One of the current themes that is of great interest is whether the UDRP should be reviewed or not. In an earlier post, I have said how I disagree with the ICANN Staff recommendation that the UDRP should not be reviewed at this time. To be fair, the ICANN staff reached this recommendation on two things: first, the realization that the volume of documents (including decisions) relating to the UDRP is vast; and, second, on the overwhelming non-support of a UDRP review by those participating at ICANN's Webinar last month - actually, I think that I was the only participant in that Webinar that advocated for a review of the UDRP.
The truth is, however, that neither of these arguments should be indicative whether the UDRP needs a review. The first one is just the reality and the price we pay (and we will continue to pay) the longer we prolong a review of the UDRP. With ten years under its belt, it is not a surprise that the volume of writing and decisions is massive. And, it will only get bigger. The second argument is even less convincing. Given the participants at the Webinar, it is really no surprise that the conclusion was against a UDRP review. The Centers have a vested interest in not changing the current structure and procedures of the UDRP, as they make huge bucks out of it; panelists also have the same vested interest, as UDRP adjudication brings them 'easy' money. No wonder why they opted for not a UDRP review. Having spend myself quite some time researching and trying to understand the UDRP, I still strongly believe that it is vital we start thinking of the methodology for its review. But, unfortunately, after the UDRP Webinar, I need support. For this, I have created an online poll, asking the simple question: Does the UDRP need a review? I hope to be able and produce the results of this poll to ICANN in order to establish that there is support for a UDRP review. So, I would invite academics, students, researchers, participants in the domain name industry and anyone who believes that the UDRP should be reviewed to cast their vote. The Poll can be accessed through this link: http://www.misterpoll.com/polls/526882 Thank you - 'Good day and good luck' Over the past few months, there has been some buzz over the possibility of reviewing the Uniform Domain Name Dispute Resolution Policy (UDRP) – the oldest ICANN policy. On February 3, 2010, ICANN’s Generic Name Supporting Organization (GNSO) passed a resolution, requesting the ICANN staff to draft an Issues Report on the current state of the UDRP. According to the motion, this effort would focus on two issues:
· “How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process; and, · Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The Issue Report should include suggestions of how a possible PDP on this issue might be managed”. This GNSO initiative back in February provided the excuse to all of us concerned with and researching the UDRP to start discussing possible ways for its review. And, its timing was perfect: the UDRP was celebrating just over ten years in the adjudication field of domain name disputes, discussions concerning the conflicting rights between trademark owners and domain name holders were fresh from the new gTLD process and ICANN had already made some movements towards a more efficient (electronic filling) and a more uniform (uniformity of supplemental rules across the providers) UDRP system. The ICANN staff was directed to conduct a preliminary research on the status of the UDRP and submit its final recommendations to the GNSO. As it always happens with ICANN’s policies, the timeframe for this task was very short and, it looks like this short timeframe might have cost the UDRP a proper review. But, there were also other problems with this process: there was no clear methodology as to what this review should entail (aside from the two issues raised by the GNSO,) there was no clear direction what the aims of the review should be and, generally, there was a clear lack of understanding by the GNSO of what reviewing the UDRP entails, considering the massive body of case law that has been generated over the past ten years. So, it should really not come as a surprise that the ICANN staff found it impossible to deal in such a short time with the UDRP’s volume of cases, its substantial volume of documents (many of which go as far back as 1999) and, the great deal of academic (and not only) writing about the UDRP, its procedures and its substance. According to the ICANN staff: “Due to the tremendous volume of cases and materials available regarding the UDRP (including, over 300,000 hits on Google alone), it became clear that there was no effective way to evaluate these materials”. Facing these difficulties, the ICANN staff – alongside the GNSO – opted for a ‘UDRP Webinar’ and a questionnaire that was sent to the various dispute resolution service providers. “The Webinar speakers were selected by the UDRP Drafting team based in part on recommendations from the UDRP providers. They reflected a broad cross-section of perspectives from various stakeholders with expertise in the UDRP and its administration, such as registrars, UDRP service providers, UDRP complainants and respondents, ICANN’s Contractual Compliance Department, and academics.” As one of the academics invited to speak to this Webinar, I thought it was both successful and a great way to reach wide audiences. The Webinar attracted more than 100 participants and the chat application in the Adobe Connect room was flooded with ideas, questions and comments. The participants represented various interests and came from all sides of the spectrum: trademark owners, their lawyers, academics, civil society, domain name entrepreneurs, domain name businesses, etc. Each speaker was given 5-10 minutes to present their opinion, a very short but understandable timeframe, given the amount of speakers participating. The Webinar gave all interested parties the opportunity to address their views on whether the UDRP should be reviewed. There was an overwhelming (and alarming my I add) majority of opinions against a review of the UDRP; some claimed that the timing was not right, others feared that a review would ‘break’ the UDRP whilst others felt that the mechanism, despite some flaws, is, generally, working well (for a more detailed account of these views see the ICANN Staff Preliminary GNSO Issue Report on the current state of the UDRP). On the downside, two hours proved not enough to even scratch the main problems with the UDRP; many questions by the participants were left unanswered and, to this end, ICANN could have sought ways to continue the discussions on the state of the UDRP and its potential review. For reasons unknown, discussions on the state of the UDRP terminated after the Webinar and, on May 27, 2011, the ICANN Staff released its Preliminary Issues Report for consideration by the GNSO. The ICANN Staff report makes predominantly two mistakes: the first is that it considers the consistency and predictability of the UDRP as a good thing. To be sure, consistency and predictability can be considered positive elements in any system of adjudication as long as these are characteristics attributed to the procedural or institutional aspects of a system. But, in the case of the UDRP, predictability and consistency are connected with the winning rate of trademark owners. We all come to passively accept (how scary is that) that, depending on the provider, trademark owners will prevail in most of the cases. The second mistake is that we call the UDRP fair – I still don’t understand how we can reach such a conclusion without reviewing the UDRP and its case law to see how fair or unfair the system has been operating for the past ten years. Unsurprisingly and disappointingly, the Preliminary Report recommends that “although properly within the scope of the GNSO’s mandate, a PDP on the UDRP not be initiated at this time”. The Report states that “after carefully evaluating the issues and concerns expressed by the ICANN community regarding the UDRP, Staff has concluded that many relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself”. This is partly true – indeed the majority of the issues identified have to do with the procedural aspects of the mechanism, but that doesn’t mean that these cannot be used as a justification for a review. At the same time though, the language issues of the UDRP – even the few ones if you wish – are very important and extremely necessary for the healthy existence and continuance of the UDRP (e.g. the lack of clear fair use provision is a language issue that needs to be addressed. Actually, the UDRP is one of the few such policies that has not made room for such language). Similarly, the argument that not many UDRP decisions have reached courts should not be used as a justification against its review. Let’s not forget that traditional trademark litigation