Tag Archives: Uniform Rapid Suspension System

ICANN Appoints MFSD as First European Uniform Rapid Suspension System Provider

ICANN logoICANN today announced that it has signed a Memorandum of Understanding (MoU) with MFSD Srl (MFSD) establishing MFSD as a new Uniform Rapid Suspension System (URS) provider. The URS is a rights protection mechanism that facilitates the rapid suspension of domain names in clear-cut cases of trademark infringement. It is intended to complement the existing Uniform Domain-Name-Dispute-Resolution (UDRP) policy by offering a lower-cost, faster path to resolution for such clear-cut cases of infringement.

MFSD, headquartered in Italy, is the first European URS provider. MFSD has a proven track record of handling domain name disputes for the .IT ccTLD since 2001. MFSD has also administered cases for the Intellectual Property Mediation Center and Academy authorized by the Italian Ministry of Justice since 2012. Additional URS providers are located in Asia and North America.

URS providers must meet several requirements including a demonstrated understanding of the issues concerning global intellectual property rights and the Internet, proceedings in an expedited online context, dispute resolutions, and serving as globally diverse and highly qualified neutral panelist.

Learn more about Uniform Rapid Suspension.

This ICANN announcement was sourced from:

ICANN: Draft Report: Rights Protection Mechanisms Review

ICANN logoPurpose (Brief): ICANN is posting a draft review report [PDF, 1.27 MB] on the rights protection mechanisms (RPMs) established as safeguards in the New gTLD Program. This paper is intended to provide an outline for an initial review of the effectiveness of the rights protection mechanisms.

Particularly, this paper reviews the data and input collected in many of the key areas relating to rights protection mechanism, including the Trademark Clearinghouse, Uniform Rapid Suspension system, and Post-Delegation Dispute Resolution Procedures.

Public Comment Box Link: https://www.icann.org/public-comments/rpm-review-2015-02-02-en

This ICANN announcement was sourced from:

URS is MIA in ICANN Board Renewals of .Biz, .Info, and .Org Contracts by Philip Corwin

Internet Commerce Association logoDuring its August 22nd meeting the ICANN Board approved renewal of the registry agreements for the incumbent .Biz, .Info, and .Org gTLD registries. All three contracts were adopted in the identical form to the drafts published for public comment earlier this year[1].

In taking that action the Board did not adopt the suggestion of ICANN’s Intellectual Property Constituency (IPC) that all three agreements be amended to include “a commitment to adopt the URS if, after a review of its functioning in the new gTLDs, the URS appears to be reasonably effective in achieving its objectives.” That weak and vague standard would give no consideration to whether the substantive and procedural due process rights of domain registrants had received adequate protection in the administration of the as yet untested Uniform Rapid Suspension (URS) rights protection mechanism.


Even worse, adoption of the IPC’s proposed standard would have ignored a December 2011 Resolution adopted by ICANN’s gTLD policy-making GNSO Council, supported at that time by the IPC, which explicitly tied consideration of adopting the URS at incumbent gTLD registries to overall UDRP review and reform. That Resolution evidenced a Council decision that “a [UDRP] PDP be delayed until after the New gTLD Uniform Rapid Suspension System (URS) has been in operation for at least eighteen months. . . to allow the policy process to be informed by data regarding the effectiveness of the URS, which was modeled on the UDRP, to address the problem of cybersquatting.”

In response to the IPC proposal, ICA transmitted a letter to ICANN’s Board Chairman and  CEO on August 20th stating “we urge the Board to reject the IPC request for contract amendments that would permit imposition of the URS on the registries for which renewal contracts are being considered absent the relevant policy process called for by the GNSO Council in December 2011. Requiring the URS to be implemented at incumbent gTLDs should only occur after full community-wide consideration of the matter, informed by an Issue Report and a subsequent PDP that considers expansion of the URS within the broader context of UDRP reform.”[2]

All three registry renewal Resolutions adopted by the Board contain identical language that references the IPC suggestion and the ICA response:

There was a specific community concern raised, and subsequent letters provided to the Board, regarding the inclusion of a requirement for the Uniform Rapid Suspension (URS) to be included in the renewed agreement, as well as requiring the Registry Operator to use only Registrars contracted under the 2013 RAA. In taking this decision, the Board considered the concern that extending the requirement to use the URS to existing gTLDs (which currently is only a requirement for Registry Operators approved through the New gTLD Program) would possibly be a matter for policy development. In addition, requiring the imposition of the URS today to millions of domain names may be premature given the implementation schedule for the URS processes. (Emphasis added)

While ICA appreciates the Board’s rejection of the IPC proposal, we are concerned that its statement that requiring the URS at these registries “would possibly be a matter for policy development” either misstates our position – which is that it absolutely requires a PDP under the relevant and still binding GNSO Council resolution – or is an attempt to hedge ICANN’s own position on this matter. Unlike new gTLDs, there is no existing policy that requires adoption of the URS at existing registries and hence there is nothing to implement in that regard unless and until such a policy exists.

