Tag Archives: Philip Corwin

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/

Victory! Domains Stripped Out of EU “Trademark Package” by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoBack in January ICA joined with four other trade association in cosigning a letter communicating our joint concerns regarding a “trademark package” being considered by the Council of the European Union. Adoption of the language under consideration could have led to adverse judicial actions being brought against domain registrants of all types by aggressive trademark owners. In particular, the signatories objected to the wording of the Proposal that would have resulted in the addition of “domain names” to the enumerated prohibited uses, for which the proprietor of a registered trade mark has an exclusive right to impose on third parties.

All the signing groups believed that this would have been redundant of Community Trade Mark rights as they already apply to domain names. The also shared concerns that this addition would have generated confusion among judges inexperienced in Internet technology, and predisposed EU member courts to find infringement in cases of legitimate uses of domain names.

We are delighted to report that Jakob Kucharczyk, Director and General Manager of CCIA Europe, has informed us that the letter had its intended effect.  Domain names have been dropped from the scope of substantive trademark protections and will not be included in the final package.

Mr. Kucharcyzk’s email to those who had cosigned the letter of concern concluded with the declaration, “This is a huge win for us and I would like to thank you one more time for your support!” We at ICA in turn thank CCIA Europe for bringing this issue to our attention and are happy to have contributed to halting unnecessary new law that could have created substantial problems for domain registrants residing in the EU.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/victory-domains-stripped-out-of-eu-trademark-package/

ICANN CEO Responds to ICA Concerns Regarding Davos “Cybersquatting” Remarks by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoEarly last month ICA President Jeremiah Johnston wrote to ICANN CEO Fadi Chehade to express concerns regarding remarks that he had made during an interview at the World Economic Forum held in Davos, Switzerland. In the course of those remarks the CEO was perceived to characterize domain portfolio owners of “hogging names”, as well as equate domain investors with “cybersquatters”

CEO Chehade has just responded with his own letter back to President Johnston. In that response he states, “I appreciate the role the Internet Commerce Association and its members have played in helping shape ICANN policy over the years and in providing a voice and platform for propagation of best practices among the domainer community… We are in complete agreement that there is a very important legal distinction between registering generically-termed domain names and cybersquatting.  I am heartened to hear of the ICA’s efforts to discourage the latter.”

ICA appreciates that CEO Chehade took the time to respond to our letter and constructively clarify his earlier remarks.

The full text of his letter is below or see Letter from Fadi Chehadé to Jeremiah Johnstonhttps://www.icann.org/en/system/files/correspondence/chehade-to-johnston-24mar15-en.pdf:

24 March 2015

Jeremiah Johnston

President

Internet Commerce Association

1155 F Street, NW

Suite 1050

Washington, DC 20004

 

 

Dear Mr. Johnston:

Thank you for your letter dated 4 February 2015. I appreciate the role the Internet Commerce Association and its members have played in helping shape ICANN policy over the years and in providing a voice and platform for propagation of best practices among the domainer community. It is in this spirit that I welcome the opportunity to address your comments about the short video interview I gave in late January during the World Economic Forum Annual Meeting in Davos.

I regret that the ICA interpreted some of my comments in the interview as expressing a “disdainful view” of domain investing. As you might have gathered from the reporter’s questions, some people have asked whether the new gTLD program might have created an opportunity for “land grabb[ing]” by industry insiders. It was not my impression that the question being asked referred to established practices in the secondary market; rather, I believe the reporter was inquiring about some of the very practices by registries you cited in your letter. My response –that alternatives are available in different gTLDs –was intended to try to allay the concern that the program was creating artificial scarcity of domains, not to criticize participants in the marketplace. Registry operators and registrars have the freedom to be innovative both in service offering and pricing. With the introduction of new gTLDs, the marketplace will effectively decide whether the practice of, e.g., holding back or selling “premium” registrations will be successful or not.

With regard to my suggestion that the introduction of new gTLDs could help reduce cybersquatting in the long term, I continue to believe that this has potential as an outcome of the New gTLD Program. Users could become accustomed to entering, e.g., www.website.[brand] into their browsers, reducing the opportunity for those who deliberately register domain names that infringe on others’ trademarks to profit. We are in complete agreement that there is a very important legal distinction between registering generically-termed domain names and cybersquatting. I am heartened to hear of the ICA’s efforts to discourage the latter.

