NCSG Principles for trademark protection in new gTLDs

[Kathy Kleiman]

Hi All,

What a great meeting we had in Seoul! It was nice to spend time with so
many new and old friends. Our discussions were wide-ranging, and
important. You should know that I was approached by several attended,
not from our constituency (our meetings are open), who told me that our
discussions were some of the very best they had seen at ICANN.

The purpose of the email is to share one issue that is moving very
quickly through the ICANN process -- the issue of Trademarks and new
gTLDs. I will summarize our meeting in Seoul, and talk about events
since then.

As in Sydney, we spent a lot of time in our Seoul meeting on the issue
of Trademarks and new gTLD issues. In Sydney, we raised objections to
the IRT Report. In Seoul, we discussed events since Sydney -- the
publication of two new documents by ICANN Staff -- one on the Trademark
Clearinghouse (TMC) and the other on the Uniform Rapid Suspension System
(URS) --- and a letter from the Board sending the whole matter of
Trademark Protection in the new gTLDs back to the GNSO for review.

The whole process was very responsive to our/NCUC's concerns. Many of
our concerns for registrants were reflected in the new Staff Reports;
the return of the process to the GNSO reflected our call, with ALAC, to
ICANN to follow the proper process of policy formation -- the purpose of
our GNSO.

The Board's mid-October letter send the Staff Reports to the GNSO
Council with a range of questions and a call for input -- albeit on a
very tight schedule. The GNSO Council must respond to the Board by
mid-December (in order to keep the rollout of new gTLDs on schedule).
It's a tall order!

So we (NCUC/NCSG) responded. During our all-day meeting on Tuesday, we
spent a good amount of time on these new gTLD issues. We reviewed the
Trademark Clearinghouse Staff Report and, after discussion, decided on
some key principles:

==> While we believe that the best place for trademark clearing is
outside of ICANN altogether, if we must have a TM Clearinghouse, then
the rules must be explicit as to the limits and protections for Domain
Name Registrants, including:

- The Clearinghouse must not expand trademark law beyond national law;
- Registrants must not be dissuaded from registering domain names to
which they have a right or would otherwise be entitled;
- The Clearinghouse should minimize Chilling Effects; and
- A clearer IP claims process and sunrise period is required.

We also reviewed the URS Staff Report and expressed our deep concern
about this Rapid Takedown System for Domain Names. We are deeply
concerned about its creation, and wonder at its rationale, but should it
go forward, we noted that it must embrace fundamental principles:
- Due Process;
- An Assumption of Innocence and Good Faith of the Registrant;
- A Fair Right of Response;
- Have a Clear definition of egregious conduct;
- Require a High burden of proof,
- Properly protect Registrant rights, and also
- Provide a process inexpensive enough for small noncommercial trademark
owners to pursue.

On the Wednesday of the Seoul meeting, at the GNSO Council meeting, each
Constituency named its representatives to the special trademark drafting
team (called the "STI Team"). Our STI members are:

Dr. Konstantinos Komaitis,
Wendy Seltzer,
Robin Gross, and
myself.

Wendy is the founder of the Chilling Effects Clearinghouse which tracks
online abuse and "aims to help you understand the protections that the
First Amendment and intellectual property laws give to your online
activities." Konstantinos wrote his dissertation on the Uniform Dispute
Resolution Policy (UDRP) and had a book coming out on the subject. Robin
is an active IP attorney and Chair of our Constituency. I am a
Trademark/Telecommunications Attorney who helped draft the UDRP 10 years
ago.

The STI Team has already begun to meet with all the stakeholder groups.
We attended our first meeting in Seoul last Thursday evening. Today
there was a long call on TM Clearinghouse. We meet tomorrow on the URS.

In my next email, I will share my thoughts on the big Trademark and new
gTLDs panel held last Wednesday in Seoul -- and my great surprise (and
pleasure) that our (NCUC/NCSG) offer to work together and find common
ground was reciprocated by other groups. That panel helped everyone to
come to the negotiating table!

Regards and good night,
Kathy

p.s. Here are the email addresses of our STI team should you want to
reach us directly:
Konstantinos -- k.komaitis[at]strath.ac.uk
Wendy -- wendy[at]seltzer.com
Robin -- robin[at]ipjustice.org
Kathy - kathy[at]kathykleiman.com



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