Tag Archives: Philip Corwin

ICA Tells ICANN to Pull the Plug on IGO/INGO Overreach by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoFor the third time in six months, ICA has told ICANN that the legally questionable and largely unnecessary attempts of International Governmental Agencies (IGOs) and International Nongovernmental Agencies (INGOs) to secure extraordinary protections for their organizational acronyms at second level domains should be met with a firm and resounding “no”.

(Letter available below and at forum.icann.org/lists/comments-igo-ingo-crp-prelim-10mar14/msg00006.html )

The latest occasion for weighing in was the release  of the “Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS”. ICA has no disagreement with IGOs and INGOs that have trademarked their acronyms  being allowed to utilize the UDRP and URS when they believe their rights have been infringed. But they – and particularly the IGOs – want a lot more than that. They want their acronyms to be permanently blocked  from registration at any new gTLD, and they want a whole new dispute resolution process created just for them in which the appeal from an arbitrator’s decision is to yet another arbitrator – and not to a court of jurisdiction where the domain registrant has a fairer shot at justice.

This new report does an excellent job of chronicling the long and convoluted history of this issue, the questionable legal basis for IGO claims, and the inappropriate nature of ICANN wading further into an area where it could be creating new rights rather than protecting existing rights. What doesn’t compute is the Report’s recommendation that ICANN continue to engage by starting a Policy Development Process (PDP) to modify the UDRP and URS solely for the benefit of the international organizations.

We oppose that, and instead urge ICANN to abide by the unanimously adopted resolution of the GNSO Council on this subject – and doing that, incidentally, would defend and reinforce the multistakeholder policy process that ICANN says it is busy trying to preserve. Besides, it is clear from the report that the issues involved are so complex that any PDP would consumer an inordinate and unjustifiable amount of time and resources for a very small problem that can be readily addressed through existing means.

We hope this will be the end of this subject, but that can’t be taken for granted. The IGOs have filed a new comment (at forum.icann.org/lists/comments-igo-ingo-crp-prelim-10mar14/msg00004.html) that urges the development of a separate process just for them — one that would not allow for appeal to a national court and that would protect rights beyond those in trademark law.

The reply period on this matter stays open until May 6th. So if you don’t believe that IGOs and INGOs should have preemptive rights in valuable noninfringing acronym domains, and if you oppose diluting the due process rights of domain registrants, we’d suggest you go to www.icann.org/en/news/public-comment/igo-ingo-crp-prelim-10mar14-en.htm and file your own comment in opposition to proceeding to the PDP stage.

Here’s our 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

 

                                                                                                April 14, 2014

By E-Mail

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS

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 Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS published for public comment on March 10, 2014[i].

ICA commends the members of the ICANN staff who prepared this Preliminary Issue Report. Overall, it impresses us as a comprehensive discussion of a highly complex subject with a long and convoluted history.

That said, we take strong exception to the Staff Recommendation contained in the Report:

Staff recommends that the GNSO Council initiate a PDP to explore whether, as a first step, it is desirable to modify the UDRP and URS to enable access to and use of them by IGOs and INGOs whose names and acronyms are protected at the second level; and if so, to develop policy recommendations to guide the necessary amendments. In view of the prior work that was done on developing dispute resolution processes applicable to IGOs, Staff further recommends that in initiating the PDP and creating the PDP Working Group (WG), the GNSO Council direct the WG to take into account the various considerations and suggestions outlined in this Issue Report, in particular, the specific issues described in Sections VIII and the additional considerations listed in Section IX of this Issue Report, including the possibility that instead of amending the UDRP and URS, it may be more appropriate to create a separate, narrowly-tailored dispute resolution procedure at the second level modeled on the UDRP and URS to accommodate the particular needs and specific circumstances of protected IGOs and INGOs.

ICA believes that the Issue Report, when fully considered, argues strongly against the initiation of a PDP on this subject. We therefore urge that the Staff Recommendation be altered to delete this recommendation and that it be  replaced it with one that urges IGOs and INGOs to trademark their names and acronyms and to make use of the existing UDRP and URS arbitration procedures if they believe that their rights therein have been infringed.

Prior ICA Comments on this Matter

On October 11, 2013 we filed a comment on the draft “Final Report on Protection of IGO and INGO Identifiers in All gTLDs”[ii]. In that letter we noted that many acronym domains have substantial market value and are registered by individuals and business that have legitimate rights in them and use them in a non-infringing manner that in no way causes confusion with the activities of an IGO or INGO utilizing the same acronym. Therefore we believe that the continuing quest of some IGOs and INGOs to secure blanket protections for their acronyms and prohibit their use in the domain address system by other parties is without merit and should be dismissed by ICANN.

Our pragmatic suggestions for addressing any legitimate concerns consisted of an approach that would:

  • Prohibit registration of the exact full name of any IGO or INGO at the top or second level of any new gTLD.
  • Permit registration of those full names in the Trademark Clearinghouse so that the IGO & INGO organizations benefit from the associated benefits of sunset registrations and generation of a Trademark Notice against exact match registration attempts.
  • Address the highly unlikely possibility of an attempt to abusively register an IGO or INGO acronym at the top level through a new gTLD application via ICANN’s multiple objection processes.
  • Permit IGOs and INGO’s to use the UDRP or URS against any second level acronym domain registration where there is purported evidence of bad faith registration and use.
  • Other than permitting a UDRP filing, keep hands off all incumbent gTLDs.

