Institute for Internet Policy & Law @ Beijing Normal University

Chinese Community Statement on Trademark Clearinghouse and IDN Variants

Chinese At-large community unaminously agreed at the meeting on April 11, 2013 to submit the following statement to ICANN.

We are very disappointed at the implementation model outlined by “Trademark Clearinghouse: Rights Protection Mechanism Requirements” (hereafter “Requirements’) published on April 6, 2013. Particularly, the model completely overlooks the critical issues of IDN variants with respect to trademark clearinghouse (TMCH) and as a result would seriously impact the public interest in the pertinent user communities.

According to the Requirements, matching domain name labels will be generated for each Trademark Record in accordance with the Trademark Clearinghouse’s domain name matching rules.

The matching rules at the TMCH obviously, however, fail to take into account the trademarks in IDN scripts involving variants, although the variant issues had been raised by the language community experts at the Implementation Assistant Group (IAG).

Variant matching is actually critical for certain language communities. Take Chinese for example, a trademark holder may have registered a word-mark in simplified characters but it is unlikely to register the same word-mark in traditional characters and absolutely unthinkable to register in a mixed-up character setting. In this case, there will only be one trademark record generated in the TMCH. Since the new gTLD registries are obliged to offer sunrise services and trademark claims for the trademarks recorded in the TMCH, only that simplified word-mark will be eligible for sunrise registration and trademark claim services and leaves all other “variants” open for cybersquatting. Ruling out the un-registered word-mark variants would make TMCH completely useless to Chinese trademarks.

What is even more striking is that the Requirements specifically prohibits any registry from implementing variant or bundling rulesand allocating domain names under such variant or bundling rules prior to the conclusion of the Sunrise Period. Such restriction actually excludes any solution for IDN trademarks involving variants to be accommodated in the sunrise period at the TLD level, even though a registry is willing fix the variants through its registration management and at its own costs.

Trademarks have very important function of safeguarding public interests by identifying the source of goods or services. The malfunctioned TMCH design would cause serious public confusion and market chaos. The consequence will be even more serious regarding the trademarks in the fields of banking, insurance and other high-secure businesses. Although at-large community never supports over-extensive trademark measures, ICANN should treat all the trademarks equally, irrespective of the characters of the trademarks, and protect the users in all language communities from confusion equally.

If ICANN  is even willing to protect 50 “derivations” that are DIFFERENT from a trademark per se, why does it refuse to entertain the SAME trademark in variants. This is illogical by all means. On the other hand, all 50 derivations, if applied to a Chinese-character trademark, will all involve variant issues definitely.

At-Large community has made the statement on the Trademark Clearinghouse (TMCH) in September 2012, in which at-large community concerns that the design of TMCH model that uniformly applies to all the gTLD registries, irrespective of their difference, may not provide the tailored services that are really needed by the new gTLD registries. At-large community suggested that “more open and flexible model deserves further exploration.”

The Chinese Internet user community, dating back to October 2011, suggested that IDN-script trademarks involving variants should be taken into account in the TMCH services and ICANN consider adopting community-based solution to address this issue. Many other language communities shared the views of Chinese community.

Unfortunately, ICANN has been deaf to the user community’s feedback and inputs and moves steadily toward the centralized, inflexible and variants-unfriendly TMCH. At-large community, therefore, strongly suggests that ICANN support community-based TLD-bottom-up solution for TMCH implementation and address the IDN variant issue before TMCH provides the services to the new gTLD registries.

IIPL/CDNUA has made substantive contribution to the ICANN policy making, although it is not easy to penetrate the exclusive west-centric club in eco-system of civil society. Although civil society from the South often feels that their voice are bounced by the sound of silence, they are still engaged and talking.

Here are the aggregation of the comments made to a variety of policy issues.

1. New gTLDs: Public Interest Commitments & Dispute Resolution Policy (04/13)

Following to our call on March 11, I made further research on PICs. It seems comment period on this PICs mechanism generally has expired by
February 26 and PICs mechanism has been put into implementation already. I cannot seem any chance to change or improve it, at least in
this round. So it does not make much sense to draft a statement on this.

