NCUC-STI comments

Thu Apr 1 13:18:37 CEST 2010

Dear Mary and all,

Thanks for this. some comments below.

Best

KK

From: Mary Wong [mailto:MWong at piercelaw.edu]
Sent: Thursday, April 01, 2010 6:01 AM
To: NCUC-DISCUSS at listserv.syr.edu; Konstantinos Komaitis
Subject: Re: NCUC-STI comments

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?

I am not sure I agree with you on this. What we are basically doing is following the rationale of the UDRP and the interpretations that have been provided through the UDRP decisions all these years. For UDRP panels, non submission automatically equates to bad faith. If that is what is therefore happening then why not considering submission as '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.

The community is mistaken and I don't think that anyone would view default like this, despite the efforts of the trademark community to expand its interpretation.

- 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.)

Mary we already have incorporated what you are suggesting. The Safe Harbors are intended to provide additional protection to individual users rather than limit this protection to just the possibility of domain name holders to demonstrate rights and legitimate interests. In the law context, the word defenses means that even if for instance there is fair use of the domain name, the examiner will still be able to exercise discretion in deciding whether to accept this defense or not. The word Safe Habors leaves no room for such discretion.

- 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).

Thanks for pointing this out and I will correct it. The paper is not suggesting that we have to distinguish between jurisdictions that conduct substantive review and those that don't. There is a huge debate about this and even the STI was split. Rather what it seeks to do is to draw the attention of the community to the possibility that 'trademark havens' might be created which will complicate things and create more problems.

- 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<mailto: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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