Hi All,
Here is the updated signature section of the "Comments on the Draft 
Rights Protection Mechanism Review Paper." Tx for all the signatures 
received! If anyone else would like to sign on, please let me know (by 
tonight, please).

In addition the NCSG Policy Committee is evaluating the comments for 
official NCSG submission.
Best,
Kathy
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Dear All,
ICANN has published a draft of its “Rights Protection Mechanisms Review” 
to ask whether the “rights protection mechanisms” of the New gTLD 
Program work. These include the Trademark Clearinghouse (TMCH), 
mandatory Sunrise Period in all gTLD to allow trademark owners to 
register first, Uniform Rapid Suspension (URS) process, etc.

The young NCSG played a special role in this process in 2009-2010. We 
spent 7 weeks in tight negotiations with the other Stakeholder Groups to 
try to balance the rights of intellectual property owners with those of 
new/small businesses, noncommercial entities, users of all stripes and 
the registry/registrar communities. The NCSG team on the “STI” (“Special 
Trademark Issues” Working Group was Robin Gross, Konstantinos Komaitis, 
Wendy Seltzer and me with Mary Wong and Leslie Guanyuan as our Alternates.

Now as this all comes up for review again, I think ICANN Staff has lost 
its way. This Draft Rights Protection Mechanism (RPM) report does not 
mention anything about the fairness and balance we tried to put in; it 
does not ask whether abuse about whether Registrants receive good 
education about the new domain name dispute proceeding for the URS and 
its defenses (the answer is No) or whether legitimate “fair use” of 
words in domain names are truly being protected.

Accordingly, I share a set of comments I have drafted.  These are due 
shortly (sorry, ICANN’s Proxy/Privacy Accreditation Working Group kept 
us busy!) – tomorrow (Thursday) – so I circulate them to all who would 
like to sign on.
So far, no one has responded to this draft report with any interest in 
freedom of expression, fair use or the rights of Registrants. That’s our 
job !

Best,
Kathy (Kleiman)

Comments Submitted by Members of the Noncommercial Stakeholders Group
Thank you for the publication of the DRAFT Rights Protection Mechanisms 
Review paper. Clearly an enormous amount of work was done to compile and 
analyze quantitative and qualitative data on the use of 
specially-created mechanisms in the New gTLDs, such as the Trademark 
Clearinghouse, Trademark Claims and Uniform Rapid Suspension.

It is very important, however, that the questions being asked in the 
report, and all future reports on this subject, be expanded to reflect 
the whole of the GNSO and ICANN’s goals in passing these rules:  were 
existing rights protected, were existing fair use protections maintained 
and did ICANN avoid the creation of new or expanded intellectual 
property rights (which ICANN has no power or authority to create)?

With the details as set out below, we urge that the final report expand 
its inquiry to see if the balance and fairness included in these 
mechanisms worked for all parties: both rights holders and registrants. 
Did these programs reflect the full range of goals and commitments for 
all parties that ICANN set out in their adoption?

We respectfully request that we would like to see more of these issues 
of balance and fairness raised in the final report. For example, when 
the final report goes out to the Community with questions of whether the 
URS (Uniform Rapid Suspension) worked for trademark owners, we also 
should be asking whether the URS worked for New gTLD Registrants and 
what obstacles they faced to education and information in responding to 
URS claims.
So the comments below both respond to questions raised by ICANN Staff – 
and new ones that we would like ICANN Staff to raise in the final 
version of this RPM Review to ensure that all sides and concerns are 
heard in the feedback that ICANN seeks.

Specifically:
1.    In Section 3.2.2 Trademark Clearinghouse Word Marks:  The section 
raises some good points that should be addressed more directly. The GNSO 
adopted rules for the protection of “word marks” – as in the specific 
text of a mark and the letters, numbers and symbols it may use, e.g., 
HASBRO.  The GNSO rules specifically did not embrace the registration of 
“design marks,” a mark containing both wording and design features in 
which the font, the colors and the artistic elements are all part of the 
features protected by the trademark – and the individual letters and 
words are expressly NOT protected outside of the design packaging in 
which they are presented.

