Tag Archives: UDRP

Final RPM Report Follows ICA Comment and Sets Stage for UDRP Review by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoDomain registrants have long voiced their desire for a comprehensive review and subsequent reforms of the Uniform Dispute Resolution Policy (UDRP). That goal is now in sight, and is set to proceed in the manner recommended to ICANN by ICA.

On January 11, 2016 ICANN policy staff submitted to the GNSO Council the “Final Issue Report on a Policy Development Process to Review All Rights Protection Mechanisms in All Generic Top-Level Domains”. That Final Report is culmination of a public comment process that started last October, in which ICA actively participated, considering how a review of the rights protection mechanisms (RPMs) for the new gTLD program should be related to an unprecedented review of the UDRP, the only ICANN Consensus Policy that has never been subjected to scrutiny since its creation. Domain registrants desiring a balanced approach to their rights versus those of trademark owners have a big stake in both reviews. RPMs should recognize and protect the rights of both domains and trademarks.

In its December 1st comment letter, ICA stated its preference for a sequential review process:

ICA prefers a separate and sequential approach for the reviews and subsequent reports and recommendations, with the RPM review preceding and thereby informing the UDRP review.

ICA further explained its practical and policy reasons for that preferred two-part approach:

Both domain registrants and trademark owner complainants deserve, after nearly two decades of unexamined use, a UDRP review and reform process that is accorded adequate time for comprehensive review and development of subsequent recommendations. This review of necessity must be preceded by the RPM review, as it was the intent of the GNSO Council in 2011 that the UDRP review be informed by that of the RPMs and by any changes made to them….We fully expect that there will be substantial interest in completing the RPM review prior to the opening of any second round of new gTLDs, and that consideration provides another reason for structural separation. If the RPM and UDRP reviews were addressed together, substantial pressure could arise to truncate the UDRP portion lest it delay the timing and adoption of final RPM recommendations. As a result this first-ever UDRP review could get short shrift and inadequate attention.

That ICA suggestion was essentially adopted by ICANN staff. In this regard, the Final Report suggests the following procedure:

Following review of community feedback received regarding the three options for a RPM review that were presented in the Preliminary Issue Report for public comment, ICANN staff recommends that the GNSO Council launch a PDP in accordance with what was presented as the third option in the Preliminary Issue Report: namely, to conduct a policy review of all the RPMs in two phases. The initial phase would focus on a review only of the RPMs developed for the New gTLD Program, and the second phase would focus on a review of the UDRP. The second phase may also include any issues identified during the first phase of the PDP that are more appropriately considered during the second phase. Cumulatively, the results of both phases of the PDP would be a full review of all RPMs developed to date for all gTLDs….Staff recommends that the work in the initial phase of the RPM PDP be performed by a standalone PDP Working Group that liaises with the recently launched PDP Working Group on New gTLD Subsequent Procedures as there may be overlapping issues arising during the work of both groups that would warrant careful coordination. Staff does not recommend folding in a review of the RPMs that were developed for the New gTLD Program into the scope of work for the New gTLD Subsequent Procedures PDP due to the likely complexity and size of that PDP….Staff also recommends that, upon completion of Phase One, the PDP Working Group submits a First Initial Report to the GNSO Council that is also published for public comment….The second, subsequent phase of work in the RPM PDP would be a review of the UDRP, ideally carried out by the same PDP Working Group….Staff believes that a benefit of this two-phased approach is a better alignment of the timing of the work on reviewing the New gTLD Program RPMs with the operational reviews of the New gTLD Program17 (including the CCT Review) and the PDP on New gTLD Subsequent Procedures. (Emphasis added)

The GNSO Council has already proceeded in harmony with that suggested approach. During its meeting of January 21st, Council adopted a Charter for The New gTLD Subsequent Procedures PDP Working Group that specifically prohibits it from addressing the RPMs, stating:

Second-Level Rights Protection Mechanisms: Proposing recommendations directly related to RPMs is beyond the remit of this PDP. There is an anticipated PDP 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…”. Duplication or conflicting work between the New gTLD Subsequent Procedures PDP and the PDP on RPMs must be avoided. If topics related to RPMs are uncovered and discussed in the deliberations of this PDP, those topics should be relayed to the PDP on RPMs for resolution. To assure effective coordination between the two groups, a community liaison, who is a member of both Groups, is to be appointed jointly by both Groups and confirmed by the GNSO Council. (Emphasis added)

