| Comment Close Date | Statement Name | Status (Please click "Adopted" to download a copy of the Final Statement) | Assignee(s) and | Call for Comments | Call for Comments Close | Vote Announcement | Vote Open | Vote Reminder | Vote Close | Date of Submission | Staff Contact and Email | Statement Number |
|---|---|---|---|---|---|---|---|---|---|---|---|---|
| 19.10.2012 | Protection of International Olympic Committee (IOC) / Red Cross Names (RCRC) Drafting Team – Recommendations | No Statement | n/a | n/a | n/a | n/a | n/a | n/a | n/a | n/a | Brian Peck, Margie Milan | n/a |
| Comment/Reply Periods (*) | Important Information Links | |||
| Comment Open: | 28 September 2012 | |||
| Comment Close: | 19 October 2012 | |||
| Close Time (UTC): | 23:59 UTC | Public Comment Announcement | ||
| Reply Open: | 20 October 2012 | To Submit Your Comments (Forum) | ||
| Reply Close: | 9 November 2012 | View Comments Submitted | ||
| Close Time (UTC): | 23:59 UTC | Report of Public Comments | ||
| Brief Overview | ||||
| Originating Organization: | GNSO | |||
| Categories/Tags: |
| |||
| Purpose (Brief): | The IOC/RCRC Drafting Team (DT) requests community comment on the latest recommendations created for second level protections of names relating to the International Olympic Committee and the Red Cross/Red Crescent. | |||
| Current Status: | Open for Public Comment | |||
| Next Steps: | The Drafting Team's recommendations will be updated to reflect community feedback submitted through this forum and via final agreement of the Drafting Team members. Final recommendations will then be presented to the GNSO Council for its consideration. | |||
| Staff Contact: | Brian Peck, Margie Milam | Email: | Policy-staff@icann.org | |
| Detailed Information | ||||
| Section I: Description, Explanation, and Purpose | ||||
As a result of IOC/RCRC being granted top level protections for the first round of the new gTLD program, the IOC/RCRC Drafting Team was further tasked to consider whether the same protections should be afforded at the second level prior to the first delegation of a new gTLD. Since the beginning of 2012, the IOC/RCRC Drafting Team (DT) has deliberated about possible second level protections and how to respond to the GAC's request for protections. The DT now submits the recommendations formulated by the DT and makes them available for public comment before final submission to theGNSO Council. Note from the IOC/RCRC Drafting Team Chair: | ||||
| Section II: Background | ||||
The ICANN Board had requested policy advice from the GNSO Council and the GAC on whether special protections should be afforded to the RCRC, IOC and/or IGOs. Specifically, in its Singapore resolution, the Board authorized the President and CEO to implement the New gTLD Program "which includes the following elements: "the 30 May 2011 version of the Applicant Guidebook, subject to the revisions agreed to with the GAC on 19 June 2011, including: ...(b) incorporation of text concerning protection for specific requested Red Cross and IOC names for the top level only during the initial application round, until the GNSO and GAC develop policy advice based on the global public interest....." During September 2011, the GAC also sent advice to the GNSO with a proposal for granting second level protections based upon the protections afforded to IOC/RCRC at the first level. In the same month, section 2.2.1.2.3 was added to the latest version of the new gTLD Applicant Guidebook dated 19 September 2011. As a result of the GAC proposal submitted to the GNSO, the GNSO Council created a call for volunteers to form a drafting team about creating a response to the GAC. The IOC/RCRC Drafting Team was formed has since created a set of recommendations for protecting the IOC/RCRC names at the second level and includes an outline for a response to theGAC from the GNSO. The Drafting Team now wishes to solicit feedback from the community prior to submission of the recommendations to the GNSO Council. See the IOC/RCRC Drafting Team page for more detail at: http://gnso.icann.org/en/group-activities/red-cross-ioc.htm | ||||
| Section III: Document and Resource Links | ||||
| IOC/RCRC Drafting Team Recommendations Report [PDF, 152 KB] | ||||
| Section IV: Additional Information | ||||
| None | ||||
(*) Comments submitted after the posted Close Date/Time are not guaranteed to be considered in any final summary, analysis, reporting, or decision-making that takes place once this period lapses.
Background Information
In resolution NG2012.09.13.01 The Baord New gTLD Committee inquired about Global Public Interst concerns affecting a decsion to grant special second level protections to the IOC and the IFRC with regard to new gTLDs. This advice from ALAC addresses some of thos global public intersts.