What I discovered interestingly is that all new gTLD applicants should submit their PICs by March 5.

There are 3 sections in the PICs.

Section 1 states that the new registry operator will only use registrars that have signed the 2013 Registrar Accreditation Agreement (currently under negotiation).

Section 2 is for applicants to indicate which parts of their applications they will incorporate into their registry agreements as binding ommitments.

Section 3 is for applicants to identify additional commitments that are not part of their applications but which the applicants intend to incorporate as binding commitment into their registry agreements.

If an applicant did not submit its PICs, only Section 1 applied to its base agreement by default. To my memory, when RALOs considered those objection statements, some applicants urgently provided their PICs on either Section 2 or both Section 2 and 3 to appeal to RALOs’ support.
But those so-called commitments, if later than March 5, may only be rhetoric to at-large but not “valid” PICs to ICANN.

The current status is ICANN allows the public to comments on the PICs that have already been submitted by March 16. So we could also look at
any specific applications and consider whether or not to comment on their sufficiency and effectiveness of securing public interest.

PIC DRP, which modeled on the PDDRP for trademarks, is a flawed system, in which ICANN struggled between its dual roles as the TLD regulator and at the meantime the contractual party with the TLD operators. Although, understandably, ICANN has no regulatory authority except through the contractual relationship with TLD operators, it is not a fix to mix both rules up. As a contractual party, ICANN should enforce the contract without relying the third party’s complaint. As a regulator, ICANN should be able to judge whether a breach of commitment occurs without outsourcing the assessment to a DRP proceeding, which is both costly and with high bars. We can only hope that the compliance against new gTLDs’ PIC would not be diluted by this new DRP proceedings.

2. New gTLDs: Strawman Solution (04/13)

I had expressed concerns on the trademark “derivations” before, but it is okay that my minority view was not accepted. Now I want to speak
loud against the 50 variations to include “translation” or “transliteration” of any mark although its “abuse” has been recorded in previous proceedings. There would be ridiculous results particularly where these marks are generic terms, like APPLE, SUN or DOVE. If taking into account the same or similar marks registered in different class and country (like Havana Club registered in both US and Cuba by different parties), 50 variations are simply opening a can of worm.  Even if this is merely for sunrise and claims, the chaos would be unimagineable.

3. New gTLDs: IPC/BC Proposal for Additional RPMs (11/13/12)

I noted IPC/BC’s proposal at IGF week and had a sense that they were making substantive demands to expand the RMPs that have been written down. Your message actually confirmed my guessing.

I agree we separate “implementation” from “policy-making” and subject the latter to PDP rather a shortcut at such late stage. But I also
concern that “implementation” can be used to shield substantive decisions on policies, with limited/restricted community involvement
and in very short period of time. Except 5-6 (7 is indeed imcomprehensible), all involves substantive policy choices or even new
policy decisions. To me, it should all be subject to PDP or deserve at least a decent period for cross-community inputs. Had the Brussels one
been announced? And had at-large been able to involve in it?

4. New gTLDs: URS (10/22/12)

As commented at At-Large new GTLD WG meeting in Toronto, we are against the reopening of policy disussion on URS. But now it
seems not only revision to the current policy but complete redrafting could be enabled under the name “implementation”. What do they want to
“draft” in the Drafting Team? Is the team cross-constituency or solely for GNSO? Normally implementation plan is completed by staff. Why is
it referred back to GNSO?

Neither URS nor TMCH covers marks other than trademarks/services (registered, protected by international law or by special domestic
law). They are all purely trademark measures. UDRP only covers trademarks or service marks. New gTLD trademark measures (URS or TMCH) covers: registered marks, marks protected by internaitonal law (such as Parma Ham) or marks protected by special decrees (such as Champagnes).

