[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
>
>
>
>
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--
------------------------------------------------
"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
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