First and foremost grouping IOC and IFRC for special treatment is inapproapriate. Both IOC and IFCR consider their case to be sui generis, and indeed the aguments that would serve to favor one of this pair, e.g. the IFRC due to its standing based on the Geneva Conventthe reasons would not pertain to the other, IOC. On the other hand if one where to look at the borader reasons for supporting special treatment one would fine that the category of those organizations to be considered much larger as it would need to include not only IGOs, who have repeatedly made their case through ICANN's processes, and other UN based huminatarian efforts. If ICANN is going to repsond to the needs of humanitarian diplomacy in the broader sense, it must be inclusive.
Another issue concerns the role ICANN in decding which organizations deserve such special treatment and which do not. whenever ICANN does make policy decsions on such matters, it has a set of established processes, the PDP, that guarantee that the fullest extent possible of global public interest is taken into account. For the Board, or the GNSO for that matter, to bypss this proceenders any decison arbitrary.
In order to meet it obligations in this matter ICANN must immediately embark on a proper PDP to establish a policy in time for the release on new gTLDs. this PDP must also consider the application of these protections to incumbent gTLDS, as it is clear that the continuing threat to the purposes of the IFRC, the IOC and other humnitarian efforts comes from activities in the incumbent gTLDs. Any moritorium to be establshed in the mantime should only be done voluntarily by the applicants for new gTLDs, and the Board should request that the applicants consider such action.
~~~~~
The staterment is intended to:
1) Be concise (no more than a page or two)
2) Primarily target the Board, not the GNSO
3) Deal with the proposed mechanisms, including PDPs and temporary lists
4) Address the foolishness of combining the IOC and RC, as a warning about ICANN's positioning itself to make judgements about groups worthy of protection (and who isn't)
5) Suggest an alternate robust method to protect non-trademarked public-interest names.
avri 20/09/2012 17:48
sure. can i / should i mention the broader scope of the question? and keeping things short is my specialty - long is tough.
~~~~~
From Alan:
Here are supporting documents related to that effort:
WIPI-2 Report - http://www.wipo.int/amc/en/processes/process2/report/index.html
WIPO-2 Summary - http://archive.icann.org/en/committees/JWGW2/WIPO2-note.pdf
ALAC Comment on WIPO-2 - http://www.atlarge.icann.org/correspondence/comment-wipo-13may03.htm
Issue Report - June 2007 - http://gnso.icann.org/issues/igo-names/issues-report-igo-drp-15jun07.pdf
Staff Report on a Draft IGO Domain Name Dispute Resolution Procedure - September 2007 - http://gnso.icann.org/drafts/gnso-igo-drp-report-v2-28sep07.pdf
IPC Proposal - December 2007 - http://gnso.icann.org/drafts/igo-domain-name-drp-28nov2007.pdf
Relevant GNSO Council meetings
http://gnso.icann.org/en/meetings/agenda-24may07.html
http://gnso.icann.org/en/meetings/minutes-gnso-20nov07.html
http://gnso.icann.org/en/meetings/minutes-gnso-20dec07.html
4 Comments
Evan Leibovitch
I have serious concerns, based on mailing list discussions, that we might be over-thinking the details.
Alan (and others, probably including some of us) will be involved in the GNSO workings to flesh out details. But the parallel statement I was thinking of IM should be more brief, less in mind of details and more in mind of strategy. We need to bear in mind that the audience for ALAC statement is the Board and general public, not just the GNSO.
The only immediate issue is "do we put in a temporary measure pending a more in-depth work (ie, PDP)... Sort of like a legal injunction in advance of a trial. (Of course, this assumes that the RC/IOC issue will result in PDP action....)
My instinct is suggesting that:
Salanieta Tamanikaiwaimaro
Hi Evan,
I would like to respond to your para (5) and say that Red Cross had made submissions that even with the URS, they would still be paying an average of $100,000 per annum where it is estimated that each transaction would cost Red Cross around $300 to $500 and this does not include Attorney Fees, enforcement costs etc. Red Cross holds the view that the current rights protections mechanisms in the new gTLD do not effectively protect them from unauthorised or fraudulent use of their marks which eats into serious funding that could have been better deployed in humanitarian activities. That being said whist I argue that there should be an exception, it should not be based broadly on the GAC's proposed criteria which is way too broad. My view and recommendation is that it should be strictly narrowed. The rationale behind this and the suggestion to split the PDP is explained further in my submissions which were sent to the IOC/RC Drafting Team and also pasted in the comments below for records.
