This is the first ICANN meeting, I recall, in the past couple of years where trademark protection under the new gTLD plan was not at the forefront of panel discussions. It was certainly discussed in corridors, during a pint of beer or in between the Belgian waffles, but it was not part of the official program - at least not in the form that we have previously been accustomed to. This time, trademark issues took the form of brand protection and management in the age of new gTLDs.
The idea behind replacing trademark protection with discussions about branding on the Internet was innovative but, at the same time, it provided the only route for the trademark community to voice again its objection on the new gTLD process and the inefficiency of the rights protection mechanisms that have been recommended by the Special Trademark Issues (STI) team. It was innovative because, on the one hand, the trademark community was conscious of the fact that re-opening the trademark protection issue would alienate them within the new gTLD process and, on the other, ICANN was not willing to stall the process (again!) because of trademark issues. So, brand owners were left with no choice but to try a different approach by attempting to dissuade the community from new gTLDs. At least, that was my reading after attending the panel session, which was entitled: “Brand Management in the Age of new gTLDs”.
At this session, which was comprised by trademark attorneys representing big brands like the BBC, Nestle, the Red Cross, etc, the brand community appeared united against the new gTLD program, expressing their indecisiveness on whether they would apply for their <dotbrands>, arguing that users would not necessarily relate to this new state of domain name affairs, consumers would be more confused and claiming that the new gTLD process was financially burdensome with high costs and no assurances.
It is indeed true that ICANN’s application process for new gTLDs is highly costly - $185,000 costly to be precise and that is only to submit an expression of interest. But, are these brand owners really arguing that they cannot afford to spend that kind of money, when they spend even more to pay their attorneys to send cease and desist letters, draft UDRP claims and pay their first-class tickets to participate to ICANN meetings? Are they expecting us to believe that there is no benefit in having all their multiple brands under a single gTLD – the name of their main brand – which will allow them to promote their goods and services in a more efficient and organised manner?
But, the truth is that we really don’t know how users and consumers will welcome this new process. It is also though true that the <dotcom> space has created this artificial scarcity and has given birth to the mistaken assumption that the DNS is this exclusive trademark territory, hostile to anyone else that is not a member of the trademark club. This is not trademark law or, better yet, this is not the kind of trademark law we teach our students to apply. Trademark law is not meant to create a hostile environment for new entrants and does not claim exclusivity in words or spaces. It claims exclusivity in goodwill.
And, let’s be honest here. Consumers and users are neither idiots nor do they get confused that easily. Trademark owners know that, as do consumers. I revisited the other day an article, written by trademark law czar, Thomas McCarthy, who was asking whether uses of AMAZON – a brand sizeable to the BBC and Nestle – for gardening services, hiking and survival equipment, restaurants or women’s health spas would confuse consumers. “My thought is that, to a majority of consumers, these uses would not immediately call to mind that particular use of the word “Amazon” as a famous mark for an online seller”. As far as I am concerned and I only speak for myself here, if professor McCarthy is asserting such a thing, it is not only valid but the reality of trademark law.
But the main question still remains unanswered: why does ICANN's trademark community not want new gTLDs? Well, as I said previously, they asserted that new gTLDs come with high costs and indeterminative expectations. The marketing of these new gTLDs might be excessive and arduous and it actually might fail; it can go wrong but it can also go right. If organised correctly, it can work to the benefit of both the trademark community and the social aspect of the DNS.
Imagine brands like Dr. Who, Dancing with the Starts, Top Gear - all BBC brands - under the .BBC gTLD. Imagine how trademark-friendly and commonsensical it would be for BBC to have full control of their space, which hosts all their brands; imagine how easy it would be for BBC to communicate to users the <dotbbc> as the only legitimate site and how beneficial it would be for consumers not to fear that the site they are visiting is genuine. For the past ten years, we have been told that this is the case; a DNS with too many abusive registrations, too much fraud, too many illegitimate domain names. For the past ten years, trademark owners asserted that the DNS is a dangerous territory and we need stronger forms of trademark protection if we want to be safe. So, does it not make more sense to help us create this safe place that we know is hospitable, welcoming and friendly?
Needless to say that the DNS needs new gTLDs to go back to its social roots and try and approximate to the particularities of trademark law. Trademarks fall under classes of goods and services and for me this would be the logical thing to do in the DNS. They are also associated with the goodwill of a product and what a better way to represent this goodwill with a <dotbrand> extension.
