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

[Volker Greimann <vgreimann@xxxxxxxxxxxxxxx>]

Hi Brian,

nice spin.

It would have been in the interest of the whole process to represent the 
issues fairly without bias. The existing RPMs had been developed and 
agreed upon with the consent and active participation of the IPC and BC. 
It was agreed at the time that while not perfect, they were sufficient. 
Certain aspects now on the table again were summarily rejected. As Fadi 
had correctly recognized and stated in Amsterdam, these proposals are a 
second bite of the apple - outside of all community consensus to the 
sole benefit of one interest group and at the cost of all others.
Best,

Volker


> Dear all:
>
> As promised on our last Council teleconference, here is written 
> feedback from the IPC with respect to the current draft response to 
> Fadi Chehadé on strawman solution and limited preventative 
> registrations proposal.  More specifically, this is a critique of the 
> draft GNSO Council statement on the strawman which we feel does not 
> accurately reflect a consensus or considered analysis as urged by 
> Chair Crocker.
> The list is non-exhaustive and our intent is to demonstrate that there 
> are a number of flaws in the current draft that we should address as a 
> Council.
> ·The IPC is concerned with the statement that the strawman solution 
> represents “expansion of trademark rights beyond law.”  Apart from 
> being a legal conclusion, it implies that the strawman is composed of 
> solutions or protections to which trademark owners have no legal 
> right.  To the contrary, trademark owners have the legal right to 
> prevent infringement of their marks, and the rights protection 
> mechanisms being established as part of the new gTLD program are 
> founded on this fundamental right.  The Strawman merely addresses the 
> implementation of this policy, not its extension or expansion.
> ·The IPC believes the use of the term “majority” throughout the letter 
> is misleading as it minimizes the fact that an entire Stakeholder 
> Group—indeed the Stakeholder Group whose members will bear the 
> greatest economic impact from inadequate rights protection 
> mechanisms—unanimously agrees that additional rights protection 
> mechanisms are essential.  Put another way, a vote should be necessary 
> before asserting that a “majority of the Council” feels a certain way, 
> particularly the presumption that “protection policies for new gTLDs 
> are sufficient and need not be revisited.”  It is also important to 
> note that not all stakeholder groups or constituencies submitted 
> comments in the public comment forum, so we should not assume that 
> there is a majority in support.  It might be an overstatement.  Of the 
> statements that were submitted, in addition to the BC/IPC comments, 
> the ISPC "endorsed the intent and critical importance of preventing 
> fraudulent registrations and reducing defensive measures and agrees 
> that the RPMs currently in the AGB may be improved; however, ISPCP is 
> neutral on the subject of specific RPMs."  The use of the term 
> "majority" usually refers to a majority in each house.  However, With 
> the IPC, ISP and BC taking a different approach, we believe the 
> statement of "majority " in support of the letter is not really 
> accurate.  Sending the letter as written would go against the spirit 
> of the carefully thought-out comments of these groups.
> ·There is a difference between “agree[ment] to socialize these 
> [proposals] to the rest of the GNSO” as Dr. Crocker is quoted as 
> saying and the requisite GNSO Council support asserted in the draft 
> letter.  Indeed, here are a few more compelling and recent quotes from 
> Fadi Chehadé during the NCPH intersessional meeting, “… I still 
> believe is an issue, I don't believe that the claims or the things 
> that you brought to my attention, you know, are not right. Quite the 
> opposite, I think they're very right, that's why I engaged, that's why 
> I jumped on it.”  “Some of the things that came out of the strawman 
> discussions make sense and are implementation decisions.”  And, 
> “unless the community vehemently disagrees … that work will not be 
> counted out, we will look at it in good faith.”  Most recently, in Mr. 
> Chehadé’s February 13, 2013 video blog, he affirmed that the Strawman 
> Proposal is absolutely legitimate and that the statements he made in 
> Amsterdam on this topic were taken out of context.  He confirmed that 
> his “mistake” was in the way he convened the meetings, and that the 
> work on the Strawman is “not throw away work”, but rather, it is 
> important work.
> ·The letter cites ICANN’s goal of advancing “competition in the domain 
> name industry,” but fails to reflect temperance with the new gTLD 
> policy toward not infringing the legal rights of others which advances 
> consumer trust of the system.
> ·The letter is silent with respect to the thirty-day sunrise notice 
> period—an aspect of the strawman solution that most public comments 
> seem to agree is a noncontroversial implementation detail.
> ·Comments on Claims 1 and Claims 2 appear seriously inaccurate and 
> seems to ignore the contours of the process and raise a number of 
