[ALAC] Fwd: ICANN’s Noncommercial Users Request Board Review of Staff Decision to Expand Scope of Trademark Clearinghouse in Violation of ICANN’s Bylaws

Wed May 1 21:56:10 UTC 2013

......from the time the issue of local marks was dismissed as irrelevant I
lost my juice for this, maybe out of hope it would, in time, be victim to
 hubris.

So now, was this - +50 - not an issue that increased the peril for the IDN
variants?  I might be mis-remembering but was this not a concern raised by
Hong?

Best,
-Carlton

==============================
Carlton A Samuels
Mobile: 876-818-1799
*Strategy, Planning, Governance, Assessment & Turnaround*
=============================

On Wed, May 1, 2013 at 12:34 PM, Evan Leibovitch <evan at telly.org> wrote:

> ---------- Forwarded message ----------
> From: Robin Gross <robin at ipjustice.org>
> Date: 1 May 2013 13:24
> Subject: ICANN’s Noncommercial Users Request Board Review of Staff Decision
> to Expand Scope of Trademark Clearinghouse in Violation of ICANN’s Bylaws
> To: NCSG-DISCUSS at listserv.syr.edu
>
>
>
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH
>
> *ICANN’s Noncommercial Users Request Board Review of Staff Decision to
> Expand Scope of Trademark Clearinghouse in Violation of ICANN’s Bylaws*
>
> ICANN’s Non-Commercial Stakeholders Group (NCSG) has filed a Request for
> Reconsideration<
> http://www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf
> >
> with
> ICANN’s Board of Directors regarding the staff’s decision to expand the
> scope of the trademark claims service beyond that provided by community
> consensus policy and in contradiction to ICANN Bylaws.
>
> Specifically at issue is ICANN staff’s unilateral decision to adopt the
> “trademark +50” proposal for new domains, which would provide trademark
> holders who have previously won a UDRP or court decision with rights to 50
> additional derivations of their trademark in ICANN’s Trademark
> Clearinghouse (TMCH).   Under staff’s plan, large trademark holders that
> register in the clearinghouse will be provided thousands of derivations of
> their trademarks since each separate country’s registration of the same
> trademark provides the brand owner with an additional 50 entries in the
> TMCH.[1]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn1
> >
> Entries in the TMCH trigger infringement warning notices to domain name
> registrants which can lead to increased liability for registrants,
> discourage lawful registrations, and chill speech on the Internet.
>
> ICANN’s bottom-up community-developed process for creating policy had
> approved of a TMCH model that allowed “exact matches” of trademarks only to
> be placed in the TMCH.  In 2007, ICANN’s GNSO Policy Council, including
> representatives from the Intellectual Property and Business Constituencies,
> approved the GNSO recommendations that created special protections for
> trademark rights by a supermajority
> vote.[2]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn2
> >
> As part of the multi-year consensus process, both the subsequent Special
> Trademarks Implementation (STI) Team and the Implementation Review Team
> (IRT) considered the issue of providing rights to exact matches or
> additional derivations, and both community-developed teams specifically
> opted for exact matches only to be placed into the TMCH.  ICANN’s CEO
> testified before U.S. Congress in 2012 that expanding the scope of the TMCH
> further would be inappropriate since it would create new rights that do not
> exist in law and ICANN should not be creating unprecedented
> rights.[3]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn3
> >
>
> Many months after the final TMCH model of exact matches only was published
> in ICANN’s Applicant Guidebook and new domain businesses relied on it when
> filing their applications, ICANN’s Intellectual Property and Business
> Constituencies lobbied ICANN’s new CEO to make drastic changes to the
> community-developed policy and grant additional trademark rights in the
> TMCH.
>
> After the October 2012 Toronto ICANN Meeting, a “strawman solution” was
> proposed by ICANN’s new CEO which included a number of IPC/BC’s substantive
> policy proposals to give trademark holders additional privileges in the
> domain name system, including changing the exact matches only standard
> approved of by the community.
>
> Yet ICANN’s CEO recognized that expanding the scope of the trademark claims
> service was a policy matter requiring GNSO Council guidance, as he stated
