[ALAC] BGC decision of NCSG reconsideration request on TM+50

Sun May 26 03:10:17 UTC 2013

GAC Principles are at <
http://archive.icann.org/en/committees/gac/gac-cctldprinciples-23feb00.htm >,
which says:

9.1.6 In so far as ccTLD registration policies allow or encourage
registrations from entities or individuals resident outside the relevant
territory, then the delegee concerned should implement dispute resolution
policies that ensure that the interests of all registrants, and of third
parties, including those outside their territory and in other
jurisdictions, are taken into account. Dispute resolution policies should,
to the greatest extent possible, follow common principles, including due
regard for internationally recognised intellectual property, consumer
protection and other relevant law, and be implemented by all delegees. The
delegee should, so far as possible, implement alternative dispute
resolution procedures conducted online, without precluding access to court
litigation.

WIPO provides for DR services for a list of ccTLDs. Please see <
http://www.wipo.int/amc/en/domains/cctld/>. More than 70% of these ccTLDs
directly apply UDRP and the rest of them apply the DRP "modelled" on UDRP.
Most of these ccTLDs "allow or encourage registrations from entities or
individuals resident outside the relevant territory".

So, yes, at least the management and policy of those "open" ccTLDs are very
similar to gTLDs.

Hong

On Thu, May 23, 2013 at 10:42 PM, Evan Leibovitch <evan at telly.org> wrote:

> I hadn't picked up on that one, Hong.
>
> This could indeed be interesting. If the GAC is opening up the door to
> ccTLD policing by ICANN, this opens up an entirely new set of opportunities
> and headaches.
>
> ccTLDs have long argued that they are immune to ICANN governance (outside
> of purely discretionary participation in the ccNSO) because of national
> sovereignty. If the governments of the world (at least as expressed in this
> early phase by the GAC) are OK with a body like ICANN regulating some of
> those "sovereign" activities, that's a major leap. Even creation of minimal
> standards, such as requiring use of the UDRP for TLDs that allow domain
> ownership outside the ccTLD's country, is a massive shift.
>
> The immediate reply to the GAC, of course, is that to turn this direction
> into something enforceable, an effort such as a treaty is required.
> However, this may clearly be a case of "be careful what you wish for".
> Until now interest in such action was negligible. However, if the current
> governmental interest in the DNS is now growing to the point that it might
> be motivated to create a multilateral foundation for domain name
> governance, this could be (to put it mildly) a seismic shift in ICANN's
> roles and relevance. WCIT indicated a broader set of goals, but I could
> envision international agreement on minimum TLD standards to be quite
> attainable.
>
> Or maybe I'm reading far too much into the GAC direction as Hong has
> interpreted it. In that case, never mind ;-).
>
>
>
> On 23 May 2013 02:07, Hong Xue <hongxueipr at gmail.com> wrote:
>
>> I'm not addicit to this, but UDRP is more complicated than those
>> "implementers" imagine. Apart from gTLDs, a number of ccTLDs (equivalent
>> to
>> gTLDs), such as .tv, .cc or more recent .co, are required to apply UDRP
>> per
>> se (not similar ccTLD processes) under the GAC Principles. If the
>> "implementation" does want to address the TMs abused in the UDRP cases,
>> there is no way to exclude these ccTLD UDRP cases. Of course, this makes
>> the whole things even more fascinating.
>>
>> Hong
>>
>>
>>
>> On Wed, May 22, 2013 at 10:37 PM, Alan Greenberg
>> <alan.greenberg at mcgill.ca>wrote:
>>
>> >  At 22/05/2013 02:33 AM, Hong Xue wrote:
>> >
>> > Option a) 50+ records in TMCH are the domain name strings (for example
>> > yahoosuchs.com or prada-for-sale.com) that had been either transferred
>> or
>> > deleted in UDRP proceeds. But, many well-known marks have already won
>> more
>> > than 50 UDRP decisions. It is arbitrary to limit to 50. How to limit to
>> > 50?
>> >
>> >
>> > 50 was clearly an arbitrary number. But how to limit to 50 PER MARK is a
>> > problem, since I don't think that it will be clear from records
>> presented
>> > to TMCH that (for example) OUTLOOK registered to Microsoft US is the
>> same
>> > TM as OUTLOOK registered to Microsoft Canada, but different from the
>> > fictitious OUTLOOK registered to Hong Xue in China. The only way I see
>> is
>> > to limit by rule and have the TM holder assert that the marks are
>> different
>> > if they are (with penalties for not being honest). But that is far
>> better
>> > than ignoring the issue.
>> >
>> >
>> >
>> > Option b) an owner of a mark that has been "abused" in a UDRP proceeding
>> > (for example geogle.com) may choose to submit up to 50 "variations" of
>> > its marks (for example Gooogle, Gooooooogle, etc). It is definitely
>> > arbitrary if variations are subject to the mark holder's choice. Some
>> years
>> > ago, CNN claims that CNNIC is confusingly similar to it-:)
>> >
>> > BUT, UDRP has no finality and its decision may be overruled by the
>> > competent court. Shouldn't the final judicial decision count, rather
>> than
>> > the UDRP award that has been set aside?
>> >
>> >
>> > I would presume that an overturned UDRP decision no longer stands and a
>> TM
>> > holder could not submit it.
>> >
>> >
>> > AND, UDRP is also applied to a number of ccTLDs. Would 50+ be extended
>> to
>> > the UDRP cases regarding ccTLD domain names?
>> >
>> >
>> > Again, the devil is in the details, which we have not seen, but my
>> > presumption is that the term UDRP in this case referd to ICANN's UDRP
>> and
>> > not a similar process for a ccTLD.
>> >
>> >
>> >
>> > TMCH implementation is now completely messy and its two appointed
>> > providers are not even ready to handle the "exact mark" (without IDN
>> > variants), let alone this 50+. If 50+ is indeed implementation, there
>> still
>> > need further guidance or clarifications to enable it.
>> >
>> >
>> > How could I argue with that?
>> >
>> > Alan
>> >
>> >
>> >
>> > Hong
>> >
>> >
>>
>>
>> --
>> 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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>>
>
>
>
> --
> Evan Leibovitch
> Toronto Canada
>
> Em: evan at telly dot org
> Sk: evanleibovitch
> Tw: el56
>
>

-- 
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