Tag Archives: Internet Commerce Association

ICANN Staff Publish Summary of Public Comments on URS at .Travel by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn July 31st ICANN staff finally published the Report of Public Comments regarding the Proposed Renewal of .TRAVEL Sponsored TLD Registry Agreement, after missing the July 5th due date by more than three weeks.

The Report accurately reflects that all but two of the many comments filed on the proposal opposed imposition of Uniform Rapid Suspension (URS) by contract upon a legacy gTLD, and took the view that new gTLD rights protection mechanisms (RPMs) should only be implemented at legacy gTLDs through a standard policy development process (PDP) that made them a Consensus Policy.

In defense of the inclusion of the URS in the proposed .Travel Registry Agreement and other RAs, the report says:

Although the URS was developed and refined through the process described here, including public review and discussion in the GNSO, it has not been adopted as a consensus policy and ICANN staff has no ability to make it mandatory for any TLDs other than those subject to the new gTLD registry agreement. Accordingly, ICANN staff has not moved to make the URS mandatory for any legacy TLDs, and it would be inappropriate for staff to do so. In the case of .TRAVEL and other legacy TLD registry agreement renewals (.JOBS) and proposed renewals for .CAT and .PRO registry agreements, inclusion of the URS was developed as part of the proposal in bilateral negotiations between the registry operator and ICANN. It should also be noted that there are no restrictions on Registry Operators to impose further rights protection mechanisms, such as the URS, which could also be included in the Registry Agreement in other ways, such as through the RSEP process. However, due to the approaching expiration date of the .TRAVEL Registry Agreement and the interest of the Registry Operator to renew their Registry Agreement based on the new gTLD Registry Agreement, the proposed renewal language is similar to the new gTLD Registry Agreement except for the provisions stated above and also explained in detail in the public comment announcement. (Emphasis added)

The notion that .Travel and other incumbent gTLDs agreed to the URS voluntarily is belied by the original request for comments, which clearly states that, “ICANN has proposed that the renewal agreement be based on the approved new gTLD Registry Agreement as updated on 9 January 2014.”(Emphasis added) Contracted parties have told us that ICANN staff takes a very hard line in these closed door negotiations and that they must pretty well go along with whatever provisions staff insist upon.

As for “Next Steps” for the .Travel RA, the Report says:

After taking into consideration the public comments received (see summary and analysis below), some revisions to the proposed renewal of .TRAVEL Registry Agreement are proposed.

The proposed renewal of .TRAVEL Registry Agreement includes substantial and material changes to the original .TRAVEL Registry Agreement, which are based on the existing New gTLD Registry Agreement terms (as described above). Similarly, .JOBS Registry Agreement, another Sponsored TLD, was renewed on 20 February 2015 (see: https://www.icann.org/resources/agreement/jobs-2015-02-20-en).

As a next step, ICANN intends to consider the renewal proposal taking into account the comments. (Emphasis added)

That really doesn’t make clear whether the URS will stay in the final contract.

ICA has told ICANN, via its written comments as well as its presentation to the Board at the Buenos Aires Public Forum, that the Board should have the final word on this RA if the URS stays in, and should thereby take direct responsibility for the final agreement. There’s no assurance that the Board will take that step and be accountable, but we shall continue to monitor this situation.

*****

This is how the Report summarized ICA’s comments:

ICA also raised their concern that “The potential addition of these RPMs to legacy gTLDs through this inappropriate avenue will have a substantial and deleterious effect on ICANN’s policy making process going forward, will create a new and dangerous precedent whereby de facto Consensus Policy can be created by contractual fiat in violation of ICANN Bylaws, and will substantially and adversely affect third parties around the world consisting of the existing registrants of more than one hundred million legacy gTLD domains.”, adding that “the RPMs could be imposed on legacy gTLDs only after their impact and efficacy was fully assessed, and then only via a standard PDP to create new Consensus Policy in conformity with ICANN Bylaws. ”… While BC stated that their concern is not in regards to the adoption of new gTLD RPMs for legacy TLDs, BC, ICA and NCSG expressed their objection to the decision by ICANN staff to take the new gTLD registry agreement as the starting point for renewal RAs for legacy gTLDs since it has the effect of transforming the PDDRP and the URS into de facto Consensus Policies without following the procedures laid out in ICANN’s Bylaws for their creation… Both BC and ICA indicated in their comment that their comments also apply to similar proposed renewal of .CAT and .PRO Registry Agreements currently under public comment period… Both BC and ICA also raised their concern on ICANN staff’s seeking to insert specific new gTLD program RPMs in legacy gTLD renewal RAs when ICANN policy staff have yet to define the issues they implicate, and the GNSO has yet to receive the Issues Report that may be the basis of one or more PDPs; including one addressing whether they should become Consensus Policies applicable to all gTLDs… One of the comments suggested that “if the decision is made by staff to retain these RPMs in the .Travel renewal RA following the close of the public comment period, we believe that the proposed final contract must be forwarded to, reviewed by, and voted upon by the ICANN Board.” (ICA)

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/urs-travel-comments-report/

ICANN Opens “IANA Stewardship and Accountability Public Comment Periods” by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOver the past week ICANN has opened dual comment periods on the interrelated proposals for transitioning oversight of the IANA root zone functions form the U.S. government to the multistakeholder ICANN community, and for significantly enhancing that community’s ability to hold ICANN’s Board and staff accountable. When the final proposals are implemented they will mark the biggest changes in ICANN’s oversight and operations since its start seventeen years ago.

The comment period on the fully integrated (names, numbers and protocols) proposal from the IANA Stewardship Transition Coordination Group (ICG) closes on September 8th, while the one on the second draft CCWG proposal on Enhancing ICANN Accountability closes on September 12. Once the public comments are taken into account a final proposal on the transition and accountability will likely be presented to the ICANN Board at the October meeting in Dublin, Ireland, or soon thereafter.

As of now the projected date on which the NTIA would be informed that the plan, including all Work Stream One pre-transition accountability measures and Bylaws amendments, has been implemented would be July 2016. That would kick off a period in which NTIA, and likely Congress, would carefully review and consider whether the final plan met all necessary requirements. If it passes that hurdle the transition could be completed around September 2016.

As explained by the ICG:

In parallel with the process [for development of the transition proposal]…, the Cross Community Working Group on Enhancing ICANN Accountability (CCWG) has developed a proposal to ensure ICANN’s continued accountability in the absence of contractual oversight by the U.S. government. This accountability proposal does not deal directly with the governance of the IANA functions, but nevertheless must have broad public support in order for the IANA transition to proceed. The domain names component of the transition proposal, about which the ICG is seeking comment here, is significantly dependent and expressly conditioned on the implementation of specific ICANN-level accountability mechanisms by the CCWG.

According to the CCWG:

The CCWG-Accountability requests community feedback on its 2nd Draft Proposal of proposed enhancements to ICANN’s accountability framework it has identified as essential to happen or be committed to before the IANA Stewardship Transition takes place (Work Stream 1). Community input will help the CCWG-Accountability improve its proposal and carry on with next steps, including Chartering Organizations’ endorsement of the CCWG-Accountability output before it is submitted to the ICANN Board of Directors during or after ICANN54…This 40-day comment period is an opportunity for the community to make its voice heard and to shape the outcome of the CCWG-Accountability work.

In an August 4th blog titled “Let Your Voice be Heard on IANA Transition”, NTIA head Larry Strickling wrote:

The IANA transition will advance our commitment to ensuring that the Internet remains an engine for global economic growth, innovation and free speech… I urge all parties with an interest in the IANA transition to review these proposals and provide feedback to the working groups. This is the best way to make your voice heard and make a difference. It is particularly important that stakeholders everywhere evaluate whether these plans meet the criteria that we have said must be part of the transition.

We echo Secretary Stickling’s sentiments. If you are involved in the domain name sector – or even if you just utilize the Internet and want to assure its continued reliability as a platform for free expression and innovation – it’s worth taking the time to review the plans and submitting a comment. Besides, this chance won’t come again.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/icann-transition-accountability-comments-open/

Majority Comments say “No URS by Contract at .Cat & .Pro” – While Staff Report on .Travel Comments is Two Weeks Past Due by Philip Corwin, Internet Commerce Association

Philip Corwin imageOnce again, as it was with .Travel, the vast majority of comments on the proposed renewal Registry Agreements (RAs) for the legacy .Cat and .Pro gTLDs are united in their opposition to imposition of Uniform Rapid Suspension (URS) and other new gTLD rights protection mechanisms (RPMs) by contract, arguing that this is a consensus policy decision that can only be fairly made through the policy development process (PDP).

Comments following this general line of reasoning were filed on .Cat by, among others, the Electronic Frontier Foundation, IP Justice, ICANN’s Business Constituency (BC) and Non-Commercial Stakeholders Group (NCSG) — and of course the ICA along with individual comments filed by ICA Board member Nat Cohen and ICA members Jay Chapman and Greg McNair.

As we saw with the comments on .Travel, the only commenters supporting URS by contract at legacy gTLDs were ICANN’s Intellectual Property Constituency (IPC) and new gTLD portfolio registry operator Donuts.

An identical list of commenters and positions appears at the comment forum for .Pro.

A Staff Report on the .Cat and .Pro comments is scheduled to be filed on July 21st. But odds are that these will be late, given that the due date for the staff report on .Travel comments was July 5th but all that appears at its website is this – “Report Overdue”. It’s difficult to understand why it is taking staff so long to complete and post that document, because that Staff Report is supposed to be an objective compilation and summary of the comments received – and not a defense brief to justify the staff action of proposing the inclusion of URS in these renewal RAs that has drawn such broad criticism and opposition.

We will continue to monitor the .Travel website, along with those for .Cat and .Pro, to see when those Staff Reports are filed and what they say.

Meantime, here is what ICA said in the additional comments we filed on both .Cat and .Pro:

This comment by the Internet Commerce Association incorporates by reference and supplements the comment letter we filed in regard to the proposed renewal registry agreement (RA) for .Travel on June 21st.

The issues are essentially identical, in that:

  • The proposed RAs for. .Cat and .Pro are completely identical to .Travel in regard to incorporating the URS in Section 2 of Specification 7.
  • .Cat and .Pro are legacy gTLDs created before and for which the URS is a non-relevant implementation detail of the current new gTLD program, and is not a Consensus Policy enforceable against all gTLDs and contracted parties.
  • The notice published by ICANN regarding the proposed renewal RA clearly states that “ICANN has proposed” that the new gTLD RA be the starting point for contract renewal discussion and negotiation.

This issue of staff creation of de facto Consensus Policy arose several times at the just concluded ICANN 53 meeting held in Buenos Aires. At its opening session on Sunday morning, June 21st ICANN’s GNSO Council met with senior staff of ICANN’s Global Domains Division (GDD). Many Council members raised their own strong concerns about the staff action and its destructive impact on the GNSO’s role in making gTLD policy. GDD staff provided the weak response that “we did not push anyone to accept” the URS, maintaining that .Travel, .Pro, and .Cat registry operators had all “volunteered” to include it in their proposed renewal agreements. That justification strains credulity given that GDD staff proposed its inclusion as the starting point for registry agreement renewal.

