “Group 2”), and even recognizing that there are actors out there gaming the TMCH and Sunrise system (and moreover noting that apparently some registration actors have bulk pinged the TMCH), it is somewhat difficult to understand the sweeping conclusion that free speech is being chilled or that free expression is somehow being blocked – the numbers simply don’t bear this conclusion out. And there is, I think, another distinction that needs to be drawn: that between those wishing to engage in speech, and those seeking an advantage in purchasing domain names for commercial purposes. For the former group, with an average of 130 registrations in Sunrise, even if we accept that some of those registrations take domain names from individuals wishing to engage in “free speech” it is difficult to see how much closer to zero we can realistically hope to get. Finally, the latter group is engaged in abuse of the RPMs beyond their intended purpose, and this WG should not be discussing limitations on the RPMs (to the detriment of bona fide trademark owners) merely to address the competitive concerns of their domain name speculation comrades. There are already challenge processes in place for this. Regards, Brian -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Tuesday, April 11, 2017 1:53 AM To: Michael Graham (ELCA) Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Sent from my iPhone
On Apr 10, 2017, at 3:49 PM, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote:
No, I think the reference is correct in this context. Domain name speculators/investors and even Cybersquatters can also be trademark owners. However, the reference is accurate in reflecting their principal reason for participating in the domain name ecology.
Michael R.
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>
[mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos
Sent: Monday, April 10, 2017 3:42 PM
To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
Working Group call held earlier today
Georges:
On Mon, Apr 10, 2017 at 6:37 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote:
So apparently you have an alleged anecdotal example of gaming the
system by a speculator/domainer (your earlier evidence on .casino was
incorrect as I noted in a prior email to you). I note that the
examples do not show a widespread practice of abuse by brand owners.
You keep calling them "speculator/domainers", to try to distance them from what they are, namely *trademark owners*. That's the camp where the problem comes from, not from "domainers/speculators".
Sincerely,
George Kirikos
416-588-0269
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
FWIW, there’s very little incentive to file a sunrise dispute. Even when successful, the remedy does not guarantee that the complainant will be awarded the domain. If a uniform sunrise dispute policy is on the table as a mechanism to prevent gaming, you would need to balance the risk/rewards to incentivize the use of the dispute process. Right now, you’re asking someone to go through the time, effort and cost of a process that could give the right of registration to an unknown third-party. Bret Bret Fausett General Counsel ____________________________ <http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 Office +1 949 706 2300 x4201 <mailto:bret@uniregistry.com> bret@uniregistry.com From: Statton Hammock [mailto:statton@rightside.rocks] Sent: Monday, April 10, 2017 9:02 AM To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com> Cc: Bret Fausett <bret@uniregistry.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Kiran, That is correct. All registries must have an SDRP. BTW, Rightside has launched 40 TLDs and not a single SDRP has been filed after any Sunrise. Statton Statton Hammock Vice-President, Business & Legal Affairs <http://madebygraphiti.com/rightside/signature/rightside_logo.png> Office | 425-298-2367 Mobile | 425-891-9297 <mailto:statton@rightside.rocks> statton@rightside.rocks On Mon, Apr 10, 2017 at 9:57 AM, Kiran Malancharuvil via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > wrote: Aren't registries required to implement a sunrise dispute resolution procedure, the purpose of which is to allow other legitimate registrants to challenge the allocation of a domain name during sunrise? What role does that play, if any? I confess I haven't heard much about this since 2013. Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 <tel:415-419-9138> (m) Sent from my mobile, please excuse any typos. On Apr 10, 2017, at 9:35 AM, Bret Fausett <bret@uniregistry.com <mailto:bret@uniregistry.com> <mailto:bret@uniregistry.com <mailto:bret@uniregistry.com> >> wrote:
It seems like the whole argument is on the basis of some strawman argument that brand owners are using the TMCH to take common words out of circulation.
As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1. At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. So I don't think anyone is claiming that "brand owners" are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market. (At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.) If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view. Bret Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 <tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201 <tel:%2B1%20949%20706%202300%20x4201> Bret Fausett General Counsel ____________________________ [Uniregistry]<http://www.uniregistry.link/> Uniregistry, Inc. 2161 San Joaquin Hlils Road Newport Beach, California 92660 Mobile +1 310 985 1351 <tel:%2B1%20310%20985%201351> Office +1 949 706 2300 x4201 <tel:%2B1%20949%20706%202300%20x4201> bret@uniregistry.com <mailto:bret@uniregistry.com> <mailto:bret@uniregistry.com <mailto:bret@uniregistry.com> > _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <mailto:gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Hi folks, On Mon, Apr 10, 2017 at 12:35 PM, Bret Fausett <bret@uniregistry.com> wrote:
At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2. ...
(At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/ registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.)
The "gamers" (Group 2) are of course rational, so if they are aware that a registry like Uniregistry has such a restriction, they'd tend to avoid Sunrise registrations. The fact that *even* with that restriction in place, 3-5% are gamed speaks volumes. If 3-5% of domain names were generating UDRPs, there'd be an outcry that "something needs to be done". For registries *without* such a registry restriction, one would expect the gaming to be even higher, because the behaviour would be more profitable. Maybe 10%, maybe 20%, or even higher. As I suggested in my earlier email, let's crowdsource this and let the public submit examples, if we're not going to be given access to the raw data to do the research on our own. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
No. Paul. You misinterpret our role on this WG. Our role is to review the existing RPM's a determine if they are functioning as designed and desired. For us to recommend a change, we need to have demonstrated proof that the RPM is not functioning as designed or desired. We do not assume harm just because a group of vocal proponents believes there is harm without demonstrating it be producing evidence of harm. Sent from my iPhone
On Apr 9, 2017, at 12:31 PM, Paul Keating <paul@law.es> wrote:
I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech.
Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression.
The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious.
So this is not a rabbit hole. The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. We must determine if abuse has occurred. The contents of the TMCH database is very much relevant. If we are to be denied information relevant to the database we must assume the worst. For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, Freedoms of speech is simply too important to ignore.
For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson.
Sent from my iPad
On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are beingdom blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.circleid...
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.law-demo...
Or if you want to go into a little more depth, you can check out this one: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.law-demo...
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote: > Michael: > > Where can I find a discussion how Article 19 and similar "Freedom of > Expression" requirements relate to or impact the registration of domain > names? > > > Michael R. > > Article 19. > Everyone has the right to freedom of opinion and expression; this > right includes freedom to hold opinions without interference and to seek, > receive and impart information and ideas through any media and regardless of > frontiers. > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas > Sent: Thursday, April 06, 2017 5:53 AM > To: J. Scott Evans <jsevans@adobe.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the > Working Group call held earlier today > > Once again - I have to jump in. Freedom of expression is very much a > universal concept: > > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.un.org%2... > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ohchr.or... > > That's why we call them "human" rights. Not "American" rights. > > > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> The law is clear: an exact match isn't free speech. It is trademark >> infringement. A domain that coveys a message (e.g., hotels suck.com) is free >> speech and protected accordingly. Also, "free speech" is a US constitutional >> concept adopted by some countries, but it is not a universal legal concept. >> Perhaps universal free speech is aspirational, but it is not reality. >> >> Sent from my iPhone >> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >>> >>> I'm not sure where J. Scott is getting his "facts", but my company >>> doesn't "arbitrage" nor has it registered *any* new gTLD domain >>> names >>> (and I have no desire for any), nor is it a "bad actor." If you have >>> proof that my company is a "bad actor", put it forward, rather than >>> sling unsupported innuendo. >>> >>> The whole point is that the "barriers" are put forth as *required* >>> to >>> deal with so-called "bad actors", but are instead used to advantage >>> certain groups, far beyond the "damage" that is claimed to be caused >>> by the "bad actors." >>> >>> I don't want to delve into politics, but some might see parallels to >>> certain government measures in some countries, where a "problem" is >>> claimed, but a Draconian solution is applied to deal with it. >>> >>> When it comes to the sunrise periods for new gTLDs, the "problem" is >>> claimed to be cybersquatting, but instead of relying on curative >>> rights, the Sunrise policy went too far and gave too many advantages >>> to TM holders, essentially creating an unlevel playing field between >>> *good actors* and TM holders. >>> >>> Free speech means *no prior restraints* (with very rare exceptions), >>> but harsh penalties for unlawful speech (curative rights). >>> >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >>> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 >>> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 >>> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC >>> H7s%3D&reserved=0 >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l >>> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 >>> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>> >>> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> >>>> wrote: >>>> The same logic applies to you and other domaines, cybersquatters, >>>> speculators and small businesses. The fact that you want to arbitrage in >>>> terms that are also trademarks is your choice and you have to deal with the >>>> barriers put in place to deal with the bad actors. >>>> >>>> Sent from my iPhone >>>> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>>> >>>>> Hi folks, >>>>> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>> <brian.beckham@wipo.int> wrote: >>>>>> Finally, since the chart references the EFF letter, it is worth >>>>>> mentioning here that the fact that a trademark owner may pay >>>>>> (sometimes extremely high >>>>>> amounts) to defensively register a domain name exactly matching >>>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>>> the >>>>>> market”) does not prevent free expression, which may be >>>>>> undertaken >>>>>> in countless other ways. The number of terms that may be >>>>>> appended >>>>>> to a trademark (not to mention typos) to engage in all manner of >>>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>>> limitless. >>>>> >>>>> By that "logic", the number of terms that may be appended to a >>>>> common dictionary word (not to mention typos) to create a >>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>> :-) >>>>> >>>>> In other words, those creating a new brand/trademark certainly had >>>>> the opportunity to create a longer (and thus inferior) alternative >>>>> to a commonly used dictionary word or other common term. The fact >>>>> that they decided instead to choose a common term that is widely >>>>> used by the public shouldn't give them any priority access in a >>>>> launch of a new gTLD. >>>>> >>>>> "I created a problem for myself, and I want ICANN to fix it" is >>>>> the >>>>> essence of the sunrise argument for commonly used terms, like >>>>> dictionary words and short acronyms. >>>>> >>>>> Sincerely, >>>>> >>>>> George Kirikos >>>>> 416-588-0269 >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww >>>>> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf >>>>> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm >>>>> >>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 >>>>> >>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C >>>>> >>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF >>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.i >>> >>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C811dc6e >>> >>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0% >>> >>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99f >>> s%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
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+1. The statement "For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, Freedoms of speech is simply too important to ignore" is argumentative. There can be no proof of a negative general assertion. On the other hand, assertions that the TMCH has a negative impact on the rights of free speech and/or free expression of non-trademark owners must be supported by some empirical evidence -- else how could they be made other than rhetorically. Michael R. Graham -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Sunday, April 09, 2017 2:28 PM To: Paul Keating <paul@law.es> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today No. Paul. You misinterpret our role on this WG. Our role is to review the existing RPM's a determine if they are functioning as designed and desired. For us to recommend a change, we need to have demonstrated proof that the RPM is not functioning as designed or desired. We do not assume harm just because a group of vocal proponents believes there is harm without demonstrating it be producing evidence of harm. Sent from my iPhone
On Apr 9, 2017, at 12:31 PM, Paul Keating <paul@law.es> wrote:
I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech.
Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression.
The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious.
So this is not a rabbit hole. The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. We must determine if abuse has occurred. The contents of the TMCH database is very much relevant. If we are to be denied information relevant to the database we must assume the worst. For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it, Freedoms of speech is simply too important to ignore.
For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson.
Sent from my iPad
On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are beingdom blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of falling too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by viewing Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the case is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into this because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is not to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR are interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fww w.circleid.com%2Fposts%2F20170401_human_rights_and_regular_interne t_users%2F&data=02%7C01%7C%7C50304f839f204047d22108d47f7f0561%7Cfa 7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636273630935943189&sdata= 6qWZwyRCAD304b1Cjsxqu4lmhk2Iw%2FohGux5waII%2BN0%3D&reserved=0
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fw ww.law-democracy.org%2Flive%2Fwp-content%2Fuploads%2F2015%2F02%2F foe-briefingnotes-2.pdf&data=02%7C01%7C%7C50304f839f204047d22108d 47f7f0561%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C6362736309 35953197&sdata=iibWIOUarmHu8u3nYw1DeYDtN9xNifENvlfw4uNCb0c%3D&res erved=0
Or if you want to go into a little more depth, you can check out this one: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fw ww.law-democracy.org%2Flive%2Fwp-content%2Fuploads%2F2012%2F08%2F Paper-on-Restrictions.10.03.22.rev_.pdf&data=02%7C01%7C%7C50304f8 39f204047d22108d47f7f0561%7Cfa7b1b5a7b34438794aed2c178decee1%7C0% 7C1%7C636273630935953197&sdata=lOr2IonxpavnfDnwQ%2Bj3PARbkkw0MGVy fCxIStBYVpU%3D&reserved=0
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote: > Michael: > > Where can I find a discussion how Article 19 and similar > "Freedom of Expression" requirements relate to or impact the > registration of domain names? > > > Michael R. > > Article 19. > Everyone has the right to freedom of opinion and expression; > this right includes freedom to hold opinions without > interference and to seek, receive and impart information and > ideas through any media and regardless of frontiers. > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael > Karanicolas > Sent: Thursday, April 06, 2017 5:53 AM > To: J. Scott Evans <jsevans@adobe.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from > the Working Group call held earlier today > > Once again - I have to jump in. Freedom of expression is very > much a universal concept: > > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2F > www.un.org%2Fen%2Funiversal-declaration-human-rights%2F&data=02% > 7C01%7C%7C50304f839f204047d22108d47f7f0561%7Cfa7b1b5a7b34438794a > ed2c178decee1%7C0%7C0%7C636273630935953197&sdata=vobvPy0220fGdgR > KPMJWjL0%2FjAHrMa%2FX1bPNa2dCbcY%3D&reserved=0 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2F > www.ohchr.org%2FEN%2FProfessionalInterest%2FPages%2FCCPR.aspx&da > ta=02%7C01%7C%7C50304f839f204047d22108d47f7f0561%7Cfa7b1b5a7b344 > 38794aed2c178decee1%7C0%7C0%7C636273630935953197&sdata=9SsjyoBo7 > nNUNsLjYOExngiTPOSOfFK6N4ODT0kS4Kg%3D&reserved=0 > > That's why we call them "human" rights. Not "American" rights. > > > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> The law is clear: an exact match isn't free speech. It is >> trademark infringement. A domain that coveys a message (e.g., >> hotels suck.com) is free speech and protected accordingly. >> Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. >> Perhaps universal free speech is aspirational, but it is not reality. >> >> Sent from my iPhone >> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >>> >>> I'm not sure where J. Scott is getting his "facts", but my >>> company doesn't "arbitrage" nor has it registered *any* new >>> gTLD domain names (and I have no desire for any), nor is it a >>> "bad actor." If you have proof that my company is a "bad >>> actor", put it forward, rather than sling unsupported >>> innuendo. >>> >>> The whole point is that the "barriers" are put forth as >>> *required* to deal with so-called "bad actors", but are >>> instead used to advantage certain groups, far beyond the >>> "damage" that is claimed to be caused by the "bad actors." >>> >>> I don't want to delve into politics, but some might see >>> parallels to certain government measures in some countries, >>> where a "problem" is claimed, but a Draconian solution is applied to deal with it. >>> >>> When it comes to the sunrise periods for new gTLDs, the >>> "problem" is claimed to be cybersquatting, but instead of >>> relying on curative rights, the Sunrise policy went too far >>> and gave too many advantages to TM holders, essentially >>> creating an unlevel playing field between *good actors* and TM holders. >>> >>> Free speech means *no prior restraints* (with very rare >>> exceptions), but harsh penalties for unlawful speech (curative rights). >>> >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. >>> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811d >>> c6e8437 >>> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7 >>> C0%7C63 >>> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g >>> %2FOWfC >>> H7s%3D&reserved=0 >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F% >>> 2Fwww.l >>> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30% >>> 7Cfa7b1 >>> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata >>> =6BJPNx >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>> >>> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans >>>> <jsevans@adobe.com> >>>> wrote: >>>> The same logic applies to you and other domaines, >>>> cybersquatters, speculators and small businesses. The fact >>>> that you want to arbitrage in terms that are also trademarks >>>> is your choice and you have to deal with the barriers put in place to deal with the bad actors. >>>> >>>> Sent from my iPhone >>>> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>>> >>>>> Hi folks, >>>>> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>> <brian.beckham@wipo.int> wrote: >>>>>> Finally, since the chart references the EFF letter, it is >>>>>> worth mentioning here that the fact that a trademark owner >>>>>> may pay (sometimes extremely high >>>>>> amounts) to defensively register a domain name exactly >>>>>> matching its trademark in a Sunrise process (and thereby >>>>>> taking it “off the >>>>>> market”) does not prevent free expression, which may be >>>>>> undertaken in countless other ways. The number of terms >>>>>> that may be appended to a trademark (not to mention typos) >>>>>> to engage in all manner of speech – fair or otherwise – is, >>>>>> practically-speaking, all but limitless. >>>>> >>>>> By that "logic", the number of terms that may be appended to >>>>> a common dictionary word (not to mention typos) to create a >>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>> :-) >>>>> >>>>> In other words, those creating a new brand/trademark >>>>> certainly had the opportunity to create a longer (and thus >>>>> inferior) alternative to a commonly used dictionary word or >>>>> other common term. The fact that they decided instead to >>>>> choose a common term that is widely used by the public >>>>> shouldn't give them any priority access in a launch of a new gTLD. >>>>> >>>>> "I created a problem for myself, and I want ICANN to fix it" >>>>> is the essence of the sunrise argument for commonly used >>>>> terms, like dictionary words and short acronyms. >>>>> >>>>> Sincerely, >>>>> >>>>> George Kirikos >>>>> 416-588-0269 >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2 >>>>> F%2Fwww >>>>> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46 >>>>> e63%7Cf >>>>> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418 >>>>> &sdata= >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved= >>>>> 0 _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url=https%3A% >>>>> 2F%2Fmm >>>>> >>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7 >>>>> C%7C2b7 >>>>> >>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178de >>>>> cee1%7C >>>>> >>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B >>>>> 2kWcBkF >>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F >>> %2Fmm.i >>> >>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C >>> 811dc6e >>> >>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7 >>> C0%7C0% >>> >>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZ >>> Qh1s99f >>> s%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F% >> 2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01% >> 7C%7C50304f839f204047d22108d47f7f0561%7Cfa7b1b5a7b34438794aed2c >> 178decee1%7C0%7C0%7C636273630935953197&sdata=UdpnXGqDXIpO7ijlPP >> 11TvjclUQ7J%2Bq6joDFUrh22M4%3D&reserved=0 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2 > Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C > %7C50304f839f204047d22108d47f7f0561%7Cfa7b1b5a7b34438794aed2c178 > decee1%7C0%7C0%7C636273630935953197&sdata=UdpnXGqDXIpO7ijlPP11Tv > jclUQ7J%2Bq6joDFUrh22M4%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2F mm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7 C50304f839f204047d22108d47f7f0561%7Cfa7b1b5a7b34438794aed2c178dec ee1%7C0%7C0%7C636273630935953197&sdata=UdpnXGqDXIpO7ijlPP11TvjclU Q7J%2Bq6joDFUrh22M4%3D&reserved=0
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My responses are inline. On Sun, Apr 9, 2017 at 3:31 PM, Paul Keating <paul@law.es> wrote:
I see clear speech issues as well. It is not possible to formulate a position that no domain name represents an expression of speech.
Paul, What is the "clear speech issue" you see? Just saying you see one isn't helpful. Also, where did you get the phrase "expression of speech" and what do you mean by it? I've seen references to "expressive speech" or "freedom of expression", but I don't think "expression of speech" has any meaning here, though it could be seen as an attempt to coin a phrase using the word "expression" without actually implying that "expressiveness" is required.
Nor is it sufficient to ignore this issue because there are other forums available to channel the desired expression.
I don't think that anyone was suggesting we "ignore" this "issue" (again, I'll ask "what issue"). Making a determination of whether and to what extent this "issue" is in scope and relevant to our work.
The goal here is not to protect the obvious but rather to protect the speech that is possible but not yet obvious.
I have no idea what this means, or why you would say this is our goal.
So this is not a rabbit hole. The TMCH was developed based upon an assumption that it would not be abused and would not unreasonably infringe upon speech. We must determine if abuse has occurred.
What abuse do you allege has occurred? By whom? How would you determine it?
The contents of the TMCH database is very much relevant. If we are to be denied information relevant to the database we must assume the worst.
There's no basis for that statement.
For if the IP crowd wants us to believe - there is no problem, - it is encumbrance upon then to prove it,
I believe you meant "incumbent." In any case, we need to define the problem (if there is a problem) in a way that has broad support, rather than taking your "guilty until proven innocent" approach.
Freedoms of speech is simply too important to ignore.
Whose speech? And what are they trying to say? And will this undefined "issue" cause them to be unable to say it? (Again, nobody was suggesting that we "ignore" freedom of speech.)
For if you take away all of my rights save the freedom of speech I will quickly recover those rights lost......Jefferson.
Sent from my iPad
On 9 Apr 2017, at 19:08, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote:
Following up on my post from yesterday, let's make this more specific: I see clear free speech issues that can arise from an attempt to register cloud.X (where X is a new gTLD), smart.X, love.X, luxury.X, nyc.x and the like. Those along with forex, hotel, one, london, and abc, are the top ten downloads from the TMCH. Of course, as Michael K. indicates, we'd know more about how many dictionary terms are beingdom blocked if there were more transparency, but what we do know right now should be concerning. Rebecca Tushnet Georgetown Law 703 593 6759
On Sun, Apr 9, 2017 at 12:51 PM, Greg Shatan <gregshatanipc@gmail.com> wrote: My responses are in-line.
G reg
On Sat, Apr 8, 2017 at 1:39 PM, Michael Karanicolas < mkaranicolas@gmail.com> wrote:
Hi,
I think that Michael Graham brings up a salient point in terms of
falling
too far down the rabbit hole on background matters, but I should address a few issues in response to questions that were directly asked of me.
First off, while Greg is correct to point out that the UDHR is not formally legally binding as a UNGA resolution, it is (quite literally) the textbook example of customary international law. I realize that can be a fuzzy concept to rely on, but luckily I don't have to rely on it because the freedom of expression protections in the UDHR are substantially identical to those found in the ICCPR, which IS a formally binding treaty.