5. New gTLDs: IGOs/INGOs (09/13)

As I stated before, a broad “IOs” concept is adopted (rather than sticking to exclusive IGOs) and the legal nature of RoC or IOC is clarified.

The Report is on “protection of names and acronyms of certain international organizations including, International Governmental Organizations (IGOs) and Non-Governmental Organizations such as the Red Cross/Red Crescent Movement (RCRC) and the International Olympic Committee (IOC).”

Under FAG, IOC, RC and any other IGOs can file as many objections as possible based on their IGO legal rights against TLD applications
identical or confusingly similar to their name(s). But no DRP mechanism available for IGO names against 2nd-level domain name
registration, and all protection measures at 2nd-level are for trademark, which makes the IGO names’ protection unbalance at top-level and second-level. If a dispute resolution policy could be developed to enable IGOs to complain against abusive registrations at second level, it would be good idea. But I object to changing the current policy at this round and setting out a priorly-reserved name list, let alone merely singling out 2 IGOs for special treatment.

I made a careful study on the legal status of both organizations, and find that both IOC and RC are actually international Non-governmental
organizations (NGOs). So, if there could be a holistic solution (DRP or else), it should cover all International Organizations (IOs), including international NGOs and IGOs. If we stick to the term IGOs, it could be no solution for IOC or RC at all.

6. New gTLDs: closed generic strings (02/13)

I think ICANN is going back to deal with the key issue of whether to interprete or monitor or control the registration policy (who can be the registrants and what can be registered as domain names)  of a new TLD committed in the application. This does not only involve “closed
generic” TLD strings but many other issues, such as protection of IGO/INGO names, management of IDN variants and maintenance of the
“closeness” of the community-based TLDs. Currently, all the application committments are yet to be included in the delegation agreement and thus will not be subject to the “compliance” mechanism.

Should ICANN change this Laissez-faire approach, generally or specific for closed generic TLD strings? I think ICANN should have a holistic view.

 2013年1月18日，由北京师范大学互联网政策与法律研究中心主办，北龙中网（北京）科技有限责任公司、中国互联网络信息中心协办的“新通用顶级域名争议解决制度”研讨会在京师大厦第一会议室成功举行。

 本次研讨会由北京师范大学互联网政策与法律研究中心主任薛虹教授主持，政府机构、中国国际贸易仲裁委员会、新增通用顶级域名申请机构、相关服务机构代表以及学术界代表共计20余人参加了此次会议。

ICANN新增通用顶级域名的申请、审查、授权程序正在进入关键阶段，有关的争议解决程序渐次启动。有关政府已经对于部分申请的字符提出了早期预警，独立异议人发表了对于部分在公众评论中争议较多的字符的初步意见，有可能进一步提出独立异议。随着初始评审的结束，大量的申请人必须面对是否对他人字符提出异议的抉择，或者将要面临被他人异议的命运。四类异议程序将让新增通用顶级域名程序进入白热化状态。中文社区对此宜早作准备。

研讨会由中国政务和公益机构域名注册管理中心主任王云发表致辞；北京师范大学互联网政策与法律研究中心主任薛虹教授做主题发言；香港DotAsin董事乔荠就新增通用顶级域名授权之前的异议程序进行了发言；在研讨阶段，与会人员就新增通用顶级域名授权之后的争议解决政策及TMCH等相关服务的问题发表了自己的意见，并进行了热烈的讨论。

本次研讨会取得了圆满成功，使中文社区有关各方意见得到充分交流，凝聚了各方力量。本次研讨会为中文社区更好的应对争议解决系列问题做出了贡献。

2012年12月5日晚，应北京师范大学法学院邀请，最高人民法院政治部副主任、知识产权法问题专家罗东川法官为师大学子做了一场关于第三次著作权法修改的专题讲座。讲座由互联网政策与法律研究中心主任薛虹教授主持。寒冷的天气没有打消同学们学习的热情，学院部分本科生和研究生前往聆听，教室座无虚席。

