[PC-NCSG] PC Endorsement Request

Sam Lanfranco lanfran
Thu Apr 30 03:03:16 EEST 2015


Put me down as endorsing Kathy's comments.....and thanks Kathy!

Sam L.
>
>> *From:* Kathy Kleiman <kathy at KATHYKLEIMAN.COM 
>> <mailto:kathy at KATHYKLEIMAN.COM>>
>> *Date:* April 29, 2015 at 8:37:43 PM GMT+1
>> *To:* NCSG-DISCUSS at LISTSERV.SYR.EDU 
>> <mailto:NCSG-DISCUSS at LISTSERV.SYR.EDU>
>> *Subject:* *Comments on the Draft Rights Protection Mechanism Review 
>> paper - now finishing ICANN Public Comment*
>> *Reply-To:* Kathy Kleiman <kathy at KATHYKLEIMAN.COM 
>> <mailto:kathy at KATHYKLEIMAN.COM>>
>>
>> Dear All,
>>
>> ICANN has published a draft of its ?Rights Protection Mechanisms 
>> Review? to ask whether the ?rights protection mechanisms? of the New 
>> gTLD Program work. These include the Trademark Clearinghouse (TMCH), 
>> mandatory Sunrise Period in all gTLD to allow trademark owners to 
>> register first, Uniform Rapid Suspension (URS) process, etc.
>>
>> The young NCSG played a special role in this process in 2009-2010. We 
>> spent 7 weeks in tight negotiations with the other Stakeholder Groups 
>> to try to balance the rights of intellectual property owners with 
>> those of new/small businesses, noncommercial entities, users of all 
>> stripes and the registry/registrar communities. The NCSG team on the 
>> ?STI? (?Special Trademark Issues? Working Group was Robin Gross, 
>> Konstantinos Komaitis, Wendy Seltzer and me with Mary Wong and Leslie 
>> Guanyuan as our Alternates.
>>
>> Now as this all comes up for review again, I think ICANN Staff has 
>> lost its way. This Draft Rights Protection Mechanism (RPM) report 
>> does not mention anything about the fairness and balance we tried to 
>> put in; it does not ask whether abuse about whether Registrants 
>> receive good education about the new domain name dispute proceeding 
>> for the URS and its defenses (the answer is No) or whether legitimate 
>> ?fair use? of words in domain names are truly being protected.
>>
>> Accordingly, I share a set of comments I have drafted.These are due 
>> shortly (sorry, ICANN?s Proxy/Privacy Accreditation Working Group 
>> kept us busy!) ? tomorrow (Thursday) ? *so I circulate them to all 
>> who would like to sign on. *
>>
>> So far, no one has responded to this draft report with any interest 
>> in freedom of expression, fair use or the rights of Registrants. I 
>> guess that?s our job :-)!
>>
>> Link: https://www.icann.org/public-comments/rpm-review-2015-02-02-en
>>
>> Best,
>>
>> Kathy (Kleiman)
>>
>> --------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
>>
>> Comments Submitted by Members of the Noncommercial Stakeholders Group
>>
>> Thank you for the publication of the DRAFT Rights Protection 
>> Mechanisms Review paper. Clearly an enormous amount of work was done 
>> to compile and analyze quantitative and qualitative data on the use 
>> of specially-created mechanisms in the New gTLDs, such as the 
>> Trademark Clearinghouse, Trademark Claims and Uniform Rapid Suspension.
>>
>> It is very important, however, that the questions being asked in the 
>> report, and all future reports on this subject, be expanded to 
>> reflect the whole of the GNSO and ICANN?s goals in passing these 
>> rules:were existing rights protected, were existing fair use 
>> protections maintained and did ICANN avoid the creation of new or 
>> expanded intellectual property rights (which ICANN has no power or 
>> authority to create)?
>>
>> With the details as set out below, we urge that the final report 
>> expand its inquiry to see if the balance and fairness included in 
>> these mechanisms worked for all parties: both rights holders and 
>> registrants. Did these programs reflect the full range of goals and 
>> commitments for all parties that ICANN set out in their adoption?