is associated with huge costs. Nowadays, registering a domain name costs as little as $10 – how many registrants who own non-commercial domain names are willing to engage in lengthy and very expensive trademark litigation? Needless to say that in the majority of the court cases, the UDRP is not acknowledged as a system able to produce conclusions worthy of court consideration (see, for example, Parisi v. Netlearning, Inc., the Barcelona.com court cases, and Sallen v. Corinthians Licenciamentos Ltd.) I have always advocated, and will continue to advocate, for a review of the UDRP. It is not only reasonable but necessary. The UDRP is more than ten years old. It started as a system that was meant to address the issue of cybersquatting and abusive domain name registrations and has expanded to the extent of addressing almost every contentious issue of trademark law in the online environment. That makes the UDRP some sort of an international trademark law statute, which has not been legitimised through the channels of public international law. And, this is not necessarily a bad thing, as long as we make sure that UDRP is a balanced system, respects equally both conflicting rights and their owners and is adjusted to take into consideration the changing use and purpose of domain names. At the very minimum, the UDRP should recognise domain names as articles of innovation, creativity, entrepreneurship and new business models; it also should recognise the limitations of trademark law, its boundaries and doctrines as well as its fundamental principles concerning the nexus between commercial and non-commercial speech. These are not just decorative adjustments that we can live without; these constitute essential components contributing to the legitimacy and health of the UDRP. In my book, ‘The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world’, I have identified some issues within the UDRP that contribute to its procedural unfairness. Here is a very quick breakdown: · The UDRP fails to account for a process that consists of checks and balances and is not consistent with due process; · The UDRP does not provide incentives, equal for both parties; · The UDRP promotes forum shopping; · The panellists associated with the UDRP have mainly a trademark law background; · The number of default cases is worryingly high; · The democratic fractions of the UDRP are weak and incapable to resist trademark penetration; · The UDRP makes arbitrary use of precedent. Similarly, the UDRP also promotes an inconsistent system, despite the fact that is meant to be uniform. · The UDRP is based upon the illogical conclusion that all domain name registrations are potentially abusive and harmful and, occasionally, without any distinction or assessment between actual harm and the likelihood of such harm, it has normatively evolved into an inconsistent paradigm; · The substantive provisions of the UDRP (paragraph 4a) are at best etymologically obscure; · The bad faith element is open to wide and discretionary interpretations; · There is no authority responsible for the decisions (good or bad) that come out of UDRP panels. Given the fact that there is such speculation (more of a certainty for some, like myself) concerning the substantive and procedural deficiencies of the UDRP, many of these issues could have been addressed via a review process. At the same time, new additions in the UDRP could make this mechanism more efficient, more pragmatic and healthier; here are some recommending ideas: · The UDRP could introduce a statute of limitations for domain name disputes, disallowing trademark owners from initiating complaints against gTLDs that have been registered more than one year previously; · The UDRP could introduce a ‘Random Centre Generation’ system, so as to eliminate issues of forum shopping; · The UDRP should re-evaluate the scope of the bad faith element; · The UDRP should discourage panels from making use of precedent (at least under the current function of the UDRP); · The UDRP should clarify and elucidate on the benchmarks domain name registrants would have to meet in order to convincingly demonstrate their rights and legitimate interests in a domain name; · The UDRP should incorporate clear safe harbours, following other similar dispute resolution policies, such as NOMINETs’s or the URS; · The UDRP should make room for an internal appeals process, which would cure much of the UDRP’s inconsistency, and correct bad decisions; · The UDRP should insert a three-member blanket rule across all disputes; · The UDRP should insert strict and specific penalties against trademark owners engaging in Reverse Domain Name Hijacking and trademark bullying. · The UDRP should provide registrants with the possibility of initiating a UDRP dispute. These are just some of the features that, if incorporated or – at the very minimum addressed – will assist in creating a system that is procedurally and substantively more fair and balanced. Let’s not forget that, contrary to what we now accept, back in 1999, the UDRP was not a consensus document. It was a policy, created by the trademark community, which, at the time, was given the right to design a mechanism for addressing cybersquatting; I don’t like placing bets personally, but I would bet that, in its current form and design and with the knowledge we now have, the UDRP would face strong opposition from the community, SMEs, entrepreneurs and innovators. And, let’s not kid ourselves: the UDRP was and is subject to trademark politics – a system that is initiated by the trademark community, is run by the trademark community and its future depends on the trademark community can only be based on trademark politics. Before I close this blog post, I have to make one thing clear – I, and all the critics of the UDRP, are not against the concept of having the UDRP or against the protection and securitisation of trademarks both online and offline. Trademarks have to be protected against such issues as cybersquatting and the UDRP constitutes a vehicle towards achieving this goal. However, any protection of trademarks should not prohibit us from contemplating those provisions that are built around and within trademark law and ensure its adherence to concepts of legality and legitimacy. I am referring to issues of fair use, consumer protection and choice (the one based on allowing consumers the choice to determine whether they are confused and not the one directed by what the trademark community considers as confusion), freedom of speech and competition. The UDRP is not any system. Having spent the past ten years evolving and learning from its own processes and the cases that have appeared before its panels, the UDRP is a mechanism that can truly be inclusive. And, I don’t mean here to devalue courts and their procedures. But, the fact of the matter is that the UDRP is cheap, which makes it affordable for everyone, and it is fast, which ensures that in a fast-paced economic environment, like the Internet, is able to provide quick answers. So, for better or worse, we are stuck with the UDRP. And, because we have to live with it, we also need to make sure that it is structured in such a way as to provide balance, fairness and due process. I am not sure we fully appreciate the power and strength of the UDRP and the implications this power has upon the commercial and non-commercial Internet. I am not sure we understand the limitations of the UDRP, the fact that this dispute resolution mechanism was never meant to replace the traditional strands of trademark law or to create new legal rules that will apply in the online environment. Here we are then, stuck with an amorphous system of rules that produces inconsistent decisions, a system of rules that institutionally does not adhere to any of the legitimate archetypes, be it arbitration or a ministerial system and one that has not followed any of the existing international law processes, despite the fact that its behaviour and status demonstrate signs similar to international law making. Both at the UDRP Webinar and the ICANN staff report, it appears that one of the main fears against initiating a UDRP review seems to concern the fragility of the UDRP and the possibility of the UDRP collapsing if we proceed to its review. This is an artificial fear. We should really consider the possibility of how the UDRP might collapse as a system if it is not reviewed. The letter the World Intellectual Organization (WIPO) sent to ICANN prior to the UDRP Webinar in the beginning of May makes a very good (funny) reading. It is one of these cases when you read something and you can’t help but wonder: are we on the same planet? The major issue with WIPO’s letter is that it is based on the false premise that the UDRP is a fair system. This is inaccurate – and, in any case, we cannot possibly make such a certain assertion unless and until we actually review the UDRP.