The GNSO’s STI Recommendation specifically did not consider it fair to 
provide the extensive protection of the Sunrise Period and the Trademark 
Claims notices to lettering within a design mark – lettering offering 
“disclaimed” and expressly not protected as text alone and in isolation 
of its design – and yet that is precisely what the Trademark 
Clearinghouse (TMCH) has gone ahead and accepted.  Domain names and URLs 
don’t have design elements.

We strongly request further inquiry into: how many design marks have 
been accepted? How many of them expressly disclaim the very letters and 
words that the TMCH is now protecting? How can we return to the original 
intent of the GNSO/STI rules and the limits adopted by the GNSO Council 
and ICANN Board?

2.    Section 3.3 Proof of Use is an important feature of the TMCH; it 
is designed to prevent gaming of the system and unfair advantage to 
certain new registrants over others. In addition to requesting feedback 
from those who have used the Clearinghouse verification and Sunrise 
registration processes, it is important to request input from those who 
have observed these practices and wish to comment on whether the balance 
and intent to prevent individuals/organizations/companies from grabbing 
Sunrise spots without any existing trademark use has been met. Should 
the use requirements be expanded – e.g., to trademarks of a certain age 
such as one year?

3.    Section 3.4 Matching Rules:  This is an important section as the 
rules of the GNSO’s STI were specially crafted to allow only exact 
matches. What the section does not include, and should, is why that 
decision was made. Going beyond “exact matches” created a firestorm of 
trouble for what is one person’s “mark contained” is another person 
word. Inclusion of examples in the next version of this paper would be 
key to illustrating the point. Thus, an existing trademark in ENOM (an 
ICANN-Accredited Registrar), but such rules, would create a bar on the 
domain name registration of VENOM – and entirely different word (and one 
itself also trademarked now and it will be again and again in the 
future).  Similarly, the ___ registrations of GOGGLE in the US Trademark 
Office did not prevent the registration of the domain name GOOGLE.COM or 
the registration of GOOGLE as a trademark in the US Trademark Office.

A few clear illustrations would convey the ambiguity and difficulty of 
going beyond an “exact match” and shed light on the rationale of the 
existing rule – a balanced approach as the next draft asks for 
additional input and possible changes.

4.    Section 3.5 Trademark Clearinghouse Communications:  In the next 
version and other related inquiries, we would like ICANN Staff to 
reflect a much broader question.  Should the goal have been only “to 
reach trademark holders worldwide to inform them of the services related 
to the Clearinghouse via webinars and Q&F sessions” or should it have 
been to inform the worldwide community of a massive change in the rules 
of registration of domain names in the New gTLDs and a new set of 
protections and notices that ALL registrants should know about and 
understand.  Did the TMCH devote even one second or one dollar to 
outreach, webinars and Q&A session to explain the impact of the 
Trademark [Claims] Notice to those receiving it, to answer questions 
that may arise from ambiguities or the publication of this new type of 
notice, or to ensure that those registrants who the Trademark Notice was 
meant to protect were not artificially “chilled” from moving forward 
with the registration of a domain name if they had the rights to do so.

While the TMCH has highly publicized that many potential registrants 
fail to “click through” a Trademark Claim, where is the additional 
information about why – so that the forms and notices can be tweaked to 
be fairer and more balanced?

Our concern is of course that no education and no information was 
provided to the global community by ICANN or the TMCH.   This has left 
noncommercial registrants, small businesses, and individuals without the 
guidance that these rules and policies are designed to protect all 
legitimate overlapping uses of words, names, phrases, acronyms for 
future domain names, just as they have been protected for existing ones 
(see e.g., ACM as the Association for Computing Machinery and the 
Academy of Country Music, and DELTA as Delta Faucets, Delta Airlines, 
Delta Sigma Theta and Delta the symbol for change in mathematics.