>>
>> /We respectfully request that we would like to see more of these 
>> issues of balance and fairness raised in the final report. For 
>> example, when the final report goes out to the Community with 
>> questions of whether the URS (Uniform Rapid Suspension) worked for 
>> trademark owners, we also should be asking whether the URS worked for 
>> New gTLD Registrants and what obstacles they faced to education and 
>> information in responding to URS claims./
>>
>> /So the comments below both respond to questions raised by ICANN 
>> Staff ? and new ones that we would like ICANN Staff to raise in the 
>> final version of this RPM Review to ensure that all sides and 
>> concerns are heard in the feedback that ICANN seeks./
>>
>> _Specifically: _
>>
>> 1.In Section 3.2.2 *Trademark Clearinghouse Word Marks:*The section 
>> raises some good points that should be addressed more directly. The 
>> GNSO adopted rules for the protection of ?word marks? ? as in the 
>> specific text of a mark and the letters, numbers and symbols it may 
>> use, e.g., HASBRO.The GNSO rules specifically did not embrace the 
>> registration of ?design marks,? a mark containing both wording and 
>> design features in which the font, the colors and the artistic 
>> elements are all part of the features protected by the trademark ? 
>> and the individual letters and words are expressly NOT protected 
>> outside of the design packaging in which they are presented.
>>
>> The GNSO?s STI Recommendation specifically */did not/* consider it 
>> fair to provide the extensive protection of the Sunrise Period and 
>> the Trademark Claims notices to lettering within a design mark ? 
>> lettering offering ?disclaimed? and expressly not protected as text 
>> alone and in isolation of its design ? and yet that is precisely what 
>> the Trademark Clearinghouse (TMCH) has gone ahead and accepted.Domain 
>> names and URLs don?t have design elements.
>>
>> We strongly request further inquiry into: how many design marks have 
>> been accepted? How many of them expressly disclaim the very letters 
>> and words that the TMCH is now protecting? How can we return to the 
>> original intent of the GNSO/STI rules and the limits adopted by the 
>> GNSO Council and ICANN Board?
>>
>> 2.*Section 3.3* *Proof of Use* is an important feature of the TMCH; 
>> it is designed to prevent gaming of the system and unfair advantage 
>> to certain new registrants over others. In addition to requesting 
>> feedback from those who have used the Clearinghouse verification and 
>> Sunrise registration processes, it is important to request input from 
>> those who have observed these practices and wish to comment on 
>> whether the balance and intent to prevent 
>> individuals/organizations/companies from grabbing Sunrise spots 
>> without any existing trademark use has been met. Should the use 
>> requirements be expanded ? e.g., to trademarks of a certain age such 
>> as one year?
>>
>> 3.*Section 3.4 Matching Rules*: This is an important section as the 
>> rules of the GNSO?s STI were specially crafted to allow only exact 
>> matches. What the section does not include, and should, is why that 
>> decision was made. Going beyond ?exact matches? created a firestorm 
>> of trouble for what is one person?s ?mark contained? is another 
>> person word. Inclusion of examples in the next version of this paper 
>> would be key to illustrating the point. Thus, an existing trademark 
>> in ENOM (an ICANN-Accredited Registrar), but such rules, would create 
>> a bar on the domain name registration of VENOM ? and entirely 
>> different word (and one itself also trademarked now and it will be 
>> again and again in the future).Similarly, the ___ registrations of 
>> GOGGLE in the US Trademark Office did not prevent the registration of 
>> the domain name GOOGLE.COM <http://GOOGLE.COM> or the registration of 
>> GOOGLE as a trademark in the US Trademark Office.
>>
>> A few clear illustrations would convey the ambiguity and difficulty 
>> of going beyond an ?exact match? and shed light on the rationale of 
>> the existing rule ? a balanced approach as the next draft asks for 
>> additional input and possible changes.
>>
>> 4.*Section 3.5 Trademark Clearinghouse Communications*:In the next 
>> version and other related inquiries, we would like ICANN Staff to 
>> reflect a much broader question.Should the goal have been only ?to 
>> reach trademark holders worldwide to inform them of the services 
>> related to the Clearinghouse via webinars and Q&F sessions? or should 
>> it have been to inform the worldwide community of a massive change in 
>> the rules of registration of domain names in the New gTLDs and a new 
>> set of protections and notices that ALL registrants should know about 
>> and understand.Did the TMCH devote even one second or one dollar to 
>> outreach, webinars and Q&A session to explain the impact of the 
>> Trademark [Claims] Notice to those receiving it, to answer questions 
>> that may arise from ambiguities or the publication of this new type 
>> of notice, or to ensure that those registrants who the Trademark 
>> Notice was meant to protect were not artificially ?chilled? from 
>> moving forward with the registration of a domain name if they had the 
>> rights to do so.
>>
>> **
>>
>> While the TMCH has highly publicized that many potential registrants 
>> fail to ?click through? a Trademark Claim, where is the additional 
>> information about why ? so that the forms and notices can be tweaked 
>> to be fairer and more balanced?