Binding on states. Of course, ICANN is not a state. Luckily, we have the new human rights Core Value in the ICANN Bylaws, Section 1.2(b)(viii), which states that one of ICANN's eight Core Values (which must be subject to a balancing analysis involving all Core Values). is "within the scope of its Mission and other Core Values, respecting internationally recognized human rights as required by applicable law." The Bylaw specifically notes that "This Core Value does not create, and shall not be interpreted to create, any obligation on ICANN outside its Mission, or beyond obligations found in applicable law." As such, ICANN's obligations do not go beyond what would otherwise be required by applicable law. There's been a great deal of discussion of this in CCWG-Accountability WS1 and in the Human Rights Subgroup of WS2, so I won't go further into the concepts here, which would be a rabbit hole down a rabbit hole from the viewpoint of this group.
Also, while I appreciate Greg's caution against "cherrypicking" by
viewing
Article 19 in isolation, in this context that argument is just a smokescreen.
Concerns about cherrypicking are in no way a "smokescreen" -- unless the reference is to the saying "where there's smoke, there's fire." John Levine's blog nicely expressed a number of concerns about such cherrypicking, especially for what he calls the "fashionable human rights," so I won't repeat them here. It is important to keep in mind, as Michael notes, that "human rights are fundamentally about balance," so perhaps we are not so far apart, as "balance" and "cherrypicking" are mutually exclusive concepts.
Of course the UDHR and ICCPR need to be viewed holistically - that understanding in no way supports an argument that domains are not speech.
I'm puzzled by the second part of this sentence. I think this point is unrelated to the issue of whether or not domain names are speech, so it neither supports nor negates any argument on that topic.
There's no conflict between believing in personal privacy as protected by the ICCPR (as I do), and believing in the need to combat hate speech as spelled out in the ICCPR (as I do), and believing in freedom of expression. Human rights are fundamentally about balance (more on that in a second).
There are certainly conflicts (e.g., between combating hate speech and supporting free speech); the issue is how to balance these countervailing issues to resolve these conflicts.
With regard to Ballantyne, Davidson & McIntyre, I probably should have been more specific in my original post. Of course, as Greg notes, the
case
is not specifically about domain names - which would be a pretty niche area for the Human Rights Committee to dig into. But the decision contains the clearest statement of the extent of what constitutes "speech" under the ICCPR, namely that Article 19: "must be interpreted as encompassing every form of subjective ideas and opinions capable of transmission to others". It's an incredibly broad formulation - to cover virtually anything that conveys meaning. I, personally, can't see an interpretation of that that doesn't include domain names.
This is not really that broad a formulation -- it dovetails nicely with the concept of "expressive speech" under US law (as in the excerpt from Gibson). Furthermore, there is a considerable difference between the speech constituting "subjective ideas and opinions" protected in Ballantyne and the "incredibly broad formulation" that would elevate "virtually anything that conveys meaning." "Subjective ideas and opinions" in no way embraces domain names per se; whether and to what extent it embraces domain names is certainly not a question answered in Ballantyne.
With regard to Gibson v. Texas - I don't want to dig too deeply into
this
because, honestly, US law is not my specialisation. But I think that part of the disconnect between our positions is due to a particular aspect of the American understanding of free speech, that's sort of different to how it's understood virtually everywhere else. Under most systems, including the international example I just cited, virtually everything is classed as "speech", and then there's a balancing as to whether particular restrictions are justified. But because of the absolutist way the US Constitution is phrased ("Congress shall make no law"), the Courts have had to go through some unusual legal gymnastics to find that speech that they feel justified restricting isn't actually speech.
Simply reading the excerpt from Gibson v. Texas in my prior email shows that this "speech/not speech" analysis is incorrect. Gibson, and the cases cited in it, distinguish between protected speech and speech that that is "not to be protected." Specifically, Gibson mentions that "courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment" and also cites a line of cases where "the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading." More broadly, the idea that the US approach to free speech is anomalous is incorrect. Of course, free speech regimes vary broadly throughout the world -- so there's no such thing as a single "understanding of free speech... virtually everywhere else" aside from the US. Unfortunately, there are many places in the world where there is no understanding of free speech at all.) If the US approach to free speech tends to be different, it is in a greater tolerance for controversial and offensive speech (what John Levine calls "the absolutist U.S. first amendment approach"). This is why US law doesn't find it so easy to restrict alleged "hate speech" as "virtually everywhere else", and also why I can't be so comfortable in finding "no conflict" between free speech and restricting hate speech. (And I say this as a member of a group that is finding itself increasingly on the wrong end of both offensive speech and hate speech.)
So, without trying to belabour these issues, my point in the above is
not
to try and invalidate the trademark protection system - indeed, Greg's quite right to point out that trademarks are also speech. My point here is simply to try and demonstrate that there are free speech issues at play.
It's clear that this is false as a general statement, unless this is meant as a statement that could possibly true in a large enough sample, like "people are 7 feet tall". Whether one looks at Ballantyne or Gibson, one sees clear distinctions being drawn being "subjective ideas and opinions" and speech that is "not expressive" or "inherently misleading." This is probably a good time to note that the UDHR and the ICCPR both refer to "freedom of expression" and not to "free speech." So, it would be more proper to discuss whether "expressive speech" is at issue, not whether the over-broad "virtually anything that conveys meaning" is at issue, before we even get to the question of whether free speech issues are at play, to what extent, and how that might affect any discussion that is relevant to this Working Group.
To me, that's not a controversial point - and if we can agree on that,
I don't think we can agree on that, and certainly not as an assumed agreement from which one can proceed blithely on. Rather, I think that is an elemental aspect of the discussion, and as noted above, at best "controversial" and possibly sometimes true, and at worst false (at least as a general statement).
As an aside, it's worth noting what Article 19 of the ICCPR actually protects: "the right to hold opinions without interference" and "the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice." I admit to struggling to find instances where the right to hold opinions or to express oneself freely is truly being violated in this context -- especially in a world where holding or expressing an opinion can come under threat of oppression, suppression, violence, imprisonment or worse. As someone who strongly supports First Amendment rights and who has worked on litigation defending First Amendment freedoms, I wonder whether this discussion trivializes free speech concerns rather than promoting them. That is not to dismiss the possibility of free speech concerns here, but just to say that, to the extent there is a viable point here, it pales in comparison to the significant freedom of expression concerns elsewhere (including elsewhere on the Internet, where access to websites with undesirable opinions or expression, or even to the Internet as a whole, is under escalating attack).
then that is relevant to the transparency question, since in my mind it bolsters arguments for why openness in the system is important.
I don't get the logical leaps here, from the possibility of a free speech issue, to the claimed relevance to the transparency question, to the even more attenuated idea that this bolsters arguments regarding changing access rules for the TMCH. In other words, I don't really think that any of this changes the discussion on TMCH database access, nor do I really think it is relevant to any of the work we are undertaking right now. That is not to say that this is an uninteresting discussion (or else I would not have engaged in it), just that it is a rabbit hole in relation to our work.
Best,
Michael
On Fri, Apr 7, 2017 at 2:19 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
It's important to keep in mind that the rights set forth in the UDHR
are
interrelated and interdependent, so understanding the applicability of any one Article also requires understanding the applicability of the other rights in the UDHR, including some which may be countervailing to others. Looking at Article 19 in isolation is "cherrypicking." A recent CircleID article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_ regular_internet_users/
The article is short, but for those who don't get there, this quote goes to the heart of the matter: "it devalues the whole topic of human rights to pay attention only to a few fashionable rights, while ignoring ones that are at least as important in people's daily lives."
(It should also be noted that the UDHR, while adopted by the United Nations and widely used, does not constitute some form of "universal law" nor is it universally accepted.)
The case mentioned, Gibson v. Texas, has portions that are directly applicable to the discussion at hand. However, the Gibson decision actually distinguishes cases involving trademarks from the situation in that case. As a matter of fact, the Gibson case tells us that there are at least two types of domain names that do not constitute speech protected by the First Amendment: domain names that infringe trademarks, and domain names that do not constitute "expressive speech."
(In other words, there can be no "freedom of expression" issue when the speech is not expressive.)
Before getting to an excerpt from the case, it's important to note that the court did not find that domain names are speech, much less find that domain names are speech protected by the First Amendment. The court made no findings about all domain names. Rather, the court assumed, for the purpose of considering a motion to dismiss, that the domain name in question (texasworkerscomplaw.com) constituted commercial speech. It's also important to note that the case involved the Constitutionality of a law that broadly prohibited the use of the terms "Texas" and "workers comp," and not a trademark infringement matter.
The excerpt is quite instructive:
In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate[] that a particular form or method of advertising has in fact been deceptive.” R.M.J., 455 U.S. at 202.
Appellees primarily argue that the Texas statute is constitutional because Gibson’s domain name amounts to inherently misleading speech. In support of this proposition, they cite to a series of cases in which courts have held that domain names that use trademarks to misidentify the source of a product are outside the reach of the First Amendment. The case law cited by Appellees, however, is unique to the field of trademark infringement, see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does not necessarily extend to a case such as this one, where Texas is prohibiting Gibson from using words that are otherwise in the public domain.[1] Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark. See Friedman, 440 U.S. at 11-16. No such risk is present here. Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name “texasworkerscomplaw.com.” See San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 533-34 (1987). Instead the regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name. See Friedman, 440 U.S. at 11-16. Accordingly, the case law cited by Appellees is inapposite.
________________________________
[1] In most of the cases cited by Appellees the domain name was actually held not to be protected speech because it was not expressive, not because it was misleading. See, e.g., Planned Parenthood Fed’n of Am. v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24, 1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo. 2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998). Here, in contrast, Gibson’s domain name is expressive because it does more than simply mimic the state agency’s website or identify a source of Texas Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11. The domain name is intended to direct visitors to a forum for discussing workers’ compensation laws and their potential reform, as well as to convey to visitors the message of Gibson’s website as a whole. Accordingly, in the context of this case, the domain name is “‘sufficiently imbued with the elements of communication’” to place it in the realm of expressive speech. Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).
Greg Shatan
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas@gmail.com> wrote:
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth
Circuit
Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19:
http://www.law-democracy.org/live/wp-content/uploads/2015/ 02/foe-briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/ 08/Paper-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote: > Michael: > > Where can I find a discussion how Article 19 and similar "Freedom of > Expression" requirements relate to or impact the registration of domain > names? > > > Michael R. > > Article 19. > Everyone has the right to freedom of opinion and expression; this > right includes freedom to hold opinions without interference and to seek, > receive and impart information and ideas through any media and regardless of > frontiers. > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas > Sent: Thursday, April 06, 2017 5:53 AM > To: J. Scott Evans <jsevans@adobe.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the > Working Group call held earlier today > > Once again - I have to jump in. Freedom of expression is very much a > universal concept: > > http://www.un.org/en/universal-declaration-human-rights/ > http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx > > That's why we call them "human" rights. Not "American" rights. > > > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> The law is clear: an exact match isn't free speech. It is trademark >> infringement. A domain that coveys a message (e.g., hotels suck.com) is free >> speech and protected accordingly. Also, "free speech" is a US constitutional >> concept adopted by some countries, but it is not a universal legal concept. >> Perhaps universal free speech is aspirational, but it is not reality. >> >> Sent from my iPhone >> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote: >>> >>> I'm not sure where J. Scott is getting his "facts", but my company >>> doesn't "arbitrage" nor has it registered *any* new gTLD domain >>> names >>> (and I have no desire for any), nor is it a "bad actor." If you have >>> proof that my company is a "bad actor", put it forward, rather than >>> sling unsupported innuendo. >>> >>> The whole point is that the "barriers" are put forth as *required* >>> to >>> deal with so-called "bad actors", but are instead used to advantage >>> certain groups, far beyond the "damage" that is claimed to be caused >>> by the "bad actors." >>> >>> I don't want to delve into politics, but some might see parallels to >>> certain government measures in some countries, where a "problem" is >>> claimed, but a Draconian solution is applied to deal with it. >>> >>> When it comes to the sunrise periods for new gTLDs, the "problem" is >>> claimed to be cybersquatting, but instead of relying on curative >>> rights, the Sunrise policy went too far and gave too many advantages >>> to TM holders, essentially creating an unlevel playing field between >>> *good actors* and TM holders. >>> >>> Free speech means *no prior restraints* (with very rare exceptions), >>> but harsh penalties for unlawful speech (curative rights). >>> >>> >>> https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fwww. >>> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C% 7C811dc6e8437 >>> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C63 >>> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g% 2FOWfC >>> H7s%3D&reserved=0 >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> >>> https://na01.safelinks.protection.outlook.com/?url= http%3A%2F%2Fwww.l >>> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea 9d30%7Cfa7b1 >>> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369& sdata=6BJPNx >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0 >>> >>> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans < jsevans@adobe.com> >>>> wrote: >>>> The same logic applies to you and other domaines, cybersquatters, >>>> speculators and small businesses. The fact that you want to arbitrage in >>>> terms that are also trademarks is your choice and you have to deal with the >>>> barriers put in place to deal with the bad actors. >>>> >>>> Sent from my iPhone >>>> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote: >>>>> >>>>> Hi folks, >>>>> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian >>>>>> <brian.beckham@wipo.int> wrote: >>>>>> Finally, since the chart references the EFF letter, it is worth >>>>>> mentioning here that the fact that a trademark owner may pay >>>>>> (sometimes extremely high >>>>>> amounts) to defensively register a domain name exactly matching >>>>>> its trademark in a Sunrise process (and thereby taking it “off >>>>>> the >>>>>> market”) does not prevent free expression, which may be >>>>>> undertaken >>>>>> in countless other ways. The number of terms that may be >>>>>> appended >>>>>> to a trademark (not to mention typos) to engage in all manner of >>>>>> speech – fair or otherwise – is, practically-speaking, all but >>>>>> limitless. >>>>> >>>>> By that "logic", the number of terms that may be appended to a >>>>> common dictionary word (not to mention typos) to create a >>>>> trademarkable brand is, practically-speaking, all but limitless. >>>>> :-) >>>>> >>>>> In other words, those creating a new brand/trademark certainly had >>>>> the opportunity to create a longer (and thus inferior) alternative >>>>> to a commonly used dictionary word or other common term. The fact >>>>> that they decided instead to choose a common term that is widely >>>>> used by the public shouldn't give them any priority access in a >>>>> launch of a new gTLD. >>>>> >>>>> "I created a problem for myself, and I want ICANN to fix it" is >>>>> the >>>>> essence of the sunrise argument for commonly used terms, like >>>>> dictionary words and short acronyms. >>>>> >>>>> Sincerely, >>>>> >>>>> George Kirikos >>>>> 416-588-0269 >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url= http%3A%2F%2Fwww >>>>> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce4 6e63%7Cf >>>>> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0% 7C636270767931993418&sdata= >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 >>>>> _______________________________________________ >>>>> gnso-rpm-wg mailing list >>>>> gnso-rpm-wg@icann.org >>>>> >>>>> https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fmm >>>>> >>>>> .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data= 02%7C01%7C%7C2b7 >>>>> >>>>> c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178de cee1%7C >>>>> >>>>> 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR% 2B2kWcBkF >>>>> D%2Fj6BAXDjiI%3D&reserved=0 >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> >>> https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fmm.i >>> >>> cann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C% 7C811dc6e >>> >>> 8437245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0% >>> >>> 7C636270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfo XhIpZQh1s99f >>> s%3D&reserved=0 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Michael: U.S. Law does not protect domain names in and of themselves as free speech. Rather, the notion of free speech as applied to domain names concerns the communicative aspect of the domain name at issue and the use of the domain name. A domain name such as BRANDsucks.com has a communicative aspect that could enjoy protection under the first amendment, but if the domain name is being used by a competitor to promote and sell its own products, then that would probably take it out of the scope of free speech under the first amendment Similarly, if one registers BRANDLovesJesus.com and uses it for a website concerning abortion rights (the 8th Circuit Purdy case) , that would not be protected free speech if the brand had never commented on abortion rights (e.g., you cannot use a domain name to ascribe speech to someone who never made speech in that regard). The bottom line, is that first amendment protection under US law for domain name registrations is contextual and not just based on the name itself. Original Message From: Michael Karanicolas Sent: Thursday, April 6, 2017 11:00 PM To: Michael Graham (ELCA) Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections. That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc. However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test. If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/02/foe-briefingnot... Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/08/Paper-on-Restri... Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections. On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF D%2Fj6BAXDjiI%3D&reserved=0
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Good points from Georges and I think they tie in with my earlier email as well. Another important point is that trademarks are a form of speech as well. So, the idea that there is a divide between trademarks and speech, and that trademarks are on one side of the line and speech is on the other is a false dichotomy. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Fri, Apr 7, 2017 at 7:55 AM, Nahitchevansky, Georges < ghn@kilpatricktownsend.com> wrote:
Michael:
U.S. Law does not protect domain names in and of themselves as free speech. Rather, the notion of free speech as applied to domain names concerns the communicative aspect of the domain name at issue and the use of the domain name. A domain name such as BRANDsucks.com has a communicative aspect that could enjoy protection under the first amendment, but if the domain name is being used by a competitor to promote and sell its own products, then that would probably take it out of the scope of free speech under the first amendment Similarly, if one registers BRANDLovesJesus.com and uses it for a website concerning abortion rights (the 8th Circuit Purdy case) , that would not be protected free speech if the brand had never commented on abortion rights (e.g., you cannot use a domain name to ascribe speech to someone who never made speech in that regard). The bottom line, is that first amendment protection under US law for domain name registrations is contextual and not just based on the name itself.
Original Message From: Michael Karanicolas Sent: Thursday, April 6, 2017 11:00 PM To: Michael Graham (ELCA) Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
It's an interesting question. Different national courts have handled the issue in different ways. In the US, for example, the Fifth Circuit Court of Appeals found in Gibson v. Texas that domain names are protected as speech under the 1st amendment. But freedom of expression in the US context tends to be understood differently than elsewhere, since the way it's protected under the US constitution is a bit different from how most constitutions frame their equivalent protections.
That said - when you're asking about Article 19, the discussion comes at the international level where, as far as I know, there's no single authoritative treatment to point to. Generally, discussions of Article 19 by standard setting bodies tend to focus on the sharper and more controversial issues: hate speech, defamation, national security restrictions, etc.
However - there's a clear and well developed test for restrictions on freedom of expression that's built right into the ICCPR, and which applies equally to all restrictions, namely that they should be: (1) provided by Law (which includes a requirement for clarity and transparency), (2) fulfill a legitimate purpose, and (3) be necessary and proportionate to the achievement of that goal. If we establish that domain names qualify as speech under Article 19 (which, according to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v. Canada, is a fairly sure interpretation), then understanding the applicability of Article 19 just means understanding that three part test.
If you want more info, I'd recommend this briefing note as a useful (and concise!) introduction to restrictions on freedom of expression under Article 19: http://www.law-democracy.org/live/wp-content/uploads/2015/ 02/foe-briefingnotes-2.pdf
Or if you want to go into a little more depth, you can check out this one: http://www.law-democracy.org/live/wp-content/uploads/2012/ 08/Paper-on-Restrictions.10.03.22.rev_.pdf
Unfortunately - neither is specifically about domain names, but the discussion is basically analogous to how we understand other kinds of restrictions and protections.
On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
Michael:
Where can I find a discussion how Article 19 and similar "Freedom of Expression" requirements relate to or impact the registration of domain names?
Michael R.
Article 19. Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 5:53 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Once again - I have to jump in. Freedom of expression is very much a universal concept:
http://www.un.org/en/universal-declaration-human-rights/ http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
That's why we call them "human" rights. Not "American" rights.
On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC H7s%3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < brian.beckham@wipo.int> wrote: > Finally, since the chart references the EFF letter, it is worth > mentioning here that the fact that a trademark owner may pay > (sometimes extremely high > amounts) to defensively register a domain name exactly matching > its trademark in a Sunrise process (and thereby taking it “off the > market”) does not prevent free expression, which may be undertaken > in countless other ways. The number of terms that may be appended > to a trademark (not to mention typos) to engage in all manner of > speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata= 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm .icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7 c1e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C 0%7C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkF D%2Fj6BAXDjiI%3D&reserved=0
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Hi folks, On Thu, Apr 6, 2017 at 8:49 AM, J. Scott Evans <jsevans@adobe.com> wrote:
The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.