Thank you, as always, for sharing the concerns of the ICA with me.

Sincerely,

Fadi Chehadé

President and CEO

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/chehade-clarifies-davos-remarks/

Estimating Trademark Claims Notice Suppression of Non-Infringing New gTLD Registrations by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn February 2nd ICANN staff announced the release of a Draft Report: Rights Protection Mechanisms Review that is open for public comment until May 1st. This Draft Report is preliminary to an Issues Report requested by the GNSO Council that is due to be delivered by September 30th, and that may set the stage for a Policy Development Process (PDP) on Rights Protection Mechanisms (RPMs) that could commence in 2016. Such a PDP could consider comprehensive reform of these RPMs as well as of the Uniform Dispute Resolution Policy (UDRP).

ICA plans to file a comprehensive comment on this Draft Report. However, while scanning the text of the 73-page Report, this 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.

This is a continuation of a situation first observed one year ago, soon after the new gTLD program launched. One domain industry blogger observed in March 2014, “The Trademark Clearinghouse (TMCH) said today that is has delivered  500,000 Claims Notices (CNIS) of which 95% of the queries for trademark terms are not being followed through to a live registration…That news was released by the TMCH on a day where the total number of new gTLD registrations have passed 350,000.”

Upon the release of that half million Claims Notices statistic, another industry observer stated:

Half a million appears to be an awfully big number, especially when compared to the number of active domain names in new gTLDs, which today stands at just over 347,000.

The TMCH said today that 95% of these notices led to the name not being registered, which it said shows the success of the Claims system.

It could also mean that it’s having the “chilling effect” predicted by opponents of the process, with legitimate registrants being scared away from non-infringing uses of registered marks.

In the intervening year since those initial comments 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?

To fully understand these figures you need to know that the Trademark Claims period follows a new gTLD’s Sunrise registration period and lasts a minimum of 90 days. As explained in the Report:

During the Trademark Claims period for a TLD, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant mark information. The Claims Notice is intended to provide clear notice to the prospective domain name registrant of the scope of the Trademark Holder’s rights… If the notified party acknowledges the notice and proceeds to register the domain name, the Trademark Clearinghouse will send a notice to those trademark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name.

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.

It’s no secret that new gTLD registrations are substantially lower than new registry operators anticipated. And ICANN as well, which had to cut its FY 2015 budget by $10 million due to the resulting projected income shortfall. As one recent article observed:

Our hopes of some real ground-breaking new TLDs being immediately put to use did not materialise, and while a few global brands did engage with the programme, many simply took a ‘wait and see’ approach. A year down the track and we are still waiting for that one moment, the compelling event, which will see the programme really take off. If this was an end-of-year school report it would certainly read ‘C+; must try harder’.

While registration numbers have topped 3.5 million in the first year, the .com and .net base grew by 8.6 million in the first quarter of 2014 alone. Despite there being new options for brand owners out there, it seems that many still default to the old way of trying to find registrations within the .com or .net TLD base. Is this the case of ‘the emperor’s new clothes’?

Indeed, if the attention of the ICANN community and global policymakers were not so presently focused on the IANA transition and enhanced ICANN organizational accountability, there would be much greater discussion of the lacklustre performance of the new gTLD program. It was, after all, created and moulded by the much-vaunted multistakeholder process and is the largest and riskiest venture ever undertaken by ICANN. At some point it is going to be back in the spotlight.

We have contacted ICANN staff and they have confirmed that the 25,221,479 figure is accurate and not a typo. They have also clarified that there is presently no breakdown of Claims Notices differentiating those generated by attempted registrations of unique, non-generic trademarked words from those set off by generic dictionary words registered in the TMCH. It would be even more difficult – indeed, probably impossible — to parse out attempted registrations of generic words trademarked for some class or classes of goods and services where the potential registrant intended to use the domain for non-infringing purposes.

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, reading as follows:

You have received this Trademark Notice because you have applied for a domain name which matches at least one trademark record submitted to the Trademark Clearinghouse.