Then, on December 18, 2013, we filed an additional comment letter[iii] addressing the “Protection of IGO and INGO Identifiers in All gTLDs (PDP) Recommendations for Board Consideration”. That letter expressed general support for the Resolution on this subject adopted unanimously  by the GNSO Council – with the exception of certain recommendations relating to the inclusion of exact matches and acronyms in the Trademark Clearinghouse database. It also expressed gratitude that the GNSO’s recommendations did not adopt a hostile position toward acronyms of the encompassed organizations that are registered at the second level of existing gTLDs.

Reaction to the Preliminary Issue Report

Our review of the Report convinces us that the information it imparts actually makes a compelling case against initiation of a PDP:

  • The PDP may be pointless. The Second WIPO Internet Domain Name Process (WIPO-2) concluded in fall 2001 acknowledged that creating a new and independent administrative procedure similar to the UDRP but solely available to IGOs would involve the creation of new international law through a resolution issued by a competent treaty organ, a memorandum of understanding accepted by national authorities, or a new multilateral treaty.  ICANN has no authority to create new law, only a duty to see that its policies and procedures are in accord with existing relevant law. Indeed, in 2002 an ICANN representative commenting on a WIPO report on this subject noted that “ICANN can only rely on existing international law and, in this respect, takes guidance from the international community, including WIPO. Earlier made observations are correct. ICANN cannot function as a de facto trademark office”.[iv] Further, Article 6ter of the Paris Convention does not require states to protect the names and acronyms of IGOs and INGOs if their use does not suggest to the public a connection or authorization by the concerned organization, or if the use is not of a nature to mislead the public in regard to such connection. And the government of the United States has previously adopted the position that the creation of a new dispute resolution process for IGOs is unnecessary and would create rights beyond those established by Article 6ter of the Paris Convention. Given this history, it is pointless to even consider initiation of a PDP on this subject unless and until it is determined with finality that such an initiative would not exceed ICANN’s powers and place it in the position of creating new legal rights rather than considering procedures to address existing rights.
  • A new arbitration procedure tailored to accommodate IGOs would inevitably prejudice the legal rights of domain name registrants. When WIPO’s Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT) further considered this matter in 2002 it recommended that appeals be handled through de novo binding arbitration in recognition of the unwillingness of some IGOs to submit to national law. However, the ability to appeal to a court of competent jurisdiction has been an invaluable protection of the legal rights of domain name registrants seeking to appeal UDRP decisions, and depriving registrants of this ultimate protection is not an acceptable option.
  • A separate arbitration procedure has been opposed by key ICANN constituencies.  In 2007 the Registries Constituency opposed a suggestion from the Intellectual Property Constituency favoring creation of a new arbitration procedure for IGOs, stating that the recommendations “are tantamount to asking ICANN to become an “enforcer of treaties”, which is not its proper role. The treaties in question are not enforced in every signatory nation in the same way, and a globally uniform enforcement system will impinge on national law to some extent. This is “mission creep” and the establishment of a dangerous precedent.” Similarly, in the past the Commercial and Business Users Constituency (CBUC, of which ICA is a member)  “questioned the nature and extent of the problem faced by IGOs, given their registrability in the .int domain and the existence of the UDRP for those IGOs holding trademark rights; they also noted that there seemed to be relatively few documented instances of actual bad faith confusion and were concerned that the WIPO-2 recommendations were disproportionate to the problem.”
  • The PDP would involve so many complex and interacting issues as to be a substantial drain on GNSO Council and staff resources over an extended time period, to the detriment of more important matters having a higher priority. As the Report itself points out, a PDP would involve consideration of at least the following eight matters:
  1. Differences between the UDRP and URS
  2. Relevance of Existing Protections under the AGB for the New gTLD Program
  3. Interplay between this Issue and the Forthcoming Review of the UDRP
  4. The Distinction (If Any) Between IGOs and INGOs for Purposes of this Issue
  5. The Potential Need to Distinguish Between a “Legacy” gTLD and a “New” gTLD Launched Under the New gTLD Program
  6. The Potential Need to Clarify Whether the URS is Consensus Policy Binding on ICANN Contracted
  7. The Need to Address the Issue of the Cost to IGOs and INGOs of Using Curative Processes
  8. The Relevance of the Existence of Legal Protections under International Treaties and/or Multiple National Laws

In addition to those eight discrete issues, the staff further recommends “that in launching the PDP the GNSO Council direct the PDP WG to also work on the following additional topics, in addition to the specific issues outlined in Section VIII above:

(a) Review the deliberations of the 2003 President’s Joint Working Group on the WIPO-2 recommendations as a possible starting point for the PDP WG’s work and consider whether subsequent developments such as the introduction of the New gTLD Program and the URS may mean that prior ICANN community recommendations on IGO dispute resolution are no longer applicable;