That means that review of all the new gTLD RPMs—the Trademark Clearinghouse (TMCH) and related Sunrise and Trademark Claims service periods; Uniform Rapid Suspension System (URS); and Post-Delegation Dispute Resolution Procedures (PDDRPs) — should be the sole preserve of a new Working Group (WG) on all RPMs in all gTLDs. Following that review, it will proceed to review the UDRP and consider whether it should be reformed.

The GNSO Council will likely take up a Motion to establish that RPM WG, as well as adopt its Charter, at its next meeting scheduled to take place on February 18th.

Once Council takes that next step, ICA intends to fully engage in the review of the new gTLD RPMs and, of course, the UDRP review. ICA will advocate an approach that, while fully respecting the legitimate rights of trademark owners, brings greater balance to the exercise of all the RPMs and that helps to make the application of the UDRP a more consistent and predictable process in the future. We will of course keep our members comprehensively informed as the reviews proceed, and will solicit their feedback and guidance as critical questions emerge.

This article was sourced with permission from the Internet Commerce Association website here.

ICA Tells ICANN That Comprehensive UDRP Review Should Follow RPM Analysis by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn November 30th ICA filed its comment letter regarding the “Preliminary Issue Report on a GNSO Policy Development Process to Review All Rights Protection Mechanisms in All gTLDs” that was published for public comment on October 9, 2015.

ICA’s complete comment can be viewed at forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/msg00021.html, and all 24 filed comments are available at forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/index.html.

The principal question raised by the Report was whether the review and possible adjustment of new gTLD RPMs and the review and potential reform of the UDRP should be combined or separated. On that key decision, our comment letter said that the RPMs should be addressed prior to the UDRP review for these reasons:

We believe that the RPM review and the UDRP review each constitutes a highly complex array of interrelated questions and judgments, and that trying to combine the two into a single mega-review will tax any Working Group (WG) inordinately.

In particular, the UDRP review will constitute the first comprehensive inquiry into ICANN’s oldest Consensus Policy. It may address structural issues; such as whether ICANN should enter into uniform contractual agreements with all UDRP providers, whether there should be clear boundaries to prevent individual dispute providers’ Supplementary Rules from influencing decisional outcomes, and whether an internal appeals procedure should provide an avenue for a ‘UDRP Supreme Court’ to address and reconcile disparate decisions by different providers on nearly identical fact patterns.

…Both domain registrants and trademark owner complainants deserve, after nearly two decades of unexamined use, a UDRP review and reform process that is accorded adequate time for comprehensive review and development of subsequent recommendations. This review of necessity must be preceded by the RPM review, as it was the intent of the GNSO Council in 2011 that the UDRP review be informed by that of the RPMs and by any changes made to them. Further, as staff notes at page 8 of the Report, one result of “this approach is the fact that community consideration of the more general overarching issue concerning the comprehensiveness of all the RPMs as a set of aggregate protections for trademark holders in all gTLDs, as well as the issue of whether any of the new RPMs should be considered Consensus Policies like the UDRP, will necessarily be postponed to the second phase of work”. Unlike staff, we do not view that consideration as a drawback but as a far more responsible approach than considering integration of any of the new gTLD RPMs in legacy gTLD without knowing whether or in what manner they may be altered.

We agree with staff that “One benefit of this two-pronged approach is better alignment of the timing of the work on reviewing the new RPMs with the operational reviews of the New gTLD Program (including the CCT Review) and, conceivably, a new PDP on New gTLD Subsequent Procedures”. We fully expect that there will be substantial interest in completing the RPM review prior to the opening of any second round of new gTLDs, and that consideration provides another reason for structural separation. If the RPM and UDRP reviews were addressed together, substantial pressure could arise to truncate the UDRP portion lest it delay the timing and adoption of final RPM recommendations. As a result this first-ever UDRP review could get short shrift and inadequate attention.