> on his blog[4]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn4
> >
> in
> December 2012; and the CEO did write to the GNSO Council to request
> guidance on this policy proposal. Under ICANN’s Bylaws, staff may not
> change GNSO-approved policy, except under a strict process that involves
> consulting with the GNSO and a 2/3 vote of the Board of Directors.
>
> NCSG filed comments on the proposed policy changes and warned against
> re-opening previously closed consensus agreements and circumventing ICANN’s
> stated bottom-up policy development
> process.[5]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn5
> >
> In addition to the flawed process for adopting this policy, NCSG also
> detailed substantive concerns with staff’s proposal to expand trademark
> rights beyond anything that exists in trademark law.  It came as no
> surprise that only members of the IPC and BC supported the strawman
> proposals in ICANN’s comment
> period.[6]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn6
> >
>
> In the GNSO Council’s February 29, 2013 response to the CEO regarding the
> proposal to expand the scope of trademark claims, the GNSO Chair wrote,
> “the majority of the council feels that proposal is best addressed as a
> policy* *concern, where the interest of all stakeholders can be
> considered.”
> [7]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn7
> >
> Thus the GNSO Council also determined this specific proposal to be a policy
> matter, requiring consultation from the entire community before such a
> change could be made to existing GNSO Council approved policy.
>
> Yet with only an email sent on 20 March 2013, ICANN staff announced in an
> attached memorandum that it would expand the scope of the trademark claims
> service to give trademark holders rights to 50 additional derivations of
> their trademark, in contradiction to GNSO developed policy of exact matches
> only and the subsequent requested GNSO Council guidance on the
> matter.[8]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn8
> >
>
> Staff’s only explanation for such a drastic shift in the creation of new
> rights: “this proposal appears to be a reasonable add on to an existing
> service, rather than a proposed new service”.  Thus with a single line of
> evasive text, years of hard-fought community consensus policy was brushed
> under the rug and the new era of policy development via ICANN staff edict
> was solidified.
>
> On 19 April 2013 NCSG filed this Request for Reconsideration of the staff
> decision because ICANN did not follow its stated process for changing
> GNSO-approved policy.  If ICANN wants to deviate from Supermajority
> GNSO-approved policy, it must follow the process outlined in the
> organization’s Bylaws, Annex A Section
> 9.[9]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn9
> >
>  As
> an organization that holds itself out as a champion of the bottom-up policy
> development process, ICANN is obligated to comply with community-developed
> policies, unless the Board of Directors can muster the necessary 2/3rd vote
> to over-turn the community decision.  That mandatory process was not
> followed by ICANN’s staff or Board in over-turning the community-approved
> policy in favor of staff’s policy to expand the scope of TMCH.
>
> ICANN’s Board Governance Committee has thirty days in which to make to a
> recommendation to ICANN’s Board of Directors regarding the NCSG’s Request
> for Reconsideration or report to the Board on why no final recommendation
> is available and provide a timeframe for making a final recommendation on
> the matter.  ICANN’s entire Board should consider the recommendation of the
> Board Governance Committee at its next regularly-scheduled Board meeting.
>
> Under Article IV Section 2 of ICANN’s Bylaws, the Request for
> Reconsideration process is a mechanism intended to reinforce ICANN’s
> accountability to the community for operating in a manner consistent with
> its Bylaws.[10]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftn10
> >
> Because the staff’s unilateral decision to change GNSO-approved policy was
> not consistent with ICANN’s Bylaws and contradicted ICANN stated policy,
> NCSG filed the Request to correct the error and bring ICANN into compliance
> with its Bylaws and stated policies.
>
> NCSG requests that the Board reinstate the community-developed policy of
> giving trademark holders rights to include exact matches of their trademark
> only in the TMCH, which was the policy stated in ICANN’s Applicant
> Guidebook when ICANN accepted applications for new domains.