As we stated in our comment letter regarding .Travel–

There can be no doubt that this is a staff attempt to create de facto Consensus Policy, as is clearly documented by the fact that the same objectionable provision appears in the proposed renewal RAs for .Cat and .Pro, both released for comment on May 28th. This evidences a deliberate and illegitimate attempt by contracting staff to create a series of precedents that would lead inevitably to the imposition of the URS on major legacy gTLDs such as .Org, .Net and .Com when they come up for renewal, despite the fact that the URS is not an ICANN Consensus Policy.

GDD staff also said they would change their position if the GNSO told them not to seek to impose new gTLD RPMs on legacy gTLDs – which is not only an impossibility for this proposed renewal RA, given the time required for the GNSO to establish policy via the standard PDP, but completely misunderstands and reverses the proper relationship between the stakeholders and staff. It is stakeholders who create ICANN policies through a bottom up process, which are subsequently administered by staff – not staff given free rein to initiate policy in a top down and unaccountable manner via contract negotiations until the stakeholders stop them.

The same concerns were raised when the Council met with the ICANN Board on the afternoon of June 21st, where they received a far more sympathetic reception. Several Board members agreed that staff should not initiate policy changes.

In addition to the concerns raised by Council members, and at community members at the Public Forum in Buenos Aires, the comments filed on .Travel ran overwhelmingly against incorporation of the URS in the renewal RA.

Only two comments supported the action by GDD staff to propose it as a starting point:

  • The Intellectual Property Constituency (IPC) stated that it “encourages Registry Operators to voluntarily go above and beyond the minimum rights protections. Whether adding new restrictions against abusive registrations, implementing blocking or creating new dispute procedures, those best practices should be encouraged and do not require a PDP for TLD Operators to implement”. We strongly disagree that there is anything voluntary about a process in which a supplicant registry in need of having its contract renewed must negotiate with ICANN staff who propose that inclusion of specific RPMs be the starting point for negotiations.
  • We therefore believe that legacy gTLD registry operators are not free to create and adopt new RPMs that alter the rights of existing registrants at the time of contract renewal because there is no one in the negotiating room to speak for the due process rights of their registrants. Indeed, such negotiations take place behind closed doors and are not transparent to affected stakeholders.
  • Further, the IPC’s claim that “there is clearly no requirement that an RPM must become consensus policy before it can be adopted by a registry. We have already learned that from Donuts and Rightside Registry, both of whom adopted a form of “blocking” as an RPM, which was also not consensus policy” completely misunderstands the critical difference between revenue-generating blocking policies promulgated by portfolio gTLD operators and dispute resolution policies. Blocking policies prevent domains from being registered in the first place and therefore have no impact on existing registrants, while alterations in dispute resolution policies can result in an existing registrant having its domain suspended, extinguished or transferred.
  • The IPC also fails to recognize the difference between a new gTLD, in which potential registrants have clear notice of any supplementary RPMs, and a legacy gTLD in which registrants should expect that additional RPMs will be adopted through a standard PDP that creates Consensus Policy.
  • The new gTLD portfolio operator Donuts, which maintained that the STI-RT that created the URS “never considered” whether it “should not be included in legacy TLDs”. All we can say is that Donuts’ recollection is quite different from ours, as we recall this question being raised multiple times and receiving assurances from STI-RT participants and others involved in the development of the new gTLD RPMs that they would not and could not be imposed on legacy gTLDs absent a subsequent review, followed by a PDP which adopted them as Consensus Policy.

In closing, we repeat the conclusion of our comment letter regarding .Travel —

Consensus Policy regarding RPMs must be vetted within the community to assure a proper balancing of the interests and rights of both trademark owners and domain registrants.

In order to assure that balance two indispensable steps are necessary:

  • The attempt to impose new gTLD RPMs on legacy gTLDs by contract must be withdrawn in recognition that such action is in violation of ICANN Bylaws. If staff is unwilling to retreat on this initiative then ICANN’s Board must assume responsibility and review all the issues at play, including compliance with the Bylaws, before any legacy gTLD RA with such a provision is made final.
  • Any further modification of the new gTLD RPMs must be considered within the context of a full PDP. We are far past the implementation phase of the new gTLD program. Further, it is clear that the applicability of the RPMs to legacy gTLDs is now primed for discussion. Unless both RPM modifications and legacy gTLD applicability are considered within the PDP framework there is a substantial risk of a bait-and-switch policy process, in which RPMs are made applicable to legacy gTLDs and then substantially altered via a backdoor, non-PDP process.

In addition, we repeat the request that ICA made directly to ICANN’s Board at the Buenos Aires Public Forum –

First, we need a commitment that any further alterations of the new gTLD RPMs will be made through a standard PDP. We are far past the implementation details stage and it is now crystal clear that these decisions will implicate legacy gTLDs as well.

Second, if GDD staff ignores the overwhelming weight of comments and retains the URS in the final RAs for legacy gTLDs, you need to vote up and down on those RAs. You need to “own” that decision and in that way indicate whether you believe this GDD staff action is or is not acceptable.

We hope that GDD staff will recognize that they have overreached on these legacy gTLD contracts and that the proper action is to strike the RPMs adopted from the new gTLD program from them and leave that decision to the multistakeholder community.

If staff does not do the right thing then we will press for an up and down Board vote on this and the other affected contracts before they take effect.

 

Sincerely,

Philip S. Corwin

Counsel, Internet Commerce Association

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/no-urs-at-cat-and-pro/

Comments Run Overwhelmingly Against ICANN Staff Attempt to Impose URS on Legacy gTLDs by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe comment period on the proposed renewal registry agreement for the .Travel legacy gTLD closed on Sunday, June 21st and the comments submitted are overwhelmingly opposed to ICANN staff’s attempt to impose any of the new gTLD rights protection mechanisms, including Uniform Rapid Suspension (URS), on legacy gTLDs through contracting rather than a formal Policy Development Process (PDP).

In addition to ICA’s own comment (reproduced below) opposition to the contracting route were submitted by ICANN’s Business Constituency and Non-Commercial Stakeholders Group as well as the Electronic Frontier Foundation and IP Justice, plus numerous participants in the domain industry. The only outliers supporting this brazen attempt to detour around ICANN’s Bylaws were ICANN’s Intellectual Property Constituency and the Donuts new gTLD portfolio registry operator.

At its opening session on Sunday morning in Buenos Aires, ICANN’s GNSO Council met with senior staff of ICANN’s Global Domains Division (GDD). Many Council members raised their own strong concerns about the staff action and its destructive impact on the GNSO’s role in making gTLD policy. GDD staff provided the weak response that “we did not push anyone to accept” the URS, maintaining that .Travel, .Pro, and .Cat registry operators had all “volunteered” to include it in their proposed renewal agreements. That justification strains credulity given that GDD staff proposed its inclusion as the starting point for registry agreement renewal – and our friends in the registry and registrar community inform us that ICANN staff play serious hardball in closed door contracting negotiations. GDD staff also said they would change their position if the GNSO told them not to seek to impose new gTLD RPMs on legacy gTLDs – which of course will never happen for both procedural and internal political reasons.

The same concerns were raised when the Council met with the ICANN Board on Sunday afternoon, where they received a more sympathetic reception. Several Board members agreed that staff should not initiate policy changes – but there was no firm Board commitment to intervene against the staff action.

So while the battle has been joined its outcome is far from settled. ICA intends to raise this matter again at the Public Forum on Thursday afternoon. As stated in our comment letter, “if the decision is made by staff to retain these RPMs in the .Travel renewal RA following the close of the public comment period, we believe that the proposed final contract must be forwarded to, reviewed by, and voted upon by the ICANN Board”. In other words, the Board needs to “own” the final decision, and in that action demonstrate whether it is truly committed to the bottom-up consensus policy process.

Here’s ICA’s comment letter:

VIRTUALAW LLC

Philip S. Corwin, Founding Principal

1155 F Street, NW  Suite 1050 Washington, DC 20004

202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell

psc@vlaw-dc.com

June 21, 2015

By E-Mail to comments-travel-renewal-12may15@icann.org

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Proposed Renewal of .TRAVEL Sponsored TLD Registry Agreement

Dear ICANN:

I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.

This letter addresses the Proposed Renewal of .TRAVEL Sponsored TLD Registry Agreement that was published for public comment on February 2, 2015.

Summary of Position

The ICA is strongly opposed to the inclusion of new gTLD rights protection mechanisms (RPMs), particularly Uniform Rapid Suspension (URS), in this renewal agreement (RA) for a legacy gTLD.  We believe that this attempt by ICANN contracting staff to create de facto Consensus Policy via individual registry contract, absent a relevant Policy Development Process (PDP), is a glaring example of the type of top down, unaccountable action that should be targeted by enhanced accountability measures accompanying the IANA transition proposal. Contracts with legacy gTLDs can contain and enforce Consensus Policy, but it is an impermissible violation of ICANN’s Bylaws for contracts to attempt to create Consensus Policy.

We strongly urge that Section 2 of Specification 7 of the Renewal Agreement (RA) for .Travel, which contains the URS as well as the Trademark Post‐Delegation Dispute Resolution Procedure (PDDRP) be deleted in its entirety. Failure to take that action, and the resulting approval of a .Travel RA that contains these RPMs, will constitute a gross and unacceptable violation of ICANN Bylaws. We hope that contracting staff will promptly take the corrective action required on this matter.

However, if the decision is made by staff to retain these RPMs in the .Travel renewal RA following the close of the public comment period, we believe that the proposed final contract must be forwarded to, reviewed by, and voted upon by the ICANN Board. The potential addition of these RPMs to legacy gTLDs through this inappropriate avenue will have a substantial and deleterious effect on ICANN’s policymaking process going forward, will create a new and dangerous precedent whereby de facto Consensus Policy can be created by contractual fiat in violation of ICANN Bylaws, and will substantially and adversely affect third parties around the world consisting of the existing registrants of more than one hundred million legacy gTLD domains.

 

Unaccountable and Uninformed Top Down Policymaking is Unacceptable

On May 13, 2015 I had the honor and privilege of addressing the Subcommittee on Courts, Intellectual Property, and the Internet of the Judiciary Committee of the U.S. House of Representatives. I spoke on ICA’s behalf at the Subcommittee’s hearing on “Stakeholder Perspectives on ICANN: The .Sucks Domain and Essential Steps to Guarantee Trust and Accountability in the Internet’s Operation”.

In my oral statement before the Subcommittee I said the following:

While enhanced ICANN accountability measures are overdue they will operate best only if ICANN’s Board and senior staff embrace a culture of accountability that assumes responsibility for the fallout of ICANN decisions and encompasses early consultation with the multistakeholder community that provides organizational legitimacy.