The UDRP is 10 years old. It was created back in 1999 and, since then, it has never been amended. This is problematic because any system of adjudication, especially one that is flexible and vulnerable like the UDRP, cannot possibly evolve without making mistakes in the process. For this reason, most evolving systems include checks and balances and provide a solid mechanism that allows the evolution of the system to continue undisrupted. The UDRP does not have these checks and balances. This was the concession we made a decade ago, because, back then, cybersquatting was novel, unfamiliar and dangerous. Cybersquatting now is not something new, it certainly does not sound unfamiliar and the UDRP has managed to address it. But, during this process, the UDRP became a much larger system than anticipated: it became the vehicle for the incremental expansion of trademark law. So, for a change, let’s start from the premise that the UDRP cannot be a purely fair system and that it requires a careful review; better yet, let’s try to see the WIPO arguments from this point of view. “The UDRP has been offering an effective solution for trademark owners, domain name registrants, and registration authorities”. This is only partly true: the UDRP provides an effective solution for trademark owners, it does not provide an effective solution for domain name registrants and, in the larger picture, registration authorities do not really care that much as long as the domain name stays alive and they collect the registration fees. The benefits for registrants WIPO suggests, are that “the UDRP has provided an accessible framework for established legal norms. Their application benefits from non-exhaustive registrant safe harbors at a substantive level (rights and legitimate interests) […]”. Two issues with this statement. The first one has to do with the ‘established legal norms’, which was never part of the deal. Due to the administrative nature of the UDRP and its lack of checks and balances, the UDRP rules cannot be (and should not be) considered to produce normative authority. The second one is the idea that the UDRP has safe harbors; this is a big mistake, since the UDRP’s paragraph 4c is really a very narrow outline of basic rights a registrant has. Fundamental protections for free speech, fair use and criticism are missing from the UDRP. “By accommodating evolving norms and practices, the UDRP has proven to be a flexible and fair dispute resolution system”. Again this is not entirely accurate. The UDRP is flexible – but not fair. I have many issues with this part of the WIPO letter. It again talks about ‘evolving legal norms’, which I consider to be extremely problematic. If we are officially using this terminology, then the need for the review of the UDRP becomes even greater and more relevant. Rules are part of a process where they get challenged and debated before they acquire their normative legal status. This never occurred in the context of the UDRP. And, the letter doesn’t stop there. It asserts that “the UDRP has incrementally developed as a public system of jurisprudence”, yet the UDRP has not undergone nearly the required process. The UDRP is an administrative system that does not even match arbitration archetypes, so how can we consider it as a ‘public system of jurisprudence’? “With exponential DNS growth around the corner and untested new RPMs in development, this is in any event the wrong time to revise the UDRP” I think we need to ask ourselves another question: will there ever be a good time to revise the UDRP? The truth is that this is the perfect time to review the UDRP and we should not by any chance make this review contingent upon the new gTLD process. As we proceed to create new mechanisms that procedurally and substantively are based upon the UDRP, we need to make sure that we don’t repeat the same mistakes we did 10 years ago. The WIPO letter asserts that “the URS is as yet unsettled and presents serious issues in terms of its workability; its procedural and jurisprudential interaction with the UDRP remains largely unaddressed. Even if such issues were satisfactorily resolved, this new RPM will need to settle in practice in a DNS expanded by hundreds of TLDs”. This is not a valid argument. Ten years ago, we went through the same degree of uncertainty and instability with the UDRP. And also, let’s not forget that ICANN is not here to create systems of adjudication, but to ensure that all rights are appropriately addressed. Whether this means having the UDRP or a similar system, it doesn’t matter. There shouldn’t be a long discussion about the nexus between the two systems: the UDRP will be for the URS just another mechanism. This should be simple and WIPO exacerbates an issue that doesn’t exist. “Institutionally stacked, an ICANN revision process would likely end up overburdening and diluting the UDRP”. Here are also some interesting inaccuracies. “If interests under the ICANN umbrella do not share the wide recognition of the UDRP as an overall success and rather believe it warrants revision, it would seem incumbent upon those interests to advance a transparent rationale for their views and articulate a coherent alternative model”. This actually has been done and there happens to be extensive literature on this by Froomkin, Mueller, Geist and myself, amongst others. And, of course, if you think that the trademark community will not be pushing for more, here is what they would like to see get in the UDRP. – “Of course, from an IP rights holders’ perspective, there are numerous ways in which the UDRP might be amended. It could operate on condensed timelines and default decisions. Its scope could extend beyond trademark rights, and more recent bad-faith scenarios recorded. Calls have been made for damages options and ‘loser pays’ models. The UDRP could also be expanded to address certain forms of intermediary behavior. Other interests are on record with wish-lists that apparently include the UDRP definition of cybersquatting itself.” Expansion, expansion, expansion. And, here is my favourite: “The anticipated ICANN process does not inspire confidence that it would meet these standards. Even when it comes to trademark policies, IP institutionally appears to occupy only a minor ICANN role. Indeed, the more vocal advocacy observed thus far does not suggest a desire to enhance the UDRP’s effectiveness as a rights protection vehicle. The present state of the URS illustrates the risks of subjecting an RPM to recycled committee processes, open-microphone lobbying and line-item horse-trading.” Here is the funny part of the letter, I mentioned in the beginning: first, trademark issues in the context of ICANN do not occupy a minor role; really? how is it then that we are discussing trademark protection since the creation of ICANN and trademark owners even have the ability to block an entire process? And, more importantly, is WIPO really serious when it suggests that open-microphone lobbying (I personally find an unsuccessful choice of words) is more dangerous or less transparent than the lobbying that is occurring behind closed doors between trademark owners and governments? Really? “Fundamental questions about the business and DNS beneficiaries of cybersquatting must be addressed before targeting the very mechanism intended to address this practice”. Because I don't want to repeat myself, I will add one issue in WIPO's to-do list to ICANN: "[…]ICANN should first fairly address the following issues: · the relationship between cybersquatting and the activities, revenues and budgets of DNS actors; · the incidence of UDRP cybersquatting findings in relation to wider trademark abuse in the DNS overall, with filed UDRP cases merely representing the tip of the iceberg; and · the degree of proportionality between trademark rights enforcement and domain name registration opportunities in the DNS." ... and let's not forget: · The degree of trademark bullying and the procedural and substantive deficiencies of the UDRP. There is really one word that can characterize the WIPO letter: F.U.D – fear, uncertainty, denial. A significant independent report emerged recently in the UK that can certainly be used as a signal of how intellectual property protection is being construed in the 21st century – through lobbying and persuasion initiated by intellectual property rights holders.