(b) Examine whether or not similar justifications and amendments should apply to both the UDRP and URS, or if each procedure should be treated independently and/or differently;

(c) Reach out to existing ICANN dispute resolution service providers for the UDRP and URS as well as experienced UDRP panelists, to seek input as to how the UDRP and/or URS might be amended to accommodate considerations particular to IGOs and INGOs;

(d) Determine what (if any) are the specific different considerations (including without limitation qualifying requirements, authentication criteria and appeal processes) that should apply to IGOs and INGOs;

(e) Conduct research on applicable international law regarding special privileges and immunities for IGOs;

(f) Conduct research on the number and list of IGOs currently protected under Article 6ter of the Paris Convention on Intellectual Property;

(g) Consider whether or not there may be practicable alternatives, other than amending the UDRP and URS, that can nonetheless provide adequate curative rights protections for IGOs and INGOs, such as the development of a specific, narrowly-tailored DRP applicable only to IGOs and/or INGOs; and

(h) Bear in mind that any recommendations relating to the UDRP and URS that are developed by this PDP WG may be subject to further review should the GNSO Council decide to launch a PDP to review the UDRP and all the rights protection mechanisms that were developed for the New gTLD Program.”

We would submit that there are simply too many “moving parts” in the contemplated PDP for timely or comprehensible resolution. It would probably take years to fully consider all of them separately and in relation to one another. This PDP would require an inordinate expenditure of GNSO Council and staff time and resources to address an undocumented problem that may not even be amenable to solution through  ICANN efforts. And it also may coincide with a comprehensive review of the UDRP that could alter some aspects of that administrative arbitration procedure and thereby require a complete reset of the proposed IGO/INGO PDP.

Conclusion

Again, while we commend ICANN staff for a well-researched, objective, and comprehensive treatment of this long-standing and complex dispute, we strongly oppose the Staff Recommendation that a PDP should be initiated.

Instead, we urge ICANN to reaffirm its support for the bottom-up, private-sector led, multi-stakeholder  policy development process by embracing the unanimously adopted GNSO Council resolution on this matter. IGOs and INGOs that have concerns about potential infringement of their official names and the acronyms thereof can readily file for trademark protection and utilize existing rights protection mechanisms against any second level domain that  they believe is infringing their rights; and of course they can also utilize available judicial options. That approach accords them equal protection of their legitimate rights without depriving domain registrants of the full legal protections provided under existing arbitration procedures.

We appreciate your consideration of our views in this matter.

Sincerely,

Philip S. Corwin

Counsel, Internet Commerce Association

DC Trains Laser Focus on ICANN, IANA, and NTIA – ICA Counsel to Speak On U.S Role in Internet Governance by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe calm is over, and the storm may be about to begin. Congress is back from recess and not one but two Congressional Committees are about to hone in on the implications of the NTIA’s March 14th announcement of its intention to surrender its IANA functions contract counterparty status with ICANN by September 2015.

Meantime, an exhausting ICANN meeting has just concluded in Singapore, at which much more was learned about the import of that decision and the complexities of implementing it (more on that in a separate post-jetlag post). Everything ICANN-related, including the Internet governance status of business in general and domainers in particular, is up for grabs and at risk for at least the next eighteen months.

This is ICANN week in Washington. Besides those two Hill hearings, two major think tanks are also holding ICANN-related programs.

Here’s the lineup:

First, on Wednesday, April 2, at 10:30 am ET the Communications and Telecommunications Subcommittee of the House Energy and Commerce Committee will consider “Ensuring the Security, Stability, Resilience, and Freedom of the Global Internet” . This is the Subcommittee with direct NTIA oversight, and the hearing may be contentious. The star-studded witness list consists of:

The Honorable Larry Strickling
Assistant Secretary for Communications and Information Administration
National Telecommunications and Information Administration
U.S. Department of Commerce

The Honorable David A. Gross
Partner
Wiley Rein, LLP

Mr. Fadi Chehadé
President and CEO
Internet Corporation for Assigned Names and Numbers

Mr. Steve DelBianco
Executive Director
NetChoice

Ms. Carolina Rossini
Project Director, Latin American Resource Center
Internet Governance and Human Rights Program
New American Foundation

The following day, the Subcommittee on Courts, Intellectual Property and the Internet of the House Judiciary Committee will explore the question of “Should the Department of Commerce Relinquish Direct Oversight Over ICANN?” at 10 am Eastern Time. While the witness list is not yet available, the Subcommittee is likely to focus on whether NTIA has the legal power to make this decision absent Congressional authorization — and the potential fallout for Internet free speech and trademark and copyright protection.

Also on Thursday, at 12 noon the influential Information Technology and Innovation Foundation will hold a program on “Bully or Bodyguard? Assessing the Proper Role of the United States in Internet Governance”. ICA’s Counsel will be one of the presenters. The complete speakers list is:

Robert D. Atkinson

President, Information Technology and Innovation Foundation

Moderator

Phil Corwin

Founding Principal, Virtualaw LLC (and ICA Counsel)

Steve DelBianco

Executive Director,  NetChoice

Eli Dourado

Research Fellow, Mercatus Center

Finally, at 11 am on Friday, the respected Hudson Institute will host “A Discussion with the Hon. Lawrence Strickling about the future of ICANN”. Coming just after his Hill appearance, this should be a most interesting session.