On your para (1), I would say that it becomes precariously difficult as the Board had opened the way by resolving to offer protection in the Singapore meeting. Having said that, I would also add that they did only upon the recommendation of the GNSO Council and the GAC. This is why we should remind the GNSO that the opportunity for them to have initiated a PDP on this was available in 2007 but they dropped the ball on this.
On your para (3) the URS is meant to achieve that especially for those with clear legal, equitable and proprietary interests in marks. I think bottom line is that ICANN should send a strong and clear signal that the "Exception" is a privilege and not a right to fend off anti trust claims etc.
One issue though that I find is not addressed is the security and stability of the DNS. It goes without saying that if we do a model simulation based on the number of IOs that could potentially lodge and file claims against ICANN and threaten the viability, at the end of the day it only has a certain level of profitability but where these starts affecting company profitability ratios, then this is clear and direct threat.We have financial people in ALAC like Ganesh who can speak to valuation of corpotate entities and risk management.
Kind Regards,
Sala
Rinalia Abdul Rahim
Some thoughts on granting special second level protections to the IOC and the IFRC with regard to new gTLDs:
The call should be for a PDP to address the whole category of International Organizations that includes international NGOs and IGOs. The interventions of Hong Xue and Alan Greenberg via the group mail have provided strong arguments for such a PDP based on the repeated failure of ICANN to create a dispute resolution mechanism for IOs in the new gTLD process and after the IGO petition in 2007. Within this PDP the question of whether or not it is possible to categorize types of organizations based on the nature of their "work" or "business" and whether different treatments should be accorded based on the categorizations should be explored.
(a) What/where is the evidence that short term measures such as name protection become long term solutions?
Alan's intervention suggests that temporarily protected names can be easily released once a more permanent solution is available whereas the effect of defensive registrations on the organizations in question would exact a cost. While the cost to the IOC is not of much concern to most people, the cost to the Red Cross is a concern because it comes at the expense of providing needed humanitarian assistance world wide. In the real world, not protecting the Red Cross (for reasons that only ICANNers would understand) would be perceived poorly (i.e., not supportive of the kind of work that the Red Cross does). The time issue associated with a longer PDP process (there is no certainty in terms of how long a PDP would take) compounds the cost problem.
(b) Since the ALAC will be addressing the Board, why is the recommendation restricted to "no short term protection measures at all" as opposed to "provide temporary protection ONLY to the Red Cross while the PDP is underway"? While the ALAC may be split on a linked IFRC/IOC issue, a vote on the protection for the Red Cross may secure majority support (based on the voting trends of the ALAC teleconference dated 25 September).
Salanieta Tamanikaiwaimaro
To: GNSO IOC RC DRAFTING TEAM
From: SALANIETA TAMANIKAIWAIMARO
Date: 26th September, 2012
DISCLAIMER
The views expressed herein are strictly the personal views of salanieta tamanikaiwaimaro in her personal capacity and not as a member of the alac. the views do not represent the views of the alac on the matter. these views are made without having access to the final issues report. whilst the final issues report was sought, she was advised that it had yet to be published before the call was made to the alac. there is great likelihood that the final issues report will impact on the analysis of the issues at hand. as such, salanieta tamanikaiwaimaro reserves the right to vary and amend her views and analysis in the future. these thoughts and analysis are meant to encourage the gnso ioc drafting team to considering some key issues that may not yet be tabled and offer a view from an ordinary end user.
Table of Contents
Executive Summary. 3
The Issues before the ALAC. 4
Retrospection. 4
The Idea of Special Protection. 4
Special Protection and Exclusivity – IOC/RCRC. 5
Challenges for ICANN.. 5
Potential Anti-Trust Liabilities. 6
Relevant Considerations from the Preliminary Issue Report. 7
Risk Management and Impact on ICANN.. 7
Challenges to Development of Objective Criteria and the PDP. 8
Community Feedback In Relation to Proposal to offer Special Protection to the IOC/RCRC Names. 9
Legitimacy of the Special Protection Given to IOC and RCRC. 9
Narrowing the Exception. 9
Conclusion. 10
Executive Summary
The primary issues before the ALAC was whether a PDP is needed to resolve the International Olympic Committee and the Red Cross Red Crescent Movement issue and whether a moratorium should be placed on the registration of exact matches of IOC/Red Cross names contained in the GAC recommendation of September 15, 2011 at the second level in the first round of new gTLDs pending results of the PDP covering IGO names, IOC/RC names and other International organizations.