Offline but mainly online, intellectual property is certainly going through a strange wave of change. Whereas intellectual property rights existed as tools of communication between producers and consumers, on the Internet they appear to be weapons against consumers. Copyrights and trademarks have become exclusive, untouchable monopolies that now prevent us from exercising our free speech; fair use is blurred with tarnishment and, more worryingly, law is now driven by unsubstantiated economic rationalizations that serve specific intellectual property interest. And, I say specific because most of these rationales are based on a dozen (if not less) rights holders who seek to implement and enforce protections that see their rights secured even at the expense of their peers – small and medium-sized rights holders, innovators and entrepreneurs. The report, entitled “Digital Opportunity: A Review of Intellectual Property and Growth” – commonly knows as the Hargreaves report – tells the horror story of how lobbying exercised by intellectual property owners has the capacity to direct governments, their ministers and departments. Three quotes encapsulate the essence of the report: "We urge Government to ensure that in future, policy on Intellectual Property issues is constructed on the basis of evidence, rather than weight of lobbying." "On copyright issues, lobbying on behalf of rights owners has been more persuasive to Ministers than economic impact assessments." "Much of the data needed to develop empirical evidence on copyright and designs is privately held. It enters the public domain chiefly in the form of 'evidence' supporting the arguments of lobbyists ('lobbynomics') rather than as independently verified research conclusions." The report, despite its limitation to the UK intellectual property regime, addresses an issue that represents that current status of intellectual property: trademark and copyright laws are subject to lobbying to the extent that evidence becomes redundant. Take, for example, the ICANN context and the great push towards stronger forms of intellectual property protection. Here we saw the trademark constituency lobbying to their governments and achieving to upset a process that is meant to create jobs, encourage innovation and assist competition. The creation of the new gTLDs became contingent upon trademark rights, discussions about protection and debates about the extent of it. Economics, inclusiveness and societal aspects received none or little attention, even though they actually constitute the most important aspects for a successful Internet. But, here is the question that no one seems to be able to answer. We all expect (and at some level even understand) where the greed of intellectual property owners is coming from – but, what is it exactly that makes governments willing to contravene traditional understandings of law and to jeopardize the traditional fractions of law making? What is the bargaining chip that the trademark community held upon the US and the UK governments that made them so eagerly support trademark owners in the new gTLD process? The simple answer appears to be lobbying – a strong amount of political and economic pressure that finds governments willing to risk justice. This lobbying is one-layered: it reaches the top directly and positions itself as the master pulling the strings. It is control – control over the information, control over the ideas and control over the consumers (users). So, the report is very accurate when it requests evidence, because lack of evidence leads to lack of process. A brand new piece of Internet legislation has emerged recently and seeks to address – what else – the protection of intellectual property rights. The ‘Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011’ – or more accurately ‘The PROTECT Act of 2011’ is the latest legislative attempt to combat illegal Internet activity related to intellectual property and marks a new step in the United States to ensure the elimination of any activity that facilitates trademark and copyright infringement and the sale and distribution of counterfeit goods and rogue pharmacies.
The PROTECT Act should certainly be considered the legislative extension of COICA. Principally, the Act follows the same logic of the Combating Online Infringement and Counterfeits Act (COICA) but extends its rational basis by targeting domain names and registrants located outside the United States. In so doing, the PROTECT Act uses the procedural devices of in personam and in rem jurisdiction, found in both the Anticybersquatting Consumer Protection Act (ACPA) and in COICA. The proposal for this Act should not come as a surprise and follows the pattern of creating stronger forms of protection for intellectual property holders. It is a great addition to the attempts by the United States government to create an impenetrable shield around intellectual property owners and to build a multi-layered model of security for the various types of intellectual property. The Act is based on rationalizations emanating from a high degree of legal relativism concerning the boundaries and scope of intellectual property rights and, although the threats that it seeks to address are real and tangible, the lack of robust provisions for the protection of free speech and due process will dilute further our understanding in the Internet’s law making process. The mere fact that in the space of a year the United States government has proceeded to such expansive legislation can only mean two things: first, since the United States government appears to be so prone to the demands of intellectual property owners, the democratic deficit in the shaping of Internet law grows bigger; and, second, intellectual property law changes drastically and through the interpretations of small, but very powerful, brand owners – a small fraction of rights holders within the intellectual property pool. This exact pattern has been seen in the context of ICANN’s intellectual property debate. The alliance between rights’ holders and governments and the raising role of the governments in Internet Governance has placed obstacles and has disturbed a lengthy and consuming multistakeholder process and has remanded the Internet community to intellectual property wishes. Much of the legal basis of the PROTECT Act is based on ambiguous terms whilst its procedural design continues to challenge due process and justice (a good analysis is provided by TechDirt). So, in effect, this Act continues to feed to the emerging hostile environment in the DNS and provides more means for capture of the whole domain name system by certain, non-representative intellectual property interests. New entrants, entrepreneurs and innovators are expected to suffer from yet another attempt by America’s brand owners to expand intellectual property on the Internet. A recent report on the contestable issue of trademark ‘bullying’ has been released by the US Department of Commerce but, unfortunately, its substance and conclusion fail to identify the exact extent of the problem. The report acknowledges that in some cases trademark owners seek to enforce their rights through channels of intimidation and bullying, but it declares that “after careful review of the available information regarding trademark litigation tactics and comments received from concerned intellectual property stakeholders, it is unclear whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights”. So, is the report worthless?