Thanks to the wonders of the Internet, all these events will be webcast live so that you can be an eyewitness to history.

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

U.S. Plans to Relinquish IANA Contract in 2015 by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe NTIA has just announced that it plans to turn its IANA functions contract counterparty role over to “the global multistakeholder community” when the current contract expires at the end of September 2015.

As for who exactly constitutes the global multistakeholder community – well that is to be left to a process that starts with ICANN convening  “global stakeholders to develop a proposal to transition the current role played by NTIA in the coordination of the Internet’s domain name system (DNS)”. It is not clear whether this means that ICANN should fulfill this role through its regular public meetings, through the NETmundial meeting that is being held at ICANN’s request next month in Sao Paulo, Brazil, or by other means.

Specific parties that NTIA wants ICANN to collaborate with in fashioning a transition plan include “the Internet Engineering Task Force (IETF), the Internet Architecture Board (IAB), the Internet Society (ISOC), the Regional Internet Registries (RIRs), top level domain name operators, VeriSign, and other interested global stakeholders”.

Aside from the specific technical functions carried out pursuant to the IANA contract, its renewal has provided leverage that puts teeth into  the Affirmation of Commitments (AOC) entered into between ICANN and the U.S. in 2009. The AOC requires ICANN to have a process dedicated to improving its accountability and transparency, and also requires it to remain headquartered in the United States.

According to the press release:

NTIA has communicated to ICANN that the transition proposal must have broad community support and address the following four principles:

  • Support and enhance the multistakeholder model;
  • Maintain the security, stability, and resiliency of the Internet DNS;
  • Meet the needs and expectation of the global customers and partners of the IANA services; and,
  • Maintain the openness of the Internet.

Accountability and transparency, the continuation or replacement of the AOC, and remaining headquartered in the U.S. are all conspicuous in their absence from those principles – and that is worrisome.

It is somewhat heartening that the release notes that “NTIA will not accept a proposal that replaces the NTIA role with a government-led or an inter-governmental organization solution”. However, there is no reason to presume that this will be the final transition of IANA and ICANN control, or that the governments who favor multilateral over multistakeholder control will retreat from that position. The question then arises whether the new multistakeholder recipient of the IANA contract will be more vulnerable to a future UN, ITU, or another form of multilateral takeover once the U.S. has fully relinquished its role and disengaged from ICANN.

The NTIA release also appears to presume that relinquishing the IANA contract can be accomplished by the Executive Branch without any explicit authorization from Congress. However, that is an open legal question and groups that have concerns about this turnover may well encourage Congress to wade in. There is good reason to believe that if Congressional concerns are voiced they will be bipartisan.

Shortly after the NTIA made its announcement, ICANN issued its own press release stating that it had just “launched a process to transition the role of the United States Government relating to the Internet’s unique identifiers system”.

It continues:

“We are inviting governments, the private sector, civil society, and other Internet organizations from the whole world to join us in developing this transition process,” said Fadi Chehadé, ICANN’s President and CEO. “All stakeholders deserve a voice in the management and governance of this global resource as equal partners.”

It is not at all clear whether this transition process will build upon the existing 1NET and Cross-Constituency Working Group (CCWG) processes launched in the wake of last fall’s Montevideo Statement and ICANN’s request for Brazil to host the NETmundial meeting, or will add yet another layer on top of those ongoing efforts. Many of ICANN’s stakeholders are already complaining of being overwhelmed by the effort required to just keep up with events and prepare statements for submission to the Brazil meeting’s organizers by the just-expired March 8th deadline.

Leaders of the Internet technical organizations responsible for coordination of the Internet infrastructure also issued a statement welcoming the U.S. announcement. Yet a review of these organizations makes clear that ICANN is by far the dominant member in terms of staffing and ever-growing financial resources. This raises the possibility that , if these groups are determined to constitute “the global multistakeholder community”  ICANN will essentially be placed in charge of overseeing itself, and that the transition will actually amount to effectively handing the contract over to ICANN. That in turn could erode accountability while making ICANN a more attractive target for future multilateral takeover.

The upcoming ICANN meeting in Singapore was already expected to be dominated by the events initiated in Montevideo last October. This latest announcement will just reinforce that focus, even though ICANN is in the midst of the biggest and perhaps riskiest venture in its history – the ongoing rollout of more than one thousand new gTLDs.

ICA will be present in Singapore and will seek to ensure that, however events unfold, the Internet remains friendly to entrepreneurial business models, including those of domain investors and developers.

The press statements referred to in this post are below:
www.ntia.doc.gov/press-release/2014/ntia-announces-intent-transition-key-internet-domain-name-functions

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

 

GoDaddy Hit With Another Trademark Infringement Suit – A Hint of Things to Come? by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoNumber one domain name registrar GoDaddy has been hit by another trademark infringement lawsuit.

