NCUC-STI comments

Thu Apr 1 07:01:22 CEST 2010

Hi and sorry for chiming in late. Thanks to Konstantinos for providing a very thorough set of comments; here are just a few minor observations:

- on p. 2 there is a sentence in bold that says "The very fact that the registrant has responded automatically demonstrates good faith". I think this is putting it too strongly - would it be better to say that the fact a registrant responds can be an indicator of good faith?

- still on p. 2, I think the community may understand Default somewhat differently, i.e. not as meaning only "failure to respond in a timely manner", but more broadly as including failure to conform to requirements. Can we not just say that it would be unfair to bump the dispute to Default status simply for filing errors and omissions? Additionally, I would suggest removing the phrase "which in any case are part of human nature" as I don't think it necessarily strengthens the point already made.

- still on p.2, in the following paragraph, when discussing the STI's decision not to accept an expansive interpretation of "default", I suggest that a more appropriate term than "wilfully dismissed" might be "consciously rejected".

- on p. 3 I actually don't agree with the use of the phrase "safe harbors" as it does not seem to me to accurately describe the circumstances being considered. As such, I'm not sure I agree that using the word "defense" instead is necessarily "weaker", and in the context of this particular page of our comments seems to imply that by using the words "safe harbor" rather than defense will therefore imply a "binding legal obligation" on the Examiner. May I suggest saying, instead, something along the lines of the need to ensure that a respondent's right to demonstrate the registration is legitimate and in good faith? (I can't recall the Nominet wording but I don't believe they actually use the phrase "safe harbors" either.)

- on p. 5, instead of "trademark heavens" do we mean "trademark havens"? (BTW, as some of you know, I am uncomfortable with distinguishing between countries that conduct substantive review and those that don't, but can accept that I am in a minority of one on this). 

- finally, and more substantively, can we add something (on p.3 when discussing Abuse of Process) to urge the staff to develop, in consultation with the community, clearer guidelines as to what is meant by "deliberate material falsehood"?

Sorry I haven't had the bandwidth to do a more thorough job in contributing to the comments, but I hope these observations help.

Best,
Mary

Mary W S Wong
Professor of Law & Chair, Graduate IP Programs
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

>>> 

From: Konstantinos Komaitis <k.komaitis at STRATH.AC.UK>
To:<NCUC-DISCUSS at listserv.syr.edu>
Date: 3/30/2010 4:45 AM
Subject: NCUC-STI comments

Dear all,

- apologies for the long email - 
The time is upon us to submit our comments on the revised versions of the
ICANN staff on the recommendations submitted by the Special Trademark Team
(STI) in January 2010. I know that I should have submitted this to you earlier on, but may I remind everyone that the deadline is April 1, 2020 for the submission of comments. I would appreciate if you could return your comments/suggestions to me by tomorrow at the very latest.

Here is a brief reminder of the whole process. 

After the rejection of the Implementation Recommendation Team (IRT)
proposals during the public comment period, ICANN produced two documents -
one of the Trademark Clearinghouse (TMC) and the other on the Uniform Rapid
Suspension (URS) system and asked the GNSO to form a team to review these
documents. The GNSO created the STI, which comprised of representatives from
all its constituencies. NCUC was represented in this team by Robin, Kathy,
Wendy and myself, with Mary being the alternate member.

The STI was tasked to either accept the Staff's proposals or reach consensus
on a new set of proposals. After a month of extensive meetings and debate, we managed to
produce two documents - one on the TMC and the other on the URS - which in
their majority received the consensus of the STI (most of the particular
issues of both proposals received unanimous consensus, whilst some specific
issues received majority consensus). The final STI report can be found here:
gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf

After the STI submitted its report and was endorsed by the GNSO, a public
comment period was initiated -
http://forum.icann.org/lists/sti-report-2009/. In the meantime, in its
Nairobi meeting, the ICANN Board endorsed the STI's recommendations:
http://www.icann.org/en/minutes/resolutions-12mar10-en.htm.

Taking into account the public comments, the ICANN staff produced - what
they called - a revised document on both proposals, seeking to take into
consideration the STI recommendations as well as the comments received
during the public comments period. These new revised proposals can be found
at: for the TMC ( http://www.icann.org/en/public-comment/#tmc) and for the
URS ( http://www.icann.org/en/public-comment/#urs) and they are now open for
a public comments period. The deadline for submission of the comments is
April 1, 2010.

Generally speaking the revised proposal takes into consideration most of the
issues that the STI recommended. However, there are some specific issues, in
which the new recommendations are worst and additions have been made which
are arbitrary and - at some instances - even illegitimate.

I am attaching our comments for both the URS and the TMC. 

Best
KK

Dr. Konstantinos Komaitis,
Law Lecturer,
University of Strathclyde,
The Law School,
The Lord Hope Building,
141 St. James Road,
Glasgow, G4 0LT
UK
tel: +44 (0)141 548 4306
http://www.routledgemedia.com/books/The-Current-State-of-Domain-Name-Regulation-isbn9780415477765
Selected publications: http://hq.ssrn.com/submissions/MyPapers.cfm?partid=501038
Website: http://domainnamelaw.ning.com/

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