[PC-NCSG] PC Endorsement Request

[Rafik Dammak]

Hi,

the deadline to submit is 1st May 23:59UTC, I would give more time to let
the rest of PC members to express their support till 30th April 20:00UTC (I
used the timestamp for the email sent by Kathy). after that deadline, we
can call the statement endorsed by NCSG PC.

Best,

Rafik

2015-04-30 5:22 GMT+09:00 Edward Morris <egmorris1 at toast.net>:

> Hello NCSG PC colleagues,
>
> I'm sorry for my brevity but I'm currently in transit.
>
> Time is short and we'd need an immediate response from everyone but I
> would propose that we endorse Kathy's well written public comment on the
> Draft Rights Protection Mechanism Review (follows in this transmission). As
> Kathy has written, these issues are a historical concern of the NCSG and
> the positions Kathy has enunciated are a fundamental part of who we are.
>
> Amr, I'm still not sure of the formal procedure for getting a PC
> endorsement of a public comment but if it is at all possible to reach an
> affirmative consensus I would propose that we try to do so.
>
> Thanks,
>
> Ed Morris
>
> Sent from my iPhone
>
> Begin forwarded message:
>
> *From:* Kathy Kleiman <kathy at KATHYKLEIMAN.COM>
> *Date:* April 29, 2015 at 8:37:43 PM GMT+1
> *To:* 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>
>
> 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 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!!!
>
>
>
> _______________________________________________
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> PC-NCSG at ipjustice.org
> http://mailman.ipjustice.org/listinfo/pc-ncsg
>
>
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