[ALAC] Fwd: ICANN’s Noncommercial Users Request Board Review of Staff Decision to Expand Scope of Trademark Clearinghouse in Violation of ICANN’s Bylaws
Evan Leibovitch
evan at telly.org
Wed May 1 17:34:22 UTC 2013
---------- 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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