However, now that these registry contracts have been approved, they—along with the recently renewed .Com and .Net agreements — all run for six-year terms that extend well past the date when the GNSO Council called for delivery of “a new Issue Report on the current state of all rights protection mechanisms implemented for both existing and new gTLDs” and initiation of a PDP to consider revisions of the UDRP. Those dates were, respectively, “no later than eighteen (18) months following the delegation of the first new gTLD” and “after the New gTLD Uniform Rapid Suspension System (URS) has been in operation for at least eighteen months”. Based upon current projections for the progress of the new gTLD program, both of those dates should arrive in 2015 – helping to ensure that consideration of the URS at incumbent gTLDs is properly addressed through the regular order of ICANN’s policy development process rather than via contract amendments that bypass it.

[2] internetcommerce.org/IPC_URS

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:

Disputes Lodged With National Arbitration Forum Fall Per Domain; New Cheaper, Faster URS Launched

National Arbitration Forum logoThe National Arbitration Forum (NAF) announced yesterday that domain name disputes lodged with it in 2012 passed 20,000 for the year, while the number of cases dropped to 2060 from the 2011 figure of 2082.

The NAF is one of the two main providers of dispute resolution services, the other being WIPO, approved by ICANN, under policies like the Uniform Domain Name Dispute Resolution Policy (UDRP).

Like the WIPO results for 2012, the NAF figures show a drop in the disputes lodged when compared to the total number of domain names registered globally. The total number of domains for which disputes are lodged seem hard to discover on the NAF website, however it appears they only edged up slightly as actual cases declined (each case can involve more than one domain name).

And with this slight change it should be noted that global domain name registrations increased by 11.8 percent in 2012, according to the Verisign Domain Name Industry Brief.

In 2012, The FORUM was approved as a UDRP Provider for disputes involving .pw, the recently relaunched ccTLD for Palau. Also in 2012, the FORUM bid on ICANN’s Uniform Rapid Suspension System (URS), an inexpensive and rapid means of suspending domain names registered in generic top level domains (gTLDs) launched after January 1, 2013.

“We were thrilled to be announced as the first URS Provider,” said Kristine Dorrain, National Arbitration Forum’s Director of Internet and IP Services. “We believe our years of experience handling tens of thousands of UDRP cases, along with our commitment to utilisation of technology and fair decision-making, contributed to our selection. We’ve been working hard to build and enhance the online filing and case management technologies to ensure a fast, hassle-free URS.”

The URS was billed as cheaper and faster than the UDRP, which typically sees decisions in around 45 days at a price of approximately $1,300. The FORUM plans to offer the URS, which can obtain a suspension in around 20 days, for $375. The FORUM will be posting the Supplemental Rules, FAQs, and demonstrations at domains.adrforum.com, as they become available.

UDRP and URS cases filed with the National Arbitration Forum are heard and decided by Dispute Resolution Panelists who specialise in domain name, trademark, copyright and/or e-commerce law. Panelists are located around the world and can conduct proceedings in several languages including Dutch, English, French, Japanese, Polish, Portuguese, Spanish, Russian, Chinese and Korean.

While the UDRP applies to domain names registered in new or existing gTLDs, the URS will only apply to domains registered in new gTLDs as well as select country-code TLDs that elect to adopt it.

ICANN: Uniform Rapid Suspension Procedure and Rules

ICANN new generic Top Level Domains logoAn updated version of the Uniform Rapid Suspension System (URS) Procedure [PDF, 168 KB] and the URS Rules are now available for download.

The URS is one of several new Rights Protection Mechanisms available in the New gTLD Program. It complements the existing UDRP by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement.

The URS Procedure defines the URS claims process. The Rules will help service providers implement URS in a consistent manner.

Since the last URS Procedure was posted on 4 June 2012, minor revisions have been made in the present rather than future tense. Other revisions clarify and simplify some provisions as well as make minor typographical corrections. Also, a set of Rules [PDF, 82 KB] has been developed and added, similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) rules, to provide guidance on all aspects of the URS proceedings.

