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

[john@xxxxxxxxxxxxxxxxxxx]

Mason, et. al.,


Brian makes a rather eloquent case -- far better than I had been able to do.  
He restates my own previous comments with regard to the "expansion of rights" 
and "majority," then goes further.  All are good points and worth considering, 
though on our current time-frame that may not be logistically possible.  All 
this leads me to re-submit my initial suggestion on this letter: tell Steve our 
best thought is to let the constituencies and stake-holder groups speak for 
themselves.


It would certainly make the letter a lot shorter and easier to approve!


Cheers,


Berard



--------- Original Message ---------Subject: RE: [council] Current draft of 
Fadi's requested communication from council
From: "Winterfeldt, Brian" <bwinterfeldt@xxxxxxxxxxx>
Date: 2/20/13 9:13 am
To: "council@xxxxxxxxxxxxxx" <council@xxxxxxxxxxxxxx>

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
Steptoe
 
+1 202 429 6260 direct
+1 202 903 4422 mobile
+1 202 429 3902 fax
Steptoe & Johnson LLP - DC
1330 Connecticut Avenue, NW
Washington, DC 20036
www.steptoe.com
 
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Steptoe & Johnson LLP – New York
1114 Avenue of the Americas
New York, NY 10036

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------------------------------------------- 
From: owner-council@xxxxxxxxxxxxxx on behalf of Jonathan 
Robinson[SMTP:JONATHAN.ROBINSON@xxxxxxxxxxx] 
Sent: Wednesday, February 20, 2013 5:59:43 AM 
To: 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] On 
Behalf Of Petter Rindforth
Sent: 14 February 2013 10:39
To: john@xxxxxxxxxxxxxxxxxxx; volker@xxxxxxxxxxx
Cc: Mason Cole; 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 KBStureplan 4c, 4tr114 35 
StockholmSwedenFax: +46(0)8-4631010Direct phone: +46(0)702-369360E-mail: 
petter.rindforth@xxxxxxxxxxxxxxxxxxxxxxxxxxxxxx  NOTICEThis e-mail message is 
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are requested not to read, copy or distribute it or any of the information it 
contains. Please delete it immediately and notify us by return e-mail.Fenix 
Legal KB, Sweden, www.fenixlegal.euThank youOn 14 feb 2013 00:36 "Volker 
Greimann" <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>
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