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

Sun May 26 05:48:20 UTC 2013

I am not mixing up the GAC Principles with the ICANN policies. What I mean
is 50+ refers to UDRP, which is being applied by a score of ccTLDs. Without
clarification, the trademarks "abused" at the ccTLDs but decided under the
UDRP are eligible to be included the 50+, which was obviously not
contemplated by the 50+ designer or implementer.

Hong

On Sun, May 26, 2013 at 12:18 PM, Alan Greenberg
<alan.greenberg at mcgill.ca>wrote:

>  GAC Principles which recommend that for certain ccTLDs, the registry
> should provide, among other things, IP dispute resolution procedures, and
> those TLDs choosing to use the procedures ICANN developed for gTLDs is a
> far cry from anything being policed by ICANN.
>
> Regardless I think that "If the GAC is opening up the door..." might be
> the wrong tense for a set of principles identified by the GAC at the dawn
> of ICANN history 13 years ago.
>
> Alan
>
>
> At 25/05/2013 11:10 PM, Hong Xue wrote:
>
> 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
>
>

-- 
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