In addition to the Rules posted by ICANN, each URS service provider is expected to produce supplemental rules to help standardize conduct for that provider’s interactions with complainants and respondents, but that are not inconsistent with the Procedure or the Rules.

The URS was developed by the community, for the community and is another testament to the multistakeholder model.

Download the URS Procedure [PDF, 168 KB] and Rules [PDF, 82 KB].

Learn more about Uniform Rapid Suspension.

This ICANN announcement was sourced from:

ICANN Announcement of NAF as First URS Provider Raises Multiple Questions by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoLast week ICANN announced that the National Arbitration Forum (NAF) of Minneapolis, MN had been appointed to administer the new Uniform Rapid Suspension (URS) rights protection mechanism for new gTLDs. (newgtlds.icann.org/en/announcements-and-media/announcement-2-20feb13-en) The announcement raises more questions than it answers.

Despite the press announcement’s claim that NAF “has a proven track record boasting resolution of over 19,000 claims in 12+ years of administering UDRP cases” ICA has a far more jaundiced view of what its track record proves. One year ago ICA asked ICANN to conduct an investigation of NAF’s UDRP practices after two particularly horrendous decisions were rendered by its examiners (internetcommerce.org/NAF_UDRP_FAIL) – and the response we received from ICANN staff was quite unsatisfactory.

A recent study of NAF’s pattern of examiner utilization was also quite disturbing – “Of the approximately 4,144 cases between March 5, 2010 and July 4, 2012, 7 mainly NAF-appointed panellists were appointed to 1,921 or 46% of all cases. There are currently approximately 136 panellists on NAF’s roster. This means that 5% of panellists decided 46 per cent of cases.” (dnattorney.com/NAFdomainnamedisputestudy2012.shtml)

So here are some questions for which we do not find answers in ICANN’s press release:

  • What will NAF charge to administer a URS case? We presume that it will fall within the $300-$500 range promised by ICANN for the URS, but the press release contains no information on this. It does note that NAF “has already developed, and is currently operating a TLD-specific rapid relief system” — but that system is administered for .XXX and NAF charges about the same fee for that as for a UDRP.
  • How will “default cases” be handled by NAF? Under pressure from the GAC, ICANN’s Board arbitrarily reduced the time in which a registrant could respond to a URS notice from 20 to 14 days. Two weeks is not a lot of time for a registrant to understand what a URS entails, prepare a response or hire competent counsel to do so, and file it – especially when one considers that the complainant has had unlimited time to prepare its filing and can time its submission to holidays and other periods when responding may be delayed. One of the most debated matters in URS administration was what whether any substantive evaluation of the complaint should be undertaken when the registrant has not filed a response within fourteen days – the “default case” situation. While NAF had previously stated that it did plan to engage in some type of substantive evaluation we have no idea of what it has actually committed to in its application and whether it affords adequate due process to a registrant.
  • Will other URS providers be appointed, and when? The press release implies that they will, with the headline stating that NAF is the “First URS Provider” and the release itself stating that NAF “will be one of multiple providers appointed to administer URS services. The process will be similar to that of appointing UDRP providers in which consideration is given to achieving competitive provisioning and geographical spread of providers.” Yet we have been told by at least one other well-qualified applicant that it had been told by ICANN that it intends to have only one URS provider for the indefinite future.
  • Will NAF – and any future additional URS providers – be placed under a standard and enforceable contract? ICANN likes to point to the work of the Special Trademark Issues Review Team (STI-RT) as a positive example of how implementation of policy should proceed. We also gave the STI-RT high marks for its output – but its work counts for naught if ICANN doesn’t implement it. Its final report was quite clear on this issue – a unanimous consensus that “ICANN should discourage forum shopping among URS service providers through its URS implementation and contracts”.   (emphasis added – gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf)
  • Will ICANN take steps to assure that the same pattern of favoring a few examiners out of its entire roster will not be repeated in NAF’s URS administration? Again, the STI-RT was unanimously in favor of such steps: “Examiners within a service provider shall be rotated to avoid forum shopping. It is strongly encouraged that the URS service provider accept all credentialed and properly trained URS examiners…The URS Service Providers shall avoid “cherry picking” of examiners that are likely to rule in a certain way.”
  • Finally, and perhaps most importantly, why was NAF chosen and other applicants rejected, at least for now? ICANN has explained nothing about which entities responded to its solicitation of bids to provide URS arbitration services or what criteria it used in selecting NAF. The community deserves to know why NAF, an entity that withdrew from arbitration of all consumer credit disputes after being sued in 2009 by the Minnesota Attorney General for “consumer fraud, deceptive trade practices, and false advertising” www.ag.state.mn.us/PDF/PressReleases/SignedFiledComplaintArbitrationCompany.pdf, and which continues to “cherry pick” a small number of favored examiners to decide almost half of its UDRP cases, was deemed the most worthy applicant to initiate administration of the URS.