>>
>> Our concern is of course that no education and no information was 
>> provided to the global community by ICANN or the TMCH.This has left 
>> noncommercial registrants, small businesses, and individuals without 
>> the guidance that these rules and policies are designed to protect 
>> all legitimate overlapping uses of words, names, phrases, acronyms 
>> for future domain names, just as they have been protected for 
>> existing ones (see e.g., ACM as the Association for Computing 
>> Machinery and the Academy of Country Music, and DELTA as Delta 
>> Faucets, Delta Airlines, Delta Sigma Theta and Delta the symbol for 
>> change in mathematics.
>>
>> Is the TMCH only helping one side, and shouldn?t it be educating and 
>> communicating its rules, policies, protections and balances with all 
>> and for all users of the new gTLD domain name system?
>>
>> 5.*Section 4* *Sunrise Period*:We request that the questions in the 
>> next draft and related reports be expanded to see if the sunrise 
>> period gives unfair advantage to trademark owners far outside their 
>> categories of goods and services. In cases where a New gTLD caters to 
>> .PIZZA should Delta Airlines really have a right of first 
>> registration?For New gTLDs and future gTLDs catering to individuals, 
>> noncommercial organizations, religious groups, etc., should the 
>> Sunrise Period exist at all?
>>
>> **
>>
>> Inquiry**into whether an automatic and upfront registration benefit 
>> for existing trademark owners unfairly benefits McDonalds Restaurant 
>> in a .FAMILY or .CATHOLIC gTLD is a question that truly needs to be 
>> added and asked.Further, how can Sunrise Periods in future rounds be 
>> more narrowly tailored to the limited rights of existing trademark 
>> owners?
>>
>> 6.*Section 4.2 Limited Registration Periods* is an important section 
>> and one that fairly highlights the legitimate reasons why registries 
>> may want to open registrations to those who are not trademark owners, 
>> but otherwise fit into a category, such as football players seeking 
>> to register their names in .FOOTBALL prior to the opening in General 
>> Availability.
>>
>> 7.Section 4.5 *Reserved Names.* Reserved names policy is one that 
>> raises a lot of questions and should be clarified in the future 
>> rounds. The idea of reserved unlimited numbers of domain names in a 
>> gTLD and releasing them to any ?person or entity at Registry 
>> Operator?s discretion? may and has led to gaming and anticompetitive 
>> activity. Can these Reserved Name policies be used to cherry-pick all 
>> of the best names by one industry competitor and bypass ICANN?s rules 
>> barring closed generics?This is an important inquiry for the next round.
>>
>> 8.*Section 5 Trademark Claims Service*:The Trademark Claims Services, 
>> as discussed above, has raised a number of questions and concerns. 
>> Questions we request be asked in future drafts and related reports 
>> include:
>>
>> a)Is the Trademark Notice being shown to all Registrants?
>>
>> b)Do all registrants understand the trademark claims notice?
>>
>> c)Why are so many potential registrants not registering domain names 
>> after reading the Trademark Notice? Are they actually cybersquatters 
>> or are potential legitimate customers being ?chilled? by language of 
>> the notice or the inability to understand the notice (either the 
>> phrasing or not reading it in a language they speak?
>>
>> d)**How can we make the Trademark Notices better, clearer, fairer and 
>> more accessible so that those protected by the notices are protected 
>> and yet the limits, balances and fair use protections adopted by the 
>> GNSO Council and ICANN Board are achieved as well?
>>
>> 9.*Section 5.2,* *Inclusion of Previously Abused Labels*: there is a 
>> lot of concern re: how this non-policy was created and implemented by 
>> ICANN.In light of the complaints brought against it, and apologies 
>> issues, shouldn?t the report and future versions be asking if this 
>> ?50+? policy should be reasonably limited, or rolled back completely?
>>
>> 10.*Section 5.3, Extensions of Trademark Claims Service, may be a 
>> completely invalid offering. *The GNSO?s adopted rules and those of 
>> the ICANN Board were clearly limited in how long a Trademark Claims 
>> Service would last.Trademark Owners are responsible for the policing 
>> of their own marks and there are many private services and public 
>> tools they can use. Should the ICANN Community be subsidizing or 
>> allowing such an expanded and _even unlimited extension of the 
>> Trademark Claims Service and what are the intended and unintended 
>> consequences to the most vulnerable of our potential future 
>> registrants: including noncommercial organizations, individuals and 
>> small businesses and entrepreneurs?What is the impact on those in 
>> developing countries?What is the impact of those who don?t speak 
>> English (e.g., those now registering in our Internationalized Domain 
>> Names)?Is the TMCH unlimited extension fair, is it being invalidly 
>> subsidized or even paid for by the ICANN Community without 
>> authorization and should it be stopped? _
>>
>> We strongly request that the inquiry of the next and similar reports 
>> be expanded to include the questions above and whether the TMCH is 
>> allowed to write its own rules. **
>>
>> 11.*Section 6,* *Uniform Rapid Suspension:*we would like to see the 
>> next and future reports reflect that the URS was a controversial 
>> mechanism -- an ultra-fast, ultra-cheap takedown mechanism for New 
>> gTLDs ? and many were worried about whether registrants would be able 
>> to respond.