Many of the other groups and individuals who filed comments also took the view that the RPM and UDRP reviews should be separate, with the RPMs teed up first.

What did surprise us was the reluctance of the trademark community to even contemplate a review of the UDRP, much less consider any changes based on nearly twenty years of experience with it.

The International Trademark Association (INTA) asserted that it is “is strongly opposed to opening the Uniform Dispute Resolution Policy (UDRP) to review as the UDRP has been functioning efficiently and well for over fifteen years. It is important to maintain this effective mechanism which combats the most blatant instances of cybersquatting within the domain name system. Any review or subsequent modifications could jeopardize the benefits that the UDRP is intended to provide to trademark owners.” Having attended INTA conferences along with thousands of others, and seen the money invested in global branding as well as the sector’s political influence, it strains credulity to believe that trademark owners could be “rolled’ in the course of a UDRP review.

ICANN’s Intellectual Property Constituency (IPC) warned “that the complexity of any review would be immense and the drain on resources considerable, with a risk of creating new problems via an overly complicated review process… the IPC has a serious concern that if a review were to be carried out, there is a risk of a polarization of views into two camps – each with a fear that the other camp would either dilute or overly strengthen the UDRP. Improvements sought by one side would be seen as potentially abusive to registrants, improvements sought by the other as potentially diluting the effectiveness of a mechanism for resolving disputes efficiently… if a review of the UDRP as a policy is to be considered, an “Expert Group” should be assembled to carry out this review.” For ICA’s part, we think that, just like war is too important to just be left to the generals, UDRP review and reform is too important to just be left to “experts” and must include participation by those with broader views of the UDRP’s impact on domain registrants and free expression, among other key considerations.

And UN agency and accredited UDRP provider the World Intellectual Property Organization (WIPO) opined that “the UDRP continues to function as intended. In its harmonized criteria and universal application, this anti-cybersquatting mechanism has come to be recognized as an international policy success… Destabilization of the predictable UDRP framework may have a range of unintended consequences. It would disrupt the body of precedent carefully developed by hundreds of panelists from across jurisdictions in tens of thousands of cases… Each day, the UDRP demonstrates the flexibility to meet the demands of an evolving DNS; it does not need system-wide updates that would imprudently limit this flexibility”. To the contrary, domain investors would respond that this “flexibility” is code for a lack of any binding precedent that makes the UDRP more of a casino game in a world of proliferating UDRP providers.

We are pleased that ICANN’s Business Constituency, of which ICA is a member, took a more balanced approach, stating, “While the BC believes that the UDRP is working well overall, it now seems timely to engage in a review of its performance with an eye toward considering possible improvements, so long as that UDRP review commences after completion of the RPM review.”

In response to the trademark community’s message of opposition and excessive caution, ICA added this final point to our comment’s Executive Summary, to wit:

Finally, we have strong disagreement with the view expressed by a minority of commenters that the UDRP review anticipated by the GNSO Council’s Resolution of December 15, 2011 should not proceed at all, and that any such undertaking would be unduly arduous and dangerous. The UDRP is the only ICANN Consensus Policy that has never been reviewed. Like any human undertaking, it is not perfect and was drafted by individuals who could not have known how it would be implemented in practice. Any UDRP review should of course be fully informed by the actual record of UDRP practice and experience of participants, and should proceed carefully. But we are confident that a good faith UDRP review that considers the legitimate rights and interests of both registrants and complainants, as well as related public policy issues, can produce a more balanced and consistent system that preserves the fundamental virtues of the UDRP while yielding modifications that benefit all affected parties.

ICA looks forward to participating in both the RPM and UDRP reviews. ICANN staff is scheduled to deliver a Report summarizing comments and suggesting next steps by December 10th. Following receipt of that report, the GNSO Council will decide on a way forward and, if ICA’s and other commenters’ proposed procedure is followed, will consider a draft Charter for an RPM review working group in the initial months of 2016.

Throughout the coming review processes, ICA will be an active participant seeking to protect the legitimate rights and interests of domain investors and developers and to bring greater balance between trademark and domain rights.