Earlier this month GoDaddy failed in its efforts to recuse U.S. District Court Judge Audrey Collins from presiding over a case brought against it by the Academy of Motion Picture Arts and Sciences.[i] The litigation alleges that GoDaddy committed cybersquatting trademark infringement when it “parked” more than 100 AMPAS-related domains, including oscarlist.com, academyawardz.com and academyawardsinc.com.

The Court had previously ruled that GoDaddy did not qualify for the safe harbor provisions of the Anticybersquatting Consumer Protection Act (ACPA) because its activities ventured beyond acting in a mere registration or maintenance capacity when it affirmatively placed the domains in a program meant to generate revenue to itself. It now looks like the case is heading for trial if it isn’t settled first.

Now we’ve just learned that Principal Financial Services, Inc. and
Principal Global Investors, LLC filed suit[ii] against GoDaddy for trademark infringement in the U.S. District Court for Northern Illinois on February 20th.  We don’t yet have further details — and we have no view on the merits of either case.

As we recently reported[iii], there is an ongoing dispute as to whether contributory trademark infringement even exists under the ACPA. That case also involved GoDaddy but arose from the use of its domain name forwarding service to direct allegedly infringing domains to adult content websites hosted by a third party. The Oscar (and likely the Principal) lawsuits appear to involve charges of direct trademark infringement.

This litigation leads us to speculate that major brands may react to any significant cybersquatting in new gTLDs by going after wholesale middlemen who offer programs to generate parking or other income from domains that are identical or confusingly similar to trademarks, and might also target auction providers and secondary market services that facilitate their sale.

The new gTLD program created two new rights protection mechanisms (RPMs). The first, Universal Rapid Suspension (URS) seems to be working as intended to provide a narrow supplement to the traditional UDRP. IBM brought the first successful URS actions against new gTLDs when it got IBM.ventures and IBM.guru suspended six days after filing. But each URS filings costs $500 plus attorney fees, and brands could quickly tire of playing whack-a-mole if there is significant cybersquatting at hundreds of new gTLDs.

The other RPM, the Trademark Clearinghouse (TMCH), does not appear to have attracted anywhere near the expected number of registrations. That prompted Deloitte, which operates the TMCH, to unilaterally decide that the complainant services side of the Trademark Claims Service will operate for an indefinite period, rather than the required 90-day period set by the consensus agreement of ICANN stakeholders – a move that we criticized[iv] back in December.

But that apparently has still has not boosted TMCH registrations sufficiently, so now Deloitte and its spokespersons have launched a scare campaign to try to gin up registrations, warning, “our research shows that some of the biggest American brand names are at risk of intellectual property infringement online as the new TLDs are rolled out, with many unknown entities eager to capitalize on the traffic and illegitimate opportunities a branded website will generate. This potentially compromises the reputation of each brand targeted”[v].The reaction from the brand side was basically “we told you so”.

We have also read that some parties have succeeded in registering generic, trademark-ineligible terms in the TMCH; and that the Chair of ICANN’s Security and Stability Advisory Committee (SSAC) recently raised technical concerns about a “broken TMCH”. None of that will increase brands’ confidence in it.

The problem for Deloitte and the TMCH is that, unless a major brand intends to make use of TMCH registrations as a means to gain the right to register its trademarks in dozens of new gTLDs during higher pricing “sunrise” periods, the TMCH offers little else to attract them enough to invest $150 per mark in annual registrations. Existing domain monitoring services offer a broader warning of infringing websites than the TMCH, which only generates notices of registrations of identical matches to its database. And apparently lots of big brands have decided that they have no intention of developing large portfolios of defensively registered domains in new gTLDs but will rely instead on monitoring and legal actions.

Many large brands may indeed be concluding that the very scale of the new gTLD program make the traditional recourse of defensive registrations and actions against individual domain registrants impractical. If that’s the case, we may well see many more lawsuits directed at the wholesale level in an effort to stop the monetization or resale of infringing domains – and to incentivize the middlemen to more proactively review the domains they are servicing. We’ll be monitoring these developments closely, especially to see if some overbroad lawsuits have the potential to impose unreasonable standards and thereby harm legitimate domain marketplace services.

Fake Political Websites Draw Attention in DC by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoControversy continues to build in Washington, DC regarding an online campaign against Democratic candidates for the House being conducted by the National Republican Campaign Committee. As just reported by National Journal, the NRCC recently adjusted the arguably misleading series of websites and “changed the donation page to make clearer to potential contributors that their money wasn’t going to the smiling Democrats pictured but instead to the Republicans”.

The article focuses on the GOP-registered website www.nickrahallforcongress.com  which features a large photo of the West Virginia Congressman and then proceeds to describe votes he cast that allegedly could cost thousands of coal mining jobs in that state. The bottom of the webpage does display this: “Paid for by the National Republican Congressional Committee and not authorized by any candidate or candidate’s committee. www.nrcc.org.”