The current situation regarding the proposed renewal RA for the .Travel gTLD is a perfect illustration that a ‘culture of accountability’ that includes proper deference to the multistakeholder community and to the letter and spirit of ICANN’s Bylaws is presently lacking at ICANN. That is extremely dismaying and disheartening, especially for those who believe in the multistakeholder model (MSM) of governance for the unique experiment in technical DNS management known as ICANN.

When the Applicant Guidebook for the new gTLD program was being drafted I was extensively engaged on ICA’s behalf in the vigorous community debate over its RPMs. Throughout their development by the IRT, STI-RT, and then the full community I repeatedly inquired of other stakeholders as well as ICANN senior staff whether adopting these RPMs as new gTLD program “implementation details” would in any way result in their automatic application to legacy gTLDs like .Com. I received repeated assurances that this would not occur – that the RPMs could be imposed on legacy gTLDs only after their impact and efficacy was fully assessed, and then only via a standard PDP to create new Consensus Policy in conformity with ICANN Bylaws.

The present proposal to impose the URS on .Travel is a betrayal of those assurances and a clear violation of ICANN’s Bylaws. The rationale for this decision – “With a view to increase the consistency of registry agreements across all gTLDs, ICANN has proposed that the renewal agreement be based on the approved new gTLD Registry Agreement as updated on 9 January 2014.” – is flimsy and unconvincing. ICANN staff possesses no legitimate authority to create and impose what amounts to Consensus Policy. Proposing that the RA take the new gTLD RA as its starting point is tantamount to creating Consensus Party given the overwhelming negotiating advantage that ICANN has in such a context.

There can be no doubt that this is a staff attempt to create de facto Consensus Policy, as is clearly documented by the fact that the same objectionable provision appears in the proposed renewal RAs for .Cat and .Pro, both released for comment on May 28th. This evidences a deliberate and illegitimate attempt by contracting staff to create a series of precedents that would lead inevitably to the imposition of the URS on major legacy gTLDs such as .Org, .Net and .Com when they come up for renewal, despite the fact that the URS is not an ICANN Consensus Policy. Acting in a manner that is consistent with ICANN’s Bylaws is far more important than consistency of RAs – if that latter principle had been paramount then there would be no RPMs at new gTLDs to begin with because they are inconsistent with the Consensus Policy in effect at legacy gTLDs.

This staff decision is all the more troubling because it was made in an irresponsibly uninformed manner without waiting for a full evaluation and identification of issues concerning the new gTLD RPMs.  On May 1st the public comment period on “Draft Report: Rights Protection Mechanisms Review” (https://www.icann.org/public-comments/rpm-review-2015-02-02-en) closed, and on May 29th ICANN staff issued a “Report of Public Comments” (https://www.icann.org/en/system/files/files/report-comments-rpm-review-29may15-en.pdf) based upon community input. The Background on that Draft Report states that it “is intended to be available to inform the Issue Report requested by the GNSO as well as the independent review of Trademark Clearinghouse recommended by the GAC. In addition, this paper will serve as input to the Review Team on Competition, Consumer Trust, and Consumer Choice to be convened under Section 9.3 of the Affirmation of Commitments, charged with assessing the effectiveness of the safeguards developed for the New gTLD Program.”

None of these additional reviews have been completed. Further, one of the major reasons that the GNSO requested the referenced Issue Report was so that GNSO’s stakeholders could decide whether those RPMs should become Consensus Policy for all gTLDs. And that Issue Report will not even be delivered until late September because policy staff requested a six-month extension of the delivery date so that additional studies and analysis could be conducted – and the GNSO Council granted that request on January 29th of this year. Yet this near-total lack of evaluated data regarding the performance of the RPMs seems not to have mattered to contracting staff.

 

Policy and Implementation Considerations

The recently published Final Report on Policy and Implementation (P&I) (https://community.icann.org/display/PIWG/Final+Report+Redline+Version) is also germane to this discussion. That Report, issued with the full consensus support of its working group, defines a “GNSO Consensus Policy” (p.9) as “A Policy established (1) pursuant to the procedure and required minimum elements set forth in ICANN’s Bylaws, and (2) covering those topics listed in Section 1.2 of the consensus policies and temporary policies specification of the 2013 RAA (see Annex I) or the relevant sections in the gTLD registry agreements (see Annex II). GNSO Consensus Policies, adopted following the outlined procedures, are applicable and enforceable on contracted parties as of the implementation effective date.” (Emphasis added)

The PDDRP and URS both fit within the cited topics but have not been adopted pursuant to the outlined procedures for stablishing Consensus Policies. Therefore, their imposition by contractual fiat on legacy gTLDs is clearly in violation of the procedural path and required minimum elements set forth in the Bylaws.

In addition, the P&I Report adopts as its first principle that “Policy development processes must function in a bottom-up manner. The process must not be conducted in a top-down manner and then imposed on stakeholders”. Yet in this instance we have ICANN staff engaged in imposing policy from the top down, first on registries and through them onto registrars and registrants. This is absolutely unacceptable. The one exception to that first principle, “emergency cases such as where there are risks to security and stability”, bears no relationship to the RPMs at issue.

Finally, the P&I Report states a first standard, which is “As outlined in the ICANN Bylaws, the GNSO is responsible for developing and recommending to the ICANN Board substantive policies relating to generic top-level domains. As such, gTLD policy development should not take place outside of the GNSO.” (Emphasis added) That standard has been grossly violated by the proposed RA as it imposes staff-dictated policy decisions on legacy gTLDs absent any GNSO involvement.

Unfair Impact on Registrants

Registrants at new gTLDs had clear notice that they would be subject to the new RPMs. Registrants at legacy gTLDs expect that they shall only be subject to Consensus Policy adopted in accordance with ICANN’s Bylaws. The proposed RA is a complete betrayal of that legitimate expectation and is totally at odds with ICANN rhetoric in support of registrant rights. It is also likely to raise legality of enforceability issues if there is any attempt to enforce new gTLD RPMs against registrants at legacy gTLDs absent their adoption via Consensus Policy.

The danger for legacy gTLD registrants is compounded by the fact that the URS that staff is trying to impose today may differ materially from what the URS becomes in the next few years. In this regard, the Report of Public Comments on the “Draft Report: Rights Protection Mechanisms Review” was released on May 29th.

The Report’s URS section makes clear that some parties would like Uniform Rapid Suspension converted into Uniform Rapid Transfer, with additional tweaks that would put domain registrants at a substantial disadvantage in URS proceedings.

Among the ideas suggested for the URS by various commenters were:

  • Adding various forms of domain transfer options, either at the time of the decision or when the domain registration expires.
  • Lengthening the term of the domain suspension beyond the initial registration period.
  • Lowering the “clear and convincing evidence” burden of proof standard to the “preponderance of the evidence” burden used in UDRP actions – combined with changing what needs to be proved from ‘registration and use’ in bad faith to ‘registration or use’.
  • Making the URS a “loser pays” procedure.
  • Eliminating or shortening the current one-year post-decision time period in which a defaulting registrant can file for de novo appeal.
  • Requiring the registrant to pay a response fee in all filings, rather than only in those cases involving 15 or more domains, as set in the current URS rules.

Taken collectively, these suggestions would undo whatever rough balance between rights holders and registrants was achieved in the creation of the URS. They make clear that the URS could be changed in the future to become an accelerated, lower-cost version of the UDRP, with the same burden of proof plus a domain transfer option. Those two changes alone would probably cause a mass shift from UDRP filings to URS by trademark owners – thereby converting the URS from its intended use as a narrow supplement to the UDRP to a complete substitute for it. Registrants would have less time to respond, shorter word limits in which to state their replies, and be denied the option of requesting a three member expert panel. Other potential changes could be adoption of a loser pays requirement, requiring registrants to pay a response fee in all cases, and changing what must be proved by complainant to bad faith registration or use.

ICA is sensitive to some legitimate concerns of trademark owners regarding the effectiveness of the URS and we have suggested means to address those concerns without undermining registrant rights. But proposals such as those listed above illustrate that the staff attempt to put the URS in place at legacy gTLDs via contractual fiat puts the cart far before the horse. We must know what the URS is going to be before we can consider its impact on legacy gTLD registrants and debate whether it should be adopted as Consensus Policy.

It is also a dangerous and destructive approach. If staff can succeed in this effort, and if the URS is then modified for new gTLDs though a non-PDP “implementation” route, that modified URS would automatically take effect at legacy gTLDs with contract provisions such as the one that staff is attempting to impose on .Travel . The result would be a radically different URS effectively put in place at legacy gTLDs absent any compliance with ICANN Bylaws pertaining to Consensus Policy.

Consensus Policy regarding RPMs must be vetted within the community to assure a proper balancing of the interests and rights of both trademark owners and domain registrants.

In order to assure that balance two indispensable steps are necessary:

  • The attempt to impose new gTLD RPMs on legacy gTLDs by contract must be withdrawn in recognition that such action is in violation of ICANN Bylaws. If staff is unwilling to retreat on this initiative then ICANN’s Board must assume responsibility and review all the issues at play, including compliance with the Bylaws, before any legacy gTLD RA with such a provision is made final.
  • Any further modification of the new gTLD RPMs must be considered within the context of a full PDP. We are far past the implementation phase of the new gTLD program. Further, it is clear that the applicability of the RPMs to legacy gTLDs is now primed for discussion. Unless both RPM modifications and legacy gTLD applicability are considered within the PDP framework there is a substantial risk of a bait-and-switch policy process, in which RPMs are made applicable to legacy gTLDs and then substantially altered via a backdoor, non-PDP process.

In addition, any suggestion that legacy gTLDs can “voluntarily” adopt new gTLD RPMs that have been proposed by ICANN staff in the course of renewal RA negotiations should be rejected as specious, given the differential in bargaining leverage between a registry operator in need of a RA and ICANN staff with the power to approve or deny it.

Conclusion

We appreciate the opportunity to provide these comments on the proposed renewal RA for .Travel.

For all the reasons outlined above, the attempted imposition of new gTLD RPMs on this legacy gTLD are absolutely unacceptable and in gross violation of ICANN Bylaws. They must be stripped out of the RA and reserved for consideration in a future PDP by the full ICANN multistakeholder community.

While much is at stake for legacy gTLD registrants, ICANN’s own credibility is also on the line in this instance. At a time when enhanced accountability measures are being designed, a successful end run around the PDP requirements for establishing Consensus Policy would suggest the need for even stronger accountability measures than those presently under consideration. Fortunately, the accountability process will still be ongoing when ICANN decides whether to withdraw this illicit action or double down in its pursuit.

Sincerely,

Philip S. Corwin

Counsel, Internet Commerce Association

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/comments-oppose-dottravel-urs/

Electronic Frontier Foundation tells ICANN to Delete URS from .Travel by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe Electronic Frontier Foundation (EFF) has just told ICANN to drop the notion of applying the Uniform Rapid Suspension (URS) dispute resolution system to .Travel and other legacy gTLDs without undertaking a full Policy Development Process (PDP).