It is, therefore, indeed disappointing to hear what the panel said during the discussion. We really should give this a chance. We will see pretty soon whether it can fail and we can easily terminate it in such a case. But, if it succeeds, then much of our problems might actually disappear. It will take some time to educate users and consumers but the same way we did it with the <dotcom> we can do it with any <dotbrand>.
So, let’s really give this a chance!
I just happened to come across an article that shows what appears to be another hit in the process that ICANN has placed much of its future on - that is the Uniform Domain Name Dispute Resolution System (UDRP) of course. It all started when attorney Zak Muscovitch released a study concerning the way one of ICANN's accredited UDRP providers - the National Arbitration Forum - is distributing its case load to its various employees. His results show that some of the panelists receive a substantial amount of cases with the majority of these cases being decided in favor of the complaining party (trademark owner). This prompted DomainNameWire to conduct its own study of WIPO panelists and its conclusions were that many of the top 10 panelists have recorded the lowest complainant win.
What does this all mean? Well it means that we are exactly in the same place we were when professor Geist released his study almost 10 years ago. He introduced us to the possibility of forum shopping the same way he introduced us to the fact that we really have no knowledge as to how the centers appoint their UDRP panelists. And, when asked, we always seem to receive abstract and non-satisfying answers. What a great inconsistency for a system that is supposed to be uniform.
So, these results are not really something new and they should not come as a surprise to anyone. Even though it is really the responsibility of each one of the centers to appoint its panels equitably and to the best interests of both parties, the fact that ICANN has left the UDRP on its own and without proper review or control has resulted in a system that demonstrates signs of disintegration (look WIPO's attempt to sidetrack ICANN's Uniform Rapid Suspension System though the initiation of a 'fast-track' process). Needless to say that, at this point, it really makes no difference which center is more bias - the fact remains that the UDRP is disproportionally biased in favor of trademark interests whether this is done through forum shopping or through the intentional appointment of certain panelists.
However, the effect of this study is much more profound. ICANN is currently in the process of using the UDRP as the prototype to suggest the creation of two separate policies - the Uniform Rapid Suspension System URS) and the Post-Delegation Dispute Resolution Procedure (PDDRP). Both processes are conceived, structured and drafted with the whole skeleton of the UDRP in mind - everything, its rules, its procedures, its substance, everything - and have both been justified on the success of the UDRP. Now, what does that tell us about the fairness and justice of these systems?
It actually tells us a lot. It tells us that both systems are about to fail, are about to become biased and are about to create a highly competitive market for the ICANN-accredited centers that will seek to please their trademark customers. Now, if that is done through forum shopping or intentional panel appointments, again it does not really make that much difference. Complainants will still win and both systems will stagnate just like the UDRP.
The UDRP needs an immediate review, especially if it is to be used as the basis for other systems. The fact that the UDRP is so bankable explains why so far none of its stakeholders has initiated any process to review its body both substantially and procedurally; UDRP decisions bring a lot of money and reputation to both the centers and many of their panelists. This is the price of not having in place proper checks and balances that will ensure the proper application of justice.
I would first like to welcome the opportunity to submit comments on the revised ICANN proposals concerning the implementation of trademark protection mechanisms, namely the creation of a Trademark Clearinghouse (TMC), a Uniform Rapid Suspension (URS) system and a Post-Delegation Dispute Resolution Process (PDDRP). I would also like to commend ICANN for creating the Special Trademark Issues (STI) team to provide recommendations on how trademark issues should be addressed in light of the new gTLDs programme and the eminent expansion of the Root.
STI was tasked with a heavy duty – to recommend processes and address issues that sought to provide solutions to the benefit of both trademarks owners, non-commercial users and the wider DNS community. Despite the limited amount of time, STI managed to meet its targets and produce recommendations that achieved a legitimate balance between the conflicting interests of the trademark community and individual users. The work and results produced by the STI should not be taken lightly. Notwithstanding the fact that for some its recommendations were not ideal, in that they left some issues unanswered and subject to further deliberations, it has to be accepted that, in the history of ICANN, it has been perhaps the first time that trademark issues have been addressed by a multi-stakeholder body, following ICANN’s bottom-up processes. The recommendations produced by this divergent group were based on compromise and, in their majority, have reached unanimous consensus. To this end, it is important to treat the work of the STI as one that has facilitated the application of justice and due process, has set in motion the introduction of substantive qualitative criteria in the protection of trademarks in the DNS and has, finally, addressed the parameters of the intersection between trademarks and domain names. Seeking to support the vision of ICANN towards the introduction of new gTLDs, the STI recommendations contain certain qualities (unseen and unheard in other ICANN-related trademark policies) – normative generality, substantive definiteness and permanence, all of which contribute significantly to the legitimacy of the STI’s work and its final recommendations.