Even Interim Protection requires a PDP and in the event that an exception is created which in this case is to provide protection to both the top level and the second level, it follows that it must be a strictly narrow exception. The criteria proposed by the GAC is still too broad and needs to be narrowed further hence the need for a PDP. There were many important considerations raised in the Preliminary Issue Report that require resolution via a PDP. Some of these issues includes the type of organization that should benefit from protection. It is also important that it is made crystal clear that the exception is a privilege and not a right. It remains of concern that the Final Issue Report is still not out at the time of the preparation of this submissions. It is highly likely that there are many key considerations that would be raised within the Final Issue Report that are not mentioned in the Preliminary Issue Report.
The ICANN Bylaws demands that decisions have to be made by applying documented policies neutrally and objectively, with integrity and fairness and acting with alacrity and consulting with those affected and remaining accountable through mechanisms enhancing ICANN’s effectiveness. In light of the ongoing Manwin Licensing International S.A.R.L., et al. v. ICM Registry, LLC, et al which shows the vulnerabilities in relation to Anti Trust Liability claims, it is essential that the GNSO IOC RCRC Drafting Team makes its decisions with care. The current indications given to ICANN at the current time, is that based on the current “criteria” given to the RCRC and IOC, many legal counsels of various International Organizations will fully intend to be provided with the same treatment. It follows that potential exposure by means of financial liability and otherwise could pose a significant risk to the security and stability of the DNS if many lawsuits unfold, unless of course ICANN is fully covered.
The submissions are meant to show my rationale behind my arriving at my recommendations.
It is for this reason that I would recommend that the PDP for IOC and RCRC be separated. Protection, which is through the reservation of names, should only be given to Red Cross and not to IOC at both the first and second level. I wish the GNSO IOC RC Drafting Team well in your meeting tomorrow on Wednesday 26th September, 2012 1600 UTC. Good Luck!
Salanieta Tamanikaiwaimaro aka Sala
The Issues before the ALAC
This is in response to call for feedback[1] from ALAC Liaison officer, Alan Greenberg to the GNSO on the GNSO Red Cross/IOC matter. The GNSO has put out a consensus call and is soliciting responses prior to September 26, 2012. The context of the request for feedback is to gather and feed our input as ALAC for the IOC-RC Draft Team as they prepare their list of recommendations and options to the GNSO.
I. Is a PDP necessary to resolve the International Olympic Committee and the Red Cross Red Crescent Movement issue?
II. Should there be a moratorium placed on the registration of exact matches of IOC/Red Cross names contained in the GAC recommendation of September 15, 2011 at the second level in the first round of new gTLDs pending results of the PDP covering IGO names, IOC/RC names and other International organizations?
Retrospection
The Generic Names Supporting Organization[2] (GNSO) is responsible for developing and recommending substantive policies to the ICANN Board in relation to gTLDs. The GNSO Council is responsible for overseeing the Policy Development Process (PDP)[3].
The Idea of Special Protection
In assessing whether a PDP is necessary, retrospection is essential. The idea of protection for the International Olympics Committee (IOC) and Red Cross/ Red Crescent (RCRC) names at the top and second levels was initially proposed by the Government Advisory Committee (GAC). The GAC has been advocating “enhanced protection” for the IOC and RCRC names at the top and second levels[4] as these “organizations are protected at both international level through international treaties and through national laws in multiple jurisdictions[5]”.
The essence of GAC’s proposal to the GNSO is that “ICANN should amend the new gTLD Registry Agreement and add a new schedule of second level reserved names where the new schedule should reserve the terms most directly associated with the IPC and the Red Cross Crescent Movement[6]”. The proposal is also to add “protection to the second level reserved names is intended to complement the permanent protection of Olympic and Red Cross at the top level[7]”. It follows that any variations to Registry Agreements require the activation of a Policy Development Process (PDP).
Special Protection and Exclusivity – IOC/RCRC
The ICANN Board (Board) had resolved in 2011, in Singapore that protection would be given IOC- RCRC names and restricted to the top level in the initial round of the new gTLD applications until the GNSO and GAC developed policy advice based on[8] public interest.
Challenges for ICANN
The issue of the need for a PDP has been around for around 5 years and the fact that GNSO dropped the ball on this by not acting on what was reasonably foreseeable leaves the GNSO and ICANN vulnerable and subject to possible future litigation in the event that special protection were afforded to IOC-RCRC and not to other International Organizations.
The GNSO Issue Report (2007) on Issue of Dispute Handling for IGO Names and Abbreviation which had recommended the following:-
Whilst the GNSO Council had approved by supermajority vote a PDP on new gTLDs with a number of recommendations on September 7, 2007 it notably did not afford special protection to specific applicants. The GNSO Council Motion in 2007 did not initiate a PDP on the issues and recommendations stemming from the 2007 Issue Report.
