NCUC-STI comments

Thu Apr 1 21:14:17 CEST 2010

Hi Konstantinos and everyone,

Thanks for the additional comments; it may be that my quick read (and
fact that I don't do UDRP panels) missed some of the nuances.
Nonetheless, where the "safe harbor" vs "defenses" language is
concerned, I totally understand and agree with the sentiment that
registrant protections are ensured; however, I don't know that a third
party reading our comments in this regard will necessarily read it that
way. It seems to me that we are not suggesting an Examiner have a
"binding legal obligation", but, rather, that - whatever the phrase
ultimately used - that respondent protections are explicitly recognized
and guaranteed in any policy. While the word "defenses" may not be
entirely appropriate, the Nominet protections still seem to me to
require that the respondent show he/she comes within them. Once they do
that, of course, they are then protected.

I realize time is of the essence and don't want to belabor the point,
but I wanted to guard against possible misunderstandings of our
fundamental points. 

Thanks again for taking the lead on putting comments together,
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:"'Mary Wong'" <MWong at piercelaw.edu>, "NCUC-DISCUSS at listserv.syr.edu"
<NCUC-DISCUSS at listserv.syr.edu>
Date: 4/1/2010 7:24 AM
Subject: RE: NCUC-STI comments

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

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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