[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 17:56:56 UTC 2013

Thanks Rinalia.  I am so advised.

Best,
-Carlton

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

On Wed, May 1, 2013 at 10:06 PM, Rinalia Abdul Rahim <
rinalia.abdulrahim at gmail.com> 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
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>> >>
>> >> 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
>> >
>> _______________________________________________
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>>
>
>