An earlier article on the same website campaign noted that some of the GOP-backed websites were mimicking the design of the Democratic candidates’ official websites, and that the NRCC was purchasing search ads to promote the websites so that the faux website would be the first result returned when the targeted candidate’s name was Googled. That article notes, “Under Federal Election Committee (FEC) regulations, political committees cannot use a candidate’s name in a “special project,” such as a microsite, unless it “clearly and unambiguously shows opposition to the named candidate.” Some campaign finance experts and outside campaign watchdog groups contend that the NRCC websites cross the line and violate the FEC regulations, but Republican spokespersons defend them as “100 percent legal”. The FEC is highly unlikely to crack down on the practice because the Commission is evenly split and highly gridlocked between three Democrats and three Republicans.

With the FEC unlikely to act and the NRCC clearly not backing down, it will be interesting to see if any of the targeted candidates tries to shut down a faux website through an action brought under the Anticybersquatting Consumer Protection Act (ACPA). Like the UDRP and URS, that U.S. law prohibits the bad faith registration and use of a domain that is identical or confusingly similar where there is intent to profit, and in addition to trademarks the Act also covers “a famous personal name” (that could lead to judicial consideration of the issue of whether all members of Congress, as well as first –time candidates who have yet to be elected, are “famous” for ACPA purposes). One of the factors that a court may consider in regard to finding bad faith under the ACPA is whether the registrant has engaged in the registration of multiple domain names known to be identical or confusingly similar to marks protected under the Act. On the other hand, the Savings Clause of the Act preserves fair use defenses under the Trademark Act as well as “a person’s right of free speech or expression under the first amendment of the United States Constitution” – and we presume that the NRCC would argue that it was only exercising its First Amendment rights to criticize the positions of the targeted Democrats. U.S. courts are generally loathe to wade into and decide political disputes.

While the NRCC’s Democratic counterpart has apparently not engaged in such tactics (yet), we’d be surprised if Democrat candidates or their supporters hadn’t registered similar websites targeting Republican opponents. With all the independent money sloshing around U.S. politics these days it’s almost inevitable that such deliberately confusing websites will gain wider use as a campaign tool.

New gTLDs are likely to figure in this practice going forward. The Republican State Legislative Committee (RSLC) succeeded in its bid to acquire .gop as a gTLD for use solely by Republican candidates (no similar bid was made for an official Democratic Party gTLD). But the RSLC’s community objection to .republican failed, and the same portfolio applicant behind that bid will also soon be opening .democrat to domain registrations as well. So we suppose it won’t be long before these types of websites migrate to those new gTLDs, with the right-of-the-dot label arguably further confusing voters in regard to their origin and sponsorship.

All of this political squabbling will add an interesting background to any future Congressional discussion of the adequacy of the ACPA in the era of new gTLDs.

This article by the Internet Commerce Association’s Philip Corwin was sourced with permission from:
www.internetcommerce.org/Fake_Political_Websites

German Court Blurs Lines of Registrar Responsibility, by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoA German court has reached the rather startling conclusion that a domain registrar can be held responsible for alleged copyright infringement at a website even though its only contact with it was to perform the original domain registration. As reported by PC Advisor on February 7th, “A domain name registrar can be held liable for the copyright infringements of a website it registered if it is obvious the domain is used for infringements and the registrar does nothing to prevent it, the Regional Court of Saarbrücken in Germany has ruled.” (http://www.pcadvisor.co.uk/news/tech-industry/3501030/german-court-finds…)

The dispute involved Universal Music, which is rather notorious for its litigiousness, and the website h33t.com, a torrent tracker site that allegedly contained a link allowing downloads of Robin Thicke’s “Blurred Lines” CD (we’d provide a link to the #1 hit song’s rather salacious lyrics, but if we that did Universal might come after us).

Key-Systems, which registered the domain but was not hosting it, argued that it was not responsible for the copyright infringement, but the court ruled that it had a duty to investigate and to take corrective action if the copyright infringement was “obvious”. According to Key’s General Counsel, Volker Greimann, “The courts’ definition of what is obviously violating is however extremely broad and the duty to act is expanded to deactivation of the entire domain even if only one file or link is infringing.” We know Volker well from interactions at ICANN meetings, and in an e-mail exchange he explained that Key directed Universal to the webhosting company and the registrant, but that Universal continued its litigation against them instead – we can speculate that their aim may have been less to shut down the offending link than to set a broad new legal precedent.

Key is currently considering whether to appeal, with Volker observing, “If left unchallenged, this decision would constitute an undue expansion of the legal obligations of each registrar based in Germany, endangering the entire business model of registering domain names or performing DNS addressing for third parties.” If the ruling stands Key-Systems faces a potential fine of 250,000 Euro ($339,000).

For now, the disturbing decision is simply one of a single German court and only has ramifications for registrars subject to German jurisdiction. In the United States, Section 512 of the Digital Millennium Copyright Act (DMCA) provides a safe harbor for online service providers (OSPs) that provide notice-and-takedown capability for the expeditious removal of infringing material and the removal of repeat infringers; OSPs include Internet service providers and certain other online intermediaries (for more background see http://en.wikipedia.org/wiki/Online_Copyright_Infringement_Liability_Lim… and http://en.wikipedia.org/wiki/Online_service_provider). U.S. registrars regularly receive notice-and-takedown requests from copyright owners when they are hosting a particular website alleged to be infringing.