ICA plans to raise these questions directly with ICANN on behalf of its members as well as all registrants in new gTLDs who may face a URS procedure in the future. If potential new gTLD registrants believe that they face potential loss of use of their domains because they may be subject to an unprofessional and biased URS arbitration process it will dampen enthusiasm for domain registrations at new gTLDs generally.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:

ICANN Appoints First URS Provider

ICANN new generic Top Level Domains logoThe National Arbitration Forum (FORUM) has secured the first appointment by ICANN to administer the Uniform Rapid Suspension System (URS). FORUM submitted an outstanding proposal demonstrating how it would meet all requirements presented in the RFI [PDF, 112 KB] and detailing its implementation approach. The company has a proven track record boasting resolution of over 19,000 claims in 12+ years of administering UDRP cases. Additionally, FORUM has already developed, and is currently operating a TLD-specific rapid relief system.

ICANN would like to thank everyone who responded to the RFI. FORUM will be one of multiple providers appointed to administer URS services. The process will be similar to that of appointing UDRP providers in which consideration is given to achieving competitive provisioning and geographical spread of providers.

URS is a rights protection mechanism for new gTLDs that facilitates rapid suspension of domain names in clear-cut cases of trademark infringement. It is intended to complement the existing Uniform Domain-Name Dispute Resolution Policy (UDRP) by offering a lower-cost, faster path to resolution.

Learn more about Uniform Rapid Suspension

This ICANN announcement was sourced from:

URS Could Arrive Soon at .Com & .Net by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoRather than being considered for implementation at the .com and .net registries through the front door of UDRP reform, Uniform Rapid Suspension (URS) could arrive at these registries in advance of that reform through the backdoor of ending registry-registrar separation.

That’s the major import of a resolution adopted by ICANN’s Board on October 18th in Toronto, reading, “Resolved (2012.10.18.01), the Proposed Revised Process for Handling Request for Removal of Cross-Ownership Restrictions of Existing gTLDs, as posted on 16 May 2012, is approved as revised.” (www.icann.org/en/groups/board/documents/resolutions-18oct12-en.htm#1.a)

The revised May 16th document outlining the process for handling requests for cross-ownership can be found at www.icann.org/en/news/public-comment/revised-cross-ownership-restrictions-16may12-en.htm. An incumbent gTLD registry operator such as VeriSign that wishes to have its cross-ownership of registrar limitation lifted would have to submit a written request to ICANN that either agrees to transition to the new registry agreement required for all operators of new gTLDs, or to amend its current registry agreement more narrowly with the addition of several required provisions to ensure fair competition and require adherence to the new gTLD Registry Code of Conduct. One of these required amendments states that “Registry Operator shall not act as a registrar with respect to the TLD” although some permissible exceptions may provide substantial loopholes.

ICANN would also alert appropriate national competition authorities of the request to ease the cross-ownership restrictions and solicit their input where it determines that lifting the affiliation and control restrictions might raise significant competition issues.

So, if VeriSign determined that it wished to get out from under the current cross-ownership restrictions – notwithstanding the fact that it could not act, at least directly, as registrar for .com, .net, or domains at other registries it controls – it would submit an application to ICANN. It could choose to either accept the new gTLD registry agreement – which would subject its incumbent registries to the URS as well as the final version of the Trademark Clearinghouse (TMC) as both are required rights protection mechanisms (RPMs) at new gTLDs — or it could opt for the narrower amendments.

Given the dominant position of .com and .net (about half of all current domain registrations), ICANN would almost certainly alert U.S. and EU competition authorities, at which point the request would be made public. Given the significant proportion of UDRP filings alleging cybersquatting at .com and .net we would expect brand owners to push loud and hard for ICANN to require VeriSign to comply with the new registry agreement even if their application requested only the narrower amendments – and that would bring along both the TMC and the URS.