In a June 12 letter, EFF stated:

ICANN should not apply URS to the .travel domain, or to any additional domains, by the unaccountable means of staff inserting new conditions into the renewal of the registry operator’s contract. Rather, the public policy implications of such a move demand that a full PDP be undertaken first.

EFF’s letter also states:

The introduction of the URS, in response to a 2009 recommendation from the new gTLD program’s Implementation Recommendation Team (IRT), was characterized (however dubiously) as an implementation detail of the new gTLD program…The URS never became a consensus policy that would be applicable across all gTLDs…If the URS is to be extended to legacy domains such as .travel, this would place many further domains at risk of rapid suspension, which raises significant free speech concerns. It would also set a bad precedent for the extension of the URS to other legacy domains such as .com, .net and .org as their registries’ contracts come up for renewal.

ICANN contracting staff decided to impose the URS on .Travel based upon the misguided notion that it was more important “to increase the consistency of registry agreements across all gTLDs” than to act consistently with ICANN’s Bylaws. They didn’t even wait for their colleagues in the policy department to deliver the ‘Issues Report on new gTLD RPMs’ to the GNSO Council this coming September. One of the reasons the GNSO Council requested that report was so the GNSO could decide if those RPMs should become Consensus Policy for all gTLDs.

And it’s not just .Travel targeted by this staff power grab. Two weeks after publishing that proposed Registry Agreement (RA) ICANN published the proposed RAs for .Cat and .Pro, which also contain the URS. You can draw a dot-ted line through those registries that brings the URS to .org, .net and .com when they come up for renewal as de facto, staff-determined policy absent any demonstrated community consensus.

And when the URS reaches those big legacy domains, what will it look like? A review of the Report of Public Comments on the “Draft Report: Rights Protection Mechanisms Review” makes clear that if certain interests have their way the URS could be changed in the future to become an accelerated, lower-cost version of the UDRP, with the same burden of proof plus a domain transfer option. The result of transforming URS into URT (Uniform Rapid Transfer) would be more opportunities for domain hijackers and far less due process for domain registrants.

Whether the URS should change, much less if it should become a consensus policy for legacy gTLDs, are important policy decisions that should be decided by ICANN’s multistakeholder community through the standard PDP – not imposed in an unaccountable top down manner by ICANN staff.

EFF has made a valuable contribution to ICANN accountability by expressing its strong opposition to this high-handed attempt to short-circuit proper decision-making procedures. Let’s hope that more organizations and individuals speak out while the public comment period on these RAs remain open — and at the upcoming ICANN meeting in Buenos Aires.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/eff-no-urs-at-dot-travel/

RPM Comments Report Makes URS Expansion Danger Clear by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn May 29th ICANN staff issued its Report of Public Comments on the “Draft Report: Rights Protection Mechanisms Review”.

Back in May ICA advised ICANN that, “ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking.”

The staff Report makes clear that our fears that the URS could be converted into a low-cost, fast-track version of the UDRP with more opportunities for domain hijackers and less due process for domain registrants were well founded.

The Report’s URS section (below) makes perfectly clear that elements of the trademark community as well as others would like Uniform Rapid Suspension converted into Uniform Rapid Transfer, with all sorts of other tweaks that would put domain registrants at a greater disadvantage.

Among the ideas suggested for the URS by various commenters were:

  • Adding various forms of domain transfer options, either at the time of the decision or when the domain registration expires.
  • Lengthening the term of the domain suspension beyond the initial registration period.
  • Lowering the “clear and convincing evidence” burden of proof standard to the “preponderance of the evidence” burden used in UDRP actions – combined which changing what needs to be proved from ‘registration and use’ in bad faith to ‘registration or use’.
  • Making the URS a “loser pays” procedure.
  • Eliminating or shortening the current one-year post-decision time period in which a defaulting registrant can file for de novo appeal.
  • Requiring the registrant to pay a response fee in all filings, rather than only in those cases involving 15 or more domains, as set in the current URS rules.

Adding up these comments, it’s pretty evident that the URS could be changed in the future to become an accelerated, lower-cost version of the UDRP, with the same burden of proof plus a domain transfer option. Those two changes alone would probably cause a mass shift from UDRP filings to URS by trademark owners – thereby converting the URS from its intended use as a narrow supplement to the UDRP to a complete substitute for it. Other potential changes could be adoption of a loser pays requirement, requiring registrants to pay a response fee in all cases, and changing what must be proved by complainant to bad faith registration or use.

It’s currently unclear what process will be followed to consider any of these suggestions. The URS and the other new gTLD rights protection mechanisms (RPMs) were adopted as implementation and not policy measures through a process less comprehensive and inclusive than the standard ICANN policy development process (PDP). Given the sweeping policy implications of these suggested modifications, there is a clear need to reengage in a debate about what process should be used to consider any of these proposals – especially if the URS is to be imposed on legacy gTLDs.

Finally, the prospect of fairly sweeping future changes in the very nature of the URS underlines what an outrageous and improper power grab is currently being attempted by ICANN contracting staff in trying to impose the URS on .Travel, .Cat, and .Pro – and all legacy gTLDs up for renewal in the future, including .Com – through private contract negotiations rather than a PDP. That not only violates ICANN’s Bylaws requiring consensus policy changes through a bottom-up process, not top down staff overstepping, but also puts the cart before the horse. Domain registrants need certainty about if and how the URS will change in fundamental ways before we and others can possibly engage in a PDP regarding whether it should be a Consensus Policy for all gTLDs.

ICA is not unsympathetic to the concerns of trademark owners, and in our comment letter we suggested a workable alterative that eliminated their need to incur endless defensive registration fees, while preserving due process for domain registrants and preventing the abuse of the URS by domain hijackers:

However, we are sympathetic to the concerns of trademark owners, and would suggest the alternative of permanently barring the re-registration of a URS losing domain where the domain name/trademark is not a generic term and its registration by anyone other than the rights holder would almost surely constitute infringement. This concept could also be explored in regard to generic terms registered at gTLDs whose names correspond to the goods and services for which the word is trademarked by the prevailing complainant. Such an approach would not invite URS abuse for domain hijacking purposes but would afford permanent protection to infringed rights holders – and without the unending costs associated with holding a domain defensively in a large and growing portfolio.  

That suggestion and others should be considered after receipt of a staff Issues Report on the RPMs that is now scheduled for delivery in September.

ICA will continue to defend the due process rights of domain registrants and to insist that proper procedures consistent with ICANN’s Bylaws be adhered to in any future consideration of URS changes and URS applicability to legacy gTLDs.

*****

Excerpt from “Draft Report: Rights Protection Mechanisms Review”

Comments relating to the Uniform Rapid Suspension system (URS).

Six comments were received in response to the effectiveness of the Uniform Rapid Suspension service in providing a quick and low-cost process for addressing infringement in domain name registrations. The majority of comments express that although the URS may have achieved some of what it was intended to do, the suspension remedy it provides is often not useful.

“Although the URS is quicker and less expensive compared to the Uniform Domain Name Dispute Resolution Policy (UDRP), the only available remedy it provides to a successful complainant is the suspension of a domain name which means that the domain name would become available again once the registration expires and could be re-registered by a third party. Considering that the complainant must pay a minimum of $375 per complaint, the available remedy does not make it attractive for many trademark holders.” (M)

“The benefits of the URS are its quickness and relatively low cost. It may be useful for addressing domain name registrations that require immediate takedown as a result of infringing content. However, suspension of a domain is not the optimal remedy in the vast majority of domain name infringement cases. It is unsurprising, therefore, that the URS has been minimally used to date, and trademark owners continue to rely extensively on the UDRP because of its more effective remedy, namely transfer of the domain name to the trademark owner. We believe the URS can have a transfer remedy after expiration, subject to interim appeals processes, and remain a complement to the UDRP. The two RPMs would still be distinguished by price, time to resolution, evidence required, and standard of proof. Adding this remedy would cause the URS to be a more effective RPM in stemming cybersquatting and infringement.” (GOOG)

“The URS has generally been effective in providing a quick and low-cost process for addressing infringement, although there are some ongoing implementation issues.” (RySG)

“As initially proposed, the BC believed that suspension would be adequate, but the collective experience following delegation of the new gTLDs has shown that it is not an effective remedy after all. We propose evaluation by the community of alternate remedies for successful URS proceedings (short of compelled transfer) to make them more attractive. For example, this could include (1) an extended suspension of 3-5 years, (2) a right of first refusal to purchase the domain before the registration period expires and the domain falls back into the pool, and/or (3) an option to purchase the domain directly from the registrar within a certain time period following the decision.” (BC)

“ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking. However, we are sympathetic to the concerns of trademark owners, and would suggest the alternative of permanently barring the re-registration of a URS losing domain where the domain name/trademark is not a generic term and its registration by anyone other than the rights holder would almost surely constitute infringement.” (ICA)

“As the Report recognizes, the main limitation of the URS is that its remedy is limited to suspension of the domain name for the remainder of the registration period, which could be a matter of mere months or weeks. By and large, the URS is likely not viewed as an attractive option by rights holders because the cost does not justify the remedy: merely suspending the domain name for a relatively short period is not sufficiently valuable in the eyes of most brand owners. If the domain name is important enough to the rights holder to engage in a legal proceeding, then a temporary suspension of that domain name is insufficient to prevent its further misuse. Suspension also carries the risk that once the domain name is released, it will be registered again by another (or even the same) infringer, forcing the rights holder to restart the process for the same domain name. Thus, any efforts to improve the utility of the URS for rights holders must start with the remedies available.” (IPC)

“Neither its speed nor its low cost compensated for the limited nature of the remedy. In fact, the remedy entirely undermined the URS’ other intended benefits: many members ranked the URS as too expensive, too time consuming and too complicated for what it provided. With the extremely high burden of proof, the cost of involving an attorney — whether inside counsel or outside counsel — was viewed as too great to justify allocating such resources to obtain the mere remedy of a temporary suspension. In fact, even though most IPC Respondents viewed cost and speed as the downsides of the UDRP, they still chose to file UDRP over URS actions in order to obtain transfers of the infringing domain names–even where case complexity or the high evidentiary standard of the URS were not problematic.” (IPC)

“The high standard of proof is another reported factor that discourages rights holders from using the URS. The “clear and convincing” standard of the URS is viewed as problematic for some trademark owners because the scope and reach of their trademark rights cannot be easily proven in the space allowed, and most cases of infringement require more legal analysis than is possible to present in a URS action. In other words, rightly or wrongly, a higher standard of proof is believed to add to the amount of evidence and detail needed to be successful.” (IPC)

“INTA appreciates the URS as a quick, inexpensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP). However INTA does not agree with the conclusion of the Draft Report that the URS “works fairly well in terms of what it is designed to accomplish.”7 Even the Draft Report concedes that “some rights holders have not opted to use this service . . . .” To illustrate, the Draft Report notes that approximately 200 URS complaints have been filed to date.9 But in that same timeframe (since the beginning of 2014), over 320 new gTLDs have been the subject of UDRP complaints filed at WIPO alone (not counting other UDRP providers such as NAF, which, according to its searchable case database, has handled 65 UDRP complaints involving new gTLDs).10 This comparison is not quite apples-to-apples: as the Draft Report notes, a URS or UDRP may involve more than one domain name. But the point still holds: the initial returns have been meager, to the point that some commenters have openly wondered whether trademark owners have “given up” on the URS in favor of the UDRP.11 While the reality may not be so dire, the sentiment is still relevant to ICANN’s assessment of the effectiveness of the URS. A tool is only effective if it is actually used. Because the statistics demonstrate that the URS has only been used sparingly, INTA submits that the answer to the first question posed by the Draft Report is that the URS has not been effective – at least not yet.” (INTA)

Two of the comments address some of the challenges in terms of using the URS, such as burdensome implementation steps required of the registries, and requirements not being met by providers. In addition, one comment expresses that it may be helpful to also provide the Registry Operator, and not just the registrar, with the translated notice in the relevant local language.