>>
>> Clearly, registrants ARE responding, and in far greater numbers than 
>> we expected given that half the URS claims receive a response. Do 
>> Registrants have the information they need to respond? Do they 
>> understand the special defenses offered in the URS? Are they using them?
>>
>> Additional questions that need to be asked in the next draft of this 
>> report and similar reports must reflect the education and rights of 
>> both sides, the claimant and the respondent, and they must include:
>>
>> A.Who is educating New gTLD Registrants globally on the existence of 
>> the URS?
>>
>> B.Who is educating registrants about the key differences of the UDRP 
>> and URS, including the much more rapid time needed for response, the 
>> different standards of proof, and the much more expanded 
>> defenses?Where are the ICANN Webinars, ICANN LEARN Websites, FAQ 
>> pages and Q & A sheets?
>>
>> C.Who is educating Registrants about the appellate mechanism of the URS?
>>
>> D.Is anyone using the Appellate Mechanism of the URS?
>>
>> E.Are Panelists being rotated as required by the URS rules?
>>
>> F.Is the limitation of the URS to English proceedings ? even in the 
>> Internationalized Domain Names (!!) ? operating a barrier to 
>> responses by Registrants? What percentage of URS cases are coming 
>> from the IDNs?
>>
>> G.How can ICANN and the URS Providers improve the education of 
>> Registrants around the URS rules, URS process, and special URS 
>> defenses and rights for registrants?
>>
>> H.How can we improve monitoring of the monitoring and reporting of 
>> the URS results?
>>
>> Conclusion:
>>
>> Our thanks again to the ICANN Staff for such a comprehensive report. 
>> A huge amount of work was done, but work still remains. As in every 
>> type of intellectual property rights protection system (legislative, 
>> regulatory, etc.), the questions are always asked: are the rights 
>> holders protected, but also is the public protected, are all future 
>> rights holders protected, are free speech, freedom of expression, 
>> fair use and the rights of all to use dictionary words, generic 
>> words, common acronyms and phrases as well as their first and last 
>> names protected to the fullest extent of national laws, and 
>> international treaties? Are these rights in balance, and carefully 
>> drafted by the IRT, the STI and when adopted by the GNSO and ICANN 
>> Board?
>>
>> The next version of this report ? and all future reports including 
>> the upcoming UDRP Review ? must include this fair and comprehensively 
>> balanced inquiry. We must remain fully cognizant that we are adopting 
>> these rules and seeking to protect the balanced rights of the whole 
>> of the Internet Community, which is now the world. This is not just a 
>> world of commerce, it is a world of free speech, democratic 
>> development, and freedom of association, rights that are impacted by 
>> restrictions on the use of words.
>>
>> Sincerely,
>>
>> THE UNDERSIGNED MEMBERS OF THE NONCOMMERCIAL STAKEHOLDERS GROUP
>>
>> Kathy Kleiman, Co-Founder Noncommercial Stakeholders Group, NCSG 
>> Representative to Special Trademarks Initiative Team
>>
>> Stephanie Perrin, NCSG Canada
>>
>> OTHERS ? NAMES, TITLES, AND/OR COUNTRIES WELCOME!!!
>>
>> Penn Engineering Overseers? Meeting
>
>
>
>
> _______________________________________________
> PC-NCSG mailing list
> PC-NCSG at ipjustice.org
> http://mailman.ipjustice.org/listinfo/pc-ncsg


-- 
------------------------------------------------
"It is a disgrace to be rich and honoured
in an unjust state" -Confucius
------------------------------------------------
Dr Sam Lanfranco (Prof Emeritus & Senior Scholar)
Econ, York U., Toronto, Ontario, CANADA - M3J 1P3
email: Lanfran at Yorku.ca   Skype: slanfranco
blog:  http://samlanfranco.blogspot.com
Phone: +1 613-476-0429 cell: +1 416-816-2852

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mailman.ipjustice.org/pipermail/pc-ncsg/attachments/20150429/1d4a8313/attachment-0001.html>



More information about the NCSG-PC mailing list