北京师范大学法学两院自建院以来一贯注重与实务部门保持良好的沟通与合作，与最高人民法院理论法学研究所和最高法院研究室等机构更是建立了战略合作伙伴关系。罗法官的到来进一步推动了最高人民法院和北师大法学两院的友好合作关系，增强了我院互联网政策与法律研究中心的科研实力。晚上六点整，讲座准时开始。薛虹教授首先介绍了罗法官的有关情况，对罗法官的来访表示诚挚欢迎和衷心感谢。罗东川法官曾在北京市高级人民法院和最高法从事知识产权审判与研究工作，是知识产权领域的著名专家和学者型法官。罗法官于1993年参加建立中国法院最早的知识产权审判庭北京市中级人民法院知识产权审判庭，1995年任北京市第一中级人民法院知识产权审判庭副庭长，后任庭长，2000年任最高人民法院民事审判第三庭（知识产权庭）副庭长。2003年12月任最高人民法院研究室副主任，2009年兼任最高人民法院中国应法学研究所所长。现任最高人民法院政治部副主任、理论研究工作领导小组办公室主任。罗法官还担任中国审判理论研究会秘书长、中国法学会知识产权法研究会常务理事、中国知识产权研究会常务理事、中国法学会消费者权益保护法研究会常务理事、中国科技法学会理事、中国版权协会理事等社会职务。罗法官也曾获得首届全国十大人民满意的好法官、北京十大杰出青年、中国十大杰出青年提名奖、全国先进工作者、全国法院模范等 众多荣誉。对知识产权法的很多问题，罗法官都有自己独到的观点。罗法官对薛虹教授表示感谢，也很期待能多跟青年学子保持交流。在为期两个小时的讲座中，罗法官用真实的案例、具体的数据和丰富的审判实践为大家从实务工作者的角度解读了著作权法。讲座梳理了著作权制度在中国的起源、发展和完善，指出了现有著作权法律和制度面临的问题，分析了技术因素和国际化等对我国著作权制度的推动与影响，最后结合自己参与著作权法修改的专家论证咨询和多年的审判经验与同学们分享了自己的看法并进行了深入交流。

本次讲座内容丰富、形式新颖，为同学们带来了一场不同于平常的法律课。通过这次讲座，大家能够将平时在书本上学到的法律同实际紧密结合起来，真正做到学以致用。讲座在同学们热烈的掌声中圆满结束。

A group of IP scholars and social activists met in the ambit of Gobal Research Network on Limitations and Exceptions at Washington College of Law, American University in the 3rd week of September. This was the 3rd meetings on the research topic since the establishment of the Gobal Network. With the participatant from North America, Latin America, Europe, Asia-Pacific and Africa (working in US though), the Network is able to stimulate dynamic discussion on globally compatible copyright flexibility model. Although there were many debates and misunderstanding on the proposal “open” model, particularly between Latin American civil law tradition and American common law tradition, consensus is gradually being built. The research on 3-step test is also fruitful. After the meeting of Day one, some participants took a long trip to Maryland to meet the TPP negotiators from all Member States except Canada and Mexico, both of which will not join negotiation until next round.

The Discussions show that there are many creative industries that are relying on copyright flexibility and newly opened-up legal model (e.g. Singapore and Isreal) exerts positive economic effect on GDP and employment. The so-called open model does contain a few new elements that were either overlooked or ruled out. Firstly, open model is shifting the defensive fair use to proactive users’ right, which has been confirmed in Canadian case law; secondly, open model may incorporate the legal presumption for the listed use, which would ease the burden of proof from the users; thirdly, 3-step test can be used prospectively to enable new exceptions, rather than to limit the existing exceptions.

It is interesting to witness the back and forth of the copyright reform in a couple of countries. While Panama enacted a restrict copyright law recently, Brazil is experimenting some flexible approach. China’s 3rd Revision of Copyright Law is another focus of internation attention. For more information, please refer to my recent paper that covers all the important aspects of the 2nd Draft at WCL website.