We wish Key-Systems well if they decide to appeal this disturbing decision. The registrar marketplace is highly competitive, and the German decision heaps a huge amount of responsibility on a company that only collected a few Deutschemark for facilitating a domain registration and had no further business relationship with the domain registrant or the website.

As Mr. Thicke sang in his summer of 2013 hit song:

Talk about getting blasted
I hate these blurred lines

So do we.

This article by the Internet Commerce Association’s Philip Corwin was sourced with permission from:
www.internetcommerce.org/Blurred_Lines

ICANN Retreats on Opposition to Standard Contracts with UDRP Providers by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoWhile it took three months, ICANN recently responded to the Business Constituency’s fall 2013 letter raising questions about the UDRP Status Report issued the day after the conclusion of the July 2013 Durban ICANN meeting. In a key clarification, ICANN’s response concedes that the Report does not predetermine the outcome of UDRP reform efforts slated to begin in spring 2015 — stating, “As with all PDP recommendations, ICANN would follow the Bylaws in how those recommendations are considered and implemented…the Status Report was not intended to cause any confusion or supplant any future community discussion on the issue of ICANN’s relationships with UDRP providers.”

Domain registrants have longed voiced concerns about the lack of adequate uniformity and predictability in UDRP decisions, as well as significant qualitative differences between the many accredited arbitration bodies. ICA has therefore long advocated that ICANN establish standard and enforceable contracts with all UDRP providers to ameliorate these concerns. ICANN’s Business Constituency, of which ICA is an active member, has reached a similar conclusion that standard agreements would be desirable for both trademark owners and registrants — especially as ICANN accredits new and untested regionally based arbitration organizations. The BC therefore posed a series of questions to ICANN about the Status Report in a letter sent on September 18, 2013, with a particular focus on the timing of the Report’s release, the lack of solicitation of public comment prior to its finalization, and its potential impact on future UDRP reform efforts (see internetcommerce.org/BC_Questions_UDRP_Report for background on and text of the BC letter).

ICANN’s full response is provided below; we are not fully convinced by ICANN’s explanation of the timing of the Report’s release, why the Report claimed that the URS was not based on a policy, and why a preliminary version of the Report was not put out for public comment. However, all that is water under the bridge at this point.

What we do find interesting and somewhat encouraging is that, while maintaining its curious position that establishing contracts with UDRP providers would impede ICANN’s ability to take swift corrective action against UDRP providers – something that ICANN has never done in more than a decade of UDRP practice – the response does back away a bit from staunch opposition to creating a standard contract. ICANN concedes that “a contract could be developed that would allow for flexibility in corrective action or graduated penalties” and adds “If ICANN were to see a great expansion of UDRP providers in the future, or if there were increasing need to take corrective action against UDRP providers, the development of a formal contractual regime may indeed become more advantageous than the system that exists today.”

Given its May 2013 accreditation of the Arab Center for Dispute resolution (ACDR) as a UDRP provider, the strong likelihood that additional regional providers will apply for similar approval, and the clear need for an enforceable framework to prevent a race to the bottom in UDRP practice, we believe those conditions will clearly exist when the GNSO takes up UDRP reform next year. ICA will continue to voice registrant’s concerns about the flaws in the existing system and keep on pushing for development of a standard contract.

Here’s the full ICANN letter—

December 19, 2013

Ms. Elisa Cooper

Chair, ICANN Business Constituency

Dear Elisa,

I write in response to the Business Constituency’s 18 September 2013 note regarding the “UDRP Providers and Uniformity of Process – Status Report” (Status Report) document.

The Status Report was produced as part of the Board’s consideration of the Arab Center for Dispute Resolution’s application to serve as an approved dispute resolution provider under the UDRP, which was approved on 18 May 2013. See http://www.icann.org/en/groups/board/documents/resolutions-

18may13-en.htm#1.d. The decision on the ACDR’s application was taken only after further public comment was received and analyzed, including the inputs from the BC. In its rationale for the resolution, the Board noted “the Board also requested that staff report to the community on how ICANN’s earlier consideration of UDRP provider uniformity issues was concluded. As a result, a briefing paper has been prepared and will be publicly posted.” The Status Report is that briefing paper. In fact, a draft of the Status Report was presented to the Board in advance of its decision on the

ACDR application and included in the Board Briefing Materials posted with the minutes of 18 May 2013. See http://www.icann.org/en/groups/board/documents/briefing-materials-3-2-18may13-en.pdf, at page 65-68. The Status Report was never intended to be a document similar to a GNSO Issue Report, for which public comment is necessary, as was suggested in your letter.

In response to the questions raised in your letter:

Question 1 – Contracting with UDRP Providers: Entering into formal contracts with the UDRP providers carries with it the formality of following all contractual obligations, including potential notice and cure requirements, as opposed to ICANN’s ability today to take swifter corrective action. The UDRP system to date has operated quite well without having formal contractual tools, and with very few (if any) substantiated reports of provider misconduct that require corrective action. While a contract could be developed that would allow for flexibility in corrective action or graduated penalties, the actual experience with UDRP providers to date does not necessitate the formal contractual development for which the BC seems to be calling. If ICANN were to see a great expansion of UDRP providers in the future, or if there were increasing need to take corrective action against UDRP providers, the development of a formal contractual regime may indeed become more advantageous than the system that exists today.