Of course, we don’t know if VeriSign has any interest in affiliating with or controlling a registrar, much less when it might submit such a request. But they are now free to do so at any time, while consideration of UDRP reform will not be initiated under current ICANN policy until 18 months after the first new gTLD launches. The first new gTLD launch could now occur as early as the third quarter of 2013 under ICANN’s moist recently revised schedule, which would mean UDRP reform starting up and considering the performance of the RPMs at the new gTLDs in early 2015.

What we do know is that the final form and proper implementation of the URS takes on even more importance in the context of this recently adopted Resolution – and that is why ICA is working overtime to assure that URS remains a narrow supplement to the UDRP that preserves essential registrant due process rights.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:

The ‘Domain Rights Dozen’ – ICA’s RPM Revision Review Principles by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoAs the fall of 2012 begins the implementation of rights protection mechanisms (RPMs) for new gTLDs is reaching a critical stage –

  • The Trademark Clearinghouse (TMC) is far along to detailed implementation but certain aspects are now being reconsidered as registries, registrars, and other parties raise issues of practicality and workability.
  • Implementation of Uniform Rapid Suspension (URS) is finally commencing after more than a year of needless delay.
  • Brand interests continue to press for the reopening of basic substantive elements of both RPMs.

Given the half year interval between the upcoming Toronto ICANN meeting and the following Beijing meeting in April 2013, it is highly desirable, and perhaps essential, that community discussion in Toronto result in a clear consensus on how RPM implementation should proceed if new gTLDs are to launch without further delay and if potential registrants are to perceive them as acceptable platforms for speech and commerce.

It is within this present context that the Internet Commerce Association sets forth the following dozen principles by which it will review both implementation details for these RPMs as well as any proposals to make fundamental alterations of substance to them at this late date:

