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

Thu May 2 00:43:01 UTC 2013

Hi, Carlton, 50+ approach makes variants-disabled policy more ironical. If
ICANN (staff) is even willing to protect 50 "derivations" that are
DIFFERENT from a trademark per se, why does it refuse to entertain the SAME
trademark in variants. This is illogical by all means. On the other hand,
all 50 derivations, if applied to a Chinese-character trademark, will all
involve variant issues definitely.

Hong

On Thu, May 2, 2013 at 5:56 AM, Carlton Samuels
<carlton.samuels at gmail.com>wrote:

> ......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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-- 
Professor Dr. Hong Xue
Director of Institute for the Internet Policy & Law (IIPL)
Beijing Normal University
http://www.iipl.org.cn/
19 Xin Jie Kou Wai Street
Beijing 100875 China