Through the amendments suggested, the revised ICANN staff proposals place the work and value of the STI in jeopardy; this has a further impact upon the bottom-up policies followed by ICANN. On a general note, the new proposals contain many language mistakes that misinterpret the STI’s recommendations and can easily mislead the bodies that will eventually use these processes. This is a serious issue, considering that it is these proposals that will determine the de jure rights of the participants and their participation in the new gTLD process. Furthermore, some of the additions are arbitrarily inserted, with no justification or reason.
We have to be very careful and it is necessary that this time we get it right. Over the years, ICANN’s trademark policies have received heavy criticism of being captured by trademark lobbying and interests; this criticism should not be perceived as being unjustifiable. The UDRP experience has taught us a valuable lesson: unless we create solid and carefully- balanced frameworks, we are in danger of assigning broad rights to trademark owners, where there is no justification to do so, jeopardize the rights of legitimate domain name holders and upset fundamental principles of trademark legality. WIPO and the trademark community have easily declared the UDRP as a success story, but the issue is far more complex.
It is mainly for this reason that the revised proposals should be carefully worded, artistically structured and remain within their original mandate. The goal here is not just to protect the trademark community and its rights; the goal is to submit to well-balanced proposals that will smooth the registration system and will pave the way for the increase of more participants in the registration environment. The STI operated on that basis; it operated under the presumption that the registration system will have to protect the existing rights but not to the expense of the creation of new ones. Everyone should be afforded the right to participate in the new gTLD process and this should be reflected in all of ICANN’s new gTLD policies, including the one concerning the protection of trademarks.
More specifically and while adhering to the majority of the principles promoted by the STI, the Trademark Clearinghouse incorporates wording, which, at the same time, significantly departs from the STI’s vision. For example, it suggests that ‘ancillary services’ can extend to include every single intellectual property right (p.2), when in the STI’s mind these services only meant to relate to trademarks (‘ancillary trademark services’); through the inclusion of all marks, regardless of jurisdiction (p.2), it seems to be encouraging the creation of ‘trademark havens’, which will pave the way for ‘easy’ registrations, which will further negate the rights of registrants (to an extent even those of existing trademark owners) and make their participation in the gTLD programme a difficult task; it differentiates between valid trademark registrations, negating the right of specific mark owners (those who hold valid trademark registrations incorporating a gTLD term – p.4), even though such rights have been assigned by legitimate Patent and Trademark Offices around the world; it fails to identify the need to incorporate within its structure international agreements, such as the International Class of Goods and/or Services (p.5). These are all critical issues and the fact that have been misinterpreted, wrongly phrased or omitted within this revised version suggests that the proposal for the TMC was not drafted with the idea of having a repository of information, rather with the notion that the TMC constitutes an additional tool for the protection of trademark owners. This is disappointing and dilutes the value of the TMC.
More important issues are being raised in the context of the Uniform Rapid Suspension system and the way it is presented in this revised version. Whereas the STI was very conscious in getting the URS wording right, now attention has not been paid to the language of the rules and procedures, thus curtailing their procedural importance and substantive appearance within the system (for example, the pointless replacement of STI’s “Safe Harbor” terminology with the word “Defenses” or the poor wording of section 5.8, which changes the whole meaning of the sentence by inserting bad faith when it is really about the good faith of the Registrant). Moreover, the revised procedural aspects of the policy operate under a presumption of guilt for the Registrant (“Given the nature of expected disputes in this venue, it is thought, more often than not, that no response to complaints will be submitted… p.3) and create an illegitimate moral dependency upon trademark owners and their wishes (s. 5.2: “Upon request by the Registrant, a limited extension of time to respond may be granted by the URS Provider if there is a good faith basis for doing so and it does not harm the Complainant”, p.4).
The worst aspect of this version of the URS is that it seems to be limiting the procedural rights of the Registrants. In particular, the interpretation of default as being based also upon a mistake during the filing of the response (s. 6.1 “If the answer is determined not to be in compliance with the filing requirements, Default is also appropriate”) is illegitimate. In most of the cases, Registrants represent themselves, operate under confined deadlines and English is not their first language. Should we not, at the very least, recognize these difficulties and give Registrants the benefit of the doubt?