Perhaps you should refrain from giving out legal analysis, since it's obvious that the law isn't clear at at all that "an exact match isn't free speech" or that "exact match" equates to "trademark infringement". There are concepts such as "fair use", or use in entirely different contexts ("Apple" for the fruit we eat, etc.). And to provide a very pointed example of fair use, I will link to a case that J. Scott should be familiar with, namely Adobe Systems v. Christenson: http://fairuse.stanford.edu/case/adobe-systems-inc-v-christenson/ "This appeal arose from a copyright dispute between Adobe and defendant and his software company, SSI. The court affirmed the district court’s dismissal of both Adobe’s copyright and trademark claims....... Finally, the court concluded that the district court properly analyzed the trademark claim under the nominative fair use defense to a trademark infringement claim instead of under the unfair competition rubric. " http://tushnet.blogspot.ca/2012/09/adobe-crumbles-litigation-mistakes.html (from one of our fellow working group members) "Adobe crumbles: litigation mistakes allow reseller to prevail" "Unsurprisingly, the trademark claims proceeded similarly. The multifactor test doesn’t apply in nominative fair use cases. When the defendant shows that it was using the mark to refer to the trademarked good, the burden shifts to the plaintiff to show that the use wasn’t nominative fair use. This Adobe could not do. " So, the last folks I think we should be taking advice from is Adobe, when their arguments have been losers in real court. There have been other examples of "nominative fair use" in the UDRP jurisprudence, as well. http://www.adrforum.com/domaindecisions/1675141.htm "Respondent (citing Toyota Motor Sales U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010)) argues that it is making a nominative fair use of the YETI trademark to indicate to consumers that it sells accessories for use with YETI brand cups and tumblers. As noted above, in the context of the UDRP, an oft-cited standard for assessing nominative fair use is the standard articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Nov. 6, 2001). Although that decision does not reference the trademark law principle of “nominative fair use,” the standards are functionally equivalent, and the four part test articulated in Oki Data is shaped by the same underlying policy concerns." "Free speech" is enshrined in the "Universal Declaration of Human Rights": http://www.un.org/en/universal-declaration-human-rights/index.html (Article 19) so to suggest that it's just a US concept or that of a minority is incorrect. Here's the Canadian Charter of Rights and Freedoms: http://laws-lois.justice.gc.ca/eng/Const/page-15.html "2. Everyone has the following fundamental freedoms: (a) freedom of conscience and religion; (b) freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication; (c) freedom of peaceful assembly; and (d) freedom of association." I think what we have seen too often in this working group are bold legal assertions that are simply unsupported by law. They might have gotten away with that in the past, when few people were participating in the working groups, or where self-selected secret groups were tasked to work on policy. But, given the broad participation in this working group with its transparency, that's not going to happen any longer. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
I must take some exception to the statement that an exact match is trademark infringement, presuming that this refers to a domain name that is an exact match of a TM. This is generally true when the trademark is a distinctive term that is not a descriptive dictionary word. For example, registration of microsoft.tld by any party other than Microsoft would likely be susceptible to a successful UDRP or URS action. (microsoftsucks.tld is an entirely different matter that raises free speech and fair use issues). But the registration of windows.tld would not infringe Microsoft's trademark unless the related website contained content related to computer software and any other goods and services for which Microsoft has registered the mark. It can be freely registered, for example, by a company offering window repair and replacement services to homeowners. Given that nearly every dictionary word (at least in English) has been registered as a trademark for something, registration of an exact match for a totally unrelated purpose cannot be regarded as per se infringement. If that were the case then trademark owners would effectively control the use of dictionary words for domain registration purposes and that would have worrisome free speech implications. Fortunately, TM law does not grant such broad rights, and limits protections to the goods and services for which the mark is used. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Thursday, April 06, 2017 8:49 AM To: George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality. Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l aw.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e843724 5583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627 0794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfCH7s% 3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le ap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1b5 a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNxolm CYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww. leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7 b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px 9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm. icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7c1 e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7 C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkFD%2F j6BAXDjiI%3D&reserved=0
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All, I would like to ask that all members of our working group be treated with respect and cordiality. No one is trying to offend anyone. Everyone is trying to share heartfelt views. Our views differ, as do our concerns, but we all spent enormous amounts of professional and personal time working on these issues. No one should be insulted on this list. Best, Kathy Kathy Kleiman, Esq., Fletcher, Heald & Hildreth, Arlington, VA
Hi Phil, Without wading in on the ultimate issue of the strong-to-weak continuum, I offer the following thoughts: You speak of infringement, but infringement has different elements than the UDRP and the ACPA which loosely reflect each other. These are bad faith-based policy and law addressing cybersquatting, not infringement. For example, someone could register windows.tld and use it to sell window repair and replacement services to homeowners, but if it were a direct competitor of Microsoft who did it, they would lose the domain name. Neither the UDRP nor the ACPA limit the analysis to the goods or services contained in the trademark registration (and in fact the ACPA specifically says it is without regard to the goods or services of the parties. So, let's not hang too much hat on that. I hope this clarifies things. PS: If we want to develop an additional RPM that addresses infringement, I would be happy to assist in the effort. It would make sense to do so that the clear language of paragraph 2 of the UDRP could finally be implemented. "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Thursday, April 06, 2017 9:33 AM To: J. Scott Evans <jsevans@adobe.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today I must take some exception to the statement that an exact match is trademark infringement, presuming that this refers to a domain name that is an exact match of a TM. This is generally true when the trademark is a distinctive term that is not a descriptive dictionary word. For example, registration of microsoft.tld by any party other than Microsoft would likely be susceptible to a successful UDRP or URS action. (microsoftsucks.tld is an entirely different matter that raises free speech and fair use issues). But the registration of windows.tld would not infringe Microsoft's trademark unless the related website contained content related to computer software and any other goods and services for which Microsoft has registered the mark. It can be freely registered, for example, by a company offering window repair and replacement services to homeowners. Given that nearly every dictionary word (at least in English) has been registered as a trademark for something, registration of an exact match for a totally unrelated purpose cannot be regarded as per se infringement. If that were the case then trademark owners would effectively control the use of dictionary words for domain registration purposes and that would have worrisome free speech implications. Fortunately, TM law does not grant such broad rights, and limits protections to the goods and services for which the mark is used. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Thursday, April 06, 2017 8:49 AM To: George Kirikos Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality. Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos < <mailto:icann@leap.com> icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company
doesn't "arbitrage" nor has it registered *any* new gTLD domain names
(and I have no desire for any), nor is it a "bad actor." If you have
proof that my company is a "bad actor", put it forward, rather than
sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to
deal with so-called "bad actors", but are instead used to advantage
certain groups, far beyond the "damage" that is claimed to be caused
by the "bad actors."
I don't want to delve into politics, but some might see parallels to
certain government measures in some countries, where a "problem" is
claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is
claimed to be cybersquatting, but instead of relying on curative
rights, the Sunrise policy went too far and gave too many advantages
to TM holders, essentially creating an unlevel playing field between
*good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions),
but harsh penalties for unlawful speech (curative rights).
<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l
aw.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e843724
5583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627
0794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfCH7s%
3D&reserved=0
Sincerely,
George Kirikos
416-588-0269
<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le
ap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1b5
a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNxolm
CYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans < <mailto:jsevans@adobe.com> jsevans@adobe.com> wrote:
The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos < <mailto:icann@leap.com> icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < <mailto:brian.beckham@wipo.int> brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth
mentioning here that the fact that a trademark owner may pay
(sometimes extremely high
amounts) to defensively register a domain name exactly matching its
trademark in a Sunrise process (and thereby taking it “off the
market”) does not prevent free expression, which may be undertaken
in countless other ways. The number of terms that may be appended
to a trademark (not to mention typos) to engage in all manner of
speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a
common dictionary word (not to mention typos) to create a
trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had
the opportunity to create a longer (and thus inferior) alternative
to a commonly used dictionary word or other common term. The fact
that they decided instead to choose a common term that is widely
used by the public shouldn't give them any priority access in a
launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the
essence of the sunrise argument for commonly used terms, like
dictionary words and short acronyms.
Sincerely,
George Kirikos
416-588-0269
<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.
leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7
b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px
9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0
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36270794483518369&sdata=mJrIOSHwtTJCADlJ8m6UiUx7baKNfoXhIpZQh1s99fs%3D
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_______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ----- No virus found in this message. Checked by AVG - <http://www.avg.com> www.avg.com Version: 2016.0.8012 / Virus Database: 4769/14210 - Release Date: 03/30/17 Internal Virus Database is out of date. _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Paul: I have tended to think of cybersquatting as a form of TM infringement. However, as you point out, cybersquatting can but may but not necessarily constitute infringement, and infringement involving a domain name may but not always will constitute cybersquatting. I have pasted some relevant language from INTA’s TM Infringement Fact Sheet below and I will try to be more precise in my use of the terms in the future. As to your suggestion that this WG consider the development of “an additional RPM that addresses infringement” I would think the proper time for any such consideration would be in Phase 2 of our work, when we focus on the UDRP. If you or others want to develop such a proposal that is of course your right. Speaking personally, however, I’d be skeptical about such an expansion of ICANN’s RPM role for several reasons. First, in relationship to domain name disputes, it appears that such a proposal might involve elimination of the bad faith registration and use requirement that has been a bedrock part of the UDRP since its inception. Second, not every form of infringement involving a domain may be reasonably susceptible to non-judicial dispute resolution. Would a UDRP-like approach for addressing sales of counterfeit goods from domains that are not identical or confusingly similar to that of the TM holder associated with such goods be appropriate for ICANN to undertake? Are extinguishment or transfer of a domain the proper remedies when the domain is a social media, auction, or retail website that has multitudes of users? Third, and perhaps most importantly, such a proposal would seem at odds with our strident efforts during the IANA transition phase to carefully circumscribe ICANN’s Mission and thereby prevent malignant and uncontrolled expansion of its remit. The policy grounding for why ICANN provides a UDRP alternative for use against domains that are identical or confusingly similar to a trademark is that it is the Internet Corporation for Assigned NAMES and Numbers and controls the allocation of right of the dot names to registries, and the sale of left of the dot domain names by registrars. But ICANN is not some super-legislature of the Internet and has no responsibility or proper role in addressing every violation of law that may occur “on the Internet” – if that were the case, given that almost every commercial and social interchange now uses the Internet, ICANN could claim jurisdiction to address every wrong that occurs on or via the Internet. It’s useful to reflect that the UDRP and URS are very narrow departures from ICANN’s general rule that disputes arising from the use of domains are to be settled in established regulatory and judicial forums. I would personally need a lot of convincing that it was appropriate or feasible for ICANN to provide an alternative means of addressing trademark violations beyond cybersquatting. Best regards, Philip http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkInfringement.a... 1. What is trademark infringement? Trademark infringement is the interference with or violation of another party’s trademark rights through the unauthorized use of that party’s mark or a confusingly similar mark. The basic test for trademark infringement is whether the use of a trademark by one party is such that it can create a likelihood of confusion among consumers in the relevant marketplace in relation to an identical or similar trademark belonging to another party. A trademark does not have to be an exact copy of another mark in order to be considered infringing. The legal definition of infringement varies from one jurisdiction to another. The most common standards for infringement are (a) close similarity of a mark and its associated goods and/or services to a prior mark and its associated goods and/or services; or (b) use of a mark that creates a likelihood of confusion, in the course of trade, with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts. 4. How does trademark infringement differ from counterfeiting and cybersquatting? Counterfeiting is the manufacture or sale of inauthentic goods under a spurious mark, both made to resemble the originals. Besides the available civil remedies for counterfeiting, some jurisdictions also allow criminal remedies. Generally, counterfeit goods are sold under a mark that is identical to or substantially indistinguishable from a mark that is registered for the same goods, without the approval or oversight of the owner of the prior-registered mark. In contrast, trademark infringement or passing off can arise through the use of a mark that is similar for goods that are commercially related. With trademark infringement or passing off, the mark at issue does not have to be identical to or substantially indistinguishable from the prior mark, and the goods or services do not have to be identical to those identified by the prior mark. The manufacture, sale or distribution of counterfeit goods constitutes trademark infringement, even though not every instance of trademark infringement will involve counterfeit goods. Cybersquatting is the practice of obtaining in bad faith domain name registrations that incorporate trademarks (or names of famous people) with which the registrant has no connection or in which it has no legitimate interest. Cybersquatting may not necessarily constitute trademark infringement, particularly if the registrant is not using the domain name (trademark) in connection with the bona fide sale of goods or services or otherwise in a manner that is likely to cause confusion. Trademark infringement involving a domain name may not necessarily constitute cybersquatting where there is an absence of bad faith. Statutory and regulatory regimes may provide a mechanism for trademark owners to use to address cybersquatting. (Emphasis added) Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Saturday, April 08, 2017 11:39 AM To: Phil Corwin; 'J. Scott Evans'; 'George Kirikos' Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi Phil, Without wading in on the ultimate issue of the strong-to-weak continuum, I offer the following thoughts: You speak of infringement, but infringement has different elements than the UDRP and the ACPA which loosely reflect each other. These are bad faith-based policy and law addressing cybersquatting, not infringement. For example, someone could register windows.tld and use it to sell window repair and replacement services to homeowners, but if it were a direct competitor of Microsoft who did it, they would lose the domain name. Neither the UDRP nor the ACPA limit the analysis to the goods or services contained in the trademark registration (and in fact the ACPA specifically says it is without regard to the goods or services of the parties. So, let's not hang too much hat on that. I hope this clarifies things. PS: If we want to develop an additional RPM that addresses infringement, I would be happy to assist in the effort. It would make sense to do so that the clear language of paragraph 2 of the UDRP could finally be implemented. "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Thursday, April 06, 2017 9:33 AM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today I must take some exception to the statement that an exact match is trademark infringement, presuming that this refers to a domain name that is an exact match of a TM. This is generally true when the trademark is a distinctive term that is not a descriptive dictionary word. For example, registration of microsoft.tld by any party other than Microsoft would likely be susceptible to a successful UDRP or URS action. (microsoftsucks.tld is an entirely different matter that raises free speech and fair use issues). But the registration of windows.tld would not infringe Microsoft's trademark unless the related website contained content related to computer software and any other goods and services for which Microsoft has registered the mark. It can be freely registered, for example, by a company offering window repair and replacement services to homeowners. Given that nearly every dictionary word (at least in English) has been registered as a trademark for something, registration of an exact match for a totally unrelated purpose cannot be regarded as per se infringement. If that were the case then trademark owners would effectively control the use of dictionary words for domain registration purposes and that would have worrisome free speech implications. Fortunately, TM law does not grant such broad rights, and limits protections to the goods and services for which the mark is used. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Thursday, April 06, 2017 8:49 AM To: George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality. Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com<mailto:icann@leap.com>> wrote:
I'm not sure where J. Scott is getting his "facts", but my company
doesn't "arbitrage" nor has it registered *any* new gTLD domain names
(and I have no desire for any), nor is it a "bad actor." If you have
proof that my company is a "bad actor", put it forward, rather than
sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to
deal with so-called "bad actors", but are instead used to advantage
certain groups, far beyond the "damage" that is claimed to be caused
by the "bad actors."
I don't want to delve into politics, but some might see parallels to
certain government measures in some countries, where a "problem" is
claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is
claimed to be cybersquatting, but instead of relying on curative
rights, the Sunrise policy went too far and gave too many advantages
to TM holders, essentially creating an unlevel playing field between
*good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions),
but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l
aw.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e843724
5583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627
0794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfCH7s%
3D&reserved=0
Sincerely,
George Kirikos
416-588-0269
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le
ap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1b5
a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNxolm
CYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote:
The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com<mailto:icann@leap.com>> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote:
Finally, since the chart references the EFF letter, it is worth
mentioning here that the fact that a trademark owner may pay
(sometimes extremely high
amounts) to defensively register a domain name exactly matching its
trademark in a Sunrise process (and thereby taking it “off the
market”) does not prevent free expression, which may be undertaken
in countless other ways. The number of terms that may be appended
to a trademark (not to mention typos) to engage in all manner of
speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a
common dictionary word (not to mention typos) to create a
trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had
the opportunity to create a longer (and thus inferior) alternative
to a commonly used dictionary word or other common term. The fact
that they decided instead to choose a common term that is widely
used by the public shouldn't give them any priority access in a
launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the
essence of the sunrise argument for commonly used terms, like
dictionary words and short acronyms.
Sincerely,
George Kirikos
416-588-0269
https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.
leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7
b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ----- No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.8012 / Virus Database: 4769/14210 - Release Date: 03/30/17 Internal Virus Database is out of date. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
Interesting discussion and hence the UDRP's "bad faith registration and use" requirement -- which acts both as a threshold and as a deterrent. Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Thursday, April 06, 2017 7:33 AM To: J. Scott Evans <jsevans@adobe.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today I must take some exception to the statement that an exact match is trademark infringement, presuming that this refers to a domain name that is an exact match of a TM. This is generally true when the trademark is a distinctive term that is not a descriptive dictionary word. For example, registration of microsoft.tld by any party other than Microsoft would likely be susceptible to a successful UDRP or URS action. (microsoftsucks.tld is an entirely different matter that raises free speech and fair use issues). But the registration of windows.tld would not infringe Microsoft's trademark unless the related website contained content related to computer software and any other goods and services for which Microsoft has registered the mark. It can be freely registered, for example, by a company offering window repair and replacement services to homeowners. Given that nearly every dictionary word (at least in English) has been registered as a trademark for something, registration of an exact match for a totally unrelated purpose cannot be regarded as per se infringement. If that were the case then trademark owners would effectively control the use of dictionary words for domain registration purposes and that would have worrisome free speech implications. Fortunately, TM law does not grant such broad rights, and limits protections to the goods and services for which the mark is used. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Thursday, April 06, 2017 8:49 AM To: George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality. Sent from my iPhone
On Apr 6, 2017, at 5:44 AM, George Kirikos <icann@leap.com> wrote:
I'm not sure where J. Scott is getting his "facts", but my company doesn't "arbitrage" nor has it registered *any* new gTLD domain names (and I have no desire for any), nor is it a "bad actor." If you have proof that my company is a "bad actor", put it forward, rather than sling unsupported innuendo.
The whole point is that the "barriers" are put forth as *required* to deal with so-called "bad actors", but are instead used to advantage certain groups, far beyond the "damage" that is claimed to be caused by the "bad actors."
I don't want to delve into politics, but some might see parallels to certain government measures in some countries, where a "problem" is claimed, but a Draconian solution is applied to deal with it.
When it comes to the sunrise periods for new gTLDs, the "problem" is claimed to be cybersquatting, but instead of relying on curative rights, the Sunrise policy went too far and gave too many advantages to TM holders, essentially creating an unlevel playing field between *good actors* and TM holders.
Free speech means *no prior restraints* (with very rare exceptions), but harsh penalties for unlawful speech (curative rights).
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l aw.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e843724 5583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627 0794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfCH7s% 3D&reserved=0
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le ap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1b5 a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNxolm CYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans@adobe.com> wrote: The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.
Sent from my iPhone
On Apr 6, 2017, at 4:59 AM, George Kirikos <icann@leap.com> wrote:
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww. leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7 b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px 9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm. icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2b7c1 e08334543cacbff08d47ce46e63%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7 C0%7C636270767931993418&sdata=jZh3dzb5ycHMZLxsR4ZLmQdR%2B2kWcBkFD%2F j6BAXDjiI%3D&reserved=0
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George, with respect, your conclusion is unhelpfully dismissive, and moreover, it is highly inaccurate. It was registration interests, not brand owners, who were clamoring for new gTLDs. Merely as one illustrative example of this, in July 2009, INTA wrote to ICANN suggesting that work remained to be done in order to minimize trademark abuse and consumer confusion in an expanding gTLD space: https://www.icann.org/en/system/files/files/drewsen-to-beckstrom-24jul09-en..... In this same regard, you may also recall that even an ICANN‑commissioned study (https://archive.icann.org/en/topics/new-gtlds/economic-analysis-of-new-gtlds...) suggested that any introduction of new gTLDs proceed cautiously, namely: "it may be wise to continue ICANN’s practice of introducing new gTLDs in discrete, limited rounds. It is impossible to predict the costs and benefits of new gTLDs accurately. By proceeding with multiple rounds, the biggest likely costs—consumer confusion and trademark protection—can be evaluated". ICANN opted however to proceed in a more unlimited manner, and we are where we are. In any event, it is simply unsupportable to suggest that the present rights protection discussions are somehow a "problem" created by trademark owners. Nor are these issues exclusive to brand owners using dictionary terms in an arbitrary sense (e.g., "apple"). To protect their brand/reputation and indeed the consumers relying on them, even brand owners with fanciful (coined/unique) trademarks such as XEROX, EXXON, and KODAK have had occasion to engage in enforcement actions such as UDRP cases. Finally, even the Toyota v. Tabari case cited in your later email seems to support the principal/availability of sunrise protection; there the court states: “Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. We've already explained why trademark.com domains have that effect.” Best regards, Brian -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 2:00 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote:
Finally, since the chart references the EFF letter, it is worth
mentioning here that the fact that a trademark owner may pay
(sometimes extremely high
amounts) to defensively register a domain name exactly matching its
trademark in a Sunrise process (and thereby taking it “off the
market”) does not prevent free expression, which may be undertaken in
countless other ways. The number of terms that may be appended to a
trademark (not to mention typos) to engage in all manner of speech –
fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-) In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD. "I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
1. My company was not in favour of new gTLDs, and was very outspoken against them. To imply otherwise is ridiculous and incorrect. Don't lump me in with those guys who were in favour of them. If I'm making arguments that happen to be aligned with new gTLD registry operators or TM holders or other parties on some particular issue, that doesn't mean I'm aligned with all of their issues. I argue for what I see is right and justified, based on facts, law and supporting evidence. e.g. I recognize TM rights, but don't recognize ever-expansive claims that go beyond the law. I've pushed for lower TMCH fees (if the TMCH is to even be continued) harder than some members of the IPC, and that's *their* issue. I've pushed for lower registry TMCH fees harder than the registry operators! I don't even plan to ever use the TMCH, and am against its use for sunrise periods, but if it exists, it should be operated at low cost and efficiently. 2. I don't know who actually wants new gTLDs (their registry operators seem to be constantly complaining about losing money, etc., asking for ICANN bailouts), but the horde of "consultants" seem to suggest that it's brands that want new gTLDs. http://www.circleid.com/posts/20170213_2017_the_year_of_dotbrand/ "2017 seems poised to be the Year of dotBrand!" "That's why there is a growing pressure on ICANN to open a new round for the "have-not" companies. " 3. The ICANN commissioned studies were junk: http://forum.icann.org/lists/5gtld-guide/msg00015.html "Economic "Study" Phase II does not make the case for new TLDs - ICANN and authors should be ashamed to present this "work" to the public" I wasn't the only one to say so. KC Claffy (member of ICANN SSAC at the time) wrote: http://forum.icann.org/lists/economic-framework/msg00004.html "(1) Like the Carlton report, the authors still seem to think one way to "evaluate" concerns raised by others is to dismiss them without further study. George Kirikos observed one reason for the similarity between the two reports -- there was overlap in authorship. Despite the loud complaints that the previous report was not sufficiently objective, ICANN commissioned a second report that was ultimately co-authored by the same company as the first report, a fact hidden by ICANN's emphasis on only the Stanford and Berkeley co-authors in the report's description on the ICANN web site." ....(and many more good points, read the entire post...) (9) George Kirikos also points out in his scathing comments [ http://forum.icann.org/lists/economic-framework/msg00000.html ] that the ICANN-commissioned report, despite having academic authors, seems to eschew scholarship, by failing to cite related work and how it compares to the authors' own results, and avoiding discussion of (or discounting) empirical data that sheds doubt on the wisdom of what ICANN has made clear it plans to do anyway." I, and many others can say "we told you so." Indeed, even *outside* of ICANN, these "experts" are criticized, see the article at: https://www.propublica.org/article/these-professors-make-more-than-thousand-... "The economists are leveraging their academic prestige with secret reports justifying corporate concentration. Their predictions are often wrong and consumers pay the price." which explicitly covers Compass Lexecon and Dennis Carlton 4. The problem I mentioned wasn't the introduction of new gTLDs -- it was the choice as a trademark by the brand owner of a widely used term. They could have chosen something else. It's unrealistic for that brand owner to expect that they have exclusivity or priority rights to a term that is commonly used or has many prospective good faith owners. 5. There are better examples that are right on point re: "exact match", e.g. the Canadian.biz lawsuit, where a brewery in Canada wanted the exact match .biz domain: https://www.canlii.org/en/on/onsc/doc/2002/2002canlii49493/2002canlii49493.h... or the famous and ongoing Nissan.com saga. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Apr 6, 2017 at 9:42 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
George, with respect, your conclusion is unhelpfully dismissive, and moreover, it is highly inaccurate.