Here’s the rest of our comment letter’s Executive Summary:

Executive Summary

  • ICA prefers a separate and sequential approach for the reviews and subsequent reports and recommendations, with the RPM review preceding and thereby informing the UDRP review.
  • ICA reiterates all of the points made and views expressed in our prior RPM comment letter of April 30, 2015.
  • ICA believes that the URS has been largely effective in achieving its intended goals. We would strongly oppose any alterations that could make it a substitute for, rather than a narrow supplement to, the UDRP. In addition, the initiation of a PDP to determine whether the URS and other new gTLD RPMs should become Consensus Policies for all gTLDs, and the full consideration of the multiple transitional issues accompanying any such decision, illustrates again that the decision of GDD staff to seek imposition of the URS in contract renewal negotiations with legacy gTLDs was a direct and impermissible intrusion into the policy realm reserved to GNSO Council by ICANN’s Bylaws. ICANN’s Board should therefore instruct GDD staff to cease and desist from any such attempts during the time that these PDPs are open and active, and should refuse to approve any legacy gTLD renewal contract that contains any provision of new gTLD RPMs.
  • The language of Trademark Claims notices may 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 to the prospective registrant, 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.
  • Labels that generate a Trademark Claims notice should not be expanded beyond the present system of exact matches of the trademark, plus domain labels recovered in UDRP or court actions under the ‘Trademark-plus-fifty’ implementation measure.
  • The right of first refusal for a premium domain name during or after the sunrise period should be conditioned on whether the trademark is unique or a dictionary word, and if a dictionary word whether the gTLD label is related to the goods and services for which it is registered.
  • Our responses to the report’s UDRP questions emphasize the need for a mechanism, perhaps via an optional internal appeal, to establish greater predictability and consistency in decisions dealing with similar facts; better protection for free speech, especially legitimate noncommercial criticism; more equitable time periods for respondents to choose counsel and draft answers; a fairer means of allocating cases among UDRP providers and their panelists; and establishment of a uniform laches policy barring complaints in defined circumstances.
  • Our additional comments on the UDRP address the need for clear guidelines and meaningful penalties to determine and deter attempted Reverse Domain Name Hijacking; greater transparency requirements for UDRP providers; and establishment of an ICANN-maintained centralized database of UDRP decisions and other relevant information.

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

The TPP and the DNS by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn November 5, 2015 the Office of the U.S. Trade Representative (USTR) released the official text of the Trans-Pacific Partnership (TPP). That text consists of 30 separate Chapters totaling more than 2,000 pages, and is accompanied by four additional Annexes and dozens of Related Instruments. Only those who negotiated it are likely to have a detailed understanding of all its provisions, and even that probably overstates reality.

The TPP’s intellectual property (IP) provisions are contained in Chapter 18, which runs for a mere 74 pages. While the majority of these provisions address patents, copyrights, and trademarks, Article 18.28 deals with Domain Names (its full text is reproduced at the end of this article). While of direct relevance to the domain name industry as well as the trademark sector, these provisions were not deemed sufficiently important to merit a single word of explanation in the IP Rights issue paper or fact sheet issued by USTR.

There are twelve signatory nations to the TPP – Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam, and the United States. Article 18.28 requires each of them to do two things with regard to domain names:

  1. Make available for its country code top level domain (ccTLD) a dispute resolution procedure, modeled upon the principles of ICANN’s Uniform Dispute Resolution Policy (UDRP), that is designed to provide expeditious and low cost resolution, is fair and equitable, is not overly burdensome, and does not bar access to judicial redress; and
  2. Provide online public access to a reliable and accurate database of domain registrants in its ccTLD in accordance with each nation’s laws and relevant administrative policies regarding privacy and personal data protection.

Neither of these provisions is earth-shattering, and to some degree they are even positive for the domain sector. Most major ccTLDs already provide access to non-judicial dispute resolution between trademark rights holders and domain registrants, and some even go beyond TPP’s requirements. The .US ccTLD, for example, which had already adopted the UDRP, announced in June 2104 that it was adopting the Uniform Rapid Suspension (URS) procedure which was developed for ICANN’s new gTLD program but is not yet a Consensus Policy applicable to legacy gTLDs. Further, the .US versions of both UDRP and URS require the rights holder to only demonstrate that “the domain name(s) were registered or are being used in bad faith”, while the ICANN versions require evidence of both bad faith registration and use. From a registrant’s point of view, the most positive element of the TPP language is its emphasis on a “fair and equitable” process and its preservation of court access.