On 12 April, 2012 GNSO Council resolved that it would request an Issue Report[9] to precede the possibility of a PDP covering the following issues that is the Definition of the type of organizations that should receive special protection at the top and second level, if any; and policies required to protect such organizations at the top and second level. Whilst the Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs (Preliminary Issue Report) was published for comments, the ALAC has still yet to receive the Final Issues Report referred to in the Preliminary Issue Report has been finalized at the time the Consensus call is being made on this matter. The Final Issue Report would be published following the conclusion of the public comments[10].
In light of the Final Issue Report not yet been released, we are limited to relying on the Preliminary Issue Report. The Preliminary Issue Report is not a substitute for the Final Issue Report and to address the Issues before the ALAC without the Final report would be premature. In light of the same, this analysis is confined to the Preliminary Issue Report and is likely not to address key considerations that may be canvassed in the Final Issue Report and this Analysis may be subject to revisions following the release of the Final Issue Report.
The GNSO Council is on record for its intention to restrict the protections solely for the IOC and RCRC names and noting that there may be a “policy impact of the protection for the IOC/RCRC for future rounds[11]. The recent Board Resolution[12] suggest that it is impossible to complete the Policy work prior to 31 January 2013 which was the cut-off date given to the GNSO Council by which they are to advise the Board if there are any reasons pertaining to global public interest or the security or the stability of the DNS. The ICANN Bylaws demands that decisions have to be made by applying documented policies neutrally and objectively, with integrity and fairness[13] and acting with alacrity and consulting with those affected and remaining accountable through mechanisms enhancing ICANN’s effectiveness.
Potential Anti-Trust Liabilities
The Honorable Philip S. Gutierrez, United States District Judge on 4 August 2012 Manwin Licensing International S.A.R.L., et al. v. ICM Registry, LLC, et al.[14] had ruled that “anti-trust” claims could be filed over controversial .xxx. This will have implications as well on the development of Policy as pertaining to the new gTLDs and the matter at hand. Of relevance is this excerpt[15], see:
a. ICANN’s Involvement in Trade or Commerce
By its terms, the Sherman Act applies to monopolies or restraints of “trade or commerce.”
15 U.S.C. §§ 1, 2. The identity of a defendant as a nonprofit or charitable organization does not
immunize that organization from antitrust liability. NCAA v. Bd. of Regents of Univ. of Okla.,
468 U.S. 85, 101 n.22 (1984) (“There is no doubt that the sweeping language of § 1 [of the
Sherman Act] applies to nonprofit entities.”). To the contrary, nonprofit organizations that act in
trade or commerce may be subject to the Sherman Act. Big Bear Lodging Ass’n v. Snow
Summit, Inc., 182 F.3d 1096, 1103 n.5 (9th Cir. 1999) (“A nonprofit organization that engages in
commercial activity . . . is subject to federal antitrust laws.”). Rather than focusing on the legal
character of an organization, an antitrust inquiry focuses on whether the transactions at issue are
commercial in nature. Virginia Vermiculite, Ltd. v. W.R. Grace & Co. – Conn., 156 F.3d 535,
541 (4th Cir. 1998) (“We emphasize that the dispositive inquiry is whether the transaction is
commercial, not whether the entity engaging in the transaction is commercial.”). “Courts
classify a transaction as commercial or noncommercial based on the nature of the conduct in
light of the totality of surrounding circumstances.” United States v. Brown Univ. in Providence
in State of R.I., 5 F.3d 658, 666 (3rd Cir. 1993). In any circumstance, “[t]he exchange of money
for services . . . is a quintessential commercial transaction.” Id. [My own underlining]
This ongoing matter highlights the vulnerability of ICANN with the new generic top level domain names as it is exposed to possible anti- trust liability. It follows that there has to be a wise stewarding of the processes.
Relevant Considerations from the Preliminary Issue Report
ICANN Staff had advised that in the event that the GNSO Council were to initiate a PDP on the special treatment of IOC/RCRC or in examining that the Working Group should:-
In its organizing Articles, ICANN has agreed that it would appropriately consider the need for market competition and the protection of rights in names and other intellectual property when approving TLDs and registries. The GNSO Council recognizes that that the exclusive protection given to IOC-RCRC may have policy implications as evident in various discussions and resolutions.