Sort of. The fact that the US Department of Commerce instigated such a report, in the first place, is certainly a positive step towards accepting that there might be a problem to begin with. But, the fact that the report considers ‘trademark bullying’ as an issue that does not even warrant the willingness of the US DoC to continue to identify ways to combat it, negates the whole idea behind this initiative. But for a moment, let’s go along with the conclusions of the report and let’s say that trademark bullying only occurs periodically and in a small scale. Does this make it better or justifies it better? The problem exists and it is the responsibility of the organs that shape trademark law to terminate it. It would have been much better if the report where to at least suggest an effort to this end. However, more importantly the report suffers from two major flaws – one procedural and one substantive. The report was instigated by the US Department of Commerce, which has a vested interest in reaching the results that it did. The US DoC is the umbrella for trademarks and the place big trademark firms turn to when they want additional forms of protection. It has the ears of the trademark community and one should not really look as back as 6 months ago, when the same trademark community that presumably this report is referring to, went to the US DoC demanding that the ICANN trademark policies for new gTLDs are amended and expanded to protect their interests. The DoC complied. So a case can be easily made here relating to the true willingness of the US DoC to produce a report that accurately reflects the extent of the problem. On the substantive side, the report makes a very interesting reading. It often repeats that idea that a trademark constitutes a property right and affirms the right of trademark owners to police their trademarks. Although many could question the association of trademarks with dominium characteristics, currently trademarks are regarded as limited property rights, making the right to police more subjective than it generally is. In any event, the right to police a trademark is, as Eric Goldman says, “massively overstated”. But, for me, the main substantive flaw in the report is the lack of considering trademark bullying also in the context of domain name disputes. I think that it is specifically in the context of domain names that trademark intimidation exceeds the permissible boundaries of sending a simple ‘cease and desist’ letter and becomes bullying. And, it is most certainly in this same context that trademark owners often overstate their rights and seek to expand them much beyond what trademark law allows them to. It is, finally, in this context that the party subjected to the trademark bullying most often does not have the means, the resources or often the understanding of the processes. It is really unfortunate that the report does not suggest ways to address the way trademark owners view their rights on domain names and the great lengths they are willing to go into securing what they perceive as their right. In this context, the report should have sought to include, in addition to Small and Medium Enterprises (SMEs) legitimate registrants, entrepreneurs and innovators and should have considered the data in the ChillingEffects Clearinghouse as nothing less than evidence of an ongoing problem. But, this report can be of great use. Its doubtful conclusions can and will be used as justification within ICANN not to address the problem. The UDRP is currently undergoing its first ever review in ten years. The process has been set in motion and it moving towards its various procedural steps. When we eventually reach the stage of talking about the experience of trademark owners, domain name registrants and the whole constitution of the UDRP, we cannot do that without mentioning the problem of trademark bullying. I fear that the conclusions of this report will prevent us from even putting it on the table. In May 5 & 6, 2011, I will be traveling to Washington, DC to attend a two-day conference organised by the Global Internet Governance Academic Network (GigaNet) in association with the American University’s School of International Service. The title of the Conference is – ‘Global Internet Governance: Research and Public Policy Challenges for the Next Decade’. The first day, the conference is more policy-oriented, discussing current themes relating to Internet Governance and public policy and the Secretary for Commerce, Larry Strickling will be delivering the keynote speech. In the second day, the conference will take a more academic tone and will discuss various issues of Internet governance under a more scholarly approach.
I am presenting my paper on the UDRP and the way it has transformed trademark law the second day and I cannot possibly contain my excitement. I have attended various conferences where I spoke about the UDRP in a very intellectual and engaging environment. But this time, two of the ‘originals’ will be there. Back in 2000, when ICANN introduced to the world the UDRP, the writings of three academics made a significant impact on the way the scholarly community – myself included – came to understand what the UDRP was, its flaws and the political and legal struggles that led to its creation. Two of these academics will be attending the conference and I have the honour in being in the same panel with one of them. The first one is Professor Michael Froomkin, whose article ‘ICANN’s UDRP: Its Causes and (Partial) Cures’ provided us with a deep understanding concerning the institutional problems with ICANN and WIPO – the masterminds behind the UDRP’s inception – and the procedural problems with the Policy itself. The second one is Professor Milton Mueller. His account of the UDRP in his article – ‘Rough Justice: A statistical assessment of ICANN’s Uniform Dispute Resolution Policy’ shed light to some very specific procedural problems with the UDRP, e.g. forum shopping, wide interpretation of the bad faith element, bias, etc. Fast forward ten years later and a lot (and nothing) has happened. For starters, I got my PhD and published my book on the regulation of domain names, which, amongst others, also re-iterated and expanded on those procedural flaws identified by Professors Froomkin and Mueller. Second, ICANN debated and produced what it hopes to be the penultimate version of its Guidebook in relation to new gTLDs, which incorporates new protection mechanisms for trademarks, building upon the model of the UDRP. Trademark owners appeared again in full force, pushing for stronger forms of protection; only this time, they also had as their allies the governments of the world, which ‘bought’ their unsubstantiated arguments that, under the new new gTLDs, trademarks are not secured on the Internet, thus the strongest possible protection is vital. Moreover, ICANN’s Generic Names Supporting Organisation (GNSO) opened the UDRP brief for review, however, it still very premature to determine its success. And, last but not least, the UDRP has evolved in such a way that it is now a model that has adjudicated more than 45,000 domain name disputes, making the mechanism a legal regime in its own right. These are some of the issues that I will be raising and discussing in my presentation in Washington in the company of two of my mentors. I hope that my research on domain names and my demonstration of the way the UDRP has altered our understanding of trademark law will constitute a logical extension of the arguments submitted by Mueller and Froomkin almost ten years ago. These are the ‘originals’ as I call them and being part of this group is certainly very thrilling. In a space of two days, two ICANN-related documents made their appearance: GAC’s response to the ICANN Board’s questions in relation to the scorecard and the new gTLD Applicant Guidebook responding to the GAC’s document. The issue of Rights Protection Mechanisms was apparently so significant that the GAC submitted its clarifications in a separate document from all other issues.