Question 2 – URS as Implementation of Policy Recommendations: The UDRP was developed through a formal policy development process. The Uniform Rapid Suspension System (URS) was developed as part of the implementation of the GNSO’s 2007 Policy Recommendations regarding the introduction of new gTLDs. ICANN agrees with the BC on this point. However – unlike the UDRP – the rules and procedures of the URS were not developed through a PDP. The Status Report was referencing the status of the URS itself – and not the policy recommendations underpinning the development of the URS – when indicating that the URS is not policy based.

Questions 3 and 4 – Timing of Publication/Availability of Public Comment: Because of the stated purpose of the Status Report, which was to provide an update on ICANN’s review of its relationships with UDRP providers, the document was never contemplated for public comment. Further, because of the informational status of the Status Report, and the fact that no discussion of the Status Report was anticipated at the Durban meeting, the timing of the posting of the Status Report was not considered to be linked to the Durban meeting. As seen through efforts such as the BC’s letter, the ICANN community always has the ability to raise concerns on this issue.

Question 5 – Impact on Future Policy Development Work: As the BC points out in its letter, the GNSO’s future work is expected to include an issue report on the UDRP 18 months after the delegation of new gTLDs. Issues relating to the UDRP provider approval process have long been contemplated as a topic for the policy development process, and were in fact included in the 2011 Final Issue Report on the Current State of the UDRP. See gnso.icann.org/issues/udrp/udrp-final-issuereport-03oct11-en.pdf. Policy recommendations regarding ICANN’s relationship with UDRP

Providers could be an outcome of that PDP (or one in the future). As with all PDP recommendations, ICANN would follow the Bylaws in how those recommendations are considered and implemented.

The Status Report could be considered as an input into the future PDP Working Group discussions if the Working Group wished to do so.

As discussed above, the timing of the publication of the Status Report was not intended to cause any confusion or supplant any future community discussion on the issue of ICANN’s relationships with UDRP providers. Instead, the Status Report represented the completion of ongoing work within ICANN. Thank you for reaching out for clarification on this document.

Best Regards,

Akram Atallah

President, Global Domains Division

This article by Philip Corwin of the Internet Commerce Association was sourced with permission from:
internetcommerce.org/ICANN_Response2BC_UDRP_Status_Report

ICA and DNA to Share Stage at NamesCon by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe Internet Commerce Association and the Domain Name Association will be represented together at a Breakout Panel Session during the NamesCon domain industry conference slated to take place next week in Las Vegas.

ICA Counsel Philip Corwin and DNA Executive Director Kurt Pritz will be the two speakers at “Your Voice in the New Marketplace: TheDNA.org and ICA — Promoting the adoption of domain names and being heard in Domain Name rules, policy, standards and governance” taking place at 11:05 – 11:50 am on Wednesday, January 15th in Room C at the Tropicana Hotel. We congratulate the NamesCon organizers for hosting a sold-out event that has reached full capacity of 450 attendees.

And, after seven years as the sole trade association dedicated to DNS issues, we welcome the DNA to the fray – while we expect some overlap in membership, the two organizations are more complimentary than competitive although there may well be issues on which we can work cooperatively.

Domain Name Association logoICA marked its seventh anniversary in fall 2013 and has long been focused on protecting and enhancing the rights of domain name registrants. We’ve worked to improve the UDRP and assure that the additional rights protection mechanisms for new gTLDs preserve essential due process rights; have become a prominent voice within ICANN and its Business Constituency; worked in Washington against the Snowe bill and the PIPA/SOPA domain suspension proposals; and have attended to the tedious but important technical details of ICANN policy changes that affect registrant rights.

Looking ahead to the rest of 2014, we’re gearing up to deal with the unpredictable but inevitable consequences of more than one thousand new gTLDs entering the marketplace – and to react to any legislative proposals to amend the Anticybersquatting Act in a way that would place domain owners at an unfair disadvantage.

Having attended the DNA’s launch event at the ICANN Buenos Aires meeting it’s clear that, while likewise dedicated to the domain name industry, it has a different focus. DNA seeks to represent those organizations involved in the provision, support and sale of domain names such as registry operators, registrars, and resellers – but views registrants as consumers of its members’ services, while professional registrants are the core of ICA’s membership. And, while DNA may seek to influence ICANN policies, it has no plans to lobby in Washington or anywhere else. What DNA does plan to focus on is product promotion advocacy of the use of domain names as the primary means for Internet.

We look forward to our session and hope that it assists NamesCon attendees in better understanding the separate roles and missions of the two industry trade associations.

Shortly after that panel discussion, ICA will be hosting a meet-up in room C from 12:40 – 2 pm so that current ICA members and those interested in learning more about our work can get together and network. We hope to see you there!

This article by the Internet Commerce Association’s Philip Corwin was sourced with permission from: internetcommerce.org/NamesCon-breakout.