Is the TMCH only helping one side, and shouldn’t it be educating and 
communicating its rules, policies, protections and balances with all and 
for all users of the new gTLD domain name system?

5.    Section 4 Sunrise Period:  We request that the questions in the 
next draft and related reports be expanded to see if the sunrise period 
gives unfair advantage to trademark owners far outside their categories 
of goods and services. In cases where a New gTLD caters to .PIZZA should 
Delta Airlines really have a right of first registration?   For New 
gTLDs and future gTLDs catering to individuals, noncommercial 
organizations, religious groups, etc., should the Sunrise Period exist 
at all?

Inquiry into whether an automatic and upfront registration benefit for 
existing trademark owners unfairly benefits McDonalds Restaurant in a 
.FAMILY or .CATHOLIC gTLD is a question that truly needs to be added and 
asked.  Further, how can Sunrise Periods in future rounds be more 
narrowly tailored to the limited rights of existing trademark owners?

6.    Section 4.2 Limited Registration Periods is an important section 
and one that fairly highlights the legitimate reasons why registries may 
want to open registrations to those who are not trademark owners, but 
otherwise fit into a category, such as football players seeking to 
register their names in .FOOTBALL prior to the opening in General 
Availability.

7.    Section 4.5 Reserved Names. Reserved names policy is one that 
raises a lot of questions and should be clarified in the future rounds. 
The idea of reserved unlimited numbers of domain names in a gTLD and 
releasing them to any “person or entity at Registry Operator’s 
discretion” may and has led to gaming and anticompetitive activity. Can 
these Reserved Name policies be used to cherry-pick all of the best 
names by one industry competitor and bypass ICANN’s rules barring closed 
generics?  This is an important inquiry for the next round.

8.    Section 5 Trademark Claims Service:  The Trademark Claims 
Services, as discussed above, has raised a number of questions and 
concerns. Questions we request be asked in future drafts and related 
reports include:

a)    Is the Trademark Notice being shown to all Registrants?
b)    Do all registrants understand the trademark claims notice?
c)    Why are so many potential registrants not registering domain names 
after reading the Trademark Notice? Are they actually cybersquatters or 
are potential legitimate customers being “chilled” by language of the 
notice or the inability to understand the notice (either the phrasing or 
not reading it in a language they speak?
d)    **How can we make the Trademark Notices better, clearer, fairer 
and more accessible so that those protected by the notices are protected 
and yet the limits, balances and fair use protections adopted by the 
GNSO Council and ICANN Board are achieved as well?

9.    Section 5.2, Inclusion of Previously Abused Labels: there is a lot 
of concern re: how this non-policy was created and implemented by 
ICANN.  In light of the complaints brought against it, and apologies 
issues, shouldn’t the report and future versions be asking if this “50+” 
policy should be reasonably limited, or rolled back completely?

10.    Section 5.3, Extensions of Trademark Claims Service, may be a 
completely invalid offering. The GNSO’s adopted rules and those of the 
ICANN Board were clearly limited in how long a Trademark Claims Service 
would last.  Trademark Owners are responsible for the policing of their 
own marks and there are many private services and public tools they can 
use. Should the ICANN Community be subsidizing or allowing such an 
expanded and even unlimited extension of the Trademark Claims Service 
and what are the intended and unintended consequences to the most 
vulnerable of our potential future registrants: including noncommercial 
organizations, individuals and small businesses and entrepreneurs?  What 
is the impact on those in developing countries?  What is the impact of 
those who don’t speak English (e.g., those now registering in our 
Internationalized Domain Names)?  Is the TMCH unlimited extension fair, 
is it being invalidly subsidized or even paid for by the ICANN Community 
without authorization and should it be stopped?

We strongly request that the inquiry of the next and similar reports be 
expanded to include the questions above and whether the TMCH is allowed 
to write its own rules.