It was registration interests, not brand owners, who were clamoring for new gTLDs. Merely as one illustrative example of this, in July 2009, INTA wrote to ICANN suggesting that work remained to be done in order to minimize trademark abuse and consumer confusion in an expanding gTLD space: https://www.icann.org/en/system/files/files/drewsen-to-beckstrom-24jul09-en.....
In this same regard, you may also recall that even an ICANN‑commissioned study (https://archive.icann.org/en/topics/new-gtlds/economic-analysis-of-new-gtlds...) suggested that any introduction of new gTLDs proceed cautiously, namely: "it may be wise to continue ICANN’s practice of introducing new gTLDs in discrete, limited rounds. It is impossible to predict the costs and benefits of new gTLDs accurately. By proceeding with multiple rounds, the biggest likely costs—consumer confusion and trademark protection—can be evaluated".
ICANN opted however to proceed in a more unlimited manner, and we are where we are.
In any event, it is simply unsupportable to suggest that the present rights protection discussions are somehow a "problem" created by trademark owners. Nor are these issues exclusive to brand owners using dictionary terms in an arbitrary sense (e.g., "apple"). To protect their brand/reputation and indeed the consumers relying on them, even brand owners with fanciful (coined/unique) trademarks such as XEROX, EXXON, and KODAK have had occasion to engage in enforcement actions such as UDRP cases.
Finally, even the Toyota v. Tabari case cited in your later email seems to support the principal/availability of sunrise protection; there the court states: “Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. We've already explained why trademark.com domains have that effect.”
Best regards,
Brian
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 2:00 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth
mentioning here that the fact that a trademark owner may pay
(sometimes extremely high
amounts) to defensively register a domain name exactly matching its
trademark in a Sunrise process (and thereby taking it “off the
market”) does not prevent free expression, which may be undertaken in
countless other ways. The number of terms that may be appended to a
trademark (not to mention typos) to engage in all manner of speech –
fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos
416-588-0269
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World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Hi George, You mentioned the position of your company in your e mail. I am sorry that I am not familiar with your company businesses. I went to http://www.leap.com/ but there is no inofrmation in this web page. Could you give me more information about LEAP in order to better understand your interest in this matter? Best Regards, Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar -----Mensaje original----- De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de George Kirikos Enviado el: jueves, 6 de abril de 2017 11:11 Para: gnso-rpm-wg@icann.org Asunto: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today 1. My company was not in favour of new gTLDs, and was very outspoken against them. To imply otherwise is ridiculous and incorrect. Don't lump me in with those guys who were in favour of them. If I'm making arguments that happen to be aligned with new gTLD registry operators or TM holders or other parties on some particular issue, that doesn't mean I'm aligned with all of their issues. I argue for what I see is right and justified, based on facts, law and supporting evidence. e.g. I recognize TM rights, but don't recognize ever-expansive claims that go beyond the law. I've pushed for lower TMCH fees (if the TMCH is to even be continued) harder than some members of the IPC, and that's *their* issue. I've pushed for lower registry TMCH fees harder than the registry operators! I don't even plan to ever use the TMCH, and am against its use for sunrise periods, but if it exists, it should be operated at low cost and efficiently. 2. I don't know who actually wants new gTLDs (their registry operators seem to be constantly complaining about losing money, etc., asking for ICANN bailouts), but the horde of "consultants" seem to suggest that it's brands that want new gTLDs. http://www.circleid.com/posts/20170213_2017_the_year_of_dotbrand/ "2017 seems poised to be the Year of dotBrand!" "That's why there is a growing pressure on ICANN to open a new round for the "have-not" companies. " 3. The ICANN commissioned studies were junk: http://forum.icann.org/lists/5gtld-guide/msg00015.html "Economic "Study" Phase II does not make the case for new TLDs - ICANN and authors should be ashamed to present this "work" to the public" I wasn't the only one to say so. KC Claffy (member of ICANN SSAC at the time) wrote: http://forum.icann.org/lists/economic-framework/msg00004.html "(1) Like the Carlton report, the authors still seem to think one way to "evaluate" concerns raised by others is to dismiss them without further study. George Kirikos observed one reason for the similarity between the two reports -- there was overlap in authorship. Despite the loud complaints that the previous report was not sufficiently objective, ICANN commissioned a second report that was ultimately co-authored by the same company as the first report, a fact hidden by ICANN's emphasis on only the Stanford and Berkeley co-authors in the report's description on the ICANN web site." ....(and many more good points, read the entire post...) (9) George Kirikos also points out in his scathing comments [ http://forum.icann.org/lists/economic-framework/msg00000.html ] that the ICANN-commissioned report, despite having academic authors, seems to eschew scholarship, by failing to cite related work and how it compares to the authors' own results, and avoiding discussion of (or discounting) empirical data that sheds doubt on the wisdom of what ICANN has made clear it plans to do anyway." I, and many others can say "we told you so." Indeed, even *outside* of ICANN, these "experts" are criticized, see the article at: https://www.propublica.org/article/these-professors-make-more-than-thousand-... "The economists are leveraging their academic prestige with secret reports justifying corporate concentration. Their predictions are often wrong and consumers pay the price." which explicitly covers Compass Lexecon and Dennis Carlton 4. The problem I mentioned wasn't the introduction of new gTLDs -- it was the choice as a trademark by the brand owner of a widely used term. They could have chosen something else. It's unrealistic for that brand owner to expect that they have exclusivity or priority rights to a term that is commonly used or has many prospective good faith owners. 5. There are better examples that are right on point re: "exact match", e.g. the Canadian.biz lawsuit, where a brewery in Canada wanted the exact match .biz domain: https://www.canlii.org/en/on/onsc/doc/2002/2002canlii49493/2002canlii49493.h... or the famous and ongoing Nissan.com saga. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Apr 6, 2017 at 9:42 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
George, with respect, your conclusion is unhelpfully dismissive, and moreover, it is highly inaccurate.
It was registration interests, not brand owners, who were clamoring for new gTLDs. Merely as one illustrative example of this, in July 2009, INTA wrote to ICANN suggesting that work remained to be done in order to minimize trademark abuse and consumer confusion in an expanding gTLD space: https://www.icann.org/en/system/files/files/drewsen-to-beckstrom-24jul09-en.....
In this same regard, you may also recall that even an ICANN‑commissioned study (https://archive.icann.org/en/topics/new-gtlds/economic-analysis-of-ne w-gtlds-16jun10-en.pdf) suggested that any introduction of new gTLDs proceed cautiously, namely: "it may be wise to continue ICANN’s practice of introducing new gTLDs in discrete, limited rounds. It is impossible to predict the costs and benefits of new gTLDs accurately. By proceeding with multiple rounds, the biggest likely costs—consumer confusion and trademark protection—can be evaluated".
ICANN opted however to proceed in a more unlimited manner, and we are where we are.
In any event, it is simply unsupportable to suggest that the present rights protection discussions are somehow a "problem" created by trademark owners. Nor are these issues exclusive to brand owners using dictionary terms in an arbitrary sense (e.g., "apple"). To protect their brand/reputation and indeed the consumers relying on them, even brand owners with fanciful (coined/unique) trademarks such as XEROX, EXXON, and KODAK have had occasion to engage in enforcement actions such as UDRP cases.
Finally, even the Toyota v. Tabari case cited in your later email seems to support the principal/availability of sunrise protection; there the court states: “Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. We've already explained why trademark.com domains have that effect.”
Best regards,
Brian
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 2:00 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth
mentioning here that the fact that a trademark owner may pay
(sometimes extremely high
amounts) to defensively register a domain name exactly matching its
trademark in a Sunrise process (and thereby taking it “off the
market”) does not prevent free expression, which may be undertaken in
countless other ways. The number of terms that may be appended to a
trademark (not to mention typos) to engage in all manner of speech –
fair or otherwise – is, practically-speaking, all but limitless.
By that "logic", the number of terms that may be appended to a common dictionary word (not to mention typos) to create a trademarkable brand is, practically-speaking, all but limitless. :-)
In other words, those creating a new brand/trademark certainly had the opportunity to create a longer (and thus inferior) alternative to a commonly used dictionary word or other common term. The fact that they decided instead to choose a common term that is widely used by the public shouldn't give them any priority access in a launch of a new gTLD.
"I created a problem for myself, and I want ICANN to fix it" is the essence of the sunrise argument for commonly used terms, like dictionary words and short acronyms.
Sincerely,
George Kirikos
416-588-0269
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My SOI (and those of every other participant in this PDP) is at: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI There's also a neat tool called "Google" that you might want to try out! :-) Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Apr 6, 2017 at 10:57 AM, Ariel Manoff <amanoff@vmf.com.ar> wrote:
Hi George,
You mentioned the position of your company in your e mail. I am sorry that I am not familiar with your company businesses. I went to http://www.leap.com/ but there is no inofrmation in this web page. Could you give me more information about LEAP in order to better understand your interest in this matter?
Best Regards,
Hector
Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar
George, I am sorry but I googled LEAP and I not found enough information to understand your position. I checked your SOI and you do not belong to any constituency. But I visited math.com (it is really cool :) and now I understand better why you defend generic terms domain names. Thank you for answering, Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar -----Mensaje original----- De: George Kirikos [mailto:icann@leap.com] Enviado el: jueves, 6 de abril de 2017 12:01 Para: Ariel Manoff CC: gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today My SOI (and those of every other participant in this PDP) is at: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI There's also a neat tool called "Google" that you might want to try out! :-) Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Apr 6, 2017 at 10:57 AM, Ariel Manoff <amanoff@vmf.com.ar> wrote:
Hi George,
You mentioned the position of your company in your e mail. I am sorry that I am not familiar with your company businesses. I went to http://www.leap.com/ but there is no inofrmation in this web page. Could you give me more information about LEAP in order to better understand your interest in this matter?
Best Regards,
Hector
Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). J. Scott J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/6/17, 7:10 AM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote: 1. My company was not in favour of new gTLDs, and was very outspoken against them. To imply otherwise is ridiculous and incorrect. Don't lump me in with those guys who were in favour of them. If I'm making arguments that happen to be aligned with new gTLD registry operators or TM holders or other parties on some particular issue, that doesn't mean I'm aligned with all of their issues. I argue for what I see is right and justified, based on facts, law and supporting evidence. e.g. I recognize TM rights, but don't recognize ever-expansive claims that go beyond the law. I've pushed for lower TMCH fees (if the TMCH is to even be continued) harder than some members of the IPC, and that's *their* issue. I've pushed for lower registry TMCH fees harder than the registry operators! I don't even plan to ever use the TMCH, and am against its use for sunrise periods, but if it exists, it should be operated at low cost and efficiently. 2. I don't know who actually wants new gTLDs (their registry operators seem to be constantly complaining about losing money, etc., asking for ICANN bailouts), but the horde of "consultants" seem to suggest that it's brands that want new gTLDs. https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.circleid... "2017 seems poised to be the Year of dotBrand!" "That's why there is a growing pressure on ICANN to open a new round for the "have-not" companies. " 3. The ICANN commissioned studies were junk: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fforum.icann.... "Economic "Study" Phase II does not make the case for new TLDs - ICANN and authors should be ashamed to present this "work" to the public" I wasn't the only one to say so. KC Claffy (member of ICANN SSAC at the time) wrote: https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fforum.icann.... "(1) Like the Carlton report, the authors still seem to think one way to "evaluate" concerns raised by others is to dismiss them without further study. George Kirikos observed one reason for the similarity between the two reports -- there was overlap in authorship. Despite the loud complaints that the previous report was not sufficiently objective, ICANN commissioned a second report that was ultimately co-authored by the same company as the first report, a fact hidden by ICANN's emphasis on only the Stanford and Berkeley co-authors in the report's description on the ICANN web site." ....(and many more good points, read the entire post...) (9) George Kirikos also points out in his scathing comments [ https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fforum.icann.... ] that the ICANN-commissioned report, despite having academic authors, seems to eschew scholarship, by failing to cite related work and how it compares to the authors' own results, and avoiding discussion of (or discounting) empirical data that sheds doubt on the wisdom of what ICANN has made clear it plans to do anyway." I, and many others can say "we told you so." Indeed, even *outside* of ICANN, these "experts" are criticized, see the article at: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.propubl... "The economists are leveraging their academic prestige with secret reports justifying corporate concentration. Their predictions are often wrong and consumers pay the price." which explicitly covers Compass Lexecon and Dennis Carlton 4. The problem I mentioned wasn't the introduction of new gTLDs -- it was the choice as a trademark by the brand owner of a widely used term. They could have chosen something else. It's unrealistic for that brand owner to expect that they have exclusivity or priority rights to a term that is commonly used or has many prospective good faith owners. 5. There are better examples that are right on point re: "exact match", e.g. the Canadian.biz lawsuit, where a brewery in Canada wanted the exact match .biz domain: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.canlii.... or the famous and ongoing Nissan.com saga. Sincerely, George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... On Thu, Apr 6, 2017 at 9:42 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: > George, with respect, your conclusion is unhelpfully dismissive, and > moreover, it is highly inaccurate. > > > > It was registration interests, not brand owners, who were clamoring for new > gTLDs. Merely as one illustrative example of this, in July 2009, INTA wrote > to ICANN suggesting that work remained to be done in order to minimize > trademark abuse and consumer confusion in an expanding gTLD space: > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.icann.o.... > > > > In this same regard, you may also recall that even an ICANN‑commissioned > study > (https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica...) > suggested that any introduction of new gTLDs proceed cautiously, namely: "it > may be wise to continue ICANN’s practice of introducing new gTLDs in > discrete, limited rounds. It is impossible to predict the costs and benefits > of new gTLDs accurately. By proceeding with multiple rounds, the biggest > likely costs—consumer confusion and trademark protection—can be evaluated". > > > > ICANN opted however to proceed in a more unlimited manner, and we are where > we are. > > > > In any event, it is simply unsupportable to suggest that the present rights > protection discussions are somehow a "problem" created by trademark owners. > Nor are these issues exclusive to brand owners using dictionary terms in an > arbitrary sense (e.g., "apple"). To protect their brand/reputation and > indeed the consumers relying on them, even brand owners with fanciful > (coined/unique) trademarks such as XEROX, EXXON, and KODAK have had occasion > to engage in enforcement actions such as UDRP cases. > > > > Finally, even the Toyota v. Tabari case cited in your later email seems to > support the principal/availability of sunrise protection; there the court > states: “Of course a domain name containing a mark cannot be nominative fair > use if it suggests sponsorship or endorsement by the trademark holder. > We've already explained why trademark.com domains have that effect.” > > > > Best regards, > > > > Brian > > > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] > On Behalf Of George Kirikos > Sent: Thursday, April 06, 2017 2:00 PM > To: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working > Group call held earlier today > > > > Hi folks, > > > > On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> > wrote: > >> Finally, since the chart references the EFF letter, it is worth > >> mentioning here that the fact that a trademark owner may pay > >> (sometimes extremely high > >> amounts) to defensively register a domain name exactly matching its > >> trademark in a Sunrise process (and thereby taking it “off the > >> market”) does not prevent free expression, which may be undertaken in > >> countless other ways. The number of terms that may be appended to a > >> trademark (not to mention typos) to engage in all manner of speech – > >> fair or otherwise – is, practically-speaking, all but limitless. > > > > By that "logic", the number of terms that may be appended to a common > dictionary word (not to mention typos) to create a trademarkable brand is, > practically-speaking, all but limitless. :-) > > > > In other words, those creating a new brand/trademark certainly had the > opportunity to create a longer (and thus inferior) alternative to a commonly > used dictionary word or other common term. The fact that they decided > instead to choose a common term that is widely used by the public shouldn't > give them any priority access in a launch of a new gTLD. > > > > "I created a problem for myself, and I want ICANN to fix it" is the essence > of the sunrise argument for commonly used terms, like dictionary words and > short acronyms. > > > > Sincerely, > > > > George Kirikos > > 416-588-0269 > > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... > > _______________________________________________ > > gnso-rpm-wg mailing list > > gnso-rpm-wg@icann.org > > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > > > > World Intellectual Property Organization Disclaimer: This electronic message > may contain privileged, confidential and copyright protected information. If > you have received this e-mail by mistake, please immediately notify the > sender and delete this e-mail and all its attachments. Please ensure all > e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Graham (ELCA) Sent: Thursday, April 06, 2017 2:56 PM To: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ====================================================================== Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Jon: I actually would say that for a number of reasons, Claims is more important to us than Sunrise. However, that is in the present system where the two work together -- as I think they do now. As you can appreciate, there is a huge difference between how we handle protection of inherently distinctive and coined trademarks, and how we handle trademarks that are suggestive or derive from or incorporate dictionary terms. There is on "one size fits all" in IP protection or in DN concerns. Michael R. -----Original Message----- From: Jon Nevett [mailto:jon@donuts.email] Sent: Thursday, April 06, 2017 12:47 PM To: Michael Graham (ELCA) <migraham@expedia.com> Cc: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-e n
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Pardon the correction: "on" should be "no". To be clear. Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Graham (ELCA) Sent: Thursday, April 06, 2017 1:13 PM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Jon: I actually would say that for a number of reasons, Claims is more important to us than Sunrise. However, that is in the present system where the two work together -- as I think they do now. As you can appreciate, there is a huge difference between how we handle protection of inherently distinctive and coined trademarks, and how we handle trademarks that are suggestive or derive from or incorporate dictionary terms. There is on "one size fits all" in IP protection or in DN concerns. Michael R. -----Original Message----- From: Jon Nevett [mailto:jon@donuts.email] Sent: Thursday, April 06, 2017 12:47 PM To: Michael Graham (ELCA) <migraham@expedia.com> Cc: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-e n
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued. Seems to me that the issues all seem to center around the following: 1. Sunrise as inconsistent with freedom of expression 2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants. Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself. There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes the societal interests in restricting speech vs not. The speaker's interests Whether alternatives to the restrictions exist. Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted. I ask that we consider all of the above. 2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights. To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to: - the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice. If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal. Paul Keating.
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope. For example, see each of the following all before the 2012 round: - DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-trademark-pro... - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse-clean-... - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10-en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-us... - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse-implem... - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rights-ow... I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so. This would be part of the essence behind Neuman Rule #2. Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued. Seems to me that the issues all seem to center around the following: 1. Sunrise as inconsistent with freedom of expression 2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants. Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself. There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes the societal interests in restricting speech vs not. The speaker's interests Whether alternatives to the restrictions exist. Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted. I ask that we consider all of the above. 2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights. To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to: - the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice. If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal. Paul Keating. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Friday, April 07, 2017 11:51 AM To: Paul Keating; Jon Nevett Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope. For example, see each of the following all before the 2012 round: - DNSO WG-B: Famous Trade - Marks (1999-2000): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_dn... ; - DNSO WG-B Position Papers (1999): https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgroups_wg-... (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgroups_wg-... - Evaluation of Legal Policy Issues in new gTLDs (https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org_en_tld... ) - WIPO Report on New gTLDs (2005) https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... - Protecting the Rights of Others Working Group (2006-2007): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_group... - Final IRT Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - STI Final Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issue... - Trademark Clearinghouse (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - URS (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - Trademark Issues (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - Trademark Clearinghouse (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - Board Briefing Paper on Rights of Others (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so. This would be part of the essence behind Neuman Rule #2. Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued. Seems to me that the issues all seem to center around the following: 1. Sunrise as inconsistent with freedom of expression 2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants. Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself. There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes the societal interests in restricting speech vs not. The speaker's interests Whether alternatives to the restrictions exist. Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted. I ask that we consider all of the above. 2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights. To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to: - the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice. If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal. Paul Keating. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
Thank you for this extremely useful index, Jeff. By "Review" I do not believe the GNSO meant "Rehash", nor do I think that would be productive. As I understand the Charter, we have been asked to review the effectiveness of the RPMs in their operation as proposed and as carried out based on the policies established and agreed to by GNSO PDPs. We each will carry with us into this review our understanding of the purposes, effects, and shortcomings of the various RPMs -- and in our individual analyses -- but promoting these one over another is not the purpose of the present PDP. The RPMs were a result of long, careful, and much debated consideration in which the concerns of the present discussion were dealt with extensively and passionately. The current RPMs are a result of those. Seems to me it is time and we have been asked to review these RPMs and their effectiveness, and not debate the questions of law and the philosophical positions we each hold. (Though these are excellent subjects for discussion between members outside the PDP). Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com Sent: Friday, April 07, 2017 10:17 AM To: jeff.neuman@comlaude.com; paul@law.es; jon@donuts.email Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Friday, April 07, 2017 11:51 AM To: Paul Keating; Jon Nevett Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope. For example, see each of the following all before the 2012 round: - DNSO WG-B: Famous Trade - Marks (1999-2000): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_dn... ; - DNSO WG-B Position Papers (1999): https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgroups_wg-... (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgroups_wg-... - Evaluation of Legal Policy Issues in new gTLDs (https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org_en_tld... ) - WIPO Report on New gTLDs (2005) https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... - Protecting the Rights of Others Working Group (2006-2007): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_group... - Final IRT Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - STI Final Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issue... - Trademark Clearinghouse (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - URS (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - Trademark Issues (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - Trademark Clearinghouse (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... - Board Briefing Paper on Rights of Others (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_to... I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so. This would be part of the essence behind Neuman Rule #2. Thanks. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued. Seems to me that the issues all seem to center around the following: 1. Sunrise as inconsistent with freedom of expression 2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants. Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself. There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes the societal interests in restricting speech vs not. The speaker's interests Whether alternatives to the restrictions exist. Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted. I ask that we consider all of the above. 2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights. To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to: - the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice. If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal. Paul Keating. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-trademark-pro... - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse-clean-... - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10-en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-us... - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse-implem... - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rights-ow...