Risk Management and Impact on ICANN
A PDP is necessary given that the Preliminary Issues Report has highlighted the numerous International organizations who may also meet the “GAC proposed criteria”, that is, that are already protected under multiple treaties and domestic regulation and judging from some of the comments during the Public comment period, that many legal counsels from these International Organizations who have made joint representations to ICANN that they would fully intend that this should apply to them as well. The Core Values of ICANN amongst which includes “fairness” and “transparency” demands that treatment is properly applied. It goes without saying that a Policy Development Proposal is required. There are lessons to be learnt from the Manwin Licensing International S.A.R.L., et al. v. ICM Registry, LLC, et al and it highlights the risk of potential anti- trust claims stemming from those who may allege antitrust injury, conspiracy between IOC and Red Cross Red Crescent to restrain trade or monopolize a relevant market, anticompetitive or exclusionary conduct by IOC and Red Cross. Given that the Preliminary Issues Report state that there are 5000 Inter-Governmental Organizations (IGOs), 35,000 Non-Governmental Organizations (NGOs) and where it is still uncertain what the criteria is, it follows that one can safely assume that the estimated “risk” stemming from potential Anti-Trust claims are serious business risks that could jeopardize the security and stability of the management of the DNS. To assess the level of risks, ICANN should create a model simulation based on these numbers and average costs of litigation, settlements, evaluate health of ICANN by conducting a thorough financial analysis using a host of ratios to see whether these are sustainable in the long run.
Challenges to Development of Objective Criteria and the PDP
The Preliminary Issue Report have pointed out issues to explore for the PDP. This would include the need to develop objective criteria for International Organizations that would qualify for protection.
The ICANN Bylaws are very clear about GNSO Policy Development Processes[17]. The minimum requirements[18] include having a Final Issue Report (which still has yet to be furnished), formal initiation of the process by the Council, formation of a Working Group or other designated work method, Initial Report by the Group, final report produced by the Working Group or other methods which is forwarded to the GNSO Council, Council approval of PDP Recommendations contained in the Final Report by the required thresholds, Recommendation and Final Report that is forwarded to the Board through a Recommendations Report which is approved by the Council and finally Board approval of the PDP recommendations.
Given the ICANN Board Resolution[19] which approved the gTLD Program in 2008, it would have been reasonable to expect that since the GNSO Council had prior warning stemming from the 2007 Issue Report that there would be a need for a PDP.
It has become an accepted process within the GNSO that prior to the GNSO Council formulating decisions that they would have an Issue Report.
The ICANN Board in its recent meeting had highlighted that if there are protections for the second level that in order to be effective they are to be in place prior to the delegations of the first new gTLDs[20]. It would appear that the ICANN Board in stating that the Policy would not be ready before January 13, 2012[21] appears to be suggesting that second level protections for the first new gTLDs especially if these protections are to include adding a new schedule of second level reserved names where the new schedule should reserve the terms most directly associated with the IPC and the Red Cross Crescent Movement.
It is disturbing that the Final Issues Report is not in circulations as yet. The Board have indicated though that for any protection to be effective that they have to be in place prior to the delegation of the new gTLDs.
Whilst the protections for the IOC and Red Cross and Red Crescent are in place at the top level, and the Board is wise to favour a conservative approach as far as protection of the second level domain names are concerned.
Community Feedback In Relation to Proposal to offer Special Protection to the IOC/RCRC Names
It is also important to review the Report of comments that were made in response to the call for comments from 2 March 2012 to 14 April 2012 on the Proposal to Protect the International Red Cross and International Olympic Committee Names at the Top Level in New gTLDs. It is notable that of the seventeen comments made, 14 comments opposed the protection for diverse reasons. It is also worth noting that six out the seven process related submissions were undermined in the manner through which the IOC/RCRC Drafting Team developed its recommendations. Without going into the merits of the discussions generated from the Report as it would be premature without access to the Final Issue Report, it is reasonable to foresee that there are diverse challenges that would exist if these special protection was to trickle down to the second level.
Legitimacy of the Special Protection Given to IOC and RCRC
I am aware of the Policy implications of creating an exception. However, I have had more time to mull, muse and reflect on the matter. I realised that the legitimate fear of creating an exception that could open the floodgates for all kinds of protection of "names" and "marks" that could possibly make the reservation of names policy or practices controversial and extremely difficult. The focus of my reaching this conclusion is based on my view of the end users and what global public interest is.
Narrowing the Exception
I find that there are end users in many parts of the world whose lives have been saved through the generous work of humanitarians such as the International Red Cross. Whilst I believe that International Red Cross should be given the privileges and protections afforded to it, the same should not be given to the International Olympics Committee as these are two different beasts. Both the IOC and RCRC were given the opportunity to respond. In instances where the exception is granted, it must be an extremely narrow one and my view is that the GAC proposal that highlights the twin criteria can and should be further narrowed and restricted to universal humanitarian assistance.