As for online access to registrant data, the TPP’s deference to law and policy regarding privacy and personal data protection does not appear to attempt to influence the ongoing attempt by ICANN stakeholders to fashion a new database policy to replace WHOIS. Nor does it require ccTLDs to prohibit the use of privacy and proxy services (which are permitted, for example, by the .AU registry).

So Article 18.28 seems to at least satisfy the “do no harm” standard.

These provisions do not take effect until a signatory nation take the additional steps required under its law to formally adopt the TPP. In the U.S. that requires Congressional approval. President Obama’s November 5th letter to the House and Senate leaders concludes with this statement:

“Consistent with the Trade Priorities Act, I am sending this notification at least 90 days in advance of signing the TPP Agreement.  My Administration looks forward to working with the Congress in developing appropriate legislation to approve and implement this TPP Agreement.”

The TPP faces stiff political opposition within the U.S. Most Democrat members of Congress are opposed to it due to strong resistance from unions and other interest groups.

While we don’t see them as being in the camp of either U.S. political party, the Electronic Frontier Foundation (EFF) recently declared that the publication of TPP’s IP provisions “confirms our worst fears about the agreement, and dashes the few hopes that we held out that its most onerous provisions wouldn’t survive to the end of the negotiations”. EFF took a far more jaundiced view than our own regarding the domain name provisions, observing that it “requires countries to adopt an equivalent to ICANN’s flawed Uniform Domain-Name Dispute Resolution Policy (UDRP), despite the fact that this controversial policy is overdue for a formal review by ICANN” (Note: Such UDRP review is expected to commence in the first half of 2016.)

With the U.S. elections just a year away, U.S. Presidential and Congressional electoral politics are converging to bear on the TPP’s prospects. Presidential Contender Bernie Sanders is a long-time and highly vocal detractor of the pact. His official position states that he:

“Opposed NAFTA, CAFTA, permanent normal trade relations (PNTR) with China, the TPP, and other free-trade agreements. These deals kill American jobs by shifting work overseas to nations which fail to provide worker protections and pay extremely low wages.”

Meanwhile, Hillary Clinton, who pronounced the TPP to be the “gold standard” of modern trade deals while serving as Secretary of State in the Obama Administration, reversed that stance on October 7th, shortly after the final text was published on WikiLeaks, stating:

“As of today, I am not in favor of what I have learned about it. I have said from the very beginning that we had to have a trade agreement that would create good American jobs, raise wages and advance our national security. I still believe that’s the high bar we have to meet. I’ve been trying to learn as much as I can about the agreement, but I’m worried. I appreciate the hard work that President Obama and his team put into this process and recognize the strides they made. But the bar here is very high and, based on what I have seen, I don’t believe this agreement has met it.”

That position, alleged by some to constitute a “flip-flop “, caused the Washington Post to opine in an editorial:

“Bowing to pressure from the Democratic Party’s ascendant protectionist wing, would-be presidential nominee Hillary Clinton has come out against President Obama’s freshly negotiated Trans-Pacific Partnership (TPP) trade agreement. The most hopeful thing to be said about this deeply disappointing abandonment of the president she served, and the internationalist tendency in Democratic ideology she once embodied, is that it is so transparently political… To be sure, Ms. Clinton salted her anti-TPP statement with qualifiers: “What I know about it.” “As of today.” “I am not in favor of what I have learned about it.” And so on. In other words, there is still a chance that later on, if or when she’s president, and it is to her advantage, she may discover some decisive good point in the TPP that would let her take a different position without, technically, contradicting herself. Cynical? Perhaps, but as we said, that’s the hope.”

On the Republican side, leading Presidential contender Donald Trump has made his TPP opposition clear, stating inimitably in a November 9th interview, ““The deal is insanity. That deal should not be supported and it should not be allowed to happen.” While Jeb Bush has voiced support for TPP, others vying for the GOP nomination do not appear to be eager to take a hard position that could antagonize an already disaffected and generally anti-establishment voter base, particularly within its “Tea Party” contingent. More establishment Republican corporate interests tend to favor the TPP, but even in that camp there are notable industries and major companies with strong concerns about various aspects of the agreement.