“In their feedback, the majority of clients indicated that the URS is considered to have low usefulness in their brand protection strategies. The main reason stated for this assessment was that the available remedy, which is the suspension of the domain name rather than transfer, is perceived to be inadequate. Despite the relatively low cost of the URS, clients indicated that the cost to benefit ratio did not incentivise them to pursue the URS.” (CL&V)

“Burdensome implementation of an out-of- band process that only partially allows automation. URS providers are not consistently following the requirements.” (RySG)

“Notification to Registrars come in English and in relevant local language, while Registry receives only English language version (even though the URS provider already has the translation). It may be helpful to provide the translation to the registry provider as well.” (RySG)

“We repeat previous guidance suggesting EPP transformations instead of unreliable e-mail” (RySG)

Ten comments were received suggesting several factors that could be addressed to make the URS more effective. Many of the comments support adoption of a loser-pays model for the URS, and recommend incorporating transfer of the domain name as a possible remedy.

“To increase effectiveness, the URS should be provided at cost or alternatively on the basis of a loser-pays model. For the bad-actor registrant the existence of the URS does not offer any particular deterrent to registration. Even if they do not respond to the complaint there will still be a full assessment on the merits, and in most cases they pay no fee to file a response. If they lose the URS, their only loss is the cost of the domain registration. In addition, the URS should offer a perpetual block or transfer of the domain name to the successful complainant.” (M)

“As noted above, incorporating transfer as a possible remedy would make the URS more effective in protecting trademark rights. In addition, the ability for defaulting respondents in URS cases to reply for up to one year after notice of default, even after a determination is issued, and receive de novo review of the complaint (see URS Procedure6.4) is problematic, as it could lead to the unnecessary drawing out of an otherwise efficient process. This important peculiarity of the URS is not accounted for in chart contained in the Draft Report.” (GOOG)

“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.” (NCSG)

“To improve the URS as a cost-effective mechanism, trade mark holders would like the following enhancements to be considered: (i) Transfer as a remedy: Currently, the only remedy available to successful complainants is the suspension of the infringing domain name for the duration of its registration period. The trade mark holder then has to monitor the domain name and ensure that it is not registered by another party when the suspension ends. For most trade mark holders the prospect of having to grab the domain name as soon as it is available and the risk of it being registered by a third party before they are able to do so, raising the prospect of the whole cycle starting again, means that the URS is not viewed as worthwhile. Introduction of domain name transfer as a remedy would significantly increase the effectiveness for trade mark holders of the URS as an RPM.

(ii) “Loser – pays” model: The URS is not viewed as involving any significant deterrents for infringers. Potentially infringing domain names can be registered by third parties, knowing that in case of a dispute resolution proceeding against them they will not incur any financial loss other than the cost of the domain name. For a fair and balanced RPM framework, the cost of the URS proceedings should be borne by the losing party. Although some have expressed doubt as to how a workable model could be developed for recovering costs from a losing registrant, there is precedent for such a model in some ccTLDs. Further work on this would be beneficial to establish whether a mechanism could be introduced for ICANN to pursue the losing registrant for payment.” (CL&V)

“It may be beneficial to consider adding a transfer option in the case of a successful URS, although allowing a change of registrant would require further policy development. The current URS policy makes renewals difficult. ICANN should clarify that either the original registrar (or a registrar of the complainant’s choosing that the name can be transferred to) collects payment from the complainant when they request a renewal, and send the renewal order to the registry. The registry cannot accept a request or payment for a renewal without the registrar’s involvement. ICANN may also want to consider adding definition of repeat URS offender and exploring its policy implications.” (RySG)

“It is a similar story with the Uniform Rapid Suspension (URS). The URS also failed to operate as a cost-effective brand protection mechanism for trade mark holders. We believe that there is a number of different way in which the URS could be developed, improved and simplified. However, if the URS is intended to provide a rapid relief in clear cut cases, then at the very least trade mark owners should be able to call for a transfer of the domain name (either in addition to, or in place, of the current remedy of suspension). We would also suggest that successful trade mark owners should not have to bear the cost of the URS process and that at least their URS fees should be repaid. There should be further consideration of how that repayment would be funded but there are a number of possibilities here ranging from the adoption of a “loser pays” regime in all cases or cross subsidies from those who have benefited from the introduction of the new gTLDs.” (ITMA)

“The use of Clearinghouse Signed Mark Data (SMD) files in Uniform Rapid Suspension (URS) proceedings would help make URS more efficient by leveraging the data already present in the Clearinghouse, thus making better use of the investment of time and resources that Clearinghouse recordations represent for TM owners.” (BC)

“According to section 4.2 of the URS document this notification is sent to the registrant only (and Registrar). However, it may be useful to send to Admin contact as well.” (GD)

“The IPC offers the following as additional topics that ICANN should explore relating to the URS:

1) Should there be a transfer remedy? Given that the losing party loses the domain name either way, there is no reason such a remedy would unfairly prejudice the losing party. Moreover, instituting a transfer remedy would not disrupt the speed or cost-efficiency of the URS, because its adoption would not necessitate modification of other URS requirements, such as the word and time constraints.

2) Should there be an extended suspension? Another possible alternative would be to extend the length of the suspension. This option would be further enhanced if losing respondents were also allowed to transfer the domain(s) at issue to the prevailing complainant voluntarily during that extended suspension.

3) Should there be a right of first refusal? Yet another option would be to give the winning complainant the right of first refusal when, at the end of the suspension period, the domain name is eligible for re-registration.

4) Should the standard of proof be modified? Changing the standard from “clear and convincing” to the more common “preponderance of the evidence” would make the URS more cost-effective.

5) Should the URS cover domain names that were either registered OR used in bad faith? Broadening the URS to cover cases in which domain names are clearly being used in bad faith, but where proof of registration in bad faith is less compelling, would make the URS more effective.

6) Should there be a financial penalty to the losing registrant? The infringing party loses nothing but the registration, and even has the ability to pick it back up on the drop. The ICANN community should explore options such as loser-pays, response fees, etc. to disincentivize infringing registrations.” (IPC)

“As the Draft Report notes, the main limitation of the URS is that its remedy is limited to suspension of the domain name for the remainder of the registration period.12 By its nature, this is not a long-term solution; rather, it is at best a temporary fix that carries with it the risk that the domain name will simply be registered again by another infringer once it is released. Any steps to improve the utility of the URS must begin there. Most preferable would be a mandatory transfer remedy akin to that offered under the UDRP. Given that the URS is designed to address only clear-cut cases of infringement, we see no due process concerns that would make such a remedy inequitable to the losing party, and see no reason why such a change would disrupt the speed or cost-efficiency that distinguishes the URS from the UDRP. Short of that, another possible alternative could include extending the length of the suspension to something like 5 years (as opposed to the current duration – remainder of the registration period – which, depending on the facts, could be only a few weeks or months) and then allowing losing respondents to voluntarily transfer the domain(s) at issue to the prevailing complainant during that time (as of now, such a transfer is not allowed during the suspension). Either of these possibilities would be an improvement over the status quo, and would offer a more meaningful remedy for trademark owners while still maintaining the quick, low-cost structure of the URS.” (INTA)

“INTA sees no reason why the requirement that a respondent pay a response fee – which is ultimately refundable to the prevailing party – should be limited to those URS complaints listing 15 or more domain names registered by the same registrant. Rather, one surefire way to increase trademark owner usage of the URS would be to apply that same response-fee requirement to all URS complaints, without regard to the number of domain names at issue. Feedback suggests that more trademark owners would use the URS if there was a possibility that their costs to do so would be refunded – especially given that the Draft Report shows that trademark owners have prevailed in 87% of URS proceedings thus far (albeit in a small sample size).13 Of course, eliminating the current 15-domain minimum may increase the number of defaults from the current 52% rate14 – potential respondents who view their case as weak may rationally choose to default rather than to pay the response fee. But that is not a bad thing. Although all determinations – including defaults – are evaluated by a URS panel on the merits, making this change would, over time, allow providers to focus more of their resources on those URS disputes for which the respondent thinks enough of its arguments to risk the response fee. In other words, elimination of the 15-domain minimum would benefit trademark owners, providers, and “legitimate” respondents alike. The only group it would harm would be cybersquatters.” (INTA)

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/urs-expansion-danger/

Act Now – Just Say “No!” to URS at .Travel – Or It Will Travel to .Com by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn May 12th ICANN posted the “Proposed Renewal of .TRAVEL Sponsored TLD Registry Agreement” for a period of public comment ending June 21st.

You’d expect ICANN staff to be on their best behavior right now, during ongoing community efforts to fashion enhanced and binding accountability measures. But instead this proposed Registry Agreement (RA) contains a provision through which staff is trying to preempt community discussion and decide a major policy issue through a contract with a private party. And that very big issue is whether Uniform Rapid Suspension (URS) should be a consensus policy applicable to all gTLDs, including incumbents like .Com and .Net.

The starting point for the proposed new .Travel RA was not the prior .Travel RA but the standard registry agreement for new gTLDs. As explained in ICANN’s announcement:

The current Registry Agreement for .TRAVEL, like other registry agreements, provides for presumptive renewal so long as certain requirements are met. It also provides that upon renewal, changes may be made to the terms of the Agreement.

With a view to increase the consistency of registry agreements across all gTLDs, ICANN has proposed that the renewal agreement be based on the approved new gTLD Registry Agreement as updated on 9 January 2014. In order to account for the specific nature of the .TRAVEL TLD, a Sponsored TLD, relevant provisions in the 5 May 2005 Sponsored TLD Registry Agreement have been carried over to this renewal agreement.

As a result, the proposed renewal agreement for .TRAVEL is similar to the terms of a Registry Agreement for a new gTLD that elected for community TLD status and that is not operated by an intergovernmental organization of a government entity… (Emphasis added)

There is one very big problem with that staff-determined “consistency” approach. It would make all domains at .Travel, a legacy gTLD and not a new gTLD, subject to URS, which is not a consensus policy applicable to all gTLDs.  