Whilst words or marks that are protected by Statute may be eligible for protection under the Trademark Clearing Houses, and that sunrise protections are required, it is noteworthy that without the Full Issues Report there are questions that remain unanswered. It is also noted that for Top Level Protection, the Post – Delegation Dispute Resolution Procedure (PDDRP) in relation to protections under Treaties or Statutes are reported to be protected under s.6.1 of the Applicant Guidebook[22].
For the second –level protection, it is noteworthy that the PDRP allows mark holders to file a dispute against a Registry, rather than a Registrant, if through the Registry’s affirmative conduct there is a pattern or practice of the Registry’s bad faith intent to profit from a systematic registration of names infringing the complainant’s mark[23]. The RCRC Movement have made submissions that the current rights protection mechanisms in the new gTLDs remain inadequate to protect names from unauthorized or fraudulent use of their marks. Whilst the Uniform Rapid Suspension System is expected to provide trademark holders with a new cost effective remedy in addition to those already available within the Uniform Domain Name Dispute Resolution and various laws the prohibitive cost for RCRC would be a barrier to their humanitarian work. RCRC have estimated that it would cost them around more than $100,000 per annum costs for each proceeding where it is estimated that each proceeding costs between $300 to $500 and this does include excluding Attorney fees nor enforcement costs[24].
Conclusion
It is also worthwhile to remember the crises that are besetting the world with economic collapse, food and water crises, conflict zones, natural disasters like floods, tsunamis, hurricanes. The decision is not an easy one and on the balance of things, if there is an exception it would have to be an extremely narrow exception.
It is for this reason that I would recommend that the PDP for IOC and RCRC be separated. Protection, which is through the reservation of names, should only be given to Red Cross and not to IOC.
Annexure
GNSO Council Resolution[25]
20120326-1
Motion to recommend to the Board a solution to protect certain Red Cross/Red Crescent (RCRC) and International Olympic Committee (IOC) names at the Top Level in New gTLDS
Whereas, the Board Resolution 2011.06.20.01, authorized “the President and CEO to implement the new gTLD program which includes . . . incorporation of text concerning protection for specific requested Red Cross and IOC names for the top level only during the initial application round, until the GNSO and GAC develop policy advice based on the global public interest, . . ." (http://www.icann.org/en/groups/board/documents/resolutions-20jun11-en.htm)
Whereas, the IOC/RC Drafting Team established by the GNSO Council has considered a number of different options with respect to protections of both the IOC and the RCRC terms at the top level and has proposed a solution to modify the ICANN staff’s implementation of the Board Resolution as reflected in the Applicant Guidebook dated January 12, 2012 (http://newgtlds.icann.org/en/applicants/agb);
Whereas, the IOC/RC Drafting Team has collaborated with the Government Advisory Committee (GAC) during its deliberations in an attempt to identify a solution that addresses GAC concerns;
Whereas, this proposed solution was posted for public comment on 2 March 2012 on an expedited basis as a matter of urgency in order to enable the Board to consider its adoption for the first round of new gTLD applications, which is scheduled to close on 12 April 2012;
Whereas, the GNSO is mindful that implementation of the Board’s resolution is needed to be available before the end of the Application Window;
Whereas, the GNSO intends that these recommendations be solely limited to the IOC and RCRC;
Whereas, the GNSO recognizes that there might be a policy impact of the protection for the IOC/RCRC for future rounds and at the second level; and
Whereas, therefore, the IOC/RC Drafting Team recommends that the GNSO Council adopt this proposed solution as a recommendation for Board consideration and adoption at its meeting in Costa Rica for the application period for the first round of new gTLD applications’.
NOW THEREFORE, BE IT:
Resolved, that the GNSO Council adopts the following three recommendations of the IOC/RC Drafting Team:
Recommendation
1: Treat the terms set forth in Section 2.2.1.2.3 as “Modified Reserved Names,” meaning:
a) The Modified Reserved Names are available as gTLD strings to the International Olympic Committee (hereafter the “IOC”), International Red Cross and Red Crescent Movement (hereafter “RCRC") and their respective components, as applicable.
b) Applied-for gTLD strings, other than those applied for by the IOC or RCRC, are reviewed during the String Similarity review to determine whether they are similar to these Modified Reserved Names. An application for a gTLD string that is identified as confusingly similar to a Modified Reserved Name will not pass this initial review.