Congress voted in June 2015 to give the President “fast track” trade promotion authority for the TPP, but that does not mean that a vote will come quickly — just that the TPP text cannot be amended by Congress. The earliest Congress might vote on TPP is Spring 2016. But given that 2016 will be a politically charged year with control of the House, Senate, and White House all theoretically up for grabs, neither party is anxious to take a vote that could alienate millions of potential voters. So there’s a good chance that the final decision on TPP will be left to the next President and Congress sometime in 2017.

The TPP’s signatory nations do not include the largest economic power on the western shore of the Pacific, China, and that omission is to some extent meant to deliberately counter that nation’s economic designs for the Pacific Rim. As former U.S. Treasury Secretary Lawrence Summers just described that strategy:

“The Council on Foreign Relations, hardly a source of xenophobic or radical ideas, recently issued a report drafted by leading U.S. diplomats condemning this country’s efforts to build up China within the international economic order and calling for a “balancing strategy” that includes “new preferential trading arrangements. . .that consciously exclude China.” No small part of the case being made by the Obama administration for the Trans-Pacific Partnership (TPP) trade deal involves the idea that it will promote competitiveness vis-a-vis China and reduce China’s influence in determining global trade rules.”

But global investment flows route around trade policies just like the Internet routes around obstacles, and Chinese investors are today taking actions that may elevate the status of domain names in future trade agreements. Domain name registrations have recently been hitting record levels and, as reported in The Domains, most of the demand seems to be coming from purchasers in China who want to diversify out of equities and real estate and now view domains as an asset class with multiple valuable attributes, including good price appreciation potential.

That changing economic role for domains gives hope that, when the next multinational trade pact is under development, the domain investment industry will be well positioned to make its own case that domains must be viewed not just through the prism of potential trademark infringement but as a valuable intangible asset unto itself, and one that is equally deserving of uniform international recognition and protections.

 

***

Domain Name Provisions of the TPP:

 

Article 18.28: Domain Names

  1. In connection with each Party’s system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:

(a) an appropriate procedure for the settlement of disputes, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute-Resolution Policy, as approved by the Internet Corporation for Assigned Names and Numbers (ICANN) or that:

(i) is designed to resolve disputes expeditiously and at low cost;

(ii) is fair and equitable;

(iii) is not overly burdensome; and

(iv) does not preclude resort to judicial proceedings; and

(b) online public access to a reliable and accurate database of contact information concerning domain-name registrants,

in accordance with each Party’s law and, if applicable, relevant administrator policies regarding protection of privacy and personal data.

  1. In connection with each Party’s system for the management of ccTLD domain names, appropriate remedies17 shall be available at least in cases in which a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark.

17 The Parties understand that such remedies may, but need not, include, among other things, revocation, cancellation, transfer, damages or injunctive relief.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
http://www.internetcommerce.org/the-tpp-and-the-dns/

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/

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

Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property, and Restitution by Jacqueline D. Lipton, Case Western Reserve University School of Law

Abstract: The year 2009 marks the tenth anniversary of domain name regulation under the Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP). Adopted to combat cybersquatting, these rules left a confused picture of domain name theory in their wake. Early cybersquatters registered Internet domain names corresponding with other’s trademarks to sell them for a profit. However, this practice was quickly and easily contained. New practices arose in domain name markets, not initially contemplated by the drafters of the ACPA and the UDRP. One example is clickfarming – using domain names to generate revenues from click-on advertisements.

To avoid trademark liability, most clickfarmers and cybersquatters utilize personal names, geographic and cultural indicators, and generic terms as domain names. The application of current regulations to these practices is unclear, largely because of the lack of a coherent policy basis for domain name regulation.

This article develops a new model for domain name regulation. It incorporates trademark policy within a broader theoretical framework incorporating aspects of restitution and property theory. The author suggests that a broader theoretical approach to domain name regulation would facilitate the development of more coherent domain name rules in the future. This discussion is particularly timely in light of the forthcoming implementation of a new generic Top Level Domain (gTLD) application process.

This article by Jacqueline D. Lipton is available for download in full from:
ideaexchange.uakron.edu/ua_law_publications/139/

Celebrity in Cyberspace: A Personality Rights Paradigm for Personal Domain Name Disputes by Jacqueline D. Lipton, Case Western Reserve University School of Law

Abstract: When the Oscar-winning actress Julia Roberts fought for control of the domain name, what was her aim? Did she want to reap economic benefits from the name? Probably not, as she has not used the name since it was transferred to her. Or did she want to prevent others from using it on either an unjust enrichment or a privacy basis? Was she, in fact, protecting a trademark interest in her name? Personal domain name disputes, particularly those in the space, implicate unique aspects of an individual’s persona in cyberspace.  Nevertheless, most of the legal rules developed for these disputes are based on trademark law.

Although a number of individuals have successfully used these rules in practice, the focus on trademark law has led to inconsistent and often arbitrary results. Additionally, commentators have questioned recent expansions of trademark law in the Internet context.

This Article suggests that if personal names merit legal protection in cyberspace, it should be under an appropriate set of legal rules, rather than through further expansion of trademarks. This Article develops a new framework for personal domain name disputes based on the theories underlying the right of publicity tort. Unlike trademark law, this tort is aimed at the protection of individual names and likenesses. It has not been utilized much in cyberspace largely because of time, cost, and jurisdictional disadvantages of litigation as opposed to the quicker and cheaper, but trademark-based, Uniform Domain Name Dispute Resolution Policy (“UDRP”). This article suggests the creation of a new personal domain name dispute resolution policy (“PDRP”) that combines the procedural advantages of the UDRP with the theory underlying the right of publicity tort.

This article by Jacqueline D. Lipton is available for download in full from:
ideaexchange.uakron.edu/ua_law_publications/140/

ICANN Announces UDRP Policy Implementation Update

ICANN logoICANN announces the implementation of amended rules for the Uniform Domain Name Dispute Resolution Policy (UDRP).

UDRP

The UDRP is a consensus policy that is applicable to all ICANN-accredited registrars. The updates include:

  1. “Lock” and “pendency” are now defined terms in the UDRP Rules;
  2. UDRP complainants no longer have to transmit a copy of the complaint to the respondent (rule 3(b)(xii));
  3. Rule 4(b) requires registrars to lock the disputed domain name(s) within two (2) business days of receiving a UDRP complaint from a UDRP provider;
  4. Rule 4(e) provides that when a UDRP provider informs the registrar that the UDRP proceeding has been withdrawn or dismissed, the registrar must remove the lock within one (1) business day of receiving notice;
  5. Rule 5(b) provides that respondents may request an additional four (4) calendar days to respond to a complaint and UDRP providers will automatically grant the extension, if requested;
  6. Rule 16(a) provides that registrars must notify the parties, the provider and ICANN of the date for implementation of the decision within three (3) business days of receiving the decision from the provider;
  7. Rule 17 outlines a new procedure to be used in cases that are settled between parties outside the UDRP case.

These amendments to the UDRP rules were designed to reduce the risk of cyberflight during a UDRP proceeding.

A link to a redline version of the amended UDRP Rules can be found here: http://www.icann.org/en/system/files/files/udrp-rules-redline-24sep14-en.pdf [PDF, 204 KB]

Background

On 23 September 2013, the ICANN Board adopted the GNSO Council Policy Recommendations on the Locking of a Domain Name subject to UDRP Proceedings as set forth in the Final Report (see http://gnso.icann.org/en/issues/locking/domain-name-final-05jul13-en.pdf [PDF, 1.01 MB]).

The Generic Names Supporting Organization (GNSO) unanimously approved at its meeting on 1 August 2013 the recommendations of the Locking of a Domain Name subject to UDRP Proceedings PDP Working Group. The 17 recommendations are intended to clarify and standardize the process for locking of a domain name subject to UDRP Proceedings, including:

  • Definition of “locking”
  • Requiring registrar to apply lock within 2 business days following request for verification
  • Removing obligation for complainant to notify the respondent at the time of filing, but add automatic extension of 4 days to response time upon request
  • Step by step clarification of requirements of different parties involved
  • Development of educational and informational materials to assist in informing affected parties of new requirements and recommended best practices

Following ICANN Board approval, an Implementation Review Team (“IRT“), comprised of GNSO Working Group members, was convened and worked with ICANN staff in drafting the amended UDRP Rules. ICANN staff held regular meetings with the IRT to ensure that the recommendations were implemented in accordance with the Working Group’s intent.