You may or may not be entitled to register the domain name depending on your intended use and whether it is the same or significantly overlaps with the trademarks listed below. Your rights to register this domain name may or may not be protected as noncommercial use or “fair use” by the laws of your country.

Please read the trademark information below carefully, including the trademarks, jurisdictions, and goods and services for which the trademarks are registered. Please be aware that not all jurisdictions review trademark applications closely, so some of the trademark information below may exist in a national or regional registry which does not conduct a thorough or substantive review of trademark rights prior to registration. If you have questions, you may want to consult an attorney or legal expert on trademarks and intellectual property for guidance.

If you continue with this registration, you represent that, you have received and you understand this notice and to the best of your knowledge, your registration and use of the requested domain name will not infringe on the trademark rights listed below.  

Now the Claims Notice is not the only possible reason that an attempted registration did not go through to completion. Many potential registrants might well have been deterred by the high annual registration fees set by some registries for Premium names. The new .Sucks registry, for example, is about to enter its Sunrise period on March 30th and has set a Suggested Retail Price of $2499 per year for any Premium Name that has been registered with the TMCH.

Indeed, some new gTLD registries may have run long lists of generic words through the TMCH to determine which were listed in order to populate their premium priced names list (a situation that trademark owners have unhappily become aware of when they contemplated domain registrations during registry sunrise periods). But even if every one of the 297 registries covered by the Report has triggered a Claims Notice on every one of the 34,300 terms registered in the TMCH, that would have resulted in the generation of only 10.2 million Claims Notices. So what generated the other 15 million?

Let’s guesstimate that half of the total initiated registrations that generated a Claims Notice – 12.6 million – were for generic word domains intended for a non-infringing purpose.

Let’s guesstimate further that half of those registrations — 6.3 million — were terminated because of registry pricing.

That would still leave 6.3 million initiated, potentially non-infringing registrations that might have gone to completion but for the registrant being scared off by the Claims Notice. That 6.3 million is 150 percent higher than the total number of new gTLD registrations completed as of February 1, 2015!

Using the same methodology, even if one subtracts the 10.2 million Notices that may have been generated by registry inquiries for Premium name designations, that would still leave 3.75 million non-infringing registrations that may have been deterred – a figure equivalent to 89 percent of actual registrations covered by the Report.

So maybe there is a lot more demand for new gTLDs than current registration numbers indicate, and it has been substantially suppressed by Claims Notices that generate excessive “false positives” to potential registrants with no design to infringe.

That may or may not be true. But it does seem to deserve additional inquiry.

Yet, if it turns out that it is true, it is unclear what if anything should or will be done about it. If and when the new gTLD RPMs are reviewed in anticipation of another round of new gTLDs, the TMCH will almost surely be kept in place as it was one of the two new RPMs adopted for the program at the strong urging of the influential trademark community (the other being Uniform Rapid Suspension (URS)). In fact, early indications are that the trademark community may well urge that Claims Notices be generated on a permanent basis and not just for the first 90 days of a registry’s existence, which could further suppress potentially non-infringing domain registrations. 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.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/tmchnew-gtld-registrations/

ICANN Staff Requests Six-Month Delay for UDRP/URS RPM Report by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoICANN staff have requested a six-month delay in the delivery date of a Preliminary Issue Report on the “current state of all rights protection mechanisms (RPMs) implemented for both existing and new gTLDs, including but not limited to the UDRP and the URS”.  The request is contained in a January 5, 2015 e-mail sent by ICANN  Senior Policy Director Mary Wong to members of the GNSO Council.

A December 2011 Council Resolution had requested that the staff-developed Report be “delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD”. The e-mail requests that the delivery date be pushed back from March to October of 2015.

Reasons cited for the delay request include:

  • The substantial work that will be required to prepare the Report.
  • Preparation of a draft paper on RPM implementation by ICANN’s Global Domain Division (GDD) that is expected to be published shortly for community discussion at the upcoming ICANN Public Meeting in Singapore.
  • An ongoing, Governmental Advisory Committee(GAC)-requested review of the Trademark Clearinghouse (TMCH) that is expected to be completed by mid-year.
  • Substantial staff and community engagement on a number of pending policy matters, including the overarching matter of the IANA transition and ICANN accountability.