>
>    - NCSG’s Request for Reconsideration:
>
> http://www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf
>    - Attachments to NCSG’s Request for Reconsideration:
>
> http://www.icann.org/en/groups/board/governance/reconsideration/request-attachment-gross-25apr13-en.pdf
>    - ICANN Website on Requests for Reconsideration:
>    http://www.icann.org/en/groups/board/governance/reconsideration
>
> ------------------------------
>
> [1]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftnref1
> >
>
>
> http://domainincite.com/12451-loophole-gives-trademark-owners-unlimited-clearinghouse-records
>
>
> [2]
> http://gnso.icann.org/en/issues/new-gtlds/pdp-dec05-fr-parta-08aug07.htm
>
> [3] http://www.internetcommerce.org/ICANN_Amnesia
>
> [4]
>
> http://blog.icann.org/2012/11/a-follow-up-to-our-trademark-clearinghouse-meeti
> ngs/
>
> [5]
>
> http://ipjustice.org/wp/2013/01/14/statement-of-icanns-non-commercial-stakeholders-group-ncsg-on-the-trademark-clearinghouse-talks-and-staff-strawman-model/
>
> [6] http://forum.icann.org/lists/tmch-strawman/msg00096.html  See also:
>
> Comments of Registrar Stakeholder Group:
> http://forum.icann.org/lists/tmch-strawman/msg00027.html
>
> Comments from New TLD Applicant Group:
> http://forum.icann.org/lists/tmch-strawman/msg00014.html
>
> Comments of Non-Commercial Stakeholder Group:
> http://forum.icann.org/lists/tmch-strawman/msg00029.html
>
> Comments of the Internet Service Provider Constituency:
> http://forum.icann.org/lists/tmch-strawman/msg00011.html
>
> Comments of Public Interest Registry:
> http://forum.icann.org/lists/tmch-strawman/msg00024.html
>
> [7]
>
> http://gnso.icann.org/bitcache/d8eaf7ce8d121b69d340d1d14223520fd7d478b3?vid=46277&disposition=attachment&op=download
>
> [8]
>
> http://newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution-memo-20mar13-en.pdf
>
> [9]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftnref9
> >
>   http://www.icann.org/en/about/governance/bylaws#AnnexA
>
>             GNSO Policy Development Process
>
> Section 9.  Board Approval Processes.  a. Any PDP Recommendations approved
> by a GNSO Supermajority Vote shall be adopted by the Board unless, by a
> vote of more than two-thirds (2/3) of the Board, the Board determines that
> such policy is not in the best interests of the ICANN community or ICANN.
> If the GNSO Council recommendation was approved by less than a GNSO
> Supermajority Vote, a majority vote of the Board will be sufficient to
> determine that such policy is not in the best interests of the ICANN
> community or ICANN.
>
> b. In the event that the Board determines, in accordance with paragraph a
> above, that the policy recommended by a GNSO Supermajority Vote or less
> than a GNSO Supermajority vote is not in the best interests of the ICANN
> community or ICANN (the Corporation), the Board shall (i) articulate the
> reasons for its determination in a report to the Council (the "Board
> Statement"); and (ii) submit the Board Statement to the Council.
>
> c. The Council shall review the Board Statement for discussion with the
> Board as soon as feasible after the Council's receipt of the Board
> Statement. The Board shall determine the method (e.g., by teleconference,
> e-mail, or otherwise) by which the Council and Board will discuss the Board
> Statement.
>
> d. At the conclusion of the Council and Board discussions, the Council
> shall meet to affirm or modify its recommendation, and communicate that
> conclusion (the "Supplemental Recommendation") to the Board, including an
> explanation for the then-current recommendation. In the event that the
> Council is able to reach a GNSO Supermajority Vote on the Supplemental
> Recommendation, the Board shall adopt the recommendation unless more than
> two-thirds (2/3) of the Board determines that such policy is not in the
> interests of the ICANN community or ICANN. For any Supplemental
> Recommendation approved by less than a GNSO Supermajority Vote, a majority
> vote of the Board shall be sufficient to determine that the policy in the
> Supplemental Recommendation is not in the best interest of the ICANN
> community or ICANN.
>
> [10]<
> https://community.icann.org/display/gnsononcomstake/NCSG+Request+for+Reconsideration+of+Staff+Decision+to+Expand+Scope+of+TMCH#_ftnref10
> >
>  http://www.icann.org/en/about/governance/bylaws#IV
>
>
>
>
>
> --
> Evan Leibovitch
> Toronto Canada
>
> Em: evan at telly dot org
> Sk: evanleibovitch
> Tw: el56
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