In relation to the RPMs, the latest version of the Guidebook seeks to strike an unsuccessful compromise in some issues and provides some significant changes to the previous version. However, for me two things stand out more than the others and I don’t suggest that the other issues are not of some concern: inclusion of all types of IP rights in the Trademark Clearinghouse and the ‘loser pays’ model of the Uniform Rapid Suspension System. Inclusion of all types of intellectual property in the Trademark Clearinghouse! The GAC’s responses in relation to the Clearinghouse provide some great insight regarding the vision the trademark holders in association with the various governments – most certainly those that have already indicated their wish for strict forms of IP protection – have for such a mechanism. In particular, the GAC provided some clarification regarding its proposal for the inclusion of all types of intellectual property rights within the Clearinghouse. According to the answers submitted to the Board, the GAC explains that such an inclusion “would obviate the necessity to develop separate mechanisms for these types of intellectual property”. Exactly when did we discuss and further decide that copyrights and patents would require a similar mechanism? Where did ICANN acquire the legitimacy to authorize the creation of a mechanism for types of intellectual property other than trademarks? Well, we all know that ICANN does not have the legitimacy to even suggest policy for other types of IP rights (personally, I even contest its legitimacy to create policy for trademarks) and in any discussions we had about potential inclusion of other IP rights in the Clearinghouse even the trademark community failed to sell such a proposal. Simply, there are no valid arguments that would justify ICANN opening up the Clearinghouse to any forms of IP that can be valid or legitimate. So, this begs the question: why does the GAC insist on it? I can think of one answer: by including all types of IP rights in the Clearinghouse, the IP community will have the opportunity to use the Clearinghouse for all kinds of purposes, e.g. for blacklisting domain names and registrants. This is not a Hollywood science fiction scenario (and, if it is, I certainly claim copyright before I get bullied into surrendering it). Both in the US (COICA) and UK (Policy dealing with domain names used in criminal activity), Congress and NOMINET respectively, are exploring ways concerning the take down of domain names that facilitate the infringement of copyright and the promotion/sale of rogue pharmaceuticals and counterfeit goods. We all know and have read the arguments with this kind of regulation – free speech, human rights and fair use are all at stake. We also know that certain governments do not pay attention to these concerns and continue to pretend that the only real victim here is the IP community. But, whereas such regulatory initiatives were limited to certain jurisdictions and national sovereignties, now they might become international policy. My point is this: if all types of IP rights were to be included, what would stop the Clearinghouse from using its database in a way far and beyond its original scope? What would prevent the Clearinghouse to start a separate ‘blacklist’ that lists those domain names that legislation like COICA addresses? How can we ensure that the database that will be created under COICA will not be fed into the Clearinghouse? In all this, ICANN does not appear to take the GAC’s considerations on board, but does not appear to either categorically reject them. ICANN chooses to be vague on this issue. In section 3.2.4, ICANN’s final version of the Clearinghouse states: “The proposed standards for inclusion in the Clearinghouse are: other marks that constitute intellectual property”, which might simply be addressing what GAC refers to as ‘local rights’, although, even in this case, local rights are subject to cultural relativism and are highly contested because of their highly national nature; and, then in section 3.6 “Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above…”, which sort of gives the Clearinghouse carte blanche into accepting other forms of IP rights; and, finally, the way the term ‘ancillary services’ is used in the final version of the Guidebook is also alarming. The original vision of ‘ancillary services’ was to put to rest the debate as to whether common law marks should be included in the Clearinghouse; and, because the community could not decide, the idea was to allow the inclusion of common law marks through an ‘ancillary services’ mechanism. Now, ancillary services are divorced from their association with what types of trademarks should be included and could be interpreted as allowing the Clearinghouse to provide services – classed as ‘ancillary - for other types of intellectual property. This provision in the Clearinghouse is vague and opaque – and we all know vague policies can mean one thing: wide, discretionary and potentially bias interpretations. At least, this is the case with ICANN’s policies and I hope I get to be wrong. The ‘Loser Pay’s model in the Uniform Rapid Suspension System (URS) In light of news hitting the Internet that trademark bullying is not only a rumor but a current practice exercised by big and powerful trademark owners, ICANN has submitted in its recent version of the URS a provision for a ‘loser pays’ all model to domain name disputes. According to the provision: “A limited ‘loser pays’ model has been adopted for the URS. Complaints listing twenty-six (26) or more disputed domain names will be subject to an Response Fee which will be refundable to the prevailing party. Under no circumstances shall the Response Fee exceed the fee charged to the Complainant”. Although the reality is indeed that if someone registers this amount of domain names corresponding to a certain mark, that someone is most probably a cybersquatter, ICANN does not explicitly state whether these 26 domain names should come from the same individual. ICANN only states that the Complaint should list 26 or more domain names, but it does not clarify whether the complaint should be against the same respondent. So, again here, this provision can be read as allowing the Complainant to bring one complaint for several domain names which concern the same mark but are registered by different registrants. Can this be the case? There is nothing to suggest otherwise and, if the discretion panels normally exercise in such policies is indicative, nothing stops the URS from being expanded to such a procedural allowance. But, the ‘loser pays’ model, even if this limited, creates a much bigger problem. It feeds into trademark intimidation and bullying, sort of legitimizing it if you wish. The fact is that, so far, trademark bullying occurred through the fear of court litigation and its associated costs. The message to registrants was clear: we will sue you if you don’t comply and, if we do, you end up engaging and paying a lot of money, which we can afford and you can’t. So, its better to surrender your domain name now that you still have the time. All this was happening at a national level. Now, with this provision, the same practice will also happen at an international level with the blessings of ICANN. Imagine, for instance, someone who has registered 26 variations of a trademark for free speech purposes. Will that someone be subject to a URS and, more importantly, to a potential ‘loser pays’ model? This provision will certainly disincentivize legitimate registrants from responding, encouraging further the existing culture of defaults and creating an unbalanced and biased system. Needless to say that the URS is not equipped for such a provision. The URS lacks the checks and balances that exist in traditional adjudication as it promotes speed. You cannot have a system that wishes to award such costs and not have some checks that ensure this takes place according to due process. Systems, like the UDRP and this one, are prone to bias and abuse as they are conceived to protect certain rights – so why feed into this bias? So, ICANN has entered again a very dangerous territory. The compromise solution that ICANN provided (remember that the GAC originally did not want to put a cap in the ‘loser pays’ model) is as problematic. The criterion that ICANN uses is not clear and the provision is certainly open to the widest interpretations possible. I hope I am mistaken here, but this system can easily backfire and it will certainly allow many mark holders to use also the URS as a tool for intimidation and bullying. For adjudicators and decision makers default constitutes perhaps one of the major procedural hurdles during the adjudication process. A defaulting party is the one that fails to appear before a court of law or a tribunal within a timely manner, thus failing to exercise her right of defence. Unquestionably, this kind of procedural awkwardness imposes a shadow of doubt in the delivery of justice. The problems with default are many: defendants don’t get to respond to the plaintiff’s assertions; judges find it extremely hard to produce solid decisions; justice struggles. If we were to prioritize, we could easily argue that the greatest challenge of default focuses on how the adjudicator will be able to reach decisions in a fair and equitable manner without, however, capitulating its own obligation for independence and impartiality; the judge cannot possibly be asked to read the defaulting party’s mind, thus inevitably decisions need to be taken absent the defendant.