To that end, the proposed draft RA for .Travel includes, at p. 78, an amended version of Specification 7 (Minimum Requirements for Rights Protection Mechanisms) with this provision:

Dispute Resolution Mechanisms. Registry Operator will comply with the following dispute resolution mechanisms as they may be revised from time to time:

… the Uniform Rapid Suspension system (“URS”) adopted by ICANN (posted at www.icann.org/en/resources/registries/urs), including the implementation of determinations issued by URS examiners. (Emphasis added)

This is top-down, staff-driven policymaking at its worst and is thoroughly unacceptable.

It appears that ICANN staff, on its own initiative and with no advance consultation with the community, are attempting to impose an “implementation detail” for the new gTLD program into a legacy gTLD renewal contract.

That would effectively convert the URS into a consensus policy without any community discussion of whether it should be, and set a precedent that could bring the URS to .Com, .Net, .Org and all other legacy gTLDs as their own RAs come up for renewal.

It was well understood at the time that the Rights Protection Mechanisms (RPMs) were debated and created for the new gTLD program’s Applicant Guidebook that they were to be regarded as “implementation details” for the new gTLD program and not as “consensus policy” applicable to all gTLDs. There was actually an extended debate in which IP interests insisted that they were mere implementation of the program’s general commitment to protecting IP rights and therefore did not require an extended policy development process (PDP) to be made applicable to new gTLDs. That dog won’t hunt for incumbent gTLDs like .Com.

As for considering whether the new gTLD RPMs should someday become consensus policy, ICANN recently closed a comment period on a “Draft Report: Rights Protection Mechanism Review” and ICA submitted an extensive comment letter on it. That Draft RPM Report is supposed to be preliminary to a full staff Issues Report on new gTLD RPMs to be delivered to the GNSO Council in late September. Receipt of that Issues Report is expected to inform a discussion of how well all the new RPMs are performing, whether they need to be altered, and – most importantly – whether they should become consensus policies for all gTLDs.

But now ICANN contracting staff, before the policy staff have even delivered their RPM Issues Report, are attempting to preempt that entire consensus policy discussion by imposing the URS on an incumbent gTLD.

This is a prime and disturbing example of top-down, staff-driven policymaking. And it is clear justification for the overdue and badly needed accountability mechanisms that ICANN stakeholders are now fashioning.

We understand that trademark interests would probably support making the URS a consensus policy. We know that many new gTLD registry operators are on the record saying that all the new RA provisions they are subject to, including URS, should be the rules of the road for incumbent registries as well.

As for ICA, we are a long way from establishing our position on that question – but we insist that it occur only after full community debate and consideration of all the potential reverberations of such a decision. That’s what a PDP is for.

This very important decision is one for the entire community to make after informed discussion, not for ICANN staff to make in a manner that preempts the discussion–

  • We need to review the actual performance of the URS, including the quality of arbitration decisions.
  •  We need to see if it is going to be materially changed in any way – especially if it is going to be altered to include a domain transfer option, which could convert it into a $500 vehicle for domain trolls to attempt abusive domain hijacking.
  • And, most important, we have to understand how well it meshes with any contemplated changes in the UDRP, since the receipt of the RPM Issues Report may well kick off a policy development process (PDP) on UDRP reform as well.

ICANN needs to hear from the global Internet community, in significant volume, that imposing the URS on an incumbent gTLD is unacceptable because it would mean that ICANN staff, not the community, is determining that URS should be a consensus policy and thereby undermining the entire bottom-up policy process. Domain suspensions are serious business – in fact they were at the heart of the SOPA proposal that inspired millions of emails to the US Congress in opposition.

This is clearly an issue for domain registrants – registrants at new gTLDs knew that their domains were subject to the Trademark Clearinghouse claims notice system and the URS, but registrants at incumbent gTLDs have never been subject to URS and should only become so if the community decides it should become a consensus policy.

But this should also be an issue for every other ICANN stakeholder and global domain registrant who wants to hold the line against staff-driven usurpation of the community’s right to initiate and make policy decisions.

So get your comments in by June 21st if you want to see the community remain in control of this key policy decision rather than have ICANN staff determine it via private contract negotiations. ICA will be commenting against including the URS in this RA, but we need lots of company.  

Here’s what to do:

  • Prepare a comment to ICANN and send it to comments-travel-renewal-12may15@icann.org by June 21st. Your comment can be in the text of the email or attached as a Word, PDF, or similar document type. A draft comment template is provided below that you can use as is or modify to reflect your personal point of view.
  • Besides sending your own comment, contact at least two other individuals who you think are opposed to having ICANN staff use the contracting process to put the URS in place at incumbent gTLDs, provide a link to this ICA post, and ask them to submit their own comments as well. And ask them to do the same to ensure maximum input to ICANN. And it wouldn’t hurt to also contact other trade associations and public interest groups as well as spread the word on social media.

This initiative can be stopped – but that will be best ensured if ICANN gets lots of comments that oppose including the URS in the .Travel RA.

Act now or be prepared to see the same tactic used to impose the URS on .Com, .Net, .Org and other incumbent gTLDs. Don’t complain then if you’re not willing to take a few minutes and speak up now. 

And here’s that draft template for comments: 

To comments-travel-renewal-12may15@icann.org

Dear ICANN:

I am writing in regard to the Proposed Renewal of .TRAVEL Sponsored TLD Registry Agreement issued for public comment on May 12, 2015.

I am strongly opposed to the inclusion of a modified version of the new gTLD rights protection mechanisms in Specification 7 of the proposed RA, especially Uniform Rapid Suspension (URS).

All the new gTLD RPMs were implementation details of the new gTLD program and are not ICANN consensus policies applicable to all registries and registrars. The URS can become a consensus policy only after a full policy development process (PDP) engaged in by the entire ICANN community of stakeholders. The ICANN community has not even received the new gTLD RPM Issues Report that staff will be providing to the GNSO in September 2015.

Imposing URS on an incumbent gTLD via the contracting process is an absolutely unacceptable staff intervention into the policymaking process. Approval of this draft contract would constitute top-down, staff-driven policymaking in direct violation of ICANN’s stated commitment to the bottom-up, private sector led policy development process.

Therefore, the .Travel renewal RA should be referred for Board consideration only after Specification 7/URS has been removed from the agreement, along with all other provisions derived from the new gTLD RA that are not established consensus policies applicable to incumbent gTLDs.

Thank you for your consideration of my views.

Sincerely,

[Name, title, organization]

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/no-urs-at-dot-travel/

ICA to ICANN: We’ll “Vigorously Oppose” Changing URS to Facilitate RDNH by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn Thursday, April 30th ICA filed a comment letter with ICANN regarding the “Draft Report: Rights Protection Mechanisms Review” published earlier this year. This preliminary report paves the way for a more extensive issues report on the new gTLD RPMs that will be delivered to the GNSO Council this fall. That second report will not only inform the debate on whether the RPMs should be changed prior to any future rounds of new gTLDs, but also may set the stage for a full-fledged policy development process (PDP) on UDRP reform that could kick off in 2016. The UDRP is the only consensus ICANN policy that has never undergone such review and reform.

In its letter ICA stated its opposition to any suggestions that a domain transfer capability should be added to the Uniform Rapid Suspension arbitration procedure:

ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking.

However, ICA does understand trademark owner concerns that domains suspended in a URS procedure can currently be re-registered for infringing purposes at the end of their registration period, and suggested an alternative win-win approach that could balance their interests with those of domain investors:

However, we are sympathetic to the concerns of trademark owners, and would suggest the alternative of permanently barring the re-registration of a URS losing domain where the domain name/trademark is not a generic term and its registration by anyone other than the rights holder would almost surely constitute infringement. This concept could also be explored in regard to generic terms registered at gTLDs whose names correspond to the goods and services for which the word is trademarked by the prevailing complainant. Such an approach would not invite URS abuse for domain hijacking purposes but would afford permanent protection to infringed rights holders – and without the unending costs associated with holding a domain defensively in a large and growing portfolio.  

Other key points made in ICA’s comment letter were:

  • ICA would not support any expansion of the TMCH matching rules to include plurals, mark+keyword, and common typos.
  • ICA supports the inclusion of more comprehensive information regarding generic words and infringement in the Claims notice, as well as clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes.
  • We would not support any extension of the mandatory Claims generation period beyond the initial ninety days until our concerns about the Claims notice are effectively addressed.
  • ICA would oppose any easing of the TMCH verification requirements for court decisions or UDRP cases.

ICA will continue to articulate its members’ views in regard to the RPMs and the UDRP as this discussion continues within ICANN.

Trademarks and domains are both valuable intangible assets. The respective rights of their owners must be carefully balanced in any revision of these critical arbitration and brand protection policies to ensure that the asset value of domains and the due process rights of registrants are adequately protected and respected.

The full text of our comment letter follows—

VIRTUALAW LLC

Philip S. Corwin, Founding Principal

1155 F Street, NW  Suite 1050

Washington, DC 20004

202-559-8597/Direct

202-559-8750/Fax

202-255-6172/Cell

psc@vlaw-dc.com

                                                                                                 April 30, 2015

By E-Mail to comments-rpm-review-02feb15@icann.org

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Draft Report: Rights Protection Mechanisms Review 

Dear ICANN:

I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.

This letter addresses the Draft Report: Rights Protection Mechanisms Review that was published for public comment on February 2, 2015. That document, drafted by ICANN staff, is intended to inform the Issue Report on new gTLD Rights Protection Mechanisms (RPMs) requested by the GNSO as well as the independent review of Trademark Clearinghouse recommended by the GAC. In addition, the same document is intended to serve as input to the Review Team on Competition, Consumer Trust, and Consumer Choice to be convened under Section 9.3 of the Affirmation of Commitments, charged with assessing the effectiveness of the safeguards developed for the New gTLD Program.

Executive Summary

  • ICA would not support any expansion of the TMCH matching rules to include plurals, mark+keyword, and common typos.
  • ICA supports the inclusion of more comprehensive information regarding generic words and infringement in the Claims notice, as well as clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes.
  • We would not support any extension of the mandatory Claims generation period beyond the initial ninety days until our concerns about the Claims notice are effectively addressed.
  • ICA would oppose any easing of the TMCH verification requirements for court decisions or UDRP cases.
  • ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking. However, we are sympathetic to the concerns of trademark owners, and suggest an alternative approach that would address their concerns to a significant extent.

Trademark Clearinghouse (TMCH)

While no specific question on this issue is raised at the end of Section 3, we note that a portion of Section 3.4 (Matching Rules) states:

ICANN continues to receive feedback regarding the “identical match” definition, specifically, that ICANN should consider expansion of the matching rules to include plurals, “marks contained” or mark+keyword, and common typos of a mark. The scope of matching was one area identified by the GAC in recommending an independent review of the Trademark Clearinghouse, and this topic is expected to be explored in that review as well.