  1. Our starting point is the fundamental principle that domains constitute a bundle of valuable intangible rights similar to trademarks and other forms of intellectual property, and that a reasonable balance must be struck between the respective and legitimate rights of domain registrants and trademark owners. We know that many domains have substantial value because the secondary market tells us so; likewise, any erosion of the legitimate rights of domain registrants represents an unjustified transfer of wealth from the domain sector to the trademark sector. Therefore, while we oppose any intentional infringement of trademark rights, we likewise reject the notion that the historical development of trademarks prior to the rise of the Internet confers upon trademarks any automatic entitlement to prevail over domains when a dispute arises between these two species of intangible rights. In our digital era the two rights must respectfully co-exist.
  2. While RPMs must be effective against bad actors, their design and implementation must recognize that the vast majority of domain registrants are good actors and deserve adequate substantive and procedural due process – and that some complainants can and will attempt to abuse any dispute resolution process. The most recent annual data indicates that UDRP arbitrations involve less than one two-hundredth of one percent of all registered domains; even if UDRPs understate the total of actionable cybersquatting claims by a factor of one hundred, that would still leave 99.5 percent of all domains as non-infringing. UDRPs have been steadily shrinking as a percentage of total domains for years, and this trend is likely to continue even as new gTLDs are introduced – with the percentage of arbitration cases likely to be even smaller for them. In this regard, the repurposing of various ccTLDs to be more general in nature (e.g., .md, .tv, .co, .ws, .bz, .to, .cc, .so, is, and .me) is instructive as it has not resulted in substantial new abusive registrations, and this is a highly relevant precedent for the likely usage of new gTLDs.  It should also be noted that the potential for typographical cybersquatting at new gTLDs will on the whole be greatly reduced as they are unlikely to receive much in the way of natural type-in traffic. Finally, the record number of findings of attempted reverse domain name hijackings in 2012 UDRP cases demonstrates that some complainants will seek to abuse any dispute resolution system and that registrant rights deserve adequate sanctions to deter such attempts.
  3. The number of new gTLD applications received by ICANN in the first round of the program (1900, of which 1400 are unique) is in and of itself insufficient justification for material alterations of the RPMs. At the time that the ICANN Board approved the Applicant Guidebook (AG) and the incorporated RPMs, it was widely anticipated within the ICANN community that total first round applications would be in the range of at least 500-1,000, and possibly higher. Further, the RPMs are meant to and do scale – the TMC operates in relation to, and the URS is available for use against, domains at every new gTLD. Proposals for any material RPM alteration must be grounded in genuinely unanticipated factors that have arisen since their approval and not simply on the total number of first round applications.
  4. ICANN’s bottom-up, consensus-driven, multi-stakeholder policy development process must be respected; and, further, there must be some finality to ICANN policy decisions. The existing RPMs represent more than two years of community discussion, debate, hard work and compromise and were adopted unanimously by the GNSO Council and the ICANN Board. They should not be lightly reopened in advance of the launch of new gTLDs and actual experience with both the true incidence of cybersquatting within them and the effectiveness of the new RPMs. Since the mid-2011 approval of launching the new gTLD program ICANN’s Board has already degraded URS-related registrant rights twice under brand-generated pressure — by cutting one week from permissible response time, and by halving the number of domains targeted in an action giving rise to ‘loser pays’ liability – and yet the brand sector continues to press for further RPM revisions. The time has come to bring finality to the process and lock in these RPMs absent extraordinary and unanticipated developments.
  5. The RPMs should enforce and protect existing trademark rights, but not create new rights. A trademark is limited to specific classes of goods and services, and the vast majority are not global marks but are also geographically circumscribed; therefore, the use of a trademark as or within a domain name cannot automatically confer preemptive power as to all goods and services or all locales in the context of a global Internet. Setting limits on the scope of trademark rights in the DNS is particularly important where the trademarked word(s) is of the generic dictionary variety and overly expansive rights could stifle e-commerce competition and innovation. We note and strongly approve the recognition of this principle in the letter recently sent by new ICANN CEO Fadi Chehade to U.S. Congressional leaders: “It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights. The principle that rights protections “should protect the existing rights of trademark owners, but neither expand those rights nor create additional legal rights by trademark law” was key to work of the Implementation Recommendation Team, a group of experts in the ICANN community who initiated intense work to recommend rights protection mechanisms in new gTLDs.” We are generally opposed to the ‘mark + generic term’ proposal referenced in Mr. Chehade’s letter as creation of a new right beyond that conferred by trademark law, as well as degradation of the purpose of the TMC as an authoritative repository of trademarks meeting certain high standards for inclusion. In addition, because many potential combinations of marks plus generic terms would likely be non-infringing, such an expansion would result in an ordinate number of trademark claims service “false positive” warning notices to innocent potential registrants who, lacking sophistication in trademark law, would be unjustifiably deterred from completing the registration process.
  6. Any alteration of one RPM must be reviewed for its potential spillover effect on registrant rights in the other. Any modification of the TMC must be analyzed for its impact on registrant rights in the URS. For example, while ignoring  a claims service warning for an exact match to a mark might appropriately serve as evidence of bad faith registration in a subsequent URS action, granting it such evidentiary weight in a ‘mark + generic term’ context would be thoroughly inappropriate.
  7. The URS implementation process must be open to participation by all interested members of the ICANN community, and must be transparent in its operation. The multi-stakeholder process and attendant transparency and accountability must be maintained for the process to have credibility and for ICANN to receive continued support from netizens. While ICANN appears to have made a commitment to this principle we shall continue to closely monitor the process even as we participate in it.
  8. Any proposed alteration of the URS premised on cost considerations must await actual market testing of the implementation costs of the present model – doing otherwise would put the cart before the horse. The suspect and possibly self-serving declarations of existing UDRP providers cannot be relied upon as an accurate URS implementation cost indicator. It is therefore incumbent upon ICANN to aggressively promote and seeks responses on a global basis to its recently issued URS implementation Request for Information (RFI) from qualified arbitration service providers beyond the ranks of existing UDRP providers.
  9. Cost considerations cannot justify a degradation of registrant rights in URS proceedings below acceptable levels, and any cost-premised alteration must actually have the potential to reduce costs both in the URS and in totality. In this regard, the proposal to eliminate all substantive review and have automatic default judgments when a registrant fails to respond by the specified deadline is unacceptable as such a procedure would neither consider whether the complainant possesses its claimed trademark rights nor whether the domain constitutes a clear cut and incontrovertible instance of infringement; it would also not inquire into whether there was actual use of the domain, without which the critical element of bad faith use cannot exist. Therefore, a default judgment process would constitute an unacceptable degradation of registrant rights. And the proposal to reduce the burden of proof to the same as that of the UDRP would actually increase costs, as it would convert the URS from a procedure targeting clear black-and-white infringement cases to ones that are multiple shades of grey and require protracted and more costly deliberation. Likewise, the proposal to allow complainants to acquire domains via URS filings, like burden of proof reduction, would convert the URS from a narrow supplement to the UDRP into a full substitute, an unacceptable “bait-and-switch” result; and would further increase total costs by placing the burden of long-term defensive registrations on complainants when other means could readily prevent the re-registration of incontrovertibly infringing domains and eliminate such defensive registration costs.
  10. URS providers must be placed under a binding standard contract.     Requiring such contracts was a central recommendation of the Special Trademark Issues – Recommendation Team that hammered out the final RPM details included in the AG. In a year in which the broad Internet community rose up against proposed SOPA legislation that would have suspended domains absent adequate due process for registrants, it is unacceptable for ICANN to accredit and empower entities to censor domains via rapid suspension absent binding agreements that set clear limits on their powers and provide ICANN with flexible and measured enforcement tools. As a non-profit private sector entity, ICANN’s only real powers are based in its contract enforcement authority and they must be exercised to ensure a properly balanced URS process. Issues to be addressed in the contract should include assuring that potential panelists are truly unbiased and are fairly and broadly selected for cases. While we see merit in the Business Constituency’s proposal that URS arbitration be awarded to a single vendor – as that would help ensure more uniform URS application while foreclosing forum shopping – the potential selection of multiple vendors gives greater urgency to the development of a binding standard contract. We are dismayed that ICANN has indicated that it is on a path to rejecting this crucially important STI-RT recommendation and to emulating the deeply flawed contactless model of the UDRP.
  11. RPM implementation must not further delay the introduction of new gTLDs. The potential new price competition, business model innovation, and other attendant benefits of new gTLDs should be realized as soon as possible. This consideration reinforces our stance against substantial revisions that could prove controversial and divisive and incite protracted debate and accompanying delay.
  12. New gTLDs should be laboratories for change, including RPM approaches. While we are skeptical of substantial revisions in the ‘one-size-fits-all’ RPMs contained in the AG, we believe it is appropriate for applicants and applicant groups to experiment with gTLD-specific RPMs and registrant qualification requirements that go beyond the baseline protections contained in the AG. Analysis of the real world results of these varied approaches, including their acceptability to registrants, can inform any future discussion of RPM policy changes after several years of utilization at the new gTLDs launched in the first round.