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-tradema rk-protection-29may09-en.pdf - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- clean-28may10-en.pdf - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10- en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-cla ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rig hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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+1 Colin Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Colin O'Brien Sent: Friday, April 7, 2017 1:39 PM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-tradema rk-protection-29may09-en.pdf - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- clean-28may10-en.pdf - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10- en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-cla ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rig hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
+1, agree with Colin _______________________________ Christopher Thomas Partner Parker Poe PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 Visit our website at www.parkerpoe.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 1:46 PM To: Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Colin Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Colin O'Brien Sent: Friday, April 7, 2017 1:39 PM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-tradema rk-protection-29may09-en.pdf - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- clean-28may10-en.pdf - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10- en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-cla ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rig hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg PRIVILEGED AND CONFIDENTIAL: This electronic message and any attachments are confidential property of the sender. The information is intended only or the use of the person to whom it was addressed. Any other interception, copying, accessing, or disclosure of this message is prohibited. The sender takes no responsibility for any unauthorized reliance on this message. If you have received this message in error, please immediately notify the sender and purge the message you received. Do not forward this message without permission. [ppab_p&c]
+1 Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Thomas, Christopher M. Sent: Friday, April 07, 2017 12:48 PM To: 'John McElwaine'; Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1, agree with Colin _______________________________ Christopher Thomas Partner Parker Poe PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 Visit our website at www.parkerpoe.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 1:46 PM To: Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Colin Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Colin O'Brien Sent: Friday, April 7, 2017 1:39 PM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.partridge.partners_&... -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwICAg&c... On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_dnso_wgb-2Dreport-2D17apr00.htm&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg& r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XA czAuZOxBShwlOhI3lKYfU&s=hAo63KpxkKhQDAnv3rcAXUNlACoo-XHLvO2PTTXRiZc&e= ; - DNSO WG-B Position Papers (1999): https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgrou ps_wg-2Db_Archives_msg00505.html&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L 7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczA uZOxBShwlOhI3lKYfU&s=NZaLxm0Qhmr2jrXwoyl35RFr7kAKqWSw3l0KInIGosA&e= (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgrou ps_wg-2Dc_Arc00_msg02018.html&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczAuZO xBShwlOhI3lKYfU&s=TS-6p_gIE1XdzJfY8wRjDe7hyKxqOBBvZApcQQHEfCc&e= - Evaluation of Legal Policy Issues in new gTLDs (https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org _en_tlds_new-2Dgtld-2Deval-2D31aug04.pdf&d=DwICAg&c=2s2mvbfY0UoSKkl6_O l9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3M Xt6XAczAuZOxBShwlOhI3lKYfU&s=zkxRgJqaqx6-mq1qwW6VEEib8ME38YdfPVkKG3UDD HA&e= ) - WIPO Report on New gTLDs (2005) https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_e n_domains_reports_newgtld-2Dip_&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7 MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczAu ZOxBShwlOhI3lKYfU&s=DIQZxxAPTH_k25KzLAh8ZcVJSAKK820yNWvv3byM5-I&e= - Protecting the Rights of Others Working Group (2006-2007): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _group-2Dactivities_inactive_2007_pro&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9w g&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6 XAczAuZOxBShwlOhI3lKYfU&s=xtpv9W2hTbFpDAYtlH9uBba3mo3nsBiyA6mHpHCLrJI& e= - Final IRT Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_irt-2Dfinal-2Dreport-2Dtradema&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QxU8weroyFt7E3gFI4xKPOfkBuax Pew_licnNU8sWu4&e= rk-protection-29may09-en.pdf - STI Final Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _issues_sti_sti-2Dwt-2Drecommendations-2D11dec09-2Den&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=Ir0BIspcw6Fbpe1-d-tNFr3IaTGx g59GTQXG2qlPr2A&e= .pdf - Trademark Clearinghouse (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dclearinghouse-2D&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QMqHvPegGfz87VJpLF2_pSVquagtXJ Bay_u6bgdEKHg&e= clean-28may10-en.pdf - URS (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_draft-2Durs-2Dclean-2D28may10-2D&d=DwICAg&c=2s2 mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mb rwCCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=Fw0DWkeH6bMAdmi_h9rWFdN0KN u8J0NPbaEjWHgGGoo&e= en.pdf - Trademark Issues (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dprotection-2Dcla&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=wwMjC8vzaEIWIDl6eMRoBXgfJygrrY RkmUem4sBqRYk&e= ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dclearinghouse-2D&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QMqHvPegGfz87VJpLF2_pSVquagtXJ Bay_u6bgdEKHg&e= implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_gac-2Dboard-2Dprotection-2Drig&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=94PW21uPJs6uTOxcr6W8HEbRQR5X KkEDz2Ts22Tljcw&e= hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
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+1 Colin. Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com Sent: Friday, April 07, 2017 1:16 PM To: christhomas@parkerpoe.com; john.mcelwaine@nelsonmullins.com; colin@PartridgePartnersPC.com; icann@leap.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Thomas, Christopher M. Sent: Friday, April 07, 2017 12:48 PM To: 'John McElwaine'; Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1, agree with Colin _______________________________ Christopher Thomas Partner Parker Poe PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 Visit our website at www.parkerpoe.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 1:46 PM To: Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Colin Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Colin O'Brien Sent: Friday, April 7, 2017 1:39 PM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.partridge.partners_& d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCx m1c&m=mbrwCCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=l7QVCXLw0FRl5By0KjnpFH4q 6L5nnKQ5dYF1QyMnd04&e= -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwICAg&c =2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=1Mbau_4OwTfSA4aEf7TjXpXfh_2LZM9_yC 4ZuPxCjso&e= On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_dnso_wgb-2Dreport-2D17apr00.htm&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg& r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XA czAuZOxBShwlOhI3lKYfU&s=hAo63KpxkKhQDAnv3rcAXUNlACoo-XHLvO2PTTXRiZc&e= ; - DNSO WG-B Position Papers (1999): https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgrou ps_wg-2Db_Archives_msg00505.html&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L 7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczA uZOxBShwlOhI3lKYfU&s=NZaLxm0Qhmr2jrXwoyl35RFr7kAKqWSw3l0KInIGosA&e= (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgrou ps_wg-2Dc_Arc00_msg02018.html&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczAuZO xBShwlOhI3lKYfU&s=TS-6p_gIE1XdzJfY8wRjDe7hyKxqOBBvZApcQQHEfCc&e= - Evaluation of Legal Policy Issues in new gTLDs (https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org _en_tlds_new-2Dgtld-2Deval-2D31aug04.pdf&d=DwICAg&c=2s2mvbfY0UoSKkl6_O l9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3M Xt6XAczAuZOxBShwlOhI3lKYfU&s=zkxRgJqaqx6-mq1qwW6VEEib8ME38YdfPVkKG3UDD HA&e= ) - WIPO Report on New gTLDs (2005) https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_e n_domains_reports_newgtld-2Dip_&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7 MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczAu ZOxBShwlOhI3lKYfU&s=DIQZxxAPTH_k25KzLAh8ZcVJSAKK820yNWvv3byM5-I&e= - Protecting the Rights of Others Working Group (2006-2007): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _group-2Dactivities_inactive_2007_pro&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9w g&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6 XAczAuZOxBShwlOhI3lKYfU&s=xtpv9W2hTbFpDAYtlH9uBba3mo3nsBiyA6mHpHCLrJI& e= - Final IRT Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_irt-2Dfinal-2Dreport-2Dtradema&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QxU8weroyFt7E3gFI4xKPOfkBuax Pew_licnNU8sWu4&e= rk-protection-29may09-en.pdf - STI Final Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _issues_sti_sti-2Dwt-2Drecommendations-2D11dec09-2Den&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=Ir0BIspcw6Fbpe1-d-tNFr3IaTGx g59GTQXG2qlPr2A&e= .pdf - Trademark Clearinghouse (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dclearinghouse-2D&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QMqHvPegGfz87VJpLF2_pSVquagtXJ Bay_u6bgdEKHg&e= clean-28may10-en.pdf - URS (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_draft-2Durs-2Dclean-2D28may10-2D&d=DwICAg&c=2s2 mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mb rwCCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=Fw0DWkeH6bMAdmi_h9rWFdN0KN u8J0NPbaEjWHgGGoo&e= en.pdf - Trademark Issues (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dprotection-2Dcla&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=wwMjC8vzaEIWIDl6eMRoBXgfJygrrY RkmUem4sBqRYk&e= ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dclearinghouse-2D&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QMqHvPegGfz87VJpLF2_pSVquagtXJ Bay_u6bgdEKHg&e= implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_gac-2Dboard-2Dprotection-2Drig&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=94PW21uPJs6uTOxcr6W8HEbRQR5X KkEDz2Ts22Tljcw&e= hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
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+1 Colin Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar -----Mensaje original----- De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Paul McGrady Enviado el: sábado, 8 de abril de 2017 19:16 Para: trachtenbergm@gtlaw.com; christhomas@parkerpoe.com; john.mcelwaine@nelsonmullins.com; colin@PartridgePartnersPC.com; icann@leap.com; gnso-rpm-wg@icann.org Asunto: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Colin. Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com Sent: Friday, April 07, 2017 1:16 PM To: christhomas@parkerpoe.com; john.mcelwaine@nelsonmullins.com; colin@PartridgePartnersPC.com; icann@leap.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Thomas, Christopher M. Sent: Friday, April 07, 2017 12:48 PM To: 'John McElwaine'; Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1, agree with Colin _______________________________ Christopher Thomas Partner Parker Poe PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 Visit our website at www.parkerpoe.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 1:46 PM To: Colin O'Brien; 'George Kirikos'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today +1 Colin Well said. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Colin O'Brien Sent: Friday, April 7, 2017 1:39 PM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.partridge.partners_& d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCx m1c&m=mbrwCCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=l7QVCXLw0FRl5By0KjnpFH4q 6L5nnKQ5dYF1QyMnd04&e= -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwICAg&c =2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=1Mbau_4OwTfSA4aEf7TjXpXfh_2LZM9_yC 4ZuPxCjso&e= On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_dnso_wgb-2Dreport-2D17apr00.htm&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg& r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XA czAuZOxBShwlOhI3lKYfU&s=hAo63KpxkKhQDAnv3rcAXUNlACoo-XHLvO2PTTXRiZc&e= ; - DNSO WG-B Position Papers (1999): https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgrou ps_wg-2Db_Archives_msg00505.html&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L 7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczA uZOxBShwlOhI3lKYfU&s=NZaLxm0Qhmr2jrXwoyl35RFr7kAKqWSw3l0KInIGosA&e= (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See https://urldefense.proofpoint.com/v2/url?u=http-3A__www.dnso.org_wgrou ps_wg-2Dc_Arc00_msg02018.html&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczAuZO xBShwlOhI3lKYfU&s=TS-6p_gIE1XdzJfY8wRjDe7hyKxqOBBvZApcQQHEfCc&e= - Evaluation of Legal Policy Issues in new gTLDs (https://urldefense.proofpoint.com/v2/url?u=http-3A__archive.icann.org _en_tlds_new-2Dgtld-2Deval-2D31aug04.pdf&d=DwICAg&c=2s2mvbfY0UoSKkl6_O l9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3M Xt6XAczAuZOxBShwlOhI3lKYfU&s=zkxRgJqaqx6-mq1qwW6VEEib8ME38YdfPVkKG3UDD HA&e= ) - WIPO Report on New gTLDs (2005) https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_e n_domains_reports_newgtld-2Dip_&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7 MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6XAczAu ZOxBShwlOhI3lKYfU&s=DIQZxxAPTH_k25KzLAh8ZcVJSAKK820yNWvv3byM5-I&e= - Protecting the Rights of Others Working Group (2006-2007): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _group-2Dactivities_inactive_2007_pro&d=DwICAg&c=2s2mvbfY0UoSKkl6_Ol9w g&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCCecYlAFcU-3MXt6 XAczAuZOxBShwlOhI3lKYfU&s=xtpv9W2hTbFpDAYtlH9uBba3mo3nsBiyA6mHpHCLrJI& e= - Final IRT Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_irt-2Dfinal-2Dreport-2Dtradema&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QxU8weroyFt7E3gFI4xKPOfkBuax Pew_licnNU8sWu4&e= rk-protection-29may09-en.pdf - STI Final Report (2009): https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _issues_sti_sti-2Dwt-2Drecommendations-2D11dec09-2Den&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=Ir0BIspcw6Fbpe1-d-tNFr3IaTGx g59GTQXG2qlPr2A&e= .pdf - Trademark Clearinghouse (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dclearinghouse-2D&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QMqHvPegGfz87VJpLF2_pSVquagtXJ Bay_u6bgdEKHg&e= clean-28may10-en.pdf - URS (2010): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_draft-2Durs-2Dclean-2D28may10-2D&d=DwICAg&c=2s2 mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mb rwCCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=Fw0DWkeH6bMAdmi_h9rWFdN0KN u8J0NPbaEjWHgGGoo&e= en.pdf - Trademark Issues (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dprotection-2Dcla&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=wwMjC8vzaEIWIDl6eMRoBXgfJygrrY RkmUem4sBqRYk&e= ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_trademark-2Dclearinghouse-2D&d=DwICAg&c=2s2mvbf Y0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrwCC ecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=QMqHvPegGfz87VJpLF2_pSVquagtXJ Bay_u6bgdEKHg&e= implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org _en_topics_new-2Dgtlds_gac-2Dboard-2Dprotection-2Drig&d=DwICAg&c=2s2mv bfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mbrw CCecYlAFcU-3MXt6XAczAuZOxBShwlOhI3lKYfU&s=94PW21uPJs6uTOxcr6W8HEbRQR5X KkEDz2Ts22Tljcw&e= hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
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I believe you are reading the language in a limited manner "At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate." When assessing a current system there can be no sacred cows. When opening as to the result of the assessment one cannot simply say that it is unacceptable. Specific examples and solutions must be provided. You want to protect the cow simply because it was protected under the current policy. This is not acceptable to me. We are charged with determining whether, on Sent from my iPad
On 9 Apr 2017, at 00:17, Paul McGrady <policy@paulmcgrady.com> wrote:
At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate.
Well said, sir. Well said. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/7/17, 10:39 AM, "gnso-rpm-wg-bounces@icann.org on behalf of Colin O'Brien" <gnso-rpm-wg-bounces@icann.org on behalf of colin@PartridgePartnersPC.com> wrote: Looking at the Working Group Charter the Mission Scope of this working group is to: "This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. , by the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness" Based on the terms of the charter the order in which things should be discussed are: 1. Whether or not all the RPMs collectively fulfill the purposes for which they were created; 2. Whether additional policy recommendations are needed; 3. Whether there should be a clarification and unification of policy goals. I agree with Jeff that many of the questions being re-asked have dealt with extensively by ICANN in short they have been "asked and answered." It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.partridg... -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote: > THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO > PDP > > With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope. > > For example, see each of the following all before the 2012 round: > > - DNSO WG-B: Famous Trade - Marks (1999-2000): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica...; > - DNSO WG-B Position Papers (1999): > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.dnso.org... (includes > positions from community) > - DNSO WG-C: New gTLDs (1999-2000): See > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.dnso.org... > - Evaluation of Legal Policy Issues in new gTLDs > (https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Farchive.ican...) > - WIPO Report on New gTLDs (2005) > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int... > - Protecting the Rights of Others Working Group (2006-2007): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... > - Final IRT Report (2009): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica... > rk-protection-29may09-en.pdf > - STI Final Report (2009): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... > .pdf > - Trademark Clearinghouse (2010): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica... > clean-28may10-en.pdf > - URS (2010): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica... > en.pdf > - Trademark Issues (2011): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica... > ims-use-15apr11-en.pdf > - Trademark Clearinghouse (2011): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica... > implementation-30may11-en.pdf > - Board Briefing Paper on Rights of Others (2011): > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Farchive.ica... > hts-owners-21feb11-en.pdf > > I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so. > > This would be part of the essence behind Neuman Rule #2. > > Thanks. > > > > > > > Jeffrey J. Neuman > Senior Vice President |Valideus USA | Com Laude USA > 1751 Pinnacle Drive, Suite 600 > Mclean, VA 22102, United States > E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com > T: +1.703.635.7514 > M: +1.202.549.5079 > @Jintlaw > > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating > Sent: Friday, April 7, 2017 3:32 AM > To: Jon Nevett <jon@donuts.email> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the > Working Group call held earlier today > > Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued. > > Seems to me that the issues all seem to center around the following: > > 1. Sunrise as inconsistent with freedom of expression > > 2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants. > > Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself. > > There are indeed many enroachments upon freedom of speech. Some are > permissible. Some are not. Whether a particular impact is permissible > or appropriate requires a balance of interest. That balance includes > > the societal interests in restricting speech vs not. > > The speaker's interests > > Whether alternatives to the restrictions exist. > > Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted. > > I ask that we consider all of the above. > > 2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights. > > To determine if this is being abused or if the benefits granted are > not otherwise justified we need data. L > >> On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote: >> >> Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. > > I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to: > > - the actual mark's in the TMCH, > - the number of sunrise registrations undertaken based on a TMCH registration, > - the number of post-sunrise, pre-registration notices sent to registrants, and > - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice. > > If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal. > > Paul Keating. > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.symantec... ______________________________________________________________________ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.symantec... ______________________________________________________________________ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Hello, On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo." It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly." Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard. John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". " If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
P.S. TMCH question #16 says: "Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?"" Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake. Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
George, this example is overly simplistic, but If a simple "no" answer means that the policy is a wrong and needs to be scrapped, then I would say such an exercise is outside of the scope of our working group and we should remove this question. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 7, 2017 2:07 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today P.S. TMCH question #16 says: "Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?"" Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake. Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
Agree with John. Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 11:16 AM To: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today George, this example is overly simplistic, but If a simple "no" answer means that the policy is a wrong and needs to be scrapped, then I would say such an exercise is outside of the scope of our working group and we should remove this question. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 7, 2017 2:07 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today P.S. TMCH question #16 says: "Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?"" Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake. Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 John. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Graham (ELCA) Sent: Friday, April 07, 2017 1:19 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Agree with John. Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 11:16 AM To: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today George, this example is overly simplistic, but If a simple "no" answer means that the policy is a wrong and needs to be scrapped, then I would say such an exercise is outside of the scope of our working group and we should remove this question. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 7, 2017 2:07 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today P.S. TMCH question #16 says: "Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?"" Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake. Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Obviously the answer of "No" doesn't automatically mean it'll need to be scrapped, although it would means that the policy is broken and needs to be fixed in some manner. Either adjusted, or "repealed and replaced", to borrow a famous phrase. Question #16 should stay. That's the entire point of doing a review, an overarching question, trying to find out what's working and what's broken, and then fixing the broken stuff. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 2:16 PM, John McElwaine <john.mcelwaine@nelsonmullins.com> wrote:
George, this example is overly simplistic, but If a simple "no" answer means that the policy is a wrong and needs to be scrapped, then I would say such an exercise is outside of the scope of our working group and we should remove this question.
John
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 7, 2017 2:07 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
P.S. TMCH question #16 says:
"Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?""
Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake.
Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there?
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice
This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure.
If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
Some thoughts on this thread: We are charged with reviewing the actual performance of the RPMs created for the new gTLD program and determining if they are individually and collectively effective. Inherent in that review is an accompanying assessment of their impact on and attendant costs leveled on all parties -- trademark holders, contracted parties, registrants, and general Internet users -- and whether they are operating in a balanced fashion. These RPMs were developed over the course of several years, are inherently imperfect, and represent a compromise among parties with divergent views and interests. So whether or not the balance they represent is subjectively "appropriate", there is some prior consensus within the ICANN community on the question of balance already reflected in them. This is not a zero-based exercise in which we are obligated to re-litigate and reconsider the very existence of a particular RPM and whether it is fundamentally unbalanced in concept -- its very existence indicates that those who shaped the RPMs had some rough consensus on that balance. But if a member of the WG wants to make that argument that an RPM is inherently and irredeemably unbalanced that is his or her right. I would remind all members, however, that advocating a policy change for which consensus is unlikely to ever be reached is probably not a productive use of our time. Unless an RPM has been shown in practice to be utterly ineffective, or to have excessively negative impact on other stakeholders, and we have determined that no reasonable adjustments can remedy those defects, the chances of it being eliminated are likely close to zero. Likewise, just because an RPM has been found to be reasonably effective does not mean that advocating for its unfettered expansion would not upset the previously acceptable balance, or yield significantly greater benefits for rights holders. Summing up, the most likely proposals to achieve consensus support and the absence of strong and deep objections from significant numbers of other WG members are those that tweak the existing RPMs around the edges and represent incremental, positive, and reasonably balanced change. I'm a great believer in incremental change, if for no other reason that it's generally the only kind on which consensus can be reached and some progress made in policy debates. I would hope that all WG members who propose specific alterations of the existing RPMs will clearly state what defects are being targeted, what benefits are expected to flow from the proposal, and also be candid about what new costs or burdens they may create for other stakeholders. Proposals that can get past such a cost/benefit analysis are the ones most likely to achieve consensus, wind up in our Final Report, and be sent on to GNSO Council. I hope those thoughts are useful. Have a good weekend. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 2:07 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today P.S. TMCH question #16 says: "Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?"" Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake. Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
+1 Kathy On 4/8/2017 3:07 PM, Phil Corwin wrote:
Some thoughts on this thread:
We are charged with reviewing the actual performance of the RPMs created for the new gTLD program and determining if they are individually and collectively effective. Inherent in that review is an accompanying assessment of their impact on and attendant costs leveled on all parties -- trademark holders, contracted parties, registrants, and general Internet users -- and whether they are operating in a balanced fashion.
These RPMs were developed over the course of several years, are inherently imperfect, and represent a compromise among parties with divergent views and interests. So whether or not the balance they represent is subjectively "appropriate", there is some prior consensus within the ICANN community on the question of balance already reflected in them. This is not a zero-based exercise in which we are obligated to re-litigate and reconsider the very existence of a particular RPM and whether it is fundamentally unbalanced in concept -- its very existence indicates that those who shaped the RPMs had some rough consensus on that balance.
But if a member of the WG wants to make that argument that an RPM is inherently and irredeemably unbalanced that is his or her right. I would remind all members, however, that advocating a policy change for which consensus is unlikely to ever be reached is probably not a productive use of our time. Unless an RPM has been shown in practice to be utterly ineffective, or to have excessively negative impact on other stakeholders, and we have determined that no reasonable adjustments can remedy those defects, the chances of it being eliminated are likely close to zero.
Likewise, just because an RPM has been found to be reasonably effective does not mean that advocating for its unfettered expansion would not upset the previously acceptable balance, or yield significantly greater benefits for rights holders.
Summing up, the most likely proposals to achieve consensus support and the absence of strong and deep objections from significant numbers of other WG members are those that tweak the existing RPMs around the edges and represent incremental, positive, and reasonably balanced change. I'm a great believer in incremental change, if for no other reason that it's generally the only kind on which consensus can be reached and some progress made in policy debates.
I would hope that all WG members who propose specific alterations of the existing RPMs will clearly state what defects are being targeted, what benefits are expected to flow from the proposal, and also be candid about what new costs or burdens they may create for other stakeholders. Proposals that can get past such a cost/benefit analysis are the ones most likely to achieve consensus, wind up in our Final Report, and be sent on to GNSO Council.