ICA already has substantial concerns, detailed in this letter, about the high number of false positive Trademark Claims Notices being generated that are likely deterring legitimate noninfringing domain registrations, especially for generic words that have one or more TMCH matches.

Further, as noted in the report, “The matching rules are intended to provide an objective, automatable way of determining a match, rather than the Clearinghouse making subjective determinations”, and any easing of the matching requirement would inevitably require the TMCH to exercise subjective judgment.

In addition, the ability to register up to fifty previously abused variations of a trademark that were found infringing in litigation or a UDRP under the Abused Domain name label service already permits rights holders some substantial degree of protection beyond exact matches.

Therefore, we would not support any expansion of the TMCH matching rules to include plurals, mark+keyword, and common typos. 

Trademark Claims Service

We first address Section 5 questions a, b, and f, which are:

  • Is the Claims notice an effective form of communication?
  • For those with registrant/customer interactions, what has been the customer response to Claims notices?
  • How could the Claims service be improved?

ICA believes that the current language of the Claims notice is unduly intimidating to potential registrants, especially those lacking any sophisticated understanding of trademark law, and that the language needs to be modified in order to clarify that registration of a generic word that is trademarked for a particular class of goods and services is unlikely to result in infringement if registered for another intended purpose.

On March 12th ICA published an article, “Estimating Trademark Claims Notice Suppression of Non-Infringing New gTLD Registrations”, which made these observations regarding statistics contained in the Report:

[T]his statistic regarding Trademark Claims Notices generated by the Trademark Clearinghouse (TMCH) leapt out:

Sum of TLDs with initiated Claims periods         297

Sum of Claims Transactions                                    96,471

Sum of Claims Notices Generated                25,221,479

That 25 million-plus Claims Notices statistic is the one that garnered attention. As of February 1, 2015 the total number of domains registered in all new gTLDs was approximately 4.2 million, so the ratio of Claims Notices to new gTLD registrations was about 6:1. That is, for each new gTLD domain that was registered there were about 6 additional registrations that were commenced for some purpose – but of that total number, only three tenth of one percent (96,471 out of 25,221,479) continued on to completing a “transaction” resulting in a domain registration.

…[since March 2014] the number of Claims Notices has increased fifty-fold, the percentage of completed registrations against TMCH inquiries has declined by more than ninety percent, and the ratio of Claims Notices to registered new gTLD domains has increased from 4:3 to 6:1. So the TMCH is clearly having a “chilling effect” – but is it primarily chilling potentially infringing or non-infringing domain registrations?

… As of January 2015 34,300 marks had been submitted for registration into the TMCH. So, on average, each registered mark generated 735 Claims Notices.

At the time the Report was issued, there were 297 new gTLDs that had initiated Claims periods, so there was an average of 85,000 Claims Notices generated per new gTLD. For the vast majority of new gTLDs that is far higher than their total domain registrations to date – indeed, only the top seven new gTLDs exceed that figure.

So what is going on here? Is the TMCH incredibly effective at deterring the registration of trademark infringing domains? Or is it incredibly effective at deterring the registration of domains with an intended use that would not infringe trademark?

It may well be a lot of both.

… No doubt there have been attempts by intentional cybersquatters to register trademarked names that have been effectively deterred when they received a Claims Notice and realized that the trademark owner would be notified of the domain registration immediately and might well take some form of legal response.

But there also may have been lots of potential registrants for non-infringing uses of short and meaningful generic dictionary words as domain labels who were spooked enough when they received the Claims Notice to abandon the registration. While the Claims Notice does provide a prospective registrant with information regarding the Jurisdiction where the trademark is registered and the class of Goods and Services that the trademark covers, most prospective registrants of non-infringing domains are not well versed in trademark law, don’t want to have to spend money to consult a lawyer to see if their registration will be infringing or not, and don’t want to risk being hit with a cease-and-desist letter, UDRP or URS filing, or a trademark infringement lawsuit. The same could be true even for potential registrants well versed in trademark law who simply don’t wish to expose themselves to a potential legal action, regardless of its merits – especially since continuing on to registration after receipt of the Notice might be alleged to constitute proof of bad faith registration.

The legalistic language of the Trademark Notice would certainly cause major hesitation for most prospective general public applicants… Revising the language of the Claims Notice to make it more understandable by a registrant lacking deep understanding of trademark law might also be considered, but that can hardly be relied upon to protect the registrant from post-registration legal action by the trademark owner.

… Summing up, the TMCH has almost surely been quite effective in deterring infringing domain registrations at new gTLDs. But it appears to also have been a substantial damper on total new gTLD domain registrations. The unanswered question is how big of a headwind it has been.

That article estimates that several million legitimate registrations may have been deterred by receipt of Claims notices, while noting that it is impossible to know the exact number.

We believe that the generation of Claims notices will continue to deter legitimate noninfringing domain registrations at new gTLDs. This situation can be partly but not completely addressed by providing more comprehensive information in the notice, and also clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes. In conjunction with this observation, we would not support any extension of the mandatory Claims generation period beyond the initial ninety days until these concerns are effectively addressed.

We also address Questions i and j:

  • How effective is the inclusion of previously abused labels in protecting against trademark abuse and infringement?
  • Should the standards for verification of previously abused labels be modified?

According to the Report:

Since the introduction of the Abused Domain Name Label service in October 2013, 324 domain labels based on 158 cases have been added… ICANN has received some feedback in regard to the documentation required to verify UDRP cases. To verify that the mark that was the subject of the case is the same as the mark in the Trademark Clearinghouse record is difficult in some cases if the rights holder no longer has the UDRP or court filings or records, or where the trademark information was not included in the original complaints.

Given the great controversy generated within the ICANN community by the substance and manner of adoption of the “Trademark-plus-fifty” proposal it is rather remarkable how little it has been used, especially since it only costs $50-75 to verify a UDRP case. We have no explanation why the trademark interests who fought so hard for the “Strawman proposal” in which it was contained have made so little use of it.

We would oppose any easing of the TMCH verification requirements for court decisions or UDRP cases. Domain investors who have been the subject of such cases (increasingly in the context of attempted domain hijackings via UDRP) maintain their own records of those legal actions, and it is difficult to believe that a  rights holder which initiated a trademark case UDRP, or counsel thereof, would not have equal access to such records. Any easing of the verification requirements would inevitably invite abuse.

Uniform Rapid Suspension (URS)

We address questions a and e of Section 6:

  • How effective is this service in providing a quick and low-cost process for addressing infringement?
  • What factors could be addressed to make the URS more effective?

ICA participated in the development of the URS and understands that it is meant to be a narrow supplement to, and not a broad substitute for, the traditional UDRP. It provides rights holders with a lower cost and faster means of addressing infringing domains, especially when they are associated with such public harms as malware distribution, phishing, or spam.

In regard to this portion of the Report:

Overall, ICANN has received feedback received from the community is that the URS has produced positive results and that it works fairly well in terms of what it is designed to accomplish. It is quick, inexpensive and caters to those who have slam-dunk cases or are indifferent towards the suspension of the name solution, perhaps due to the fact they are unable to register that name. However, some rights holders have not opted to use this service due to the remedy being limited to suspension only.

There is also concern over the possibility of the domain name being registered once more by another potential infringer once it is released, thus some rights holders feel more comfortable having the domain name in their portfolio, which can be achieved via a UDRP. Indeed, initial feedback has indicated that suspension of the domain name is not a long-term solution.

The key term in that passage is that the URS “works fairly well in terms of what it is designed to accomplish”. It is no surprise that it does not work well for purposes beyond its design – a design that was worked out through consensus that emerged from months of intense discussion and negotiation within the community.

While the URS does provide a prevailing claimant with the option of extending the domain’s registration period for one additional year it is not – and was never meant to be – a permanent solution for a rights holder who wishes to permanently remove it from the pool of available domain names.

ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking.

However, we are sympathetic to the concerns of trademark owners, and would suggest the alternative of permanently barring the re-registration of a URS losing domain where the domain name/trademark is not a generic term and its registration by anyone other than the rights holder would almost surely constitute infringement. This concept could also be explored in regard to generic terms registered at gTLDs whose names correspond to the goods and services for which the word is trademarked by the prevailing complainant. Such an approach would not invite URS abuse for domain hijacking purposes but would afford permanent protection to infringed rights holders – and without the unending costs associated with holding a domain defensively in a large and growing portfolio.  

Conclusion

We appreciate the opportunity to provide these comments on the draft Report. We hope they are helpful to the ICANN community’s further consideration of this highly important matter, especially as staff work to prepare an Issue Report on new gTLD Rights Protection Mechanisms (RPMs) to be delivered for GNSO review and consideration this fall.

Sincerely,

 

Philip S. Corwin

Counsel, Internet Commerce Association

Second Draft CWG-IANA Stewardship Proposal Out for Public Comment — April 24th Explanatory Webinar Scheduled by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoLate on the evening on April 22nd the CWG-Stewardship on the IANA Naming Functions issued its second Draft Proposal for a 28-day public comment period that closes on May 20th. Information about the Proposal can be found in a news announcement and at the public comment page.

ICANN has scheduled a 90-minute explanatory webinar on the proposal on Friday, April 24th at 6:00 and 14:00 UTC. Individuals who wish to participate should refer to the Webinar announcement for registration instructions.

ICA is concerned that the 28-day comment period, cut by thirty percent from the standard 40-day period used for other ICANN matters, may be insufficient to address a document of this importance and length. That is particularly true because several sections of the 90-page draft are marked as “Under Development” or “Draft and Under Development” indicating that this remains an incomplete work in progress.

Indeed, the explanation provided by the CWG notes that, “During the Public Comment period, the CWG-Stewardship will continue to assess the implications of the proposed post-transition structure (section IV) and the fulfillment of NTIA requirements (section V). These sections depended largely on the completion of Section III and therefore are in outline form only at this time.” (Emphasis added)

The referenced Section III of the Proposal is the very important “PROPOSED POST-TRANSITION OVERSIGHT AND ACCOUNTABILITY”. In this regard the CWG explains that the critical details will be based on the unfinished work of the separate CCWG-Accountability:

DEPENDENCIES ON THE CCWG-ACCOUNTABILITY

The CWG-Stewardship’s proposal has dependencies on and is expressly conditioned upon the CCWG-Accountability process. Specifically, the proposal requires ICANN accountability in the following respects:

  • Ability for the community to have more rights regarding the development and consideration of the ICANN budget;
  • Empowering the multistakeholder community to have certain rights with respect to the ICANN Board, including the ICANN Board’s oversight of the IANA operations, specifically, the ability to appoint and remove members of the ICANN Board, and to recall the entire Board;
  • The IANA Function Review, created to conduct periodic and special reviews of the IANA Functions, should be incorporated into the ICANN bylaws;
  • The CSC, created to monitor the performance of the IANA Functions and escalate non-remediated issues to the ccNSO and GNSO, should be incorporated into the ICANN bylaws.
  • Accountability processes that the CCWG-Accountability is enhancing, such as the Independent Review Panel, should be made applicable to IANA Functions and accessible by TLD managers, if they wish to take advantage of these mechanisms.
  • All of the foregoing mechanisms are to be provided for in the ICANN bylaws as “fundamental bylaws” requiring community ascent in order for amendment.