But somehow, even in the absence of the defendant, justice is still ensured. The existing checks and balances of traditional adjudication processes alongside axiomatic principles relating to the rights of the parties provide a sound basis for the delivery of justice. As part of their mandate to deliver justice, courts have to make sure that the defendant is served and, if that fails, at the very minimum the court must exhaust all the possibilities for service of process. At the same time, courts also have to abide by the idea of the presumption of innocence and the right of defence. Article 48 of the EU Charter of Fundamental Rights states: “1. Everyone who has been charged shall be presumed innocent until proven guilty according to law. And, 2. Respect for the rights of the defence of anyone who has been charged shall be guaranteed”. With this in mind, nothing in ICANN’s dispute resolution mechanisms remotely resembles this thinking. The truth is that ICANN’s processes have historically suffered from the issue of default. When the Uniform Domain Name Dispute Resolution (UDRP) was created back in 1999, default was not identified as part of its procedural rules. It was an issue that the drafters of the UDRP had either not considered or they intentionally omitted. But, default was inevitable, especially in a mechanism designed for online disputes like the UDRP, which concerns parties located anywhere in the world and everything is done electronically, from the submission of the necessary forms until the delivery of justice. So, when default started creeping into the UDRP system, the panels opted for the easiest, fastest and most unfair option – they associated it with bad faith, generating this way a vicious circle of decisions that made all defaults indiscriminately tied to bad faith. And to make matters much worse, no one within the adjudication process (ICANN or WIPO or any other accredited dispute resolution provider) stopped to question or even investigate some of the possibilities of default. Because bad faith aside, default may occur for various reasons: the domain name holder (respondent) did not receive the complaint because the email went into her spam folder; the respondent did not have time to respond to the complaint (the UDRP gives the respondent 14 days to respond); the respondent resides in a developing country or a somewhere with limited Internet access; the respondent does not speak English (and most of the complaints are submitted in English); the respondent does not understand what the UDRP is or how it works; the respondent does not have the time or money to hire an attorney to assist with the response – and the list of reasons goes on. Fast forward now to ICANN’s new gTLD program and the idea of a Uniform Rapid Suspension System (URS). After years of debate, multiple versions of the same policy and controversial meetings, the issue of default still appears not to be settled correctly and to constitute one of the worst attributes of ICANN’s dispute resolution mechanisms. The Governmental Advisory Committee’s (GAC) recommendation, which in relation to default has been accepted by the ICANN Board, basically disseminates one simple message: default means bad faith. The GAC scorecard says: “If, as is expected in the majority of cases, there is no response from the registrant, the default should be in favour of the complainant and the website locked”. All this sentence is wrong: ‘as expected’ means that default constitutes some sort of a bizarre normative account in domain name disputes; ‘in the majority of cases’ means that without having implemented the URS, we should expect more than half of the URS cases to be in default; ‘the default should be in favour of the complainant’ means default equates to some form of malicious conduct. On top of all this, the Examiner is stripped of any right to attempt to identify good faith, even in the case of default. Using what I consider a very bad choice of words to refer to the party defaulting as ‘non-cooperative’ both ICANN and the GAC agree, “In addition, the examination of possible defences in default cases according to para 8.4(2) means an unjustified privilege of the non-cooperating defendant.” Here is the paradox with this approach. On the one hand, the UDRP (and the current language of the URS) give wide discretionary powers to the panels to find bad faith and interpret it any way they see fit. On the other hand, however, it doesn’t allow the panels to find good faith and apply it. The argument goes that adjudicators cannot be expected to be ‘mind readers’. Sure and I am sure that none of us wants them or expects them to be although some UDRP panels have already done so to prove the impossible (for example, in Educational Testing Services v. TOEFL, the panel seeking to establish bad faith said exercised its discretion by stating the following: “[…] because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.”). But, some domain names are, on their face, registered for fair use. Take, for instance, <ihatebrand.com> - wouldn’t you consider use of such a domain name to fall under fair use? So, we find ourselves in a very bad conundrum – if the new gTLD program is meant to build bridges and invite applicants from across the world – developing countries included – then this approach will make it impossible. We need to understand and appreciate that not all registrants are bad actors who wish to take advantage of trademarks and we need to find ways to differentiate between those in good faith and those in bad faith. A good way would be to allow the Examiner, should she wishes to, to make determinations of good faith. The long-awaited interaction between the Governmental Advisory Committee (GAC) and ICANN’s Board of Directors wrapped up its proceedings today in Brussels, one day after the originally scheduled two day meeting. Trademark issues were once again at the forefront of the discussions with the ICANN Board providing some preliminary – and not final – answers to the GAC’s scorecard. For those who have not read or heard the trademark issues raised before the Board, the GAC scorecard focused on three issues relating to the protection of trademarks on the Internet: the Trademark Clearinghouse, the Uniform Rapid Suspension System (URS) and the Post Delegation Dispute Resolution Process (PDDRP). In my previous blog post, I identified the issues that I thought were problematic with the GAC scorecard, focusing mainly on the URS and the way it sought to provide a mechanism that would be beneficial for the trademark community and for no one else.
