Fwd: Fwd: Draft reply from GNSO to Fadi

[Mary.Wong at LAW.UNH.EDU]

Thanks, Joy, Kathy and everyone. I think Mason's letter is excellent,
and reflects broadly the concerns of our membership. There are two
specific things I would additionally note that may be useful, and that
our Councilors may consider asking to be included (or not, in their
discretion) -

First, on the point regarding additional "expansion of TM rights beyond
law": not only would this impact the community, as indicated in the
current draft of the letter, it has implications beyond just its impact
on the DNS and registrants/users. In other words, it could amount to an
expansion of TM rights through a private mechanism outside the
traditional judicial-legal boundaries of authoritative institutions
(e.g. courts, legislatures, treaties.)

Secondly, it may be worth noting (reminding?) the existence of a
Council-passed resolution mandating review of ALL the RPMs, from the
UDRP to the new RPMs introduced for new gTLDs, after 18 months from the
delegation of the first new gTLD. As such, the expansion of policy
and/or changing the scope of agreed-upon RPMs is both premature and
untested, and if the IPC-BC believes these are necessary and urgent, the
solution is NOT to introduce them post-hoc but to agree to an
accelerated review of ALL RPMs for both current and new gTLDs.

Hope this helps.

Cheers
Mary

Mary W S Wong
Professor of Law
Director, Franklin Pierce Center for IP
Chair, Graduate IP Programs
UNIVERSITY OF NEW HAMPSHIRE SCHOOL OF LAW
Two White Street
Concord, NH 03301
USA
Email: mary.wong at law.unh.edu
Phone: 1-603-513-5143
Webpage: http://www.law.unh.edu/marywong/index.php
Selected writings available on the Social Science Research Network
(SSRN) at: http://ssrn.com/author=437584  

>>> Kathy Kleiman  12/19/12 2:35 PM >>>
Hi Joy and All,
Tx for sharing this letter. It's interesting to see how the debates
continue.

I think Mason had done an excellent job with this letter The reasoning
is
solid and the rationale is clear. The letter certainly represents deep
concerns of the NCUC/NCSG Community.

I wonder if the Registries are on board too?
Best,
Kathy
:

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> Hi - reposting a message which was sent earlier today to this list,
> but does not appear to have been posted . To avoid further delay, I
> have copied and pasted the draft letter into this text below.
> Apologies if there have been any cross-postings.
>
> Regards
>
> Joy
> - -------- Original Message --------
> Subject: Fwd: Draft reply from GNSO to Fadi
> Date: Wed, 19 Dec 2012 06:26:56 +1300
> From: joy 
> Reply-To: joy at apc.org
> Organisation: APC
> To: NCSG-DISCUSS at LISTSERV.SYR.EDU
>
> Hi all - apologies for the lateness in sending this through to this
> list, but attached is an outreach from Mason Cole in drafting a GNSO
> Council letter to ICANN CEO.
> A number of NCSG GNSO Councillors have supported Mason to take this
> letter forward and it is on the council meeting agenda for this week.
> It is of course still open for edits and suggestions and, if you have
> any, please do feel free to share them and we can discuss these at (or
> before) the meeting
> Cheers
> Joy Liddicoat
>
>
> - -------- Original Message --------
> Subject: Draft reply from GNSO to Fadi
> Date: Wed, 12 Dec 2012 14:07:24 -0800
> From: Mason Cole 
> To: Maria Farrell , "David Cake
> (dave at difference.com.au) (dave at difference.com.au)"
> , Wendy Seltzer , Wolfgang
> Kleinwächter , "Joy
> Liddicoat (joy at apc.org)" 
>
> Maria, David, Wendy, Wolfgang and Joy --
>
> I took the liberty of drafting a council response to Fadi's request
> for the council's input on the BC/IPC proposals:
> http://gnso.icann.org/mailing-lists/archives/council/msg13964.html
>
> It's attached here.  The thesis is that the RPMs requested by the BC
> and IPC are in fact changes to established policy and not matters of
> implementation, and, further that using such categorizations as a
> basis for changing policy circumvents the council in a way that isn't
> acceptable.  I kept the tone reasonable but I think the message comes
> across.
>
> Before I send this to the list, would you read it over an let me know
> if it's something you can support?  I hope you can and would think
> this is something that aligns with your belief in the council's
> responsibility over policy development.
>
> I'm under little impression the BC and IPC would sign on to this, so
> perhaps the best available outcome is a letter detailing majority and
> minority positions.  What I believe should be avoided is a response
> only from the SGs, as this would further portray the council as broken
> and ineffective.
>
> Thanks for your attention.  I'd like to get this to the list soon -- I
> realize we're all quite busy, but if you could provide feedback soon I
> would be appreciative.
>
> Happy holidays --
>
> Mason
>
>
> [DRAFT LETTER COPIED FROM ATTACHMENT BEGINS}
>
> Dear Fadi:
>
> Thank you for your e-mail of 5 December, in which you request the
> advice of the GNSO Council on TMCH implementation.  This letter is the
> Council?s reply to your request.
>
> While our member constituencies and stakeholder groups will comment at
> their discretion regarding the content of the so-called strawman, the
> Council here addresses the issues identified in your e-mail, and as
> you so invited, others in the strawman:
>
> Expansion of trademark rights in TLDs
> The Council draws a distinction between the launch of new gTLDs, where
> policy has been set and agreed to, and a longer-term discussion about
> amended or additional rights protection mechanisms (RPMs), which would
> apply to all gTLDs.
>
> The Council believes generally that expansion of trademark rights
> beyond law is a matter of policy, as it is of impact to the full
> community.  The majority of the Council believes protection policies
> for new gTLDs are sufficient and need not be revisited.  If the
> community seeks to augment existing RPMs, they are appropriately the
> subjects of Council policy action.
>
> Indeed, ICANN Chairman Steve Crocker and other Board members set an
> expectation in Toronto that new RPM proposals should have the
> Council?s support to be considered now:
>
> "Three more items. The rights protection in new gTLDs. The
> Intellectual Property Constituency and business constituency (sic)
> reached consensus on further mechanisms for new gTLD rights protection
> and agreed to socialize these to the rest of the GNSO and the Board
> looks forward to receiving input on these suggestions from the GNSO.
> So that is our plan, so to speak, which is we will continue to listen
> and wait for this to come up. "
>
>
http://toronto45.icann.org/meetings/toronto2012/transcript-public-forum-18oct12-en.pdf,
> at p.12.
>
> It is fair to say these proposals do not have the support of the
> Council?s majority.
>
> In addition, in the context of ICANN?s goal to advance competition in
> the domain name industry, the Council finds that RPM proposals, or
> other measures that could impact the marketability of new gTLDs, would
> deserve GNSO policy development to ensure applicability to all gTLDs,
> new and existing.  This is consistent with the NTIA?s recent letter to
> ICANN, which states in part:
>
> ?We encourage ICANN to explore additional trademark protections across
> all TLDs, existing and new, through community dialogues and
> appropriate policy development processes in the coming year.?
>
>
http://www.icann.org/en/news/correspondence/strickling-to-crocker-04oct12-en.pdf
>
>
> Extension of Claims 1
> The majority of the Council considers the community?s standing policy
> agreement for a 60-day Claims 1 period settled, and finds no reason to
> reconsider it.  Were reconsideration warranted, a PDP would be
required.
>
> The Council?s rationale is the Board?s policy determination of the
> timing of trademark claims as ?60 days from launch.?  In addition, the
> presence of both sunrise and trademark claims is a further compromise,
> as the Council voted unanimously to require either sunrise or claims,
> but not both.
>
> With regard to Claims 1, staff?s determination that a timing extension
> is appropriate is inconsistent with previous communications.  In your
> 19 September 2012 letter to the US Congress, you wrote (emphasis
added):
>
> ?For the first round of new gTLDs, ICANN is not in a position to
> unilaterally require today an extension of the 60-day minimum length
> of the new trademark claims service.  The 60-day period was reached
> through a multi-year, extensive process with the ICANN community.?
>
>    
http://www.icann.org/en/news/correspondence/chehade-to-leahy-et-al-19sep12-en
>
> The majority of the Council concurs with your message and believes the
> current 60-day Claims 1 period is agreed-to policy and as such should
> not be changed.
>
> Claims 2
> The Claims 2 proposal is a longer-term RPM with potentially
> significant impacts and would be subject to a PDP, in order to explore
> the complex issues therein. This advice is based on the following:
>
> 1.    Claims 2 is a new RPM, not implementation of an agreed-to RPM. 
It
> is fundamentally different from the 60- (or the proposed 90-) day
> claims service.
>
> 2.    Beyond this important distinction, there are many unanswered
> questions about a Clams 2 process.  Are potential registrants,
> legitimately entitled to non-infringing registrations, unfairly
> disenfranchised?  How would payments be made and allocated?  How do
> registries and registrars adapt their technical systems to accept the
> many more commands received over nine to ten additional months?  Is
> the burden as currently proposed (registries and registrars assume the
> cost and risk to build these systems with no predictable method of
> cost recovery) fair to all parties?  What should the claims notice
> say?  (In this regard, the Council respectfully points out that Claims
> 2 should not be characterized as ?more lightweight.?)  The purpose of
> the GNSO Council is to collaboratively answer these types of questions
> before recommending policy.
>
> Scope of Trademark Claims
> The Council?s majority believes your determination, as documented in
> your updated blog posting, that an expansion of trademark claim scope
> (beyond exact match) is a matter of policy, is correct.  It is further
> consistent with the following section of your letter to Congress:
>
> ?It is important to note that the Trademark Clearinghouse is intended
> to be a repository for existing legal rights, and not an adjudicator
> of such rights or creator of new rights.  Extending the protections
> offered through the Trademark Clearinghouse to any form of name would
> potentially expand rights beyond those granted under trademark law and
> put the Clearinghouse in the role of making determination as to the
> scope of particular rights.  The principle that rights protections
> ?should protect the existing rights of trademark owners, but neither
> expand those rights nor create additional rights by trademark law? was
> key to work of the Implementation Recommendation Team??
>
> Consistent with this, the Limited Preventative Registration (LPR)
> proposal, or any other blocking mechanism, also represents a change in
> policy and should be a matter of Council policy business if it is to
> be considered.
>
> Staff activity and input
> While the Council appreciates staff?s perspective regarding
> circumvention of GNSO procedures, regrettably, an attempt to
> circumvent the GNSO Council is very much in evidence.  The Council
> further appreciates your determination to focus on implementation; the
> Council expects however that implementation will be of agreed-to
> issues, and not new proposals not subject to adequate community review
> and input.
>
> [ENDS]
>
>
>
>
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