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

[Maria Farrell <maria.farrell@xxxxxxxxx>]

Jonathan,

I proposed on the drafting group almost three weeks ago a compromise
solution, that the majority of Council members who seem likely to support
Mason's draft should do so and send it on behalf of the Council, and that a
dissenting 'minority report' can be included in the letter.

It's been almost three weeks and, disappointingly, I've never received a
response to that proposal.

As there appears to be a clear majority in favour of the positions the
letter takes, I propose we vote immediately on whether to endorse it or
not.

Best regards, Maria

On 21 February 2013 18:04, Jonathan Robinson
<jonathan.robinson@xxxxxxxxxxx>wrote:

> Thanks John,****
>
> ** **
>
> Do you mean letter to Steve or Fadi?  ****
>
> ** **
>
> If the latter, I agree that we should certainly make the point as indeed
> we did with the GAC.****
>
> ** **
>
> Jonathan****
>
> ** **
>
> ** **
>
> *From:* owner-council@xxxxxxxxxxxxxx [mailto:owner-council@xxxxxxxxxxxxxx]
> *On Behalf Of *john@xxxxxxxxxxxxxxxxxxx
> *Sent:* 21 February 2013 17:31
> *To:* Jonathan Robinson; council@xxxxxxxxxxxxxx
>
> *Subject:* RE: [council] Current draft of Fadi's requested communication
> from council****
>
> ** **
>
> Jonathan,****
>
> ** **
>
> Steve's request is one of a set of growing inquiries to the Council (
> e.g., Fadi's letter, GAC questions) that put the cart of the Council ahead
> of the horse of the GNSO.  Though the Council is a creature of the GNSO and
> has a narrow role, there is room for moving a bit further afield, but
> ultimately, the constituencies and stakeholder groups have their final say.
> ****
>
> ** **
>
> Why not use the letter to Steve to reset terms and conditions?****
>
> ** **
>
> I know I am but one vote.****
>
> ** **
>
> Cheers,****
>
> ** **
>
> Berard****
>
> ** **
>
> --------- Original Message ---------****
>
> Subject: RE: [council] Current draft of Fadi's requested communication
> from council
> From: "Jonathan Robinson" <jonathan.robinson@xxxxxxxxxxx>
> Date: 2/20/13 3:09 pm
> To: council@xxxxxxxxxxxxxx****
>
> John,****
>
>  ****
>
> Thanks and agreed, letting Groups / Constituencies speak for themselves
> would make the path easier, as you suggest.****
>
>  ****
>
> My concern with that approach, particularly as we have had so long to deal
> with Fadi’s request, is our reputation as an effective Council.****
>
> My personal opinion is that, if at all possible, we need to produce
> something more substantial and ideally a single output.****
>
>  ****
>
> On a related point, we do have another issue, and that is making sure our
> primary role as policy manager not legislator is well understood.****
>
> But we can continue to work on this point outside of the response to Fadi
> and it seems to me that it may well be a potential topic for discussion
> with both Board and GAC in Beijing.****
>
>  ****
>
> Jonathan****
>
>  ****
>
> *From:* owner-council@xxxxxxxxxxxxxx 
> [mailto:owner-council@xxxxxxxxxxxxxx<owner-council@xxxxxxxxxxxxxx>]
> *On Behalf Of *john@xxxxxxxxxxxxxxxxxxx
> *Sent:* 20 February 2013 21:01
> *To:* Winterfeldt, Brian; council@xxxxxxxxxxxxxx
> *Subject:* RE: [council] Current draft of Fadi's requested communication
> from council****
>
>  ****
>
> 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****
>
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>
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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<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 KB****
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> Thank you****
>
> On 14 feb 2013 00:36 "Volker Greimann" 
> <vgreimann@xxxxxxxxxxxxxxx><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><vgreimann@xxxxxxxxxxxxxxx>
> Date: 2/12/13 4:25 pm
> To: "john@xxxxxxxxxxxxxxxxxxx" <john@xxxxxxxxxxxxxxxxxxx>
> <john@xxxxxxxxxxxxxxxxxxx> <john@xxxxxxxxxxxxxxxxxxx>
> Cc: "Mason Cole" <mcole@xxxxxxxxxx> <mcole@xxxxxxxxxx>, 
> "council@xxxxxxxxxxxxxx
> List" <council@gnso.icann.orgList> 
> <council@xxxxxxxxxxxxxx><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****
>
>  ****
>
>