Thank you Robin. Here is a link on ICANN’s overarching trademark issues: it has all the information including Kathy’s and mine White Papers: https://st.icann.org/new-gtld-overarching-issues/index.cgi?trademark_protect ion Off to the airport now. Best Konstantinos On 22/10/2009 02:29, "Robin Gross" <[log in to unmask]> wrote: > Thank you, Konstantinos. This is very helpful starting point for our > discussion on how to position ourselves going forward. You've highlighted > some big issues below for us to work through. > > Could you please forward White Paper again (or send another link, I'm not able > to access the links below)? > > Thanks again! > > Best, > Robin > > On Oct 21, 2009, at 10:15 AM, Konstantinos Komaitis wrote: > >> Dear all, >> >> Here are some initial thoughts on ICANN's response to the IRT proposal, >> published a little earlier this month. Please bear in mind that ICANN is >> requesting GNSO¹s consensus view on the Trademark Clearinghouse and the >> Uniform Rapid Suspension System (URS). These are the views of myself and >> Kathy Kleiman and a reflection of our sense of events. NCUC will be meeting >> at length in Seoul to discuss the issues and develop our position for moving >> forward. To see the new documents, drafted by ICANN staff, please go to >> [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-u...] for >> Uniform Rapid Suspension Service and >> [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-t...] for >> Clearinghouse. >> >> First, some great news. The Globally Protected Marks List (GMPL) is >> completely gone (or so it appears at this stage). The NonCommercial Users >> Constituency (NCUC) was against the GPML from the beginning and in White >> Paper, Kathy Kleiman and myself submitted to ICANN >> (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...), we >> further elaborated on the dangers of proceeding with the GPML. >> >> >> The IP Clearinghouse is now re-named Trademark Clearinghouse. I consider >> this to be a great development. The term 'IP' encompasses other rights >> (patents, copyright, etc) and this is not the role of the Clearinghouse ¬ nor >> should it be. The Clearinghouse is just a repository and ICANN was correct in >> recommending a new, more restrictive name, following our White Paper >> (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...). >> >> >> The ICANN proposal did not follow NCUC¹s recommendation for regional >> clearinghouses. This was an important issue for nations and for IDNs. One >> entity cannot know the trademark laws and practices of all countries; but >> regional registries will understand the laws and nuances of trademark >> practice in the countries of their region. We expect to see some attention on >> this issue from GAC members at this meeting. >> >> >> >> One clear problem of the Trademark Clearinghouse is its creation of a new, a >> very new, right to a global common law mark. A common law mark, which is >> trademark protection although there is no registration, is a very unusual >> right. It exists largely in common law countries, such as the UK and US. Very >> few countries allow trademark rights absent trademark registration (e.g., >> though a national Trademark Office) and even those countries with common law >> protection have national trademark registration (which all serious trademark >> registrants will use). The new proposal is problematic in that it allows any >> name written or expressed on a handkerchief, on a label, on letterhead to be >> listed and thus to gain global protection – absent any proof of national >> protection. That's a real problem. >> >> The URS is a different story. It has gone worse. >> >> >> As always, we have the same question: why create a new system and not stick >> to the UDRP and amend it accordingly? The UDRP was designed for quick, cheap >> takedown of domain names. The URS is too quick, too cheap and new proposal >> fails even to limit cases to the “egregious cases” of domain name use that >> the IRT had highlighted. >> >> NCUC and the White Paper submitted to ICANN mentioned that the creation of >> the URS could address Œserial cybersquatting¹, a proposal that was not taken >> into consideration >> (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...). So, >> the system will be open to gaming and abuse. The idea is for the URS to >> 'lock' the domain name rather than transfer or cancel it, as it happens with >> the UDRP. But, here is a possible outcome of this: trademark owners will use >> the cheap and fast URS to 'lock' the domain name and then proceed to the UDRP >> (submitting the URS decision as evidence for bad faith) and get transfer of >> the domain name. >> >> The URS continues to use and justify itself in the dialectic of the UDRP. >> The new proposal says that the URS standard is similar to the UDRP, but the >> burden of proof is higher – but it is much, much lower. >> >> Moreover, there is no mention on the legitimate rights or interests of >> domain name holders and the deadlines are too short ¬ 14 days as opposed to >> the UDRP¹s 20 days ¬ although there is a possibility for a seven-day >> extension. Trademark owners will game the system, file on Christmas Eve, and >> a domain name will be lost before the registrant even knows it is of concern. >> This should be a huge problem for all registrants: noncommercial, commercial >> and individual. It's simply not fair; it's not due process. >> >> Further, the respondent is required to submit a statement on truth and >> accuracy of the submissions, while the trademark owners appears not to be >> under the same obligation. Why? >> >> Also, beware, one error on your response, and you lose. The new URS proposal >> also the definition of Œdefault¹ to include non-compliance with any the >> filling requirements-- even minor, even by a registrant representing himself >> or herself. This is unfair, considering that mistakes are human and do not >> necessarily indicate an attempt to abuse the system. Creating such a rule, >> under the default definition, which is already subjected to UDRP >> misinterpretations, creates a very bad precedent. >> >> Basically, the URS, as revised, preempts, replaces and displaces the UDRP >> without any of its balance or fairness. It does not focus on egregious cases, >> but all garden variety disputes – and gives the trademark owners a nearly >> automatic win. >> >> This can't be the way we want to open new gTLDs. And mass freezing of domain >> names under the URS can't be the way we can expect registrants to flock to >> the new gTLDs registry applicants want to offer. >> -- >> Dr. Konstantinos Komaitis, >> Lecturer in Law, >> GigaNet Membership Chair, >> University of Strathclyde, >> The Lord Hope Building, >> 141 St. James Road, >> Glasgow, G4 0LT, >> UK >> tel: +44 (0)141 548 4306 >> email: [log in to unmask] >> > > > > > > IP JUSTICE > Robin Gross, Executive Director > 1192 Haight Street, San Francisco, CA 94117 USA > p: +1-415-553-6261 f: +1-415-462-6451 > w: http://www.ipjustice.org e: [log in to unmask] > > > > > -- Dr. Konstantinos Komaitis, Lecturer in Law, GigaNet Membership Chair, University of Strathclyde, The Lord Hope Building, 141 St. James Road, Glasgow, G4 0LT, UK tel: +44 (0)141 548 4306 email: [log in to unmask]