But, to an extent this new version of the Policy seeks to restrict the subject matter of the disputes as well as the remedies against the losing party. This is good, as long as Examiners adhere to it. For the STI, this was achieved through the ‘Safe Harbors’, the option of an internal appeals process, through the ‘Abusive Complaints provision (which needs to return to the STI’s wording since it contains a lot of language errors and is unnecessarily confusing) and, finally, through the mandatory review of the URS. This last provision of the STI, which received unanimous consensus and it would eventually determine the success of the URS, was ‘skilfully’ omitted from this version without any justification.
All these issues will certainly have an impact on the new gTLD programme. How is ICANN expecting to receive the trust of individual users, if it fails to respect their rights and demonstrate that it has learned from past mistakes? How will the wider Internet community trust the new gTLD registration environment?
The Post-Delegation Dispute Resolution Policy (PDDRP) answers this. The PDDRP provides for a mechanism, whose effects, unless carefully considered and reviewed, can have an impact upon the registration culture and the trust it currently enjoys. The Policy is bad – it fails to take into account important factors like the direction it pushes Registries towards, the implications this will have upon the creation of a highly trademark-oriented registration environment and how unsafe and fragile this procedure is.
The STI recommendation paved the way towards the direction of a balanced approach. The STI’s recommendations were the result of a multi-stakeholder team, representing all interests in the DNS and ICANN. There were no winners and no losers – there was a balance. I hope ICANN endorses the STI’s work and ensure that the insertions of version 4 of the Guidebook reflect this balance.
I hope you take these comments into consideration. Thank you.
Dr. Konstantinos Komaitis,
Author of the book “The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world” Routledge.
Everyone who has been involved in ICANN over the past ten years is aware of the politics and the power struggles that take place within the corporation. Everyone who has been involved in ICANN is especially aware of the politics that take place lately over the introduction of new gTLDs and the protection of trademark owners and their rights. So, I really shouldn't have been surprised when the International Olympic Committee (IOC) joined forces with the trademark community, and started nagging about almost everything: the inefficiency of the Special Trademark Issues group's (STI) mechanisms, the creation of new gTLDs, the Implementation Recommendation Team (IRT) report - everything.
Although I have been following closely ICANN's trademark policies over the years, having heard a myriad of unjustifiable and unreasonable arguments emanating from the greed of trademark owners, I was still surprised to read the communication and arguments submitted by IOC to ICANN (http://icann.org/correspondence/lacotte-to-beckstrom-16mar10-en.pdf).
And, let me tell you why I was surprised.
I am Greek and up until this stage I was not aware that the word 'Olympic' and every variation that derives from it, is the exclusive verbal territory of IOC. Actually, until recently, I believed that the term 'Olympic' with all its variations belongs to the Greeks - not in some elitist, unique sense of dominium , but as being part of the wider historical culture of Greece. I really did not want to indulge in a debate concerning the ownership of any word with historical and cultural connotations, but, since IOC is talking about ownership of the term 'Olympic', let's talk about true ownership.
From a historical and cultural point of view, the term 'Olympic' is Greek; it is ingrained within the Greek culture and its significance for the Greek language is invaluable.I have grown up and have been educated using the word Olympic in various forms and fashions. At school, I was taught Lesia's Olympiakos speech and visited the area of 'Olympia', where the first Olympic games were held; I climbed the mountain Olympos with my friends and have travelled with Olympic Airways; I cheered for my football team against Olympiakos inside the Olympic stadium in Athens. I have never felt any sense of guilt or intimidation when using the term with its multitude of variations and I believe no Greek has either.So, why should I feel it now?
This is, essentially, what the International Olympic Committee suggests in its correspondence to ICANN. The fact that in the United States, the Olympic and Amateur Sports Act recognizes and protects the term as unique, to me, being Greek, means nothing. I really cannot understand how IOC can claim ownership and demand exclusive protection without considering the implications - historical and cultural - that this can have. I wonder whether they have gone to the trouble of consulting the Greek government. What IOC is proposing is not only unreasonable but also illegitimate.
What IOC is suggesting is simple and it is the wishful thinking of all trademark owners: the addition of the term 'Olympic' with all its variations (including, but not limited to, Olympiad and the Olympics) in a reserved list. So, in simple words, me being Greek, I will not be able to register any domain name that is close to the term Olympic. I believe the problem is obvious as is the question: why should IOC receive this kind of protection?
It should not. I am not saying that the term should be an open field for abusive registrations, but this is a far cry from IOC trying to establish exclusive rights on this word. This is the inherent problem with the bargaining power the trademark community has upon ICANN. This has always been the problem and is now getting worse. So, IOC is mistaken and I am certainly biased in this case. But, the truth is that I have every right to be.
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