The CCWG-Accountability is expected to deliver its own draft proposal for a similarly truncated public comment period later this month. However, the CCWG has penciled in a possible second comment period on the Accountability proposal that could begin around July 1 — while the CWG has no plans for a second comment period on the Stewardship proposal even though the draft that was just published has large holes in it.

The CWG’s current plan going forward is to analyze the comments following the close of the input period and then deliver a final draft for review, consideration and approval by ICANN Supporting Organizations and Advisory Committees around June 8th, with submission to the IANA Coordination Group (ICG) scheduled for just seventeen days later on June 25th.

At some future point the final package assembled by the ICG will have to be reconciled and combined with the final Accountability proposal and delivered to the ICANN Board for review and approval, an event currently projected to occur around August 30th. After that, implementation of those accountability measures required to be in place prior to the IANA transition would start, and the NTIA would review the full package and decide whether it effectively met the principles contained in its March 2014 announcement of the IANA transition.

Congressional appropriations language remains in effect that prohibits the NTIA from facilitating the transition prior to September 30th and requires that it provide Congress with 45 days advance notice of any intent to transfer oversight of the IANA root zone functions.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/second-draft-cwg-iana-stewardship-proposal-out-for-public-comment-april-24th-explanatory-webinar-scheduled/

$59 Million and Counting: ICANN Board Downgrades Community Say on Use of Last Resort Auction Proceeds by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoICANN’s new gTLD program provides for last resort auctions to settle contention sets where the competing applicants are unable to reach agreement by negotiation or private auction, with the proceeds going to a segregated ICANN account. With the recent $25 million bid of Google to secure control of the .App registry the total proceeds of those ICANN auctions has swelled to $58.8 million. The final sum by the end of the first round could go higher, perhaps to more than $100 million. That’s serious money.

The subject of how these funds should be used has been raised in Public Forums at several ICANN meetings, and the Board had responded that the auction proceeds would be held separately from general revenues. It also said that the ICANN community would have a substantial say in deciding what ultimate uses would be made of the growing account.

Based on those Board statements the GNSO Council, after soliciting feedback throughout the ICANN community, decided at its March 2015 meeting, “to move forward with the creation of a CCWG by, as a first step, forming a drafting team to develop a proposed charter for such a CCWG, which could then be considered by all SO/ACs interested in participating”.  (Note: I currently represent the Business Constituency on the Council and supported that action.)

In sum, the ICANN body responsible for gTLD policy, after taking into account prior Board statements and   reviewing “the feedback received from all the GNSO Stakeholder Groups and Constituencies as well as other Supporting Organizations (SOs) and Advisory Committees (ACs)”, transparently initiated a community-based, bottom up process for addressing the question of the best and most appropriate use of funds derived from last resort new gTLD auctions. The first step would be drafting a charter for the proposed Cross Community Working Group.

That’s the way ICANN is supposed to work. What happened next is at considerable variance.

On April 15th the Chair of ICANN’s Board sent an email to the Chair of the GNSO Council stating in relevant part (full text and string at the end of this article):

The Board has explicitly committed to a full consultation process.  Input from the CCWG will be quite welcome, but so will inputs from other sources.  The Board has not chartered any group to make decisions about the auction funds, and we plan to proceed very deliberately.

We will proceed very shortly with a call for inputs on general ideas and concepts, not specific projects.  We make a point of reaching outside the usual ICANN SO and AC structures to include the rest of the Internet community.  We will, of course, be glad to mention the CCWG effort as one of the ways for people to be involved.

I hope this is consistent with your understanding and expectations.

(Emphasis added)

This was not at all consistent with the Council’s understanding and expectations, and on its April call several Council members voiced their strong distress and concern. The community had initiated a bottom up mechanism, and the Board has now summarily dismissed that approach and revealed that it has already decided on a different course for moving forward. After substantial discussion the Council renewed its commitment to proceeding with a CCWG notwithstanding the Board’s view that it would just be “one of the ways for people to be involved”.

This Board action was not transparent. It apparently made its decision to reach beyond the ICANN community on this important matter without conveying that information to the community — until the Council action forced its hand.

This Board action also smacks of top down decision-making. If the Board thought there was a valid reason to reach outside of the ICANN community it could have explained its reasoning and consulted with the community on whether this approach made sense.

And this Board action again demonstrates the need for greater accountability mechanisms, as it has been presented to the Council as a fait accompli. It also seems like a clearly missed opportunity. Given the fact that the coming accountability enhancements will almost surely give the community substantially more influence over ICANN’s budgeting, it was an opening to publicly embrace the concept in advance of formal adoption of accountability measures. That opportunity has now come and gone.

This Board decision also raises a fundamental question – just who is “the rest of the Internet community… outside the usual ICANN SO and AC structures”? Who populates that non-included Internet community when ICANN is wide open to participation by everyone in the Internet community? Who are they when the present community already includes broad representation of business, civil society, contracted parties, governments, technical groups, and every other category of those with a stake or interest in the domain name system?

In this regard, CEO Chehade has repeatedly stressed in his public statements that the ICANN community welcomes participation by all interested parties. Attendance at ICANN meetings has been growing steadily, and ICANN does an excellent job in facilitating remote participation in all its activities for those who can’t attend in person. ICANN meetings also charge no registration fee, and ICANN has various programs to encourage and support participation from the developing world.

So if there are any significant portions of the Internet community that are not presently engaged with ICANN, inviting them to participate in the CCWG would have provided a powerful incentive for them to become involved — and thereby further broadened and strengthened the overall ICANN community. Instead, the Board has implicitly indicated that the ICANN community does not do an effective job in representing all Internet constituencies and it will therefore reach beyond it, which in turn undermines the existing structure’s legitimacy.

Whatever those answers are regarding the identity of “the rest of the Internet community”, right now the Board’s message to the ICANN community is: Thank you for taking the bottom-up initiative – but we will also solicit input from other unidentified parties outside the ICANN community “on general ideas and concepts, not specific projects” for the use of these tens of millions of dollars.

There are already multiple ideas out there for using those funds – from promoting Universal Acceptance of new gTLDs, to boosting developing world engagement, to bolstering ICANN’s contractual compliance efforts. The monies involved are large enough to make their disposition matter. And the community is in the best position to assure that they are not used as a slush fund for currying favour, filling an ICANN budget gap, or supporting Directors’ pet projects.

The Board’s determination dilutes the say of a community-grounded CCWG and thereby leaves the ICANN community considerably marginalized. Input from a CCWG composed of the entire community has been deemed equivalent, at best, to that coming from as yet unidentified outside entities.

This Board plan also appears to leave it with wide discretion over how these funds will eventually be allocated. Rather than letting a community-driven process determine how the funds should be expended the Board will merely consult with the community, along with those unidentified third parties, and then “proceed very deliberately” to make its own decisions.

This downgrading of the CCWG may well be a pyrrhic victory, as any utilization of the auction funds may well occur after new transition-related  accountability measures have been implemented. Indeed, this episode strengthens the case for the community exercising greater say over budget and special expenditure decisions. It also follows on the heels of the fact that ICANN publicly stated that the more than $300 million in new gTLD application fees, collected in $185,000 per application increments, would only be used for program purposes. Yet despite no proper accounting being provided for how that money has been spent, applicants have been told to expect no partial refunds, and no community dialogue on the use of any surplus has ever been initiated.

We’re watching to see if the Board further clarifies its position or takes additional action on this matter prior to the June ICANN meeting in Buenos Aires. Regardless, there may well be some spirited community feedback at the Public Forum there. Both a lot of money and an important principle are at stake.

Here are the relevant emails—

From: Steve Crocker  Sent: 15 April 2015 23:19 To:  Cc: Stephen D. Crocker; Icann-board ICANN; Staff-BrdSupport Subject: Fwd: [ssac] A Cross-Community Working Group (CCWG) to develop a plan for the use of new gTLD auction proceeds

Jonathan,

This just crossed my desk.  I compliment you on the initiative to create a CCWG to develop inputs on the use of the auction funds.

The Board has explicitly committed to a full consultation process.  Input from the CCWG will be quite welcome, but so will inputs from other sources.  The Board has not chartered any group to make decisions about the auction funds, and we plan to proceed very deliberately.

We will proceed very shortly with a call for inputs on general ideas and concepts, not specific projects.  We make a point of reaching outside the usual ICANN SO and AC structures to include the rest of the Internet community.  We will, of course, be glad to mention the CCWG effort as one of the ways for people to be involved.

I hope this is consistent with your understanding and expectations.

Thanks,

Steve

Begin forwarded message:

From: Glen de Saint Géry

Subject: A Cross-Community Working Group (CCWG) to develop a plan for the use of new gTLD auction proceeds

Date: 14 april 2015 23:42:50 CEST

ICANN SO & AC Chairs

Dear All,

A Cross-Community Working Group (CCWG) to develop a plan for the use of new gTLD auction proceeds

To follow up on my earlier communication of 2 March 2015 in relation to the possible creation of a Cross-Community Working Group (CCWG) to develop a plan for the use of new gTLD auction proceeds, I wanted to inform you that the GNSO Council discussed this topic further during its meeting of 19 March 2015. The Council reviewed the feedback received from all the GNSO Stakeholder Groups and Constituencies as well as other Supporting Organizations (SOs) and Advisory Committees (ACs) (see gnso.icann.org/en/drafts/new-gtld-auction-proceeds-recs-responses-19mar15-en.pdf). On the basis of that review, the GNSO Council decided to move forward with the creation of a CCWG by, as a first step, forming a drafting team to develop a proposed charter for such a CCWG, which could then be considered by all SO/ACs interested in participating.

As such, I would like to invite your SO/AC to designate one or two members to this drafting team effort. Please note that even if your SO/AC is not intending at this stage to become a chartering organization of the CCWG, if there are members interested to assist in this effort, they are more than welcome. In preparing the charter to address this issue, the Drafting Team is expected to develop the framework under which the future CWG will operate. This includes elements such as the mission, purpose, deliverables, as well as the guidelines for formation, staffing, organization, and overall rules of engagement. Following the completion of the work of the drafting team, the proposed charter for the CCWG will be submitted to all interested SO/ACs for their consideration.

Please provide the GNSO Secretariat  as soon as possible of with the names of those that are interested to join this drafting team. We intend to kick off the efforts of the drafting team in the week commencing 4th May 2015.

Sincerely,

Jonathan Robinson

Chair, GNSO Council

This article was sourced with permission from the Internet Commerce Association website here:
www.internetcommerce.org/59-million-and-counting/