[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 02:02:21 UTC 2013

Thanks Rinalia.  Based on this response, I read the IDN variants statement
again.  Understand I make no claim to be expert in this matter, but it
seems to me that a more robust demand for variant management at the root is
both advisable and necessary.

However, if both Hong and Edmon are satisfied, then I will vote for the
Statement.

Best,
-Carlton

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

On Wed, May 1, 2013 at 7:10 PM, Rinalia Abdul Rahim <
rinalia.abdulrahim at gmail.com> wrote:

> Dear Carlton,
>
> Yes, I think the +50 would indeed increase the problem related to IDN
> Variants in general, but not really for the Han script.  The Han script is
> unique in that it has a limited scope of variants, which is what makes the
> risks manageable in introducing them into the root and which is why it isgoing in first.  It is not possible to have 50 variations of a name in
> Chinese without changing the meaning, which would then make the names open
> for contention.  I would urge you to seek confirmation with Hong or Edmon
> to ease your concerns.
>
> Now on the matter of +50 in principle, I cannot recall whether or not the
> ALAC issued a statement or planned an alternate course of action after
> the decision not to issue the joint statement with the NCSG, but we
> should definitely not allow it to go on.  The ALAC Advice to the Board on
> Trademark Clearinghouse and IDN Variants specifically indicates that " In
> principle, the At-Large community does not support over-extensive trademark
> protection measures," but that users need to be protected from confusion
> that may arise from poor or absent variant management related to trademarks.
>
> The issue of what to do with regard to the +50 should be considered by
> the ALAC again.
>
> Best regards,
>
> Rinalia
>
>
>
>
>
> Best regards,
>
> Rinalia
>
> 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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>> >
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>> >
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