I hope those thoughts are useful. Have a good weekend.
Best, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 2:07 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
P.S. TMCH question #16 says:
"Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?""
Some people here (the "status quo paralysis" camp) don't seem to be prepared for the scenario where the answer to that question is "No", and want to prejudge that answer as "Yes". An answer of "No", to go to John McElwaine's earlier statement, is certainly consistent with a conclusion that it was a policy mistake.
Since TMCH Question #16 has already been approved as a valid question and in scope of this PDP, are some people unhappy it's there?
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Fri, Apr 7, 2017 at 1:57 PM, George Kirikos <icann@leap.com> wrote:
Hello,
On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo."
It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly."
Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard.
John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". "
If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Thanks, I agree we should be focusing on the data but it seems that the working group is devolving into a debating society on the philosophical underpinnings of human rights and trademark law which results in nothing getting done. In the past meeting I believe you asked for the top 500 strings that were registered in the TMCH. I think this is a really good ask. I'd like to know if most of the 500 were trademarks which is indicative that it is being used to protect brand owners and their millions of customers. Conversely if many of these top 500 are generic terms i.e. math, science then there is a problem and this working group should try to come up with a fix. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:57 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello, On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo." It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly." Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard. John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". " If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________
+1 Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Colin O'Brien Sent: Friday, April 07, 2017 11:11 AM To: 'George Kirikos' <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks, I agree we should be focusing on the data but it seems that the working group is devolving into a debating society on the philosophical underpinnings of human rights and trademark law which results in nothing getting done. In the past meeting I believe you asked for the top 500 strings that were registered in the TMCH. I think this is a really good ask. I'd like to know if most of the 500 were trademarks which is indicative that it is being used to protect brand owners and their millions of customers. Conversely if many of these top 500 are generic terms i.e. math, science then there is a problem and this working group should try to come up with a fix. Colin Thomas Jefferson O'Brien 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 http://www.partridge.partners/ -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 07, 2017 12:57 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hello, On Fri, Apr 7, 2017 at 1:39 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote: "It is not the place for a handful of individuals to declare that everything should be reviewed and they should be entitled to challenge past assumptions allowing this to happen will result in a tyranny of few creating paralysis in this working group. The end result of this paralysis will ensure no tangible fixes are made to the RPM system in ICANN and everything remains in status quo." It's not the place, in a review group, to say we shouldn't be doing the work of a review group. Paralysis is caused by folks saying that "all has already been asked and answered before", rather than by folks saying "let's gather the data, review it, test past assumptions in light of this data, and make conclusions accordingly." Everything remains in the status quo if we *don't* put in the work, and it seems that's what some folks are happy with. If folks aren't prepared to put in the work, and are just here to ensure the status quo remains unchanged, then they're the cause of paralysis, blocking others who are here to work hard. John McElwaine followed up with: "I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". " If that's where the data leads us, why wouldn't it be in scope to say that the deleterious effects of a given policy exceeded the salutory effects, i.e. the cons outweighed the pros? That's a fundamental part of any review. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Hi folks, On Fri, Apr 7, 2017 at 2:11 PM, Colin O'Brien <colin@partridgepartnerspc.com> wrote:
I'd like to know if most of the 500 were trademarks which is indicative that it is being used to protect brand owners and their millions of customers.
Obviously ALL 500 terms were trademarks, otherwise they couldn't get into the TMCH in the first place.
Conversely if many of these top 500 are generic terms i.e. math, science then there is a problem and this working group should try to come up with a fix.
We already saw the top 10 (from the Analysis Group's report), and *all* of those were commonly used terms (HOTEL, ONE, LUXURY, etc). I'm glad you appear to be open to the possibility that there's a problem. The data we have so far indicates there is one. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
It's probably useful here to go back to the Charter. Our scope is not to review everything about an RPM; it is instead, "to consider the overarching issue as to whether or not all the RPMS collectively fulfill the purposes for which they were created or whether additional policy recommendations are needed, including to clarify and unify the policy goals.... The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness." https://gnso.icann.org/en/drafts/rpm-charter-15mar16-en.pdf I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". If we are going to be debating such fundamental points, we better block off every Wednesday for the next 10 years. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 7, 2017 1:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-tradema rk-protection-29may09-en.pdf - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- clean-28may10-en.pdf - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10- en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-cla ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rig hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
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Well put, John. Thank you -- As a new member of the working group, the relationship between some of the conversation and the Charter was unclear. Michael R. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 07, 2017 10:45 AM To: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today It's probably useful here to go back to the Charter. Our scope is not to review everything about an RPM; it is instead, "to consider the overarching issue as to whether or not all the RPMS collectively fulfill the purposes for which they were created or whether additional policy recommendations are needed, including to clarify and unify the policy goals.... The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness." https://gnso.icann.org/en/drafts/rpm-charter-15mar16-en.pdf I believe it is out of our scope to be debating whether an RPM, or a particular aspect of one, was "wrong policy" or "a policy mistake". If we are going to be debating such fundamental points, we better block off every Wednesday for the next 10 years. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Friday, April 7, 2017 1:18 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today With all due respect, I fundamentally disagree with that position. It's our *task* to review everything, challenge past assumptions, gather and look at the hard data, and not simply pretend to review it and defer to "precedent". If it's all been said before, wrong policies would be permanent. ICANN has repeatedly made major policy mistakes. Anyone suggesting they haven't really hasn't been paying much attention. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Fri, Apr 7, 2017 at 12:50 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
THIS IS IN MY PERSONAL CAPACITY AND NOT AS A WG CHAIR FOR THE SUBPRO PDP
With all due respect to everyone, all of these types of issues have been "asked and answered." We should not be revisiting issues that were extensively debated from 1999-2001 and 2006-2012. There is a huge archive of this information and just because we have new participants in this group that were not around back then, unless there are changed circumstances which necessitate a change in policy, I think this is beyond our scope.
For example, see each of the following all before the 2012 round:
- DNSO WG-B: Famous Trade - Marks (1999-2000): https://archive.icann.org/en/dnso/wgb-report-17apr00.htm; - DNSO WG-B Position Papers (1999): http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html (includes positions from community) - DNSO WG-C: New gTLDs (1999-2000): See http://www.dnso.org/wgroups/wg-c/Arc00/msg02018.html - Evaluation of Legal Policy Issues in new gTLDs (http://archive.icann.org/en/tlds/new-gtld-eval-31aug04.pdf) - WIPO Report on New gTLDs (2005) http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ - Protecting the Rights of Others Working Group (2006-2007): https://gnso.icann.org/en/group-activities/inactive/2007/pro - Final IRT Report (2009): https://archive.icann.org/en/topics/new-gtlds/irt-final-report-tradema rk-protection-29may09-en.pdf - STI Final Report (2009): https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf - Trademark Clearinghouse (2010): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- clean-28may10-en.pdf - URS (2010): https://archive.icann.org/en/topics/new-gtlds/draft-urs-clean-28may10- en.pdf - Trademark Issues (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-protection-cla ims-use-15apr11-en.pdf - Trademark Clearinghouse (2011): https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse- implementation-30may11-en.pdf - Board Briefing Paper on Rights of Others (2011): https://archive.icann.org/en/topics/new-gtlds/gac-board-protection-rig hts-owners-21feb11-en.pdf
I think we are well past the point of discussing whether Sunrise is consistent with trademark law or whether it infringes free speech unless actual and substantial evidence can be shown to override all of the thousands of pages of materials that have come before. Hundreds of smart people have debated these issues before including many of the people in this very group. It is one of the reasons that precedent is so important. We should not be redoing the work of the past unless there is new and substantial evidence to do so.
This would be part of the essence behind Neuman Rule #2.
Thanks.
Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, April 7, 2017 3:32 AM To: Jon Nevett <jon@donuts.email> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hello all. I have been following these threads with growing concerns. It seems people are letting their anger show and I ask that the discussion be rebooted. Email is a horrible communication system - even when polite emails are often misconstrued.
Seems to me that the issues all seem to center around the following:
1. Sunrise as inconsistent with freedom of expression
2. Sunrise is unfair because it provides a priority right to TMCH registrants over all other potential registrants.
Regarding #1 there is no doubt that the sunrise system infringes on speech freedoms. The infringement is not avoided simply because The speaker has an alternative channel; part of the freedom incorporates the communicative aspects of being able to select the method of speech itself.
There are indeed many enroachments upon freedom of speech. Some are permissible. Some are not. Whether a particular impact is permissible or appropriate requires a balance of interest. That balance includes
the societal interests in restricting speech vs not.
The speaker's interests
Whether alternatives to the restrictions exist.
Seems to me here that alternatives do exist which alone may not preclude all possible trademark abuse but acting together may. These include the use of the pre-registration TMCH notice (which I am told is extremely effective), the UDRP, The URS, and of course litigation. There are also of course economic forces wherein the registration price is placed outside of the affordable range for an abuser. This issue is not limited to trademark rights. It arises anytime there is a priority granted.
I ask that we consider all of the above.
2. The priority right. In addition to the speech related issue above there is the issue of priority based upon trademark rights.
To determine if this is being abused or if the benefits granted are not otherwise justified we need data. L
On Apr 6, 2017, at 12:47 PM, Jon Nevett <jon@donuts.email> wrote:
Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
I ask that Jon kindly provide the data. I have not seen any data that would permit such a conclusion. This would require data as to:
- the actual mark's in the TMCH, - the number of sunrise registrations undertaken based on a TMCH registration, - the number of post-sunrise, pre-registration notices sent to registrants, and - the number of registrations subsequently undertaken notwithstanding the notice (from which we can determine the number of domain registrations abandoned post notice.
If we do this honestly then "camps" don't matter and insults and offensive language can be avoided. We are tasked with making recommendations that will benefit the entire space and we should strive to avoid words and decisions that separate us from that goal.
Paul Keating.
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I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? /Not a question to be debated now, /but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of "and" we would need a good reason and I haven't seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don't think we could get buy-in from the consumer protection community to go along with "or" in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <mailto:migraham@expedia.com> <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com <mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <mailto:jsevans@adobe.com> <jsevans@adobe.com> wrote: Let's all pause here. It seems that George and those in his "camp" believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or "unfair") because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn't that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Some excellent comments on this thread. It's not clear to me whether it's the Board's policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that's probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute "or" for "and" may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here's how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: * A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. * The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. * If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of "and" we would need a good reason and I haven't seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don't think we could get buy-in from the consumer protection community to go along with "or" in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let's all pause here. It seems that George and those in his "camp" believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or "unfair") because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn't that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
I was excited to see the title to this thread, but disappointed when I saw the subject matter. I thought we were going to discuss changing "and" to "or" in the UDRP. But then I remembered that the UDRP isn't being discussed until Phase II of this WG, so I guess we will just have to hold that thought until then. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Sun, Apr 9, 2017 at 11:50 AM, Phil Corwin <psc@vlaw-dc.com> wrote:
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? *Not a question to be debated now, *but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 <(425)%20679-4330> | F +1 425.679.7251 <(425)%20679-7251>
M +1 425.241.1459 <(425)%20241-1459>
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269 <(416)%20588-0269>
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Yes, that exciting dialogue will need to wait until next year. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 09, 2017 12:55 PM To: Phil Corwin Cc: Paul McGrady; Kathy Kleiman; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [Renamed] Or or And I was excited to see the title to this thread, but disappointed when I saw the subject matter. I thought we were going to discuss changing "and" to "or" in the UDRP. But then I remembered that the UDRP isn't being discussed until Phase II of this WG, so I guess we will just have to hold that thought until then. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sun, Apr 9, 2017 at 11:50 AM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: Some excellent comments on this thread. It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: • A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. • The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. • If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote: From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330<tel:(425)%20679-4330> | F +1 425.679.7251<tel:(425)%20679-7251> M +1 425.241.1459<tel:(425)%20241-1459> Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269<tel:(416)%20588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. 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Without taking a view on these topics: On the question of Claims and/or Sunrise, if this is discussed further, it may be worth considering possible competition aspects vis-à-vis present and future rounds/applicants. Also it may be worth recalling that in its GAC Indicative Scorecard on new gTLD Outstanding Issues<https://gacweb.icann.org/download/attachments/28278837/20110223_Scorecard%20...> the GAC stated that "Sunrise services and IP claims should both be mandatory for registry operators because they serve different functions with IP claims serving a useful notice function beyond the introductory phase." Brian From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Sunday, April 09, 2017 5:51 PM To: Paul McGrady; 'Kathy Kleiman'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Some excellent comments on this thread. It's not clear to me whether it's the Board's policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that's probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute "or" for "and" may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here's how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: · A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. · The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. · If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of "and" we would need a good reason and I haven't seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don't think we could get buy-in from the consumer protection community to go along with "or" in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let's all pause here. It seems that George and those in his "camp" believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or "unfair") because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn't that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
It’s probably worth looking at both processes to see the kind of entities that are using them. If speculators have found a way to game either of the processes, then as this is their primary business they are likely to ‘beat’ any genuine TM holders with real goods and services to protect, since the speculators are far more likely have a greater understanding of what is needed to secure any first come first served rights. On Mon, Apr 10, 2017 at 10:57 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Without taking a view on these topics:
On the question of Claims and/or Sunrise, if this is discussed further, it may be worth considering possible competition aspects vis-à-vis present and future rounds/applicants.
Also it may be worth recalling that in its GAC Indicative Scorecard on new gTLD Outstanding Issues <https://gacweb.icann.org/download/attachments/28278837/20110223_Scorecard%20...> the GAC stated that “Sunrise services and IP claims should both be mandatory for registry operators because they serve different functions with IP claims serving a useful notice function beyond the introductory phase.”
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Phil Corwin *Sent:* Sunday, April 09, 2017 5:51 PM *To:* Paul McGrady; 'Kathy Kleiman'; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? *Not a question to be debated now, *but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 <(425)%20679-4330> | F +1 425.679.7251 <(425)%20679-7251>
M +1 425.241.1459 <(425)%20241-1459>
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269 <(416)%20588-0269>
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Yes. In fact, it was the GAC that insisted on both the Sunrise and TM Ckaims. Sent from my iPhone On Apr 10, 2017, at 2:58 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Without taking a view on these topics: On the question of Claims and/or Sunrise, if this is discussed further, it may be worth considering possible competition aspects vis-à-vis present and future rounds/applicants. Also it may be worth recalling that in its GAC Indicative Scorecard on new gTLD Outstanding Issues<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgacweb.ican...> the GAC stated that “Sunrise services and IP claims should both be mandatory for registry operators because they serve different functions with IP claims serving a useful notice function beyond the introductory phase.” Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Sunday, April 09, 2017 5:51 PM To: Paul McGrady; 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Some excellent comments on this thread. It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: · A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. · The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. · If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote: From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.icann.org%2Fresources%2Fpages%2Fapproved-with-specs-2013-09-17-en&data=02%7C01%7C%7Cda4d046784a9490e93f508d47ff816ce%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274150902451895&sdata=36EObM4nXPNDH03pvQ%2Bzqi0AqsqsyP4dmS2%2FIR8hMHE%3D&reserved=0> "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C%7Cda4d046784a9490e93f508d47ff816ce%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274150902451895&sdata=gk4UWumOTEw2SsSlJOMfte8EdL1tYX%2BMO0mXvZV9HZc%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7Cda4d046784a9490e93f508d47ff816ce%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274150902451895&sdata=%2F3NK3ZQ31wxyEJfFb6iPqZOF%2Fru9onoLRzT3kDL2tl8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7Cda4d046784a9490e93f508d47ff816ce%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274150902451895&sdata=%2F3NK3ZQ31wxyEJfFb6iPqZOF%2Fru9onoLRzT3kDL2tl8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7Cda4d046784a9490e93f508d47ff816ce%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636274150902451895&sdata=%2F3NK3ZQ31wxyEJfFb6iPqZOF%2Fru9onoLRzT3kDL2tl8%3D&reserved=0> ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Good point, J Scott. This was not some mysterious transmogrification, it was the Board responding to GAC Advice (and there could be other reasons, as well). I think we would need some very strong reasons to even consider reversing course on GAC advice, the AGB as adopted, and the actual practice of the first round, including reasons other than "that's what the STI recommended 8 years ago" (which is of limited value, anyway, since STI's task was limited to the TMCH (and the URS), and did not include revisiting the TMCH-related RPMs). Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Mon, Apr 10, 2017 at 9:52 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
Yes. In fact, it was the GAC that insisted on both the Sunrise and TM Ckaims.
Sent from my iPhone
On Apr 10, 2017, at 2:58 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Without taking a view on these topics:
On the question of Claims and/or Sunrise, if this is discussed further, it may be worth considering possible competition aspects vis-à-vis present and future rounds/applicants.
Also it may be worth recalling that in its GAC Indicative Scorecard on new gTLD Outstanding Issues <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgacweb.ican...> the GAC stated that “Sunrise services and IP claims should both be mandatory for registry operators because they serve different functions with IP claims serving a useful notice function beyond the introductory phase.”