ICANN, in submitting its preliminary answers, got many things right, but also got some things wrong, whilst it referred some questions back to the GAC for more clarification. The ICANN Board emphasised that its inclination was not final and that further discussions with the GAC would be necessary to clarify and resolve the various outstanding issues. A further call between the GAC and the ICANN Board will be scheduled in the next few days (and before ICANN’s San Francisco meeting) to further discuss and deliberate on these issues with the hope that both entities will reach some agreement. Trademark Clearinghouse Regarding the GAC’s recommendation for all types of IP rights to be included in the Trademark Clearinghouse, the Board accepted in principle this proposal asserting, however, that further discussions were necessary to ensure that the implementation of this recommendation would not leave any rightful mark owners outside this framework. The Board accepted the recommendation that both sunrise services and IP claims should be mandatory and raised its objections on the issue of whether ‘IP claims services and sunrise services should go beyond exact matches to include exact match plus key terms associated with goods and services identified by the mark and typographical variations identified by the rights holder’. In relation to this, the Board expressed its difficulty in understanding and setting criteria as to how far the notion of these exact matches could go. One of the things that the Board focused on (and appeared to be quite adamant about it) is that only genuine trademark owners should be given the right to be listed in the Clearinghouse. By ‘genuine’ the Board asserted that proof of use on behalf of trademark owners should be required, expressing fears that various mark owners can potentially approach jurisdictions where no substantive review is conducted and, therefore, receive protection when it is debatable whether such protection should exist in the first place. Finally, in relation to who should bear the costs of sustaining the Clearinghouse, the Board asserted that trademark owners should pay a fee for registration, Registry operators should be required to pay a fee for using the services provided by the Clearinghouse and left open the idea that potentially registrants might bear some of the costs, since they will be using the Clearinghouse as a point of reference when registering a domain name. In their majority, these preliminary answers seem to be fine. The fact that the ICANN Board was not willing to straightforward accept the ‘exact match plus key word’ issue is a very positive step in limiting the rights that mark owners should enjoy in the Internet, just like in traditional trademark law. The Board was actually very reasonable in expressing its difficulty in understanding how such a provision would work, what criteria would apply and what would be boundaries be. Uniform Rapid Suspension System (URS) Regarding the URS, the Board’s preliminary answers were far more contentious. The Board accepted the GAC’s recommendation to reduce the timescales but did not deliberate on which specific ones this reduction would apply (the URS includes various timescales ranging from the time of response to the time of appeal). However, the Board did indicate that the system is meant to be ‘rapid’, indirectly indicating that there might be a reduction in the time for the response. The Board also accepted that there should be a standardised format for the submission of the complaint, which, from the GAC proposal, appears not to apply in the case of the response. The Board further accepted that a qualified ‘Examiner’ should adjudicate URS disputes, instead of panel appointments. The Board was once again adamant that proof of use of the trademark should also apply in the case for a successful URS proceeding and, further, asserted that even in default the Examiner should have to go through the process in delivering his/her decision. The Board, however, rejected GAC’s recommendation for lowing the standard of proof from ‘clear and convincing evidence’ to a ‘preponderance of evidence’, stating that the first lays somewhere in between the notions of ‘preponderance of evidence’ and ‘beyond reasonable doubt’ and, thus, it is only fair. The Board took also a negative view on the recommendation that the bad faith element should be abandoned (an issue that I personally felt should not have made it to the scorecard) and rejected the ‘loser pays’ model, which was controversial and would act as a deterrent for registering new gTLDs. The time for filing an appeal in default cases, which was originally set in 2 years, was accepted by the Board as appropriate and as complying with the wishes of the wider community. The Board also accepted that the fee for a URS proceeding should not exceed the amount of $300 and indicated its wish to allow transfer of the domain name after a successful URS. Finally, the Board rejected again the notion of extending exact matches to keywords. The worst aspect of the Board’s preliminary answer is the idea of allowing transfer of the domain name through a successful URS. As far as I am concerned, this recommendation stands no merit or justification and could in principle be the reason for the collapse of the whole URS. The initial justification of the URS was that it would be distinct from the UDRP as far as its remedies are concerned. Two distinct mechanisms with two distinct remedies: the UDRP would retain its remedial focus on transfer or cancellation of the domain name, whilst the URS would simply ‘lock’ the domain name. By allowing transfer of the domain name through a system intentionally not designed to proceed to substantive evaluation of facts, the need for the UDRP will slowly decrease. It should be anticipated that over time the URS will be used for every contentious issue, making the UDRP redundant. And, why shouldn’t it? If you are a trademark owner, of course you will opt for the cheaper (max. $300) and faster (the whole process will last substantially less than a UDRP process) system. And, if as I fear, the time of response is minimised to just 14 days, then ‘adios’ due process, procedural justice and balance. The way the Board decided to treat default is also quite problematic. The Board appeared to share the GAC’s (negative) view that default means bad faith and, thus, the defaulting party (the language used is ‘the non-cooperative party’) should not be given any privileges. Again, both the GAC and the Board misunderstand the idea behind default and take into consideration only the very narrow view. Not acknowledging that default might occur for various reasons and within various context will create problems for registrants residing in developing nations, for registrants with limited Internet access and for registrants who are not familiar with the ICANN administrative proceedings and need to find a lawyer to assist them. And, if the time for the response gets to 14 days, then all URS default cases (and they will be many but not for the reasons the trademark community suggests) will be automatically deemed as in bad faith. The Post Delegation Dispute Resolution System (PDDRP) This has been a great victory for Registries, which, in any case, they were not particularly thrilled with the concept of the PDDRP. The Board did not seem to agree with most of the GAC’s recommendations regarding the PDDRP, and asked for further clarification in some particular issues. |
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