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

["Jonathan Robinson" <jonathan.robinson@xxxxxxxxxxx>]

Thanks Maria for the prompt and Mason for the update.  

 

Clearly time is tight but if I have a near final draft, I?ll be in a
position to add finishing touches before sending within the deadline (just)

 

Jonathan

 

From: Mason Cole [mailto:mcole@xxxxxxxxxx] 
Sent: 26 February 2013 21:10
To: Maria Farrell
Cc: Jonathan Robinson; john@xxxxxxxxxxxxxxxxxxx; council@xxxxxxxxxxxxxx
Subject: Re: [council] Current draft of Fadi's requested communication from
council

 

Hi Maria --

 

Let me hopefully not rudely pre-empt Jonathan on this to provide an update.

 

You'll recall after the council meeting (in January I believe) when we
discussed this, you and others volunteered to help with the draft and
provided a round of feedback.  I incorporated that feedback into the draft.
Following, Brian made the IPC's concerns known in his comprehensive email --
he and I discussed IPC input late this last Friday afternoon.  Based on some
of his feedback he and I were able to reword some of the letter so IPC
concerns were met but the majority of the council's views are unchanged.
Brian asked for some time to provide final feedback, and we agreed on a
deadline for that at close of business today.

 

Following receipt and incorporation of his input as appropriate, I will
forward it to Jonathan to shepherd through the rest of the council process.

 

Sorry for the relative silence over the past few days.  I believe (hope,
anyway) this is near completion.

 

Mason

 

 

 

On Feb 26, 2013, at 12:35 PM, Maria Farrell wrote:





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] 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 

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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
 
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Thank you

On 14 feb 2013 00:36 "Volker Greimann"  <mailto: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
<mailto:vgreimann@xxxxxxxxxxxxxxx> <vgreimann@xxxxxxxxxxxxxxx>
Date: 2/12/13 4:25 pm
To:  <mailto:john@xxxxxxxxxxxxxxxxxxx> "john@xxxxxxxxxxxxxxxxxxx"
<mailto:john@xxxxxxxxxxxxxxxxxxx> <john@xxxxxxxxxxxxxxxxxxx>
Cc: "Mason Cole"  <mailto:mcole@xxxxxxxxxx> <mcole@xxxxxxxxxx>,
<mailto:council@gnso.icann.orgList> "council@xxxxxxxxxxxxxx List"
<mailto: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