> implementation questions as policy matters—“How would payments be made 
> and allocated?  How do Registries and Registrars adapt their technical 
> systems…” etc.
> ·Claims 2 imposes fewer obligations and offers fewer benefits than 
> Claims 1.  Thus, “lightweight” seems apt to us.
> ·Most conventional dictionaries define “disenfranchise” as follows, 
> “to deprive of a franchise, of a legal right, or some privilege or 
> immunity; especially: to deprive of the right to vote.”  The strawman 
> has nothing to do with the right to vote.  So what is the legal right 
> to which you are referring here?  If what is meant is that adopting 
> the Strawman would deprive any stakeholder of a voice in the 
> development of the implementation of the policy that intellectual 
> property should be protected in the new gTLD, then that would ignore 
> the input of numerous stakeholders. If anything, the Strawman process 
> has enfranchised more concerned parties than ever before.
> ·The IPC fervently disagrees with dismissal of the Limited 
> Preventative Registration proposal as a “blocking mechanism.”  Again, 
> this also seems seriously inaccurate and appears to ignore the 
> contours of the proposal.  To sum up, it is a low-cost bulk sunrise 
> registration.  It would provide precisely the same benefits to brand 
> owners as participation in each individual new gTLD sunrise period to 
> which they are qualified to participate in.
> ·The statement that this is entirely "a matter of policy" ignores the 
> fact that the Strawman proposal resulted from “*/implementation/* 
> discussions on the Trademark Clearinghouse and its associated rights 
> protection mechanism.” 
> http://www.icann.org/en/news/public-comment/tmch-strawman-30nov12-en.htm. 
> The fact that Mr. Chehadé has asked the GNSO Council for input on the 
> Strawman proposal does not now turn it into a policy matter.  In fact, 
> the Limited Preventative Registration mechanism was left out of the 
> Strawman proposal not because it was considered policy, but rather 
> simply because it did not achieve consensus among the participants in 
> the implementation meetings. It is thus completely within the 
> Council's purview to provide substantive input on these issues without 
> resorting to a PDP.  Indeed, the original rights protection mechanisms 
> did not stem from a PDP, but from an informal GNSO process (the 
> */Implementation /*Recommendation Team).   Formation of a working 
> group to explore these implementation issues substantively is an 
> option that has not been fully explored.
> ·The response ignores the substantial number of comments submitted 
> during the public comment forum—which reflect a significant interest 
> in looking at this issue further from inside and, significantly, 
> outside the IP community.  For example, the ALAC statement supports a 
> number of elements of the proposal, and encourages the GNSO to fairly 
> evaluate them.  The proposed GNSO letter does not do so.
> Thank you,
>
> Brian
>
> *Brian J. Winterfeldt *
>
> Partner
>
> bwinterfeldt@xxxxxxxxxxx <mailto:bwinterfeldt@xxxxxxxxxxx>
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> *From:* owner-council@xxxxxxxxxxxxxx 
> <mailto:owner-council@xxxxxxxxxxxxxx> on behalf of Jonathan 
> Robinson[SMTP:JONATHAN.ROBINSON@xxxxxxxxxxx]
> *Sent:* Wednesday, February 20, 2013 5:59:43 AM
> *To:* council@xxxxxxxxxxxxxx <mailto:council@xxxxxxxxxxxxxx>
> *Subject:* RE: [council] Current draft of Fadi's requested 
> communication from council
> *Auto forwarded by a Rule*
>
> All,
>
> A reminder that we really need to keep this moving.
>
> I’d like to close it off this week if at all possible.
>
> Jonathan
>
> *From:*owner-council@xxxxxxxxxxxxxx 
> <mailto:owner-council@xxxxxxxxxxxxxx> 
> [mailto:owner-council@xxxxxxxxxxxxxx] *On Behalf Of *Petter Rindforth
> *Sent:* 14 February 2013 10:39
> *To:* john@xxxxxxxxxxxxxxxxxxx <mailto:john@xxxxxxxxxxxxxxxxxxx>; 
> volker@xxxxxxxxxxx <mailto:volker@xxxxxxxxxxx>
> *Cc:* Mason Cole; council@xxxxxxxxxxxxxx 
> <mailto:council@xxxxxxxxxxxxxx> List
> *Subject:* Re: [council] Current draft of Fadi's requested 
> communication from council
> /"If Trademark law provided the level of protection to automatically 
> include non-exact matches in the manner proposed in the strawman, 
> lawmakers would have implemented such a list. Yet none did. While the 
> trademark protection can be extended to additional near match strings, 
> it is the duty of the courts to decide this. And just because a 
> certain string has been used in an infringing manner, that does not 
> mean that there are not also non-infringing manners in which the same 
> string may legitimately be used."/
> This is in fact up to each Examiner of each national PTO.
>
> That’s why it may take up to 10 months (or more) to pass such 
> trademark examination processes. I do not think such time would be 
> accepted by domain name applicants....
> Strawman is dealing with an existing protection system in a more time 
> optimized way.
>
> / Petter
>
> --
> Petter Rindforth, LL M
>   
> Fenix Legal KB
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>
> On 14 feb 2013 00:36 "Volker Greimann" <vgreimann@xxxxxxxxxxxxxxx> 
> <mailto:vgreimann@xxxxxxxxxxxxxxx> wrote:
>     If that were so, there would be less of a problem, but it is not
>     so, in my opinion:
>
>     -Does a trademark allow its owner to prevent the use of the mark
>     by third parties in other classes, or if the mark is their name,
>     etc, etc?
>     I think not. There are reasons why trademarks are limited to
>     classes and regions and why legitimate use of the same trademarked
>     term cannot be prohibited. Yet LPR would do just that. If any
>     legitimate potential registrant missed the sunrise period or
>     decided to wait for a cheaper registration period, LPR would block
>     even legitimate registrations.
>
>     -Does a trademark require otherwise unrelated third parties to
>     implement and build and maintain a system at their own costs that
>     is solely used to inform others of a potential legal conflict,
>     confuse customers with information potentially irrelevant to their
>     planned use and that generally interferes with the customary flow
>     of business by scaring away or confusing potential legitimate
>     customers and delaying orders or inquiries?
>     I think not. Yet Claims II does just that to registrants,
>     registrars and registries.  I am not aware of any other industry
>     that at their own cost had to create a warning system to inform
>     third parties of potential trademark abuse.
>
>     These are just the easiest examples of why the Strawman and the
>     attached LPR proposal will, in my opinion create new protections.
>
>     The claims process in itself is a new right for trademark holders
>     not previously granted by trademark law, so any extension of the
>     time period carefully considered and agreed upon by the community
>     expands the reach of this new right for trademark holders. These
>     proposals have been on the table before in some form or other and
>     have been rejected by the community. Fadi Chehade’s has stated
>     himself in his letter to the U.S. Congress that the 60 days period
>     should not be extended unilaterally by ICANN, yet this is what is
>     proposed now.
>
>     The extension of claims to non-exact matches was previously
>     rejected by the Special Trademark Issues Review Team, i.e. a GNSO
>     created team.
>
>     If Trademark law provided the level of protection to automatically
>     include non-exact matches in the manner proposed in the strawman,
>     lawmakers would have implemented such a list. Yet none did. While
>     the trademark protection can be extended to additional near match
>     strings, it is the duty of the courts to decide this. And just
>     because a certain string has been used in an infringing manner,
>     that does not mean that there are not also non-infringing manners
>     in which the same string may legitimately be used.
>
>     These proposals create a new fence to protect trademark holders
>     from legitimate and illegitimate registrations of their marks alike.
>
>     Solely the 30 day notice period does not create any new rights
>     specific to trademark holders. The rest is a matter for a PDP, not
>     for a closed door, no outside communication allowed session. ICANN
>     should not deviate from the multi-stakeholder principle. If any
>     outcome of our policy development and consensus building processes
>     is subject to unilateral revision once a small part of the
>     community is no longer sufficiently happy with the consensus
>     results, the multi-stakeholder model is dead.
>
>     Volker
>
>     I will not argue with your metaphor -- I am quite fond of apples. 
>     But I do quibble with you saying the strawman is "an expansion of
>     the rights of a trademark holder in the domain world."  Trademark
>     rights exist (not always consistently) in all earthly realms. The
>     strawman is not seeking to create new ones, merely to create a
>     method by which those that already exist can be enforced.
>
>     Cheers,
>
>     Berard
>
>         --------- Original Message ---------
>
>         Subject: Re: [council] Current draft of Fadi's requested
>         communication from council
>         From: Volker Greimann - Key-Systems GmbHz
>         <vgreimann@xxxxxxxxxxxxxxx> <mailto:vgreimann@xxxxxxxxxxxxxxx>
>         Date: 2/12/13 4:25 pm
>         To: "john@xxxxxxxxxxxxxxxxxxx"
>         <mailto:john@xxxxxxxxxxxxxxxxxxx> <john@xxxxxxxxxxxxxxxxxxx>
>         <mailto:john@xxxxxxxxxxxxxxxxxxx>
>         Cc: "Mason Cole" <mcole@xxxxxxxxxx> <mailto:mcole@xxxxxxxxxx>,
>         "council@xxxxxxxxxxxxxx List"
>         <mailto:council@gnso.icann.orgList> <council@xxxxxxxxxxxxxx>
>         <mailto: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
>         <mailto: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
>                 <mailto:mcole@xxxxxxxxxx>>
>                 Date: 2/12/13 3:00 pm
>                 To: "council@xxxxxxxxxxxxxx
>                 <mailto:council@xxxxxxxxxxxxxx> List"
>                 <council@xxxxxxxxxxxxxx <mailto: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

--
Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.

Mit freundlichen Grüßen,

Volker A. Greimann
- Rechtsabteilung -

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