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Phil Corwin *Sent:* Sunday, April 09, 2017 5:51 PM *To:* Paul McGrady; 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? *Not a question to be debated now, *but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 <(425)%20679-4330> | F +1 425.679.7251 <(425)%20679-7251>
M +1 425.241.1459 <(425)%20241-1459>
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.icann.o...>
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269 <(416)%20588-0269>
http://www.leap.com/ <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com...>
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For Working Group members who are not familiar with the historical development referred to in this thread, you may find this Explanatory Memorandum (issued in April 2011 along with Version 6 of the Applicant Guidebook) helpful in noting the Board-GAC consultations on the subject: https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-us.... Cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Monday, April 10, 2017 at 12:48 To: "J. Scott Evans" <jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Good point, J Scott. This was not some mysterious transmogrification, it was the Board responding to GAC Advice (and there could be other reasons, as well). I think we would need some very strong reasons to even consider reversing course on GAC advice, the AGB as adopted, and the actual practice of the first round, including reasons other than "that's what the STI recommended 8 years ago" (which is of limited value, anyway, since STI's task was limited to the TMCH (and the URS), and did not include revisiting the TMCH-related RPMs). Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, Apr 10, 2017 at 9:52 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Yes. In fact, it was the GAC that insisted on both the Sunrise and TM Ckaims. Sent from my iPhone On Apr 10, 2017, at 2:58 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Without taking a view on these topics: On the question of Claims and/or Sunrise, if this is discussed further, it may be worth considering possible competition aspects vis-à-vis present and future rounds/applicants. Also it may be worth recalling that in its GAC Indicative Scorecard on new gTLD Outstanding Issues[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> the GAC stated that “Sunrise services and IP claims should both be mandatory for registry operators because they serve different functions with IP claims serving a useful notice function beyond the introductory phase.” Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Sunday, April 09, 2017 5:51 PM To: Paul McGrady; 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Some excellent comments on this thread. It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: • A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. • The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. • If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote: From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330<tel:(425)%20679-4330> | F +1 425.679.7251<tel:(425)%20679-7251> M +1 425.241.1459<tel:(425)%20241-1459> Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.icann.org-252Fresources-252Fpages-252Fapproved-2Dwith-2Dspecs-2D2013-2D09-2D17-2Den-26data-3D02-257C01-257C-257Cda4d046784a9490e93f508d47ff816ce-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636274150902451895-26sdata-3D36EObM4nXPNDH03pvQ-252Bzqi0AqsqsyP4dmS2-252FIR8hMHE-253D-26reserved-3D0&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=cauuhUXzK2ASMc0nDfn9VGc_7d1Ok3YjHvtsPj6wGbk&s=d5JWpLE5NGzQTJZ6daX0eer3KEbWoGrj2iHEUjETDN0&e=> "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269<tel:(416)%20588-0269> http://www.leap.com/[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttp-253A-252F-252Fwww.leap.com-252F-26data-3D02-257C01-257C-257Cda4d046784a9490e93f508d47ff816ce-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636274150902451895-26sdata-3Dgk4UWumOTEw2SsSlJOMfte8EdL1tYX-252BMO0mXvZV9HZc-253D-26reserved-3D0&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=cauuhUXzK2ASMc0nDfn9VGc_7d1Ok3YjHvtsPj6wGbk&s=-BvuzH7EeZp7NhWSP-tHgcAsw7VelalapHE4XFd4baY&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257Cda4d046784a9490e93f508d47ff816ce-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636274150902451895-26sdata-3D-252F3NK3ZQ31wxyEJfFb6iPqZOF-252Fru9onoLRzT3kDL2tl8-253D-26reserved-3D0&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=cauuhUXzK2ASMc0nDfn9VGc_7d1Ok3YjHvtsPj6wGbk&s=FvP3gSirvYF8VXjyEo8unh52Uz56Je6LzCDPd8mgvzY&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257Cda4d046784a9490e93f508d47ff816ce-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636274150902451895-26sdata-3D-252F3NK3ZQ31wxyEJfFb6iPqZOF-252Fru9onoLRzT3kDL2tl8-253D-26reserved-3D0&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=cauuhUXzK2ASMc0nDfn9VGc_7d1Ok3YjHvtsPj6wGbk&s=FvP3gSirvYF8VXjyEo8unh52Uz56Je6LzCDPd8mgvzY&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257Cda4d046784a9490e93f508d47ff816ce-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636274150902451895-26sdata-3D-252F3NK3ZQ31wxyEJfFb6iPqZOF-252Fru9onoLRzT3kDL2tl8-253D-26reserved-3D0&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=cauuhUXzK2ASMc0nDfn9VGc_7d1Ok3YjHvtsPj6wGbk&s=FvP3gSirvYF8VXjyEo8unh52Uz56Je6LzCDPd8mgvzY&e=> ________________________________ No virus found in this message. 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All, Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below). Best, Kathy --------------------------------------------------------------------------- *I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions * A. Rationale for the proposal – Whereas: 1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered MarksThe TC Database should be required to include nationally or multinationally registered “text mark” trademarks, fromall jurisdictions, (including countries where there is no substantive review).”https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf 2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included inthe TC are text marks because “design marks” provide protection for letters and words only within the contextof their design or logo and the STI was under a mandate not to expand existing trademark rights.) 3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registeredword marks from all jurisdictions” See our WG document “Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx” *4. Nonetheless, **Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, **and even disclaimers on the underlying words of the trademark**, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. * /B. Harm from the Current Form/ The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark – and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” [TC is Trademark Clearinghouse] In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work: ** USPTO - https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requ... “Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections. “Typically, portions of a mark that are not registrable and require a disclaimer are the following: * *Merely Descriptive*Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services). * *Laudatory Words*that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services) * *Generic*Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys). * *Geographic*Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada). * *Business Type Designations*: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros." * *Informational *Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.” * * * “Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.” 100. /*Recommendation*/ /**/ 1. In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as “word marks” per se into the TMCH database – not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features. 2. Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year – to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis. 3. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation. On 4/9/2017 11:50 AM, Phil Corwin wrote:
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
·A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
·The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
·If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597/Direct*
*202-559-8750/Fax*
*202-255-6172/Cell***
**
*Twitter: @VlawDC*
*/"Luck is the residue of design" -- Branch Rickey/*
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? /Not a question to be debated now, /but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA)<migraham@expedia.com> <mailto:migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com <mailto:MiGraham@Expedia.com>
-----Original Message-----
From:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To:gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans<jsevans@adobe.com> <mailto:jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269
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Kathy, Apologies if this is a stupid question, but would you be able to help me better understand how your below proposal is meant to relate to the current charter question 7 (which currently reads: "How are design marks currently handled by the TMCH provider?"). I will confess that at times it has not been clear to me whether these charter questions were meant to be answered by the WG along the way, or whether they were supposed to be refined by the WG for their inclusion in the Initial Issues Report, which would then be put out for public comment. I have understood that it is the latter, but the WG often seems to stray into the former. Thanks for clarifying! Brian From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Monday, April 10, 2017 4:28 PM To: Phil Corwin; gnso-rpm-wg@icann.org; J. Scott Evans Subject: [gnso-rpm-wg] Recommendation for TMCH Charter Question #7 All, Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below). Best, Kathy --------------------------------------------------------------------------- I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions A. Rationale for the proposal - Whereas: 1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse: "4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions, (including countries where there is no substantive review)." https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf 2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database: "[Also 4.1] (The trademarks to be included in the TC are text marks because "design marks" provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) 3. The Applicant Guidebook adopted the same strictures, namely: "3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions" See our WG document "Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx" 4. Nonetheless, Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, and even disclaimers on the underlying words of the trademark, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. B. Harm from the Current Form The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark - and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: "(The trademarks to be included in the TC are text marks because "design marks" provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)" [TC is Trademark Clearinghouse] In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work: ** USPTO - https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requ... "Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections. "Typically, portions of a mark that are not registrable and require a disclaimer are the following: * Merely Descriptive Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services). * Laudatory Words that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services) * Generic Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys). * Geographic Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada). * Business Type Designations: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros." * Informational Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established." * * * "Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed." C. Recommendation 1. In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as "word marks" per se into the TMCH database - not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features. 2. Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year - to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis. 1. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation. On 4/9/2017 11:50 AM, Phil Corwin wrote: Some excellent comments on this thread. It's not clear to me whether it's the Board's policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that's probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute "or" for "and" may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here's how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: * A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. * The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. * If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of "and" we would need a good reason and I haven't seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don't think we could get buy-in from the consumer protection community to go along with "or" in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let's all pause here. It seems that George and those in his "camp" believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or "unfair") because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn't that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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I guess this is not actually intended to be an "answer" to Question 7, but rather is supposed to be a proposal for a change to the current implementation of the TMCH with regard to "design marks." The first problem I see here is a that the term "design mark" is being used to refer to a number of types of marks that are not in fact "design marks." The USPTO uses the term "design mark" to refer to a mark consisting of a design element, or a combination of stylized wording and a design. A mark consisting of text in a particular font is not considered a design mark. Rather, it is a stylized mark. However, the proposal refers to "special lettering" and lumps that in with design marks. That seems clearly incorrect. As a type of mark containing only text it would seem to make more sense to classify these as "text marks". The attempt to exclude any mark where the registration includes "logos [which can refer to stylized text marks], special lettering, colors [!] and/or other design, pattern and lettering aspects and features" is clearly overbroad and goes way beyond what is commonly understood to be a "design mark." The reference to "figurative marks" is also ambiguous at best. This is an EU term and as I understand it, a "figurative mark" contains no text elements at all. I don't there's any danger that such figurative marks are being registered in the TMCH. Another classification is a "figurative mark with text" which covers anything from a word in a particular font (which in US classification would not be a design mark) to a combination of words and design elements (which in US classification would be a "design mark"). Perhaps this was what was meant, but if it is, it is clearly overbroad as well. There is no clear definition of what a "text mark" is. Notably, the STI does not talk about "text only" marks or about "standard form" marks (marks consist of only text without any indication of font, color, etc.), but rather to text marks. A "figurative mark with text" could easily be classified as a "text mark." (Perhaps the litmus test should be whether the law provides that a mark provides protection only within the context of the design or logo. If the protection is that narrow, it would be considered a design mark. If protection is broader than that, it is a text mark. I have no idea what a "transformative mark" is (and brief Internet research is unhelpful) so I can't comment on the registrability of such marks. However, if this is not a commonly understood term, it should not be used. If we look back to the STI paper (which may not be the last or only word on the subject), we see that their concern was with "design marks" that "provide protection for letters and words only within the context of their design or logo." Off the top of my head I am fairly certain that stylized marks (e.g., words in particular fonts and/or colors or stylized text) provide protection beyond the context of their design or logo (e.g., such a registration can be used as the basis for a claim of infringement against a mark that only infringes the textual elements of the registration). As such, stylized marks would not raise the concern expressed by the STI and should not be excluded from the TMCH. (This should of course be subjected to some actual research and analysis, rather than relying solely on my say-so. In addition, I'm only referring to US law; law in other jurisdictions would need to be reviewed as well.) It would be best for us to focus on this litmus test of "design marks that provide protection for letters and words only within the context of their design or logo." The question of which marks provide protection this narrow is a legal question that I can't answer off the top of my head (and even if I tried, it would not be the last word on the subject). This requires further research and analysis. Such marks should be excluded, since they are not protectable at all without the context of the design or logo. But marks that fail this litmus test should not be excluded. I think the disclaimer issue -- design marks with letters or words all of which have been disclaimed -- is an easier case. This appears to clearly qualify as a "design mark that provides protection for words only within the context of their design or logo." I would suggest that the only change to current practice should be prohibiting the registration in the TMCH of words in a design mark where all the words have been disclaimed. If there are other categories that clearly pass the litmus test of "design marks that provide protection for letters and words *only within the context of their design or logo*" then we can consider prohibiting those as well. But this needs to be done carefully, and with reference to actual legal standards and commonly used legal terminology. Greg *Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com On Mon, Apr 10, 2017 at 1:34 PM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
Apologies if this is a stupid question, but would you be able to help me better understand how your below proposal is meant to relate to the current charter question 7 (which currently reads: “How are design marks currently handled by the TMCH provider?”).
I will confess that at times it has not been clear to me whether these charter questions were meant to be answered by the WG along the way, or whether they were supposed to be refined by the WG for their inclusion in the Initial Issues Report, which would then be put out for public comment. I have understood that it is the latter, but the WG often seems to stray into the former.
Thanks for clarifying!
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] *On Behalf Of *Kathy Kleiman *Sent:* Monday, April 10, 2017 4:28 PM *To:* Phil Corwin; gnso-rpm-wg@icann.org; J. Scott Evans *Subject:* [gnso-rpm-wg] Recommendation for TMCH Charter Question #7
All,
Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below).
Best, Kathy
------------------------------------------------------------ ---------------
*I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions*
A. Rationale for the proposal – Whereas:
1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issu es/sti/sti-wt-recommendations-11dec09-en.pdf
2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions” See our WG document “Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx”
*4. Nonetheless, Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, and even disclaimers on the underlying words of the trademark, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. *
*B. Harm from the Current Form*
The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark – and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” [TC is Trademark Clearinghouse]
In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work:
**
USPTO - https://www.uspto.gov/trademark/laws-regulations/how- satisfy-disclaimer-requirement
“Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections.
“Typically, portions of a mark that are not registrable and require a disclaimer are the following:
· *Merely Descriptive* Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services).
· *Laudatory Words* that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services)
· *Generic* Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys).
· *Geographic* Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada).
· *Business Type Designations*: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros."
· *Informational *Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.”
* * *
“Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.”
C. *Recommendation*
1. In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as “word marks” per se into the TMCH database – not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features.
2. Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year – to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis.
1. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation.
On 4/9/2017 11:50 AM, Phil Corwin wrote:
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? *Not a question to be debated now, *but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 <(425)%20679-4330> | F +1 425.679.7251 <(425)%20679-7251>
M +1 425.241.1459 <(425)%20241-1459>
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> <jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269 <(416)%20588-0269>
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Thanks Greg, Merely for some additional context to inform the present discussion, in the course of our Specification 13 (“.brand”) negotiations with ICANN, the definition settled on (https://newgtlds.icann.org/en/applicants/agb/base-agreement-spec-13-faqs-15j...) was (my emphasis): “Specification 13 defines a .Brand TLD as: 1. the TLD string is identical to the textual elements protectable under applicable law, of a registered trademark” This seems to lend support to your assessment regarding focusing in on "design marks that provide protection for letters and words only within the context of their design or logo" (i.e., the textual elements are entirely disclaimed apart from the mark as a whole). Regards, Brian From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Wednesday, April 12, 2017 7:53 AM To: Beckham, Brian Cc: Kathy Kleiman; Phil Corwin; gnso-rpm-wg@icann.org; J. Scott Evans Subject: Re: [gnso-rpm-wg] Recommendation for TMCH Charter Question #7 I guess this is not actually intended to be an "answer" to Question 7, but rather is supposed to be a proposal for a change to the current implementation of the TMCH with regard to "design marks." The first problem I see here is a that the term "design mark" is being used to refer to a number of types of marks that are not in fact "design marks." The USPTO uses the term "design mark" to refer to a mark consisting of a design element, or a combination of stylized wording and a design. A mark consisting of text in a particular font is not considered a design mark. Rather, it is a stylized mark. However, the proposal refers to "special lettering" and lumps that in with design marks. That seems clearly incorrect. As a type of mark containing only text it would seem to make more sense to classify these as "text marks". The attempt to exclude any mark where the registration includes "logos [which can refer to stylized text marks], special lettering, colors [!] and/or other design, pattern and lettering aspects and features" is clearly overbroad and goes way beyond what is commonly understood to be a "design mark." The reference to "figurative marks" is also ambiguous at best. This is an EU term and as I understand it, a "figurative mark" contains no text elements at all. I don't there's any danger that such figurative marks are being registered in the TMCH. Another classification is a "figurative mark with text" which covers anything from a word in a particular font (which in US classification would not be a design mark) to a combination of words and design elements (which in US classification would be a "design mark"). Perhaps this was what was meant, but if it is, it is clearly overbroad as well. There is no clear definition of what a "text mark" is. Notably, the STI does not talk about "text only" marks or about "standard form" marks (marks consist of only text without any indication of font, color, etc.), but rather to text marks. A "figurative mark with text" could easily be classified as a "text mark." (Perhaps the litmus test should be whether the law provides that a mark provides protection only within the context of the design or logo. If the protection is that narrow, it would be considered a design mark. If protection is broader than that, it is a text mark. I have no idea what a "transformative mark" is (and brief Internet research is unhelpful) so I can't comment on the registrability of such marks. However, if this is not a commonly understood term, it should not be used. If we look back to the STI paper (which may not be the last or only word on the subject), we see that their concern was with "design marks" that "provide protection for letters and words only within the context of their design or logo." Off the top of my head I am fairly certain that stylized marks (e.g., words in particular fonts and/or colors or stylized text) provide protection beyond the context of their design or logo (e.g., such a registration can be used as the basis for a claim of infringement against a mark that only infringes the textual elements of the registration). As such, stylized marks would not raise the concern expressed by the STI and should not be excluded from the TMCH. (This should of course be subjected to some actual research and analysis, rather than relying solely on my say-so. In addition, I'm only referring to US law; law in other jurisdictions would need to be reviewed as well.) It would be best for us to focus on this litmus test of "design marks that provide protection for letters and words only within the context of their design or logo." The question of which marks provide protection this narrow is a legal question that I can't answer off the top of my head (and even if I tried, it would not be the last word on the subject). This requires further research and analysis. Such marks should be excluded, since they are not protectable at all without the context of the design or logo. But marks that fail this litmus test should not be excluded. I think the disclaimer issue -- design marks with letters or words all of which have been disclaimed -- is an easier case. This appears to clearly qualify as a "design mark that provides protection for words only within the context of their design or logo." I would suggest that the only change to current practice should be prohibiting the registration in the TMCH of words in a design mark where all the words have been disclaimed. If there are other categories that clearly pass the litmus test of "design marks that provide protection for letters and words only within the context of their design or logo" then we can consider prohibiting those as well. But this needs to be done carefully, and with reference to actual legal standards and commonly used legal terminology. Greg Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, Apr 10, 2017 at 1:34 PM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, Apologies if this is a stupid question, but would you be able to help me better understand how your below proposal is meant to relate to the current charter question 7 (which currently reads: “How are design marks currently handled by the TMCH provider?”). I will confess that at times it has not been clear to me whether these charter questions were meant to be answered by the WG along the way, or whether they were supposed to be refined by the WG for their inclusion in the Initial Issues Report, which would then be put out for public comment. I have understood that it is the latter, but the WG often seems to stray into the former. Thanks for clarifying! Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Kathy Kleiman Sent: Monday, April 10, 2017 4:28 PM To: Phil Corwin; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; J. Scott Evans Subject: [gnso-rpm-wg] Recommendation for TMCH Charter Question #7 All, Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below). Best, Kathy --------------------------------------------------------------------------- I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions A. Rationale for the proposal – Whereas: 1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf 2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) 3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” See our WG document “Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx” 4. Nonetheless, Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, and even disclaimers on the underlying words of the trademark, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. B. Harm from the Current Form The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark – and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” [TC is Trademark Clearinghouse] In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work: ** USPTO - https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requ... “Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections. “Typically, portions of a mark that are not registrable and require a disclaimer are the following: • Merely Descriptive Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services). • Laudatory Words that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services) • Generic Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys). • Geographic Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada). • Business Type Designations: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros." • Informational Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.” * * * “Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.” C. Recommendation 1. In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as “word marks” per se into the TMCH database – not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features. 2. Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year – to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis. 1. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation. On 4/9/2017 11:50 AM, Phil Corwin wrote: Some excellent comments on this thread. It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: • A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. • The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. • If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote: From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330<tel:(425)%20679-4330> | F +1 425.679.7251<tel:(425)%20679-7251> M +1 425.241.1459<tel:(425)%20241-1459> Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269<tel:(416)%20588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Hello, On Wed, Apr 12, 2017 at 1:52 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
A mark consisting of text in a particular font is not considered a design mark. Rather, it is a stylized mark. However, the proposal refers to "special lettering" and lumps that in with design marks. That seems clearly incorrect. As a type of mark containing only text it would seem to make more sense to classify these as "text marks".
Are you suggesting that stylized marks (i.e. text in a particular font, where the trademark protection is *only* in conjunction with that font) should gain protection granted equal "standard character" word marks??? https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa... Obviously that would be an unacceptable expansion of TM rights, far beyond anything contemplated in law. Standard Character Marks (aka word marks) have the broadest protection, since they're not bound to any particular font or presentation. Stylized marks acceptance in the TMCH would only lead to more gaming. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Agree with Greg’s proposal: TMCH rules should prohibit the registration in the TMCH of words in a design mark where all the words have been disclaimed. Michael R. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Tuesday, April 11, 2017 10:53 PM To: Beckham, Brian <brian.beckham@wipo.int> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for TMCH Charter Question #7 I guess this is not actually intended to be an "answer" to Question 7, but rather is supposed to be a proposal for a change to the current implementation of the TMCH with regard to "design marks." The first problem I see here is a that the term "design mark" is being used to refer to a number of types of marks that are not in fact "design marks." The USPTO uses the term "design mark" to refer to a mark consisting of a design element, or a combination of stylized wording and a design. A mark consisting of text in a particular font is not considered a design mark. Rather, it is a stylized mark. However, the proposal refers to "special lettering" and lumps that in with design marks. That seems clearly incorrect. As a type of mark containing only text it would seem to make more sense to classify these as "text marks". The attempt to exclude any mark where the registration includes "logos [which can refer to stylized text marks], special lettering, colors [!] and/or other design, pattern and lettering aspects and features" is clearly overbroad and goes way beyond what is commonly understood to be a "design mark." The reference to "figurative marks" is also ambiguous at best. This is an EU term and as I understand it, a "figurative mark" contains no text elements at all. I don't there's any danger that such figurative marks are being registered in the TMCH. Another classification is a "figurative mark with text" which covers anything from a word in a particular font (which in US classification would not be a design mark) to a combination of words and design elements (which in US classification would be a "design mark"). Perhaps this was what was meant, but if it is, it is clearly overbroad as well. There is no clear definition of what a "text mark" is. Notably, the STI does not talk about "text only" marks or about "standard form" marks (marks consist of only text without any indication of font, color, etc.), but rather to text marks. A "figurative mark with text" could easily be classified as a "text mark." (Perhaps the litmus test should be whether the law provides that a mark provides protection only within the context of the design or logo. If the protection is that narrow, it would be considered a design mark. If protection is broader than that, it is a text mark. I have no idea what a "transformative mark" is (and brief Internet research is unhelpful) so I can't comment on the registrability of such marks. However, if this is not a commonly understood term, it should not be used. If we look back to the STI paper (which may not be the last or only word on the subject), we see that their concern was with "design marks" that "provide protection for letters and words only within the context of their design or logo." Off the top of my head I am fairly certain that stylized marks (e.g., words in particular fonts and/or colors or stylized text) provide protection beyond the context of their design or logo (e.g., such a registration can be used as the basis for a claim of infringement against a mark that only infringes the textual elements of the registration). As such, stylized marks would not raise the concern expressed by the STI and should not be excluded from the TMCH. (This should of course be subjected to some actual research and analysis, rather than relying solely on my say-so. In addition, I'm only referring to US law; law in other jurisdictions would need to be reviewed as well.) It would be best for us to focus on this litmus test of "design marks that provide protection for letters and words only within the context of their design or logo." The question of which marks provide protection this narrow is a legal question that I can't answer off the top of my head (and even if I tried, it would not be the last word on the subject). This requires further research and analysis. Such marks should be excluded, since they are not protectable at all without the context of the design or logo. But marks that fail this litmus test should not be excluded. I think the disclaimer issue -- design marks with letters or words all of which have been disclaimed -- is an easier case. This appears to clearly qualify as a "design mark that provides protection for words only within the context of their design or logo." I would suggest that the only change to current practice should be prohibiting the registration in the TMCH of words in a design mark where all the words have been disclaimed. If there are other categories that clearly pass the litmus test of "design marks that provide protection for letters and words only within the context of their design or logo" then we can consider prohibiting those as well. But this needs to be done carefully, and with reference to actual legal standards and commonly used legal terminology. Greg Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, Apr 10, 2017 at 1:34 PM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, Apologies if this is a stupid question, but would you be able to help me better understand how your below proposal is meant to relate to the current charter question 7 (which currently reads: “How are design marks currently handled by the TMCH provider?”). I will confess that at times it has not been clear to me whether these charter questions were meant to be answered by the WG along the way, or whether they were supposed to be refined by the WG for their inclusion in the Initial Issues Report, which would then be put out for public comment. I have understood that it is the latter, but the WG often seems to stray into the former. Thanks for clarifying! Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Kathy Kleiman Sent: Monday, April 10, 2017 4:28 PM To: Phil Corwin; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; J. Scott Evans Subject: [gnso-rpm-wg] Recommendation for TMCH Charter Question #7 All, Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below). Best, Kathy --------------------------------------------------------------------------- I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions A. Rationale for the proposal – Whereas: 1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf 2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) 3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” See our WG document “Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx” 4. Nonetheless, Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, and even disclaimers on the underlying words of the trademark, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. B. Harm from the Current Form The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark – and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” [TC is Trademark Clearinghouse] In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work: ** USPTO - https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requ... “Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections. “Typically, portions of a mark that are not registrable and require a disclaimer are the following: • Merely Descriptive Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services). • Laudatory Words that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services) • Generic Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys). • Geographic Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada). • Business Type Designations: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros." • Informational Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.” * * * “Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.” C. Recommendation 1. In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as “word marks” per se into the TMCH database – not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features. 2. Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year – to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis. 1. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation. On 4/9/2017 11:50 AM, Phil Corwin wrote: Some excellent comments on this thread. It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation. If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds. Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated. Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter: • A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption. • The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits. • If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected. I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking. Hope that is helpful. Best regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Sunday, April 09, 2017 10:57 AM To: 'Kathy Kleiman'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [Renamed] Or or And Thanks Kathy. I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [Renamed] Or or And I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below). Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead. (Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...) Best, Kathy On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com><mailto:migraham@expedia.com> wrote: From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants. As to points 1 and 2: 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system. In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should. Michael R. Graham MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330<tel:(425)%20679-4330> | F +1 425.679.7251<tel:(425)%20679-7251> M +1 425.241.1459<tel:(425)%20241-1459> Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Hi folks, On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com> wrote: Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern). We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because: (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party." unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too? and, (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name. Sincerely, George Kirikos 416-588-0269<tel:(416)%20588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
All, Yesterday, we have a fascinating discussion/not discussion of the Recommendation below. In all events, it raised interesting questions and ideas. Accordingly, this *Recommendation for TMCH Charter Question #7 is hereby _withdrawn_ from the Working Group//*for review and editing. Please join me in submitting timely Recommendations and proposals, per the outline of the Co-Chairs, on our TMCH Charter Questions. Best, Kathy On 4/10/2017 10:28 AM, Kathy Kleiman wrote:
All,
Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below).
Best, Kathy
---------------------------------------------------------------------------
*I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions *
A. Rationale for the proposal – Whereas:
1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered MarksThe TC Database should be required to include nationally or multinationally registered “text mark” trademarks, fromall jurisdictions, (including countries where there is no substantive review).”https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included inthe TC are text marks because “design marks” provide protection for letters and words only within the contextof their design or logo and the STI was under a mandate not to expand existing trademark rights.)
3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registeredword marks from all jurisdictions” See our WG document “Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx”
*4. Nonetheless, **Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, **and even disclaimers on the underlying words of the trademark**, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. *
/B. Harm from the Current Form/
The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark – and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” [TC is Trademark Clearinghouse]
In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work:
**
USPTO - https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requ...
“Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections.
“Typically, portions of a mark that are not registrable and require a disclaimer are the following:
*
*Merely Descriptive*Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services).
*
*Laudatory Words*that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services)
*
*Generic*Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys).
*
*Geographic*Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada).
*
*Business Type Designations*: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros."