While we cannot predict the Council’s action on this request, we would not be surprised if it were granted. Many Council members, staff, and other members of the ICANN community are already engaged to the point of near-exhaustion on the transition and accountability project, and the request e-mail makes clear that an Issues Report delivered in March would be hurried and lack the benefit of considering two relevant processes that are nearing completion and directly related to the subject of RPM review.

Assuming that the Council grants the request, if the Issues Report  delivered in October becomes the basis for a either consideration of a tweaking of RPMs for the next round of gTLDs, and/or a Policy Development Process (PDP) on UDRP reform, such processes could not commence until late this year or the first part of 2016. A PDP on UDRP reform would have to consider complex issues and address potentially controversial proposals, and we would expect that it would take a year or longer before completing its work and delivering a report and recommendations for community and Board consideration.

ICA has long favored comprehensive UDRP review and reform. We are disappointed that this will likely be put off once again by half a year. However, it may be best to defer it until more fully developed information on the performance of the RPMs developed for the new gTLD program becomes available, and the bulk of work on the IANA transition and ICANN accountability has been completed.

The text of the staff e-mail follows—

Dear Councilors,

Staff would like to request that the GNSO Council consider extending the timeline for the preparation and delivery of the Preliminary Issue Report that had been requested by the Council in December 2011, on the “current state of all rights protection mechanisms (RPMs) implemented for both existing and new gTLDs, including but not limited to the UDRP and the URS, to be “delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD” (see gnso.icann.org/en/council/resolutions#201112 for the relevant GNSO Council resolution). This request meant that the Preliminary Issue Report will be due in or around March 2015, given that the first new gTLD delegated under the new gTLD Program occurred in October 2013.

Since the Council’s passage of the above-mentioned resolution, which was prior to the delegation date of the first new gTLD, several developments have occurred that in the view of staff merits the Council’s considering postponing the delivery date of the Preliminary Issue Report for another six (6) months, i.e. extending the deadline to October 2015. We now know, for example, that one year after the delegation of the first new gTLD, over 400 new gTLDs have been delegated and about 150 URS complaints filed, with 1 appeal so far. A draft Work Plan was also published in September 2014, detailing the scope and nature of the various assessments that are being and will be done prior to the launch of the next round, including those concerning RPMs (see newgtlds.icann.org/en/program-status/reviews-assessments-draft-work-plan-22sep14-en.pdf for the full document).

As outlined in the Work Plan, the proposed data gathering and analysis of the RPMs implemented for the new gTLD program will include the following (see page 13 of the Work Plan):

  • Compilation and analysis of statistics provided by third-party providers (for example, geographic distribution of Clearinghouse records, outcomes of URS proceedings);
  • Coordination among service providers and ICANN to identify the issues and questions most raised in customer service submissions; and
  • Soliciting feedback from users of the effectiveness of these processes to meet rights protection objectives

Policy staff has been consulting and coordinating with our GDD colleagues on the timing of each of these assessments, since they are expressly intended to also identify potential issues for policy development work, including providing information for the Preliminary Issue Report noted above. We are informed that a draft paper on RPM implementation is expected to be published shortly for community discussion, including at the upcoming ICANN Public Meeting in Singapore.

In addition, as also noted in the Work Plan, the GAC’s May 2011 advice to the ICANN Board in respect of a review of the Trademark Clearinghouse (TMCH) is currently being scoped, and we are informed that the intention is to complete the review by mid-2015 (see https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf for the GAC’s request).

In light of the above-mentioned developments, and in view of the ongoing work of the community (including the GNSO community) on a number of policy issues as well as on the broader issues of the IANA stewardship transition and ICANN accountability, staff therefore believes that extending the timeline for the requested Preliminary Issue Report by six (6) months will allow that Report to take on board the results of the various assessment exercises as well as consider a further number of URS filings and results. The hope is that this will provide the GNSO Council and community with more concrete data and specific information that will assist in your consideration of next steps in relation to RPM review for both existing and new gTLDs.

We will be happy to provide further information should you or your groups have any questions. The Council may also wish to discuss this on its next call, if desired. In any case, please let us know whether you have any concerns or objections to this request.

Thanks and cheers – and best wishes to you and yours for a very happy 2015!

Mary

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names & Numbers (ICANN)

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