Dear Mary and all,
Thanks for this. some comments below.
Best
KK
From: Mary Wong [mailto:[log in to unmask]]
Sent: Thursday, April 01, 2010 6:01 AM
To: [log in to unmask]; Konstantinos Komaitis
Subject: Re: NCUC-STI comments
Hi
and sorry for chiming in late. Thanks to Konstantinos for providing a very
thorough set of comments; here are just a few minor observations:
-
on p. 2 there is a sentence in bold that says "The very fact that the
registrant has responded automatically demonstrates good faith". I think
this is putting it too strongly - would it be better to say that the fact a
registrant responds can be an indicator of good faith?
I am not sure I agree with you on this. What we are basically
doing is following the rationale of the UDRP and the interpretations that have
been provided through the UDRP decisions all these years. For UDRP panels, non
submission automatically equates to bad faith. If that is what is therefore happening
then why not considering submission as ‘good faith’?
-
still on p. 2, I think the community may understand Default somewhat
differently, i.e. not as meaning only "failure to respond in a timely
manner", but more broadly as including failure to conform to requirements.
Can we not just say that it would be unfair to bump the dispute to Default
status simply for filing errors and omissions? Additionally, I would suggest
removing the phrase "which in any case are part of human nature" as I
don't think it necessarily strengthens the point already made.
The community is mistaken and I don’t think that anyone
would view default like this, despite the efforts of the trademark community to
expand its interpretation.
-
still on p.2, in the following paragraph, when discussing the STI's decision
not to accept an expansive interpretation of "default", I suggest
that a more appropriate term than "wilfully dismissed" might be
"consciously rejected".
-
on p. 3 I actually don't agree with the use of the phrase "safe
harbors" as it does not seem to me to accurately describe the
circumstances being considered. As such, I'm not sure I agree that using the
word "defense" instead is necessarily "weaker", and in the context
of this particular page of our comments seems to imply that by using the words
"safe harbor" rather than defense will therefore imply a
"binding legal obligation" on the Examiner. May I suggest saying,
instead, something along the lines of the need to ensure that a respondent's
right to demonstrate the registration is legitimate and in good faith? (I can't
recall the Nominet wording but I don't believe they actually use the phrase
"safe harbors" either.)
Mary we already have incorporated what you are suggesting. The
Safe Harbors are intended to provide additional protection to individual users
rather than limit this protection to just the possibility of domain name
holders to demonstrate rights and legitimate interests. In the law context, the
word defenses means that even if for instance there is fair use of the domain
name, the examiner will still be able to exercise discretion in deciding
whether to accept this defense or not. The word Safe Habors leaves no room for
such discretion.
-
on p. 5, instead of "trademark heavens" do we mean "trademark
havens"? (BTW, as some of you know, I am uncomfortable with distinguishing
between countries that conduct substantive review and those that don't, but can
accept that I am in a minority of one on this).
Thanks for pointing this out and I will correct it. The paper is
not suggesting that we have to distinguish between jurisdictions that conduct substantive
review and those that don’t. There is a huge debate about this and even
the STI was split. Rather what it seeks to do is to draw the attention of the
community to the possibility that ‘trademark havens’ might be
created which will complicate things and create more problems.
-
finally, and more substantively, can we add something (on p.3 when discussing
Abuse of Process) to urge the staff to develop, in consultation with the
community, clearer guidelines as to what is meant by "deliberate material
falsehood"?
Sorry
I haven't had the bandwidth to do a more thorough job in contributing to the
comments, but I hope these observations help.
Best,
Mary
Mary W S Wong
Professor
of Law & Chair, Graduate IP Programs
Franklin
Pierce Law Center
Two
White Street
Concord,
NH 03301
USA
Email:
[log in to unmask]
Phone:
1-603-513-5143
Selected
writings available on the Social Science Research Network (SSRN) at: http://ssrn.com/author=437584
>>>
Dear all, - apologies for the long email - The time is upon us to submit our comments on the
revised versions of the ICANN staff on the recommendations submitted by the
Special Trademark Team (STI) in January 2010. I know that I should have
submitted this to you earlier on, but may I remind everyone that the deadline
is April 1, 2020 for the submission of comments. I would appreciate if you
could return your comments/suggestions to me by tomorrow at the very latest. Here is a brief reminder of the whole process. After the rejection of the Implementation
Recommendation Team (IRT) proposals during the public comment period, ICANN
produced two documents - one of the Trademark Clearinghouse (TMC) and the other
on the Uniform Rapid Suspension (URS) system and asked the GNSO to form a
team to review these documents. The GNSO created the STI, which comprised of
representatives from all its constituencies. NCUC was represented in this
team by Robin, Kathy, Wendy and myself, with Mary being the alternate member. The STI was tasked to either accept the Staff's
proposals or reach consensus on a new set of proposals. After a month of extensive
meetings and debate, we managed to produce two documents - one on the TMC and the other on
the URS - which in their majority received the consensus of the STI (most
of the particular issues of both proposals received unanimous consensus,
whilst some specific issues received majority consensus). The final STI
report can be found here: gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf After the STI submitted its report and was endorsed by
the GNSO, a public comment period was initiated - http://forum.icann.org/lists/sti-report-2009/. In the
meantime, in its Nairobi meeting, the ICANN Board endorsed the STI's
recommendations: http://www.icann.org/en/minutes/resolutions-12mar10-en.htm. Taking into account the public comments, the ICANN
staff produced - what they called - a revised document on both proposals,
seeking to take into consideration the STI recommendations as well as the
comments received during the public comments period. These new revised
proposals can be found at: for the TMC (
http://www.icann.org/en/public-comment/#tmc) and for the URS ( http://www.icann.org/en/public-comment/#urs) and
they are now open for a public comments period. The deadline for submission
of the comments is April 1, 2010. Generally speaking the revised proposal takes into
consideration most of the issues that the STI recommended. However, there are
some specific issues, in which the new recommendations are worst and additions
have been made which are arbitrary and - at some instances - even
illegitimate. I am attaching our comments for both the URS and the
TMC. Best KK Dr. Konstantinos Komaitis, Law Lecturer, University of Strathclyde, The Law School, The Lord Hope Building, 141 St. James Road, Glasgow, G4 0LT UK tel: +44 (0)141 548 4306 http://www.routledgemedia.com/books/The-Current-State-of-Domain-Name-Regulation-isbn9780415477765 Selected publications:
http://hq.ssrn.com/submissions/MyPapers.cfm?partid=501038 Website: http://domainnamelaw.ning.com/ |