c) If an application fails to pass initial string similarity review:
i. And the applied-for TLD identically matches any of the Modified Reserved Names (e.g., ".Olympic" or ".RedCross"), it cannot be registered by anyone other than the IOC or the RCRC, as applicable.
ii. If the applied-for TLD is not identical to any of the Modified Reserved Names, but fails initial string similarity review with one of Modified Reserved Names, the applicant may attempt to override the string similarity failure by:
1. Seeking a letter of non-objection from the IOC or the RCRC, as applicable; or
2. If it cannot obtain a letter of non-objection, the applicant must:
a. claim to have a legitimate interest in the string, and demonstrate the basis for this claim; and
b. explain why it believes that the new TLD is not confusingly similar to one of the protected strings and makes evident that it does not refer to the IOC, RCRC or any Olympic or Red Cross Red Crescent activity.
3. A determination in favor of the applicant under the above provision (ii)(2) above would not preclude the IOC, RCRC or other interested parties from bringing a legal rights objection or otherwise contesting the determination.
4. The existence of a TLD that has received a letter of non-objection by the IOC or RCRC pursuant to (ii)(1), or has been approved pursuant to (ii)(2) shall not preclude the IOC or RCRC from obtaining one of the applicable Modified Reserved Names in any round of new gTLD applications.
Recommendation 2: Protect the IOC/RCRC Terms in as many Languages as Feasible
The GAC has proposed that the IOC and RCRC “names should be protected in multiple languages---all translations of the listed names in languages used on the Internet…The lists of protected names that the IOC and RC/RC have provided are illustrative and representative, not exhaustive.” The Drafting Team recommends that at the top level for this initial round, the list of languages currently provided in Section 2.2.1.2.3 of the Applicant Guidebook are sufficient.
In addition, the Drafting Team also notes that even in the unlikely event that a third party applies for an IOC or RCRC term in a language that was not contained on the list, the IOC or RCRC, as applicable, may still file an applicable objection as set forth in the Applicant Guidebook.
Recommendation 3: Protections must be reviewed after the first round and that review should include consideration of changing the language to general requirements rather than naming specific organizations.
In its proposal, the GAC has recommended that the protections for the IOC and RCRC should not just apply during the first round of new gTLDs, but should be a permanent protection afforded for all subsequent rounds. The Drafting Team recognizes that permanently granting protection to the IOC and RCRC may have policy implications that require more work and consultation so that protections may be reviewed.
Resolved, that the GNSO submits this proposed solution for Board consideration and adoption at its next meeting as a recommended solution to implement Board Resolution 2011.06.20.01 for implementation in the first round of new gTLD applications.
[1] Email by Alan Greenberg to ALAC on September 19, 2012
[2] Article X, section 1 of ICANN Bylaws accessed via http://www.icann.org/en/about/governance/bylaws#X as at 20th September, 2012
[3] Article X, section 1 of ICANN Bylaws
[4] ibid
[5] ibid
[6] Protecting the International Olympic Committee and Red Cross/Red Crescent Names in New GTLDs in https://gacweb.icann.org/download/attachments/1540128/GAC+advice+on+IOC+and+Red+Cross+Sep.+2011.pdf?version=1&modificationDate=1317031625000
[7] ibid
[8] http://gnso.icann.org/meetings/minutes-‐gnso-‐20dec07.html
[9] http://gnso.icann.org/en/resolutions#20120326-1
[10] See page 1 of the Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs
[11] http://gnso.icann.org/resolutions#20120326-1
[12] (NG2012.09.13.01) in http://www.icann.org/en/groups/board/documents/resolutions-new-gtld-13sep12-en.htm
[13] Article 1 Section 2 (8),(9), (10) of ICANN Bylaws
[14] CV 11-9514 PSG (JCGx), United States District Court, Central District of California, see: http://pdfserver.amlaw.com/tal/icann.pdf
[15] ibid
[16]Page 25 of the Preliminary Issue Report
[17] Annexure A of ICANN Bylaws, see: http://www.icann.org/en/about/governance/bylaws#AnnexA
[18] ibid
[19] ICANN Board Resolution 20th June, 2011, http://www.icann.org/en/groups/board/documents/resolutions-20jun11-en.htm
[20] (NG2012.09.13.01) in http://www.icann.org/en/groups/board/documents/resolutions-new-gtld-13sep12-en.htm
[21] ibid
[22] Page 13 of the Preliminary Issues Report
[23] ibid
[24] Submissions by RCRC to GNSO IOC-RC Drafting Team
[25] http://gnso.icann.org/en/resolutions#20120326-1