[ALAC] Fwd: ICANN’s Noncommercial Users Requ est Board Review of Staff Decision to Expand Scop e of Trademark Clearinghouse in Violation of ICAN N’s Bylaws
Alan Greenberg
alan.greenberg at mcgill.ca
Thu May 2 06:12:14 UTC 2013
I would strongly suggest that we keep the two issues separate. The
lack of variant support, but at the DNS level and in the TMCH (two
separate issues) is not one of ICANN's proudest moments (to
understate the situation). And it is one that ALAC is in the process
of speaking on. Hopefully with some positive impact.
The +50 "variations" of trademarks is a completely separate issue. It
does not change the CH repository or checking for matches
sunrise/claims time. It allows a TM holder to register additional
strings based on UDRP/Court decisions for TMs already in the CH. As
we know, this is a very contentious proposal, and one that has now
resulted in a request for Board reconsideration. Best to keep this
issue far away from that of IDN variants. Co-mingling the two can
only result in slowing the first implementation.
In its earlier statements, the ALAC objected to the process followed
to create this new rights mechanism as we deemed it to be a policy
matter without following a reasonable development process. We did
support the overall intent as it was somewhat related to the ALAC
minority position taken on the STI, supporting the concept of
allowing the entry into the CH of TMs plus terms associated with
products or services (ie EXXON-GAS, Dell-computers). In the draft
statement that was suggested to be issues along with the NCSG at the
last open forum, we would have gone on record as saying that we would
not support 50 variations for EACH copy of an identical TM where an
entity (or related entities) has multiple entries in the CH for
registrations in multiple jurisdictions. As Rinalia suggests, this is
a position that the ALAC certainly could reconsider if it wished.
Alan
At 5/1/2013 11:06 PM, Rinalia Abdul Rahim wrote:
>Carlton,
>
>Let me break the issue down so that it can be addressed properly in terms
>of determining the course of ALAC action.
>
>*There are 2 fundamental issues being dealt with here:*
>1. The current TMCH model as designed doesn't deal with variants.
>2. The ICANN decision to allow 50 variations of trademark names in the TMCH
>will have a multiplier effect if variants are factored in the TMCH model
>(i.e., it worsens the problem of over-protection).
>
>The statement addresses (1). Without (1), you don't have the problem of
>(2).
>
>The statement is asking for the ICANN board to address the issue of
>variants at the root level and in the TMCH model on an urgent and expedited
>basis.
>
>The ALAC's course of action regarding 50 variations of trademark names in
>the TMCH is to my mind something that warrants a statement of its own that
>can be reinforced with the IDN variants argument in terms of how overly
>protective the TMCH can be, but it is NOT an argument to compel the board
>to ensure variants are factored in the TMCH model or in the root.
>
>Rinalia
>
>
>
>
>
>On Thu, May 2, 2013 at 10:08 AM, Carlton Samuels
><carlton.samuels at gmail.com>wrote:
>
> > Hi Hong:
> > My gut was telling me something was adrift! Thanks very much for the
> > explanation. I now have a better sense in reason why my gut was carrying
> > on.
> >
> > So, following on Rinalia's advice, I take it Hong believes the Statement
> > is not reflecting the urgent situation. Might I hear from Edmon on this?
> >
> > Best,
> > -Carlton
> >
> >
> > ==============================
> > Carlton A Samuels
> > Mobile: 876-818-1799
> > *Strategy, Planning, Governance, Assessment & Turnaround*
> > =============================
> >
> >
> > On Wed, May 1, 2013 at 7:43 PM, Hong Xue <hongxueipr at gmail.com> wrote:
> >
> > > 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
> > >> > _______________________________________________
> > >> > ALAC mailing list
> > >> > ALAC at atlarge-lists.icann.org
> > >> > https://atlarge-lists.icann.org/mailman/listinfo/alac
> > >> >
> > >> > At-Large Online: http://www.atlarge.icann.org
> > >> > ALAC Working Wiki:
> > >> >
> > >>
> >
> https://community.icann.org/display/atlarge/At-Large+Advisory+Committee+(ALAC)
> > >> _______________________________________________
> > >> ALAC mailing list
> > >> ALAC at atlarge-lists.icann.org
> > >> https://atlarge-lists.icann.org/mailman/listinfo/alac
> > >>
> > >> At-Large Online: http://www.atlarge.icann.org
> > >> ALAC Working Wiki:
> > >>
> >
> https://community.icann.org/display/atlarge/At-Large+Advisory+Committee+(ALAC)
> > >>
> > >
> > >
> > >
> > > --
> > > 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
> > >
> > _______________________________________________
> > ALAC mailing list
> > ALAC at atlarge-lists.icann.org
> > https://atlarge-lists.icann.org/mailman/listinfo/alac
> >
> > At-Large Online: http://www.atlarge.icann.org
> > ALAC Working Wiki:
> >
> https://community.icann.org/display/atlarge/At-Large+Advisory+Committee+(ALAC)
> >
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