11.    Section 6, Uniform Rapid Suspension:  we would like to see the 
next and future reports reflect that the URS was a controversial 
mechanism -- an ultra-fast, ultra-cheap takedown mechanism for New gTLDs 
– and many were worried about whether registrants would be able to respond.

Clearly, registrants ARE responding, and in far greater numbers than we 
expected given that half the URS claims receive a response. Do 
Registrants have the information they need to respond? Do they 
understand the special defenses offered in the URS? Are they using them?

Additional questions that need to be asked in the next draft of this 
report and similar reports must reflect the education and rights of both 
sides, the claimant and the respondent, and they must include:
A.    Who is educating New gTLD Registrants globally on the existence of 
the URS?
B.    Who is educating registrants about the key differences of the UDRP 
and URS, including the much more rapid time needed for response, the 
different standards of proof, and the much more expanded defenses?   
Where are the ICANN Webinars, ICANN LEARN Websites, FAQ pages and Q & A 
sheets?
C.    Who is educating Registrants about the appellate mechanism of the 
URS?
D.    Is anyone using the Appellate Mechanism of the URS?
E.    Are Panelists being rotated as required by the URS rules?
F.    Is the limitation of the URS to English proceedings – even in the 
Internationalized Domain Names (!!) – operating a barrier to responses 
by Registrants? What percentage of URS cases are coming from the IDNs?
G.    How can ICANN and the URS Providers improve the education of 
Registrants around the URS rules, URS process, and special URS defenses 
and rights for registrants?
H.    How can we improve monitoring of the monitoring and reporting of 
the URS results?
Conclusion
Our thanks again to the ICANN Staff for such a comprehensive report. A 
huge amount of work was done, but work still remains. As in every type 
of intellectual property rights protection system (legislative, 
regulatory, etc.), the questions are always asked: are the rights 
holders protected, but also is the public protected, are all future 
rights holders protected, are free speech, freedom of expression, fair 
use and the rights of all to use dictionary words, generic words, common 
acronyms and phrases as well as their first and last names protected to 
the fullest extent of national laws, and international treaties? Are 
these rights in balance, and carefully drafted by the IRT, the STI and 
when adopted by the GNSO and ICANN Board?
The next version of this report – and all future reports including the 
upcoming UDRP Review – must include this fair and comprehensively 
balanced inquiry.  We must remain fully cognizant that we are adopting 
these rules and seeking to protect the balanced rights of the whole of 
the Internet Community, which is now the world.   This is not just a 
world of commerce, it is a world of free speech, democratic development, 
and freedom of association, rights that are impacted by restrictions on 
the use of words.

Sincerely,

THE UNDERSIGNED MEMBERS OF THE NONCOMMERCIAL STAKEHOLDERS GROUP

Kathy Kleiman, Co-Founder Noncommercial Stakeholders Group, NCSG 
Representative to Special Trademarks Initiative Team

Stephanie Perrin, NCSG Canada

James Gannon, Security and Privacy Practice Lead, Cyberinvasion Ltd, 
Ireland.

Robin Gross, Former NCSG Chair, NCSG Representative to Special 
Trademarks Initiative Team

Wendy Seltzer, NCSG Representative to Special Trademarks Initiative Team

Klaus Stoll, Managing Director, Global Knowledge Partnership Foundation, 
and as a member of the NPOC EC

Sam Lanfranco, Prof Emeritus & Senior Scholar, York University; Chair, 
ICANN NPOC Policy Committee.

Ed Morris, NCSG Representative to GNSO Council

Avri Doria, NCSG Representative to GNSO Council

Dr. Milton Mueller, Internet Governance Project, Co-Founder 
Noncommercial Users Constituency

Norbert Klein, Cambodia

Amr Elsadr, Chair, NCSG Policy Committee

William Drake, Chair, Noncommercial Users Constituency

Vernatius Ezeama