This article by Philip Corwin from the Internet Commerce Association was sourced from:

US Govt Wants New Trademark Protections at .Com and a Default Judgment URS by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn the eve of ICANN’s 45th public meeting in Toronto — the last such meeting for the next half year until the April 2013 Beijing event — the United States government has urged ICANN to consider adding new trademark protections at .com and other incumbent gTLDs, and to adopt a Uniform Rapid Suspension (URS) model that includes a default judgment procedure. These proposals could dramatically alter the balance between complainants and registrants in both UDRP and URS cases involving domains at new and existing gTLDs, and ICA intends to fully engage in the ensuing debate.

These suggestions are contained in an October 4th letter sent by Assistant Secretary for Communications and Information Lawrence Strickling to ICANN Board Chairman Steve Crocker (letter available at www.icann.org/en/news/correspondence/strickling-to-crocker-04oct12-en).

In regard to considering new trademark protections beyond those being implemented for the new gTLD program, the letter urges ICANN to “explore additional trademark protections across all TLDs, existing and new, through community dialogues and appropriate policy development processes in the coming year”. (Emphasis added) This call for initiation of a policy development process (PDP) for altering trademark protections at incumbent gTLDs is at direct odds with a mid-December 2011 resolution passed by ICANN’s GNSO Council, made under substantial pressure from the Governmental Advisory Committee (GAC) and major brand interests, to defer initiation of any PDP until 18 months after the first new gTLD is delegated to the root. GNSO Resolution 20111215-1 (available at gnso.icann.org/en/resolutions) states:

RESOLVED further, the GNSO Council requests a new Issue Report on the current state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to, the UDRP and URS, should be delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD.

At the time, ICA and many other groups were urging the GNSO Council to initiate a PDP on procedural UDRP reform based on a decade of UDRP experience, and rejected the notion that ICANN and the community lacked the capacity to simultaneously implement the new gTLD program and consider procedural improvements. When the GNSO passed on that option, it was expected that the first new gTLD would be delegated in early 2013 and that the PDP would therefore kick off in mid-2014 – but intervening events have now pushed the schedule back by at least a year.