Effective Date

These new requirements will take effect and will be enforced by ICANN as of 31 July 2015. All ICANN-accredited registrars are required to comply by this date.

This ICANN announcement was sourced from:
https://www.icann.org/news/announcement-2014-11-17-en

Online Dispute Resolution – The Phenomenon of the UDRP by Andrew F. Christie

Abstract: Judged against its objective of providing an alternative to litigation in national courts for resolving domain name disputes, the ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) has proved a phenomenal success.

This chapter analyses the reasons for, and the consequences of that success. In particular, it explores the conceptual basis of the UDRP, to identify how a meaningful remedy can be obtained and implemented without the need to resort to a national law or a national court.

It then reviews the actual utilisation of the UDRP, to identify the extent to which it provides efficient, effective and consistent outcomes. Finally, it identifies and assesses criticisms of the UDRP, to determine whether this phenomenon of online IP dispute resolution is a beneficial one.

This paper, originally published in the Research Handbook on the Cross-Border Enforcement of Intellectual Property and the University of Melbourne Legal Studies Research Paper is available for download from:
ssrn.com/abstract=2433380

The Prevention of Cybersquatting in Europe: Diverging Approaches and Prospects for Harmonization by Ventsislav Pantov [MIPLC Master Thesis Series]

Social Science Research Network logoAbstract: This thesis examines the phenomenon of cybersquatting, its nature and development and the means employed against it in the European continent.

The analysis shows that there is a myriad of approaches in combating cybersquatting. First, many systems of domain name dispute resolution exist, both private and official. Most of the Alternative Dispute Resolution (ADR) systems that have been adopted largely rest on the Uniform Domain Name Dispute Resolution Policy (UDRP) which is already established and has gained a track record. Some jurisdictions have adopted the UDRP completely in spite of its narrow scope. Others have preferred to extend the range of distinguishing signs protected and have adopted extended versions of UDRP. A third group of countries has developed their own sui generis ADRs that are unconnected to the UDRP. The most distinctive characteristic of all ADR examples analyzed is the availability of twofold procedure due to their “open ended” nature. Meanwhile, some jurisdictions have adopted classic arbitration procedures for their domain name disputes which result in final judgments with res judicata effect.

As regards substantive grounds of claim there is also a large variety of approaches. Notably, most of the European countries prefer to extract the bases of anticybersquatting claims from general laws regarding trademarks, unfair completion, passing off, personal and trade name protection. This paper demonstrates that in some cases the traditional legal measures turn out to be insufficient for the challenges of the Internet, which leads to unsatisfactory jurisprudential solutions. In this regard, the cybersquatting activities taking the shape of blocking registrations cause problems for the courts either in establishing “use in commerce” in the trademark context, or misrepresentation in the circumstances of a passing off action. Another tension is observed in the field of clashes between competing rights such as trademarks and personal and trade names, which due to the lack of clear rules results in uncertainty.

Few jurisdictions (e.g. Belgium, Finland, France and Denmark) considered the issue significant enough to enact tailor-made anticybersquatting legislation. The enactment of an anticybersquatting act solves to a great extent the problems caused by the attempts to adapt traditional legal principles, without prejudice to their subsidiary application. Thus, the available examples of special anticybersquatting legislation originating from Belgium and Finland combined with some solutions borrowed from the U.S. Anticybersquatting Consumer Protection Act form the basis of a proposal for enactment of an instrument harmonizing anticybersquatting law in Europe. This process is also conceivable, given the fact that the .eu domain names related disputes are already uniformly managed on an EU level by a Commission Regulation, which also provides some useful examples. Finally, some potential obstacles on the way of harmonization as well as some arguments against it are also considered.

This abstract was sourced, and the article is available to download in full, from:
ssrn.com/abstract=2427582