RE: Re: [council] Current draft of Fadi's requested communication from council

[john@xxxxxxxxxxxxxxxxxxx]

Volker,


Well, tomorrow's call (3 a.m. Pacific time!) should be worth getting up for.  


You ask, "Does a trademark allow its owner to prevent the use of the mark by 
third parties in other classes, or if the mark is their name, etc, etc?"  No, 
but, just as on the Internet no one knows you are a dog (credit to the New 
Yorker magazine), there are no separate classes or countries, either.  I am no 
lawyer (huzzah!) so I have long been comfortable saying that domain names grant 
a global trademark without the bother of having to comply with the laws of the 
290 or so countries that exist on the planet.  That is a pretty good deal.


This conflict -- global regime vs. local control -- is the hallmark of many of 
the current Internet-fueled debates.  I don't think the mandate of the GNSO 
Council covers that.  But, we are in a position to have a say in how our little 
slice of the world ought to approach it.  


Take a look at how we ask third parties to participate in trademark protection 
now.  The sunrise is a method (by exclusion) and the TMCH as it is currently 
constituted (by inclusion).


Talk to you tomorrow.


Cheers,


Berard



--------- Original Message ---------Subject: Re: [council] Current draft of 
Fadi's requested communication from council
From: Volker Greimann <vgreimann@xxxxxxxxxxxxxxx>
Date: 2/13/13 3:36 pm
To: john@xxxxxxxxxxxxxxxxxxx
Cc: "Mason Cole" <mcole@xxxxxxxxxx>, "council@xxxxxxxxxxxxxx List" 
<council@xxxxxxxxxxxxxx>

If that were so, there would be less of a problem, but it is not so, in my 
opinion:
 
 -Does a trademark allow its owner to prevent the use of the mark by third 
parties in other classes, or if the mark is their name, etc, etc?
 I think not. There are reasons why trademarks are limited to classes and 
regions and why legitimate use of the same trademarked term cannot be 
prohibited. Yet LPR would do just that. If any legitimate potential registrant 
missed the sunrise period or decided to wait for a cheaper registration period, 
LPR would block even legitimate registrations. 
 
 -Does a trademark require otherwise unrelated third parties to implement and 
build and maintain a system at their own costs that is solely used to inform 
others of a potential legal conflict, confuse customers with information 
potentially irrelevant to their planned use and that generally interferes with 
the customary flow of business by scaring away or confusing potential 
legitimate customers and delaying orders or inquiries?
 I think not. Yet Claims II does just that to registrants, registrars and 
registries.  I am not aware of any other industry that at their own cost had to 
create a warning system to inform third parties of potential trademark abuse.
 
 These are just the easiest examples of why the Strawman and the attached LPR 
proposal will, in my opinion create new protections.
 
 The claims process in itself is a new right for trademark holders not 
previously granted by trademark law, so any extension of the time period 
carefully considered and agreed upon by the community expands the reach of this 
new right for trademark holders. These proposals have been on the table before 
in some form or other and have been rejected by the community. Fadi Chehade’s 
has stated himself in his letter to the U.S. Congress that the 60 days period 
should not be extended unilaterally by ICANN, yet this is what is proposed now. 
 
 The extension of claims to non-exact matches was previously rejected by the 
Special Trademark Issues Review Team, i.e. a GNSO created team.
 
 If Trademark law provided the level of protection to automatically include 
non-exact matches in the manner proposed in the strawman, lawmakers would have 
implemented such a list. Yet none did. While the trademark protection can be 
extended to additional near match strings, it is the duty of the courts to 
decide this. And just because a certain string has been used in an infringing 
manner, that does not mean that there are not also non-infringing manners in 
which the same string may legitimately be used. 
 
 These proposals create a new fence to protect trademark holders from 
legitimate and illegitimate registrations of their marks alike. 
 
 Solely the 30 day notice period does not create any new rights specific to 
trademark holders. The rest is a matter for a PDP, not for a closed door, no 
outside communication allowed session. ICANN should not deviate from the 
multi-stakeholder principle. If any outcome of our policy development and 
consensus building processes is subject to unilateral revision once a small 
part of the community is no longer sufficiently happy with the consensus 
results, the multi-stakeholder model is dead.
 
 Volker
 
 


I will not argue with your metaphor -- I am quite fond of apples.  But I do 
quibble with you saying the strawman is "an expansion of the rights of a 
trademark holder in the domain world."  Trademark rights exist (not always 
consistently) in all earthly realms.  The strawman is not seeking to create new 
ones, merely to create a method by which those that already exist can be 
enforced.


Cheers,


Berard



--------- Original Message ---------Subject: Re: [council] Current draft of 
Fadi's requested communication from council
 From: Volker Greimann - Key-Systems GmbHz <vgreimann@xxxxxxxxxxxxxxx>
 Date: 2/12/13 4:25 pm
 To: "john@xxxxxxxxxxxxxxxxxxx" <john@xxxxxxxxxxxxxxxxxxx>
 Cc: "Mason Cole" <mcole@xxxxxxxxxx>, "council@xxxxxxxxxxxxxx List" 
<council@xxxxxxxxxxxxxx>
 
I think Fadi has made it very clear during the meeting in Amsterdam that he has 
now understood the BC and IPC requests that led to the strawman as a second 
bite of the apple, as he called it. The proposed contents of the strawman would 
certainly constitute an expansion of the rights of a trademark holder in the 
domain world. I therefore support sending the draft letter as is.
 
 Sent from my iPad

 On 13.02.2013, at 01:11, john@xxxxxxxxxxxxxxxxxxx wrote:
 

Mason,


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


Berard



--------- Original Message ---------Subject: [council] Current draft of Fadi's 
requested communication from council
 From: Mason Cole <mcole@xxxxxxxxxx>
 Date: 2/12/13 3:00 pm
 To: "council@xxxxxxxxxxxxxx List" <council@xxxxxxxxxxxxxx>
 
 Council colleagues --
 
 As you know, Fadi requested of the council its input regarding the strawman 
proposal resulting from the BC's and IPC's request for additional RPMs in new 
gTLDs. On December 27, I circulated an early draft of a council reply.
 
 The communication is due very shortly, and has been taken up by a small group 
within the council to ensure that all points of view are represented. Because 
this is an agenda item for our meeting this week, at Maria Farrell's helpful 
suggestion, I'm sending the current draft to council so we can be prepared to 
discuss it then. This draft does not reflect additional input of the BC and IPC 
-- if this is provided prior to the meeting, I'll be happy to forward it to the 
council.
 
 Thanks --
 
 Mason