We see several major issues raised by Secretary’s Strickling’s suggestion:

  • As it seems impossible to envisage changing trademark protections at .com et al without opening up the substance of the UDRP, acquiescing to the suggestion less than a year after its decision to defer UDRP reform would make the GNSO Council appear to be akin to a yo-yo directed by Washington, and would also kick off the discussion without it being informed by the requested Issue Report.
  • Implementing new rights protection measures (RPMs) at new gTLDs, which don’t yet exist and where registrants will obtain domains with clear notice of the new rules, is quite a different exercise than changing the substantive rules for existing gTLDs that are comprised of more than 100 million domains, many of which are highly valued in the secondary market. This debate is likely to feature far more controversy than even the heated discussion that accompanied development of the new gTLD RPMs, and initiating it while those RPMs are still being implemented could result in yet further delay in the launch of new gTLDs.
  • While ICA continues to favor the initiation of a PDP on procedural UDRP reform, we believe that any discussion of substantive UDRP reform should await experience with the performance of the Trademark Clearinghouse (TMC) and URS at new gTLDs. It would be irresponsible to consider imposing these untested RPMs on 100 million-plus incumbent gTLD domains before we have analyzed their real-world performance, especially in regard to their effect on the legitimate rights of domain registrants.

Again, there is plenty to evaluate and decide in any procedural UDRP PDP without debating substantive changes to rights protections. ICA has advocated that the heart of such reform be the development of a standard contract for all UDRP providers that delineates and limits their powers and provides ICANN with effective and flexible enforcement tools, with clear goals such as assuring uniformity and integrity in decision-making and the prevention of forum shopping. The need for such a contractual framework was illustrated again by the recent updating of attorney Zak Muscovitch’s survey of National Arbitration Forum (NAF) panelist selection procedures. The updated August 2012 study (available at dnattorney.com/NAFdomainnamedisputestudy2012.shtml) found that, while NAF claims to have 136 panelists on its trademark experts roster, 70 of whom (about half) were from the United States, in actual practice only seven of these panelists, all from the U.S.,  decided almost half (45.9 percent) of UDRP complaints filed with NAF.

So, clearly, one provision of a standard UDRP provider contract could be that when a provider is accredited by ICANN on the basis of claiming a large number of panelists from a variety of jurisdictions it should be required to actually use those panelists on a random basis — and not direct nearly half of all cases to a favored five percent of those panelists. The Muscovitch study certainly raises further questions about the quality of decisions provided by the number two UDRP provider. Earlier this year ICA requested that ICANN investigate NAF’s UDRP practices (see internetcommerce.org/NAF_UDRP_FAIL) and the response we received to our letter was unsatisfactory and indicated that ICANN takes UDRP provider oversight less seriously than it should. Frankly, we have always found it outrageous that ICANN accredits UDRP arbitration providers to extinguish or transfer valuable domain assets without any written or enforceable standards – trademark owners would never stand for a private entity being given such powers over their assets absent written and credible controls.

We do note that in Secretary Strickling’s letter the NTIA does not take a position for or against any potential trademark protection proposal, and does advocate that “ICANN should continue an open and transparent dialogue between all actors in order to find solutions to these issues”. (Emphasis added) ICA definitely intends to be a clear and consistent voice in that dialogue for the proposition that registrant rights must receive balanced treatment vis-à-vis trademark rights.

As for the letter’s advocacy for a clear linkage between the TMC and URS and to “provide efficient default judgment procedures” in the URS, we have two big concerns —

  • First, while we are open to a linkage between the two new RPMs, a final decision must await a determination of what data will actually be contained in the TMC – exact matches of trademarks, or all sorts of additions and variations as some brand owners are urging?
  • Second, we remain strongly opposed to a default judgment procedure that would automatically suspend a domain when the registrant fails to file a response in the now-truncated time period of 14 days. During this past week’s URS webinar there was substantial pushback from many quarters against adopting this proposal.

URS default judgments would be too much like the IP-based, due process-lacking “domain censorship” that would have been authorized by the SOPA legislation that incited a netizens revolt earlier this year. It is also just too prone to potential abuse, as no human expert would be checking to see if the rights holder complainant actually possessed the rights it claimed, or reviewing the domain name to see if it actually constituted a black-and-white, slam dunk instance of cybersquatting. We have nothing against a URS that is as cost-efficient as possible – but not at the cost of cheapening domain registrants’ rights.

We already expected the upcoming Toronto meeting to feature quite a bit of heated discussion of the final shape of RPMs for new gTLDs. By throwing .com and other incumbent gTLDs into the mix, and pushing the default judgment proposal, the Strickling letter should raise the temperature to an even higher level.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from: