Fwd: Comments on the IRT recommendation

Wed May 6 05:54:13 CEST 2009

Hi everyone,

Just to follow up on Robin's email - the public comment period actually
extends to 24 May, BUT (and it's a big one) because the FINAL IRT report
is also due on 24 May, only those comments actually received by 6 May
can practically be considered for inclusion in the final report.

As such, either the Constituency as a whole, or even individual
members, should feel free to submit their comments by 6 May. According
to ICANN staff, comments can be sent to irtp-draft-report at icann.org and
reviewed at http://forum.icann.org/lists/irtp-draft-report/.

Here are some issues that members might want to look out for as you go
through the IRT report:

1. The Globally Protected Marks List, the proposed IP Clearinghouse and
the Rapid Suspension system - will they work? How would they
(particularly the Rapid Suspension system) work with the existing UDRP
without adding to or superseding it?

2. The different levels of protection at the top levels and second
levels - are they justified?

3. Costs - both of setting up the proposed mechanisms and of associated
events, e.g. appeals, evaluations etc.

4. Confusion analysis - what should constitute a match so as to trigger
any of the mechanisms suggested? How would this work with what ICANN has
proposed for string confusion in the DAG?

5. Technical and other issues - anything else that strikes you.

As you all know, I was asked to be on the IRT and have tried to be
non-partisan while representing user interests as best I can. Like I
mentioned on the Constituency call earlier today, although the rest of
the IRT are mostly trademark lawyers and other "interested" parties, we
have been able, for the most part, to discuss multiple sides of an issue
and assert our [occasionally vastly divergent] viewpoints.

Nonetheless, I would urge you all to take some time to consider the
implications of the IRT recommendations for the new gTLD space. If you
are not able to make the 6 May deadline, please do send in comments by
24 May at least.

Thanks,
Mary

Mary W S Wong
Professor of Law
Franklin Pierce Law Center
Two White Street
Concord, NH 03301
USA
Email: mwong at piercelaw.edu
Phone: 1-603-513-5143
Webpage: http://www.piercelaw.edu/marywong/index.php
Selected writings available on the Social Science Research Network
(SSRN) at: http://ssrn.com/author=437584

>>> Robin Gross <robin at IPJUSTICE.ORG> 5/5/2009 11:40 PM >>>
All,

Konstantinos has looked at the draft recommendations (
https://st.icann.org/data/workspaces/new-gtld-overarching-issues/attachments/trademark_protection:20090428172419-0-15172/original/IRT%252520Draft%252520Report%252520on%252520Trademark%252520Protection%252520Issues.pdf
) from the Intellectual Property Team working on create special
mechanisms in the new gtld process to expand trademark rights on the
Internet.  Thank you very much, Konstantinos!!

Please add to these points below and provide further comment on them as
well so we can submit a comment before the deadline (which I think is
Thursday).

Thank you!
Robin

IRT Draft Report:
https://st.icann.org/data/workspaces/new-gtld-overarching-issues/attachments/trademark_protection:20090428172419-0-15172/original/IRT%2520Draft%2520Report%2520on%2520Trademark%2520Protection%2520Issues.pdf

More Info:
https://st.icann.org/new-gtld-overarching-issues/index.cgi?trademark_protection

Begin forwarded message:

From: Konstantinos Komaitis <k.komaitis at strath.ac.uk>
Date: May 5, 2009 11:59:22 AM PDT
To: Robin Gross <robin at IPJUSTICE.ORG>, Mary Wong <MWong at PIERCELAW.EDU>
Subject: Comments on the IRT recommendation

Dear both,

Here are my thoughts on the IRT recommendation. I did not really have
time to look at it thoroughly and only scanned it through considering
the deadline is tomorrow. As you know I am writing a book on domain name
regulation, which amongst other is a critique against the expansion of
t/m law and the UDRP and I am planning to include an analysis of all
these issues.
Sorry for the mistakes in the comments – was in a rush to finish them.
Tell me what you think and please feel free to add/delete anything. Mary
where do we send them and is it with the normal  process?
Thank you and looking forward to hearing from both of you.

Best

Konstantinos

COMMENTS

...but not create additional legal rights (page 6): I think that the
whole issue here is basically not to expand the existing ones - i would
suggest the re-wording of this.
The IRT should have also consulted various PTOs in order to ascertain
whether the existence of a clearing's house and the criteria set for
global marks adhere to traditional ones.
The idea of asking the trademark owner to validate the existence of a
mark once a year is expensive, cumbersome and bureaucratic. trademark
rights can last indefinitely as long as the owner continues to use the
mark to identify its goods or services. The term of a federal trademark
is 10 years, with 10-year renewal terms. However, the USPTO requires
that between the fifth and sixth year after the date of registration,
the registrant must file an affidavit stating that the mark is still in
use. If no affidavit is filed, the registration is cancelled. The USPTO
does not remind the trademark owner of this deadline. to me the way the
clearinghouse wants to operate contradicts this.
if user protection is one of the main goals of the IRT i don't see in
the list of benefactors (the list contains trademarkowners, new gtld
operators, registrars and ICANN) but not the consumers.
the IRT should also clarify how it will deal with the international
classification system in combination with the applications received and
how it will determine which trademark deserves priority.
also who is going to participate in the Clearing house?

Global Classification system: I think the criteria are very loose and
'convenient'. the test is very basic and will result in trademarks that
are not considered famous under traditional standards to receive
international recognition by virtue of their registration. the Dilution
act for instance set a high bar for a trademarkto be considered famous.
The Federal Trademark Dilution Act suggests that the following factors
should be used in considering whether a mark is famous (this list is not
exhaustive):
1. How distinct the mark is (either by being inherently distinctive or
by having acquired secondary meaning).
2. How long and to what extent the mark has been used with the
connected goods and services.
3. How much advertising and publicity there has been for the mark.
4. How widespread, geographically, the mark has been used.
5. What channels of trade are used for the mark’s associated goods and
services.
6. How well-recognized the mark is in the channels of trade used by the
owner and the channels of trade used by the potentially diluting mark.
7. How many similar marks are used by third parties, and the extent of
such use.
While each state may have its own standards for defining what qualifies
as a famous trademark, these factors generally apply.
URS: i don't understand why this should exist since the udrp is already
in place. i think that they are trying to create a tier system of
judiciary under the ICANN regime - this is very dangerous. from the
reading it appears that the systems will be connected (see appeals
sections) and this practice detaches the parties from courts even
further. who will prefer the court option if there is the UDRP?
--
Dr. Konstantinos Komaitis,
Lecturer in Law,
GigaNet Membership Chair,
University of Strathclyde,
The Lord Hope Building,
141 St. James Road,
Glasgow, G4 0LT,
UK
tel: +44 (0)141 548 4306
email: k.komaitis at strath.ac.uk

IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451
w: http://www.ipjustice.org     e: robin at ipjustice.org

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