*
*Informational *Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.”
* * *
“Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.”
100.
/*Recommendation*/
/**/
1.
In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as “word marks” per se into the TMCH database – not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features.
2.
Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year – to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis.
3. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation.
On 4/9/2017 11:50 AM, Phil Corwin wrote:
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
·A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
·The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
·If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597/Direct*
*202-559-8750/Fax*
*202-255-6172/Cell***
**
*Twitter: @VlawDC*
*/"Luck is the residue of design" -- Branch Rickey/*
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? /Not a question to be debated now, /but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA)<migraham@expedia.com> <mailto:migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com <mailto:MiGraham@Expedia.com>
-----Original Message-----
From:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To:gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans<jsevans@adobe.com> <mailto:jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
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gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Paul, With all respect, I don't agree that we should limit our recommendations simply because we think they will fail. That merely breeds mediocrity. I have not heard a good reason mainly because we have been denied the information necessary to make the inquiry Sent from my iPad
On 9 Apr 2017, at 16:58, Paul McGrady <policy@paulmcgrady.com> wrote:
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Sunday, April 09, 2017 9:21 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? Not a question to be debated now, but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote: Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM SENIOR CORPORATE COUNSEL GLOBAL DIRECTOR, INTELLECTUAL PROPERTY Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, April 06, 2017 11:21 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans@adobe.com> wrote: Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
As someone whose main practice area is on freedom of expression, I also have to take issue with this statement. It's facile to suggest that no free expression issue exists just because people are left with other avenues to express themselves. In China, people have many ways to express themselves - just so long as they don't criticize the government. You can say whatever you want about your taste in music, art, fashion etc. The fact that wide areas of expression are left available doesn't negate concerns. Obviously, that's an extreme example - but I only mean to illustrate that this is, by any calculus, a limit on expression. All trademarks are a limitation on speech. That's not to argue that they're not a *justifiable* limit on freedom of expression - but just that consideration of the impact on speech must be part of the equation, and can't be dismissed based on the fact that other areas remain untouched. And it also, I think, leads us back to the transparency question, since one of the cardinal principles in limiting speech is that rules must be clear - to ensure that other speakers know where the lines are, and what they are or are not allowed to do and say. This is a major reason why I, and others, argue for the need for transparency here - in order to ensure clarity over which areas are available, and which have been reserved. Restrictions on speech can be justified. Secret restrictions on speech never can. On Thu, Apr 6, 2017 at 5:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Thanks for this Mary,
It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”.
While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons.
Merely to recall two obvious examples raised in Copenhagen:
(i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and
(ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)).
Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted.
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
Best regards,
Brian
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int | www.wipo.int
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS:
1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers
Mary
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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Michael: Your China example is unfitting. Sunrise does not limit the content of any speech (as in your example), merely the ability to use a specific domain. While this is of course a limitation, it is not one that prevents anyone from expressing a particular message. I agree we should not discard or ignore these limitations, but the analogy to repression of speech in China is way off the mark. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 8:45 AM To: Beckham, Brian Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
As someone whose main practice area is on freedom of expression, I also have to take issue with this statement. It's facile to suggest that no free expression issue exists just because people are left with other avenues to express themselves. In China, people have many ways to express themselves - just so long as they don't criticize the government. You can say whatever you want about your taste in music, art, fashion etc. The fact that wide areas of expression are left available doesn't negate concerns. Obviously, that's an extreme example - but I only mean to illustrate that this is, by any calculus, a limit on expression. All trademarks are a limitation on speech. That's not to argue that they're not a *justifiable* limit on freedom of expression - but just that consideration of the impact on speech must be part of the equation, and can't be dismissed based on the fact that other areas remain untouched. And it also, I think, leads us back to the transparency question, since one of the cardinal principles in limiting speech is that rules must be clear - to ensure that other speakers know where the lines are, and what they are or are not allowed to do and say. This is a major reason why I, and others, argue for the need for transparency here - in order to ensure clarity over which areas are available, and which have been reserved. Restrictions on speech can be justified. Secret restrictions on speech never can. On Thu, Apr 6, 2017 at 5:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Thanks for this Mary,
It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”.
While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons.
Merely to recall two obvious examples raised in Copenhagen:
(i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and
(ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)).
Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted.
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
Best regards,
Brian
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int | www.wipo.int
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS:
1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers
Mary
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ====================================================================== Reminder: Any email that requests your login credentials or that asks you to click on a link could be a phishing attack. If you have any questions regarding the authenticity of this email or its sender, please contact the IT Service Desk at 212.484.6000 or via email at ITServices@timewarner.com ================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================
+1 Sent from my iPhone
On Apr 6, 2017, at 6:11 AM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Michael: Your China example is unfitting. Sunrise does not limit the content of any speech (as in your example), merely the ability to use a specific domain. While this is of course a limitation, it is not one that prevents anyone from expressing a particular message. I agree we should not discard or ignore these limitations, but the analogy to repression of speech in China is way off the mark.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 8:45 AM To: Beckham, Brian Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
As someone whose main practice area is on freedom of expression, I also have to take issue with this statement. It's facile to suggest that no free expression issue exists just because people are left with other avenues to express themselves. In China, people have many ways to express themselves - just so long as they don't criticize the government. You can say whatever you want about your taste in music, art, fashion etc. The fact that wide areas of expression are left available doesn't negate concerns.
Obviously, that's an extreme example - but I only mean to illustrate that this is, by any calculus, a limit on expression. All trademarks are a limitation on speech. That's not to argue that they're not a *justifiable* limit on freedom of expression - but just that consideration of the impact on speech must be part of the equation, and can't be dismissed based on the fact that other areas remain untouched. And it also, I think, leads us back to the transparency question, since one of the cardinal principles in limiting speech is that rules must be clear - to ensure that other speakers know where the lines are, and what they are or are not allowed to do and say. This is a major reason why I, and others, argue for the need for transparency here - in order to ensure clarity over which areas are available, and which have been reserved. Restrictions on speech can be justified. Secret restrictions on speech never can.
On Thu, Apr 6, 2017 at 5:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Thanks for this Mary,
It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”.
While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons.
Merely to recall two obvious examples raised in Copenhagen:
(i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and
(ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)).
Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted.
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
Best regards,
Brian
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int | https://na01.safelinks.protection.outlook.com/?url=www.wipo.int&data=02%7C01...
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS:
1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers
Mary
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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================================================================= This message is the property of Time Warner Inc. and is intended only for the use of the addressee(s) and may be legally privileged and/or confidential. If the reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, printing, forwarding, or any method of copying of this information, and/or the taking of any action in reliance on the information herein is strictly prohibited except by the intended recipient or those to whom he or she intentionally distributes this message. If you have received this communication in error, please immediately notify the sender, and delete the original message and any copies from your computer or storage system. Thank you. =================================================================
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Sure - just to be clear - I never said that this system is somehow akin to Chinese censorship. Obviously I know that the latter is many orders of magnitude more restrictive, which is why I made sure to note, in my original comment, that I was giving an extreme example. I was only using that example to demonstrate that this is, indeed, a restriction on speech, and should be approached as such: with careful consideration of the necessity and proportionality of the measures, and with proper openness and transparency. On Thu, Apr 6, 2017 at 10:10 AM, Silver, Bradley <Bradley.Silver@timewarner.com> wrote:
Michael: Your China example is unfitting. Sunrise does not limit the content of any speech (as in your example), merely the ability to use a specific domain. While this is of course a limitation, it is not one that prevents anyone from expressing a particular message. I agree we should not discard or ignore these limitations, but the analogy to repression of speech in China is way off the mark.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 8:45 AM To: Beckham, Brian Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
As someone whose main practice area is on freedom of expression, I also have to take issue with this statement. It's facile to suggest that no free expression issue exists just because people are left with other avenues to express themselves. In China, people have many ways to express themselves - just so long as they don't criticize the government. You can say whatever you want about your taste in music, art, fashion etc. The fact that wide areas of expression are left available doesn't negate concerns.
Obviously, that's an extreme example - but I only mean to illustrate that this is, by any calculus, a limit on expression. All trademarks are a limitation on speech. That's not to argue that they're not a *justifiable* limit on freedom of expression - but just that consideration of the impact on speech must be part of the equation, and can't be dismissed based on the fact that other areas remain untouched. And it also, I think, leads us back to the transparency question, since one of the cardinal principles in limiting speech is that rules must be clear - to ensure that other speakers know where the lines are, and what they are or are not allowed to do and say. This is a major reason why I, and others, argue for the need for transparency here - in order to ensure clarity over which areas are available, and which have been reserved. Restrictions on speech can be justified. Secret restrictions on speech never can.
On Thu, Apr 6, 2017 at 5:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Thanks for this Mary,
It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”.
While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons.
Merely to recall two obvious examples raised in Copenhagen:
(i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and
(ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)).
Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted.
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
Best regards,
Brian
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int | www.wipo.int
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS:
1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers
Mary
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+1. Way off the mark and highly offensive. Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos.
On Apr 6, 2017, at 6:11 AM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Michael: Your China example is unfitting. Sunrise does not limit the content of any speech (as in your example), merely the ability to use a specific domain. While this is of course a limitation, it is not one that prevents anyone from expressing a particular message. I agree we should not discard or ignore these limitations, but the analogy to repression of speech in China is way off the mark.
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Michael Karanicolas Sent: Thursday, April 06, 2017 8:45 AM To: Beckham, Brian Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
As someone whose main practice area is on freedom of expression, I also have to take issue with this statement. It's facile to suggest that no free expression issue exists just because people are left with other avenues to express themselves. In China, people have many ways to express themselves - just so long as they don't criticize the government. You can say whatever you want about your taste in music, art, fashion etc. The fact that wide areas of expression are left available doesn't negate concerns.
Obviously, that's an extreme example - but I only mean to illustrate that this is, by any calculus, a limit on expression. All trademarks are a limitation on speech. That's not to argue that they're not a *justifiable* limit on freedom of expression - but just that consideration of the impact on speech must be part of the equation, and can't be dismissed based on the fact that other areas remain untouched. And it also, I think, leads us back to the transparency question, since one of the cardinal principles in limiting speech is that rules must be clear - to ensure that other speakers know where the lines are, and what they are or are not allowed to do and say. This is a major reason why I, and others, argue for the need for transparency here - in order to ensure clarity over which areas are available, and which have been reserved. Restrictions on speech can be justified. Secret restrictions on speech never can.
On Thu, Apr 6, 2017 at 5:19 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: Thanks for this Mary,
It is noted that more discussion is recommended for item 11 which states: “Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected”.
While not seeking to stifle further discussion, WG members will recall that this issue was discussed at great length in Copenhagen, and it seemed clear that there was no possibility of achieving consensus on such proposed limitations, for a number of articulated reasons.
Merely to recall two obvious examples raised in Copenhagen:
(i) what limitations to the categories of goods and services would apply to TLDs such as “.web” or “.online” or “.fun”? and
(ii) this proposed limitation would unfairly impact a brand owner such who had submitted a mark to the TMCH in one class but who also had valid marks in other classes which for various reasons had not been submitted to the TMCH, e.g., the mark APPLE in Class 9 for downloadable music and Class 45 for social services (US Reg Nos 3317089 and 1071006 respectively)).
Therefore, the WG co-chairs may wish to consider whether further discussion on this topic is in fact warranted.
Finally, since the chart references the EFF letter, it is worth mentioning here that the fact that a trademark owner may pay (sometimes extremely high amounts) to defensively register a domain name exactly matching its trademark in a Sunrise process (and thereby taking it “off the market”) does not prevent free expression, which may be undertaken in countless other ways. The number of terms that may be appended to a trademark (not to mention typos) to engage in all manner of speech – fair or otherwise – is, practically-speaking, all but limitless.
Best regards,
Brian
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int | www.wipo.int
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 11:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS:
1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers
Mary
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Thanks Mary. Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: * Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. * Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? * Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? * Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary
We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14. There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration. The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties. There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line. Best weekend regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks Mary. Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: • Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. • Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? • Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? • Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
Thanks Phil. Just for clarity, will anything these subteams come up with be binding on the larger WG, or is it just to do some preliminary work and then come back to the larger WG with a more refined list of selections? Also, is there a location where these calls are noted on a calendar somewhere? Thanks! Best, Paul From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Saturday, April 08, 2017 11:27 AM To: Paul McGrady <policy@paulmcgrady.com>; 'Mary Wong' <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14. There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration. The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties. There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line. Best weekend regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks Mary. Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls. Best, Paul From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: * Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. * Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? * Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? * Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary _____ No virus found in this message. Checked by AVG - www.avg.com <http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
Prelim work. All consensus on any recommendations must come from full WG. Sent from my iPhone On Apr 8, 2017, at 3:12 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Phil. Just for clarity, will anything these subteams come up with be binding on the larger WG, or is it just to do some preliminary work and then come back to the larger WG with a more refined list of selections? Also, is there a location where these calls are noted on a calendar somewhere? Thanks! Best, Paul From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Saturday, April 08, 2017 11:27 AM To: Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>>; 'Mary Wong' <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14. There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration. The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties. There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line. Best weekend regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks Mary. Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: • Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. • Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? • Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? • Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Thanks J Scott! Best, Paul From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Saturday, April 08, 2017 5:25 PM To: Paul McGrady <policy@paulmcgrady.com> Cc: Phil Corwin <psc@vlaw-dc.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Prelim work. All consensus on any recommendations must come from full WG. Sent from my iPhone On Apr 8, 2017, at 3:12 PM, Paul McGrady <policy@paulmcgrady.com <mailto:policy@paulmcgrady.com> > wrote: Thanks Phil. Just for clarity, will anything these subteams come up with be binding on the larger WG, or is it just to do some preliminary work and then come back to the larger WG with a more refined list of selections? Also, is there a location where these calls are noted on a calendar somewhere? Thanks! Best, Paul From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Saturday, April 08, 2017 11:27 AM To: Paul McGrady <policy@paulmcgrady.com <mailto:policy@paulmcgrady.com> >; 'Mary Wong' <mary.wong@icann.org <mailto:mary.wong@icann.org> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14. There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration. The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties. There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line. Best weekend regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks Mary. Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls. Best, Paul From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: * Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. * Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? * Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? * Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary _____ No virus found in this message. Checked by AVG - www.avg.com <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> &data=02%7C01%7C%7C3c822e6e097c46ffee5d08d47ecc4786%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636272863239244042&sdata=8D2ygu3%2F%2F52nhC2kS3Tis7gzQ63YMv41%2F0PSqXjYADM%3D&reserved=0
Agreed. And of course the preliminary work can be disregarded and/or supplemented and/or completely altered by the WG if that is the decision. Subgroups are merely an effort to speed things up. Sent from my iPad
On 9 Apr 2017, at 16:38, Paul McGrady <policy@paulmcgrady.com> wrote:
Thanks J Scott!
Best, Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Saturday, April 08, 2017 5:25 PM To: Paul McGrady <policy@paulmcgrady.com> Cc: Phil Corwin <psc@vlaw-dc.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Prelim work. All consensus on any recommendations must come from full WG.
Sent from my iPhone
On Apr 8, 2017, at 3:12 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
Thanks Phil.
Just for clarity, will anything these subteams come up with be binding on the larger WG, or is it just to do some preliminary work and then come back to the larger WG with a more refined list of selections? Also, is there a location where these calls are noted on a calendar somewhere? Thanks!
Best, Paul
From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Saturday, April 08, 2017 11:27 AM To: Paul McGrady <policy@paulmcgrady.com>; 'Mary Wong' <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14.
There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration.
The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties.
There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line.
Best weekend regards
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Thanks Mary.
Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls.
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers Mary
No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Also, Phil (and sorry for the second email) are there guidance papers or some other document designed to focus the work of these Subgroups? Not only would that be helpful to make sure that they stay in scope and on task, but it would also be helpful so that individuals can review the guides and decide how best to “spend” their time, i.e. which call(s) they need to be on. Thanks much! I know this is a lot of work for the three of you. Best, Paul From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Saturday, April 08, 2017 5:11 PM To: 'Phil Corwin' <psc@vlaw-dc.com>; 'Mary Wong' <mary.wong@icann.org>; 'gnso-rpm-wg@icann.org' <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks Phil. Just for clarity, will anything these subteams come up with be binding on the larger WG, or is it just to do some preliminary work and then come back to the larger WG with a more refined list of selections? Also, is there a location where these calls are noted on a calendar somewhere? Thanks! Best, Paul From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Saturday, April 08, 2017 11:27 AM To: Paul McGrady <policy@paulmcgrady.com <mailto:policy@paulmcgrady.com> >; 'Mary Wong' <mary.wong@icann.org <mailto:mary.wong@icann.org> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14. There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration. The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties. There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line. Best weekend regards Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Thanks Mary. Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls. Best, Paul From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today Dear all, The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today. ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both) 2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week 3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team 4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?) 5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories. Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list: * Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data. * Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.? * Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice? * Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice? Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting. Thanks and cheers Mary _____ No virus found in this message. Checked by AVG - www.avg.com <http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14262 - Release Date: 04/07/17
+! Sent from my iPad
On 9 Apr 2017, at 00:23, Paul McGrady <policy@paulmcgrady.com> wrote:
Also, Phil (and sorry for the second email) are there guidance papers or some other document designed to focus the work of these Subgroups? Not only would that be helpful to make sure that they stay in scope and on task, but it would also be helpful so that individuals can review the guides and decide how best to “spend” their time, i.e. which call(s) they need to be on.
Thanks much! I know this is a lot of work for the three of you.
Best, Paul
From: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Saturday, April 08, 2017 5:11 PM To: 'Phil Corwin' <psc@vlaw-dc.com>; 'Mary Wong' <mary.wong@icann.org>; 'gnso-rpm-wg@icann.org' <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Thanks Phil.
Just for clarity, will anything these subteams come up with be binding on the larger WG, or is it just to do some preliminary work and then come back to the larger WG with a more refined list of selections? Also, is there a location where these calls are noted on a calendar somewhere? Thanks!
Best, Paul
From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Saturday, April 08, 2017 11:27 AM To: Paul McGrady <policy@paulmcgrady.com>; 'Mary Wong' <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
We have constituted two sub-teams so far, on trademark claims and sunrise registrations. They both have one hour calls scheduled on Friday 4/14.
There will soon be a third sub-team on private protections (extended claims notice from TMCH’ and DPML services offered by carious registry operators). Co-Chairs and staff are currently refining questions for its consideration.
The sub-teams will definitely consolidate questions and identify data sources and needs. They will then likely go on to frame policy choices, handing things back to the full WG at some point –- co-chairs are currently working out the exact scope of sub-team duties.
There is no perfect formula for balancing the efficiencies on preliminary workup offered by sub-teams and the need to leave final resolution to the full membership of the WG. The co-chairs are even more up to their ears in calls and preparation than other WG members and fully understand the burden of the time commitment made by WG members, but also are charged with assuring that we address all Charter questions and maintain fidelity to the time line.
Best weekend regards
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul McGrady Sent: Saturday, April 08, 2017 11:39 AM To: 'Mary Wong'; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Thanks Mary.
Kathy, Phil & j Scott - How many of these Subteams are there right now? I’m losing track and the thought of actively participating in them as they seem to proliferate all the time is daunting. I really question whether or not they are speeding anything up, or just forcing more of the work of the larger group into smaller groups that leave out those of us that are already up to our ears in ICANN calls.
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 05, 2017 4:29 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Dear all,
The following Action Items were noted by staff during the Working Group call held earlier today. Below them you will find some additional questions that several Working Group members typed into the Adobe Connect chat room for your further discussion as to whether or not to forward them to the Analysis Group or otherwise consider. You will also find attached to this email the slides that Greg Rafert and Stacey Chan used for the discussion that took place today.
ACTION ITEMS: 1. Working Group members to consider volunteering for either the Sunrise Charter Questions or Private Protections Sub Team (please let staff know if you are interested in joining either/both)
2. Staff to review Work Plan, and to begin planning Sunrise and Claims Sub Team calls starting next week
3. Co-Chairs to continue working with staff to develop draft questions and proposed scope of work for the Private Protections Sub Team
4. Co-Chairs and staff to coordinate with the Analysis Group for a second call with them (question for all: when do you think this will be most useful? Do you have comments or questions based on the attached slides that you think the Analysis Group and/or the Working Group should address?)
5. Co-Chairs and staff to review results of Doodle poll and propose call duration times up to ICANN59 and an appropriate weekday for the fourth (APAC timezone-friendly) rotating Working Group call at 0300 UTC
REMINDER - Working Group members to review TMCH Charter Categories 1 & 2 (see attached TMCH Next Steps table) and send a note to this mailing list if they have any additional suggestions or follow up on those two categories.
Here are the ADDITIONAL QUESTIONS from the Adobe Connect chat room from today; please send any comments you may have or suggestions for follow up to this mailing list:
· Phil Marano: The revised report indicates in several areas that conclusions could not be reached because various parties failed to respond to requests from Analysis Group for additional data. It would be great to receive additional context from Analysis Group on the specific requests it made, to whom, and any reasons given for failure to respond or provide the requested data.
· Michael Graham: If the registration application was abandoned AG could not see the DOMAIN applied for, so there's no way of tracing duplicate pings, etc.?
· Kristine Dorrain: Do we know if a user who got a Claims Notice and abandoned their attempt to register then subsequently decided later to go back and register the domain despite the Claims Notice?
· Griffin Barnett: Is there data on abandonment of registrations where there is no Claims Notice (e.g. legacy TLDs)? Do we have any data on abandonment during the same periods for those starting the registration process but not receiving a Claims Notice?
Finally, I also attach the Notes that were taken by staff in the Adobe Connect notes pod during the Working Group call held earlier today – please note that these have been prepared solely to assist the Working Group with recalling and progressing its work, and are not intended to replace or supersede the call recording or meeting transcript, which are the official records of the meeting.
Thanks and cheers Mary
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participants (29)
-
Ariel Manoff -
Beckham, Brian -
Bret Fausett -
Brian Scarpelli -
Colin O'Brien -
George Kirikos -
Greg Shatan -
J. Scott Evans -
Jeff Neuman -
John McElwaine -
Jon Nevett -
Kathy Kleiman -
Kiran Malancharuvil -
Mary Wong -
Michael Graham (ELCA) -
Michael Karanicolas -
Nahitchevansky, Georges -
Nick Wood -
Paul Keating -
Paul McGrady -
Paul Tattersfield -
Phil Corwin -
Rebecca Tushnet -
Scott Austin -
Silver, Bradley -
Statton Hammock -
Susan Payne -
Thomas, Christopher M. -
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