In the midst of ICANN's public comment period debate concerning the Rights Protection Mechanisms afforded to trademark owners in the new gTLD era, Judge Alex Kozinski for the United States Court of Appeals for the Ninth Circuit, provided answers to many issues that currently are part of the debate within ICANN. By applying the "Nominative Use' doctrine in domain names and by insisting on the boundaries of protection trademarks should receive in the Domain Name Space, Judge Kozinski put to rest how a trademarked term may be used in the context of domain names and helped define the boundaries of protection trademark owners are entitled to in the online environment.
In Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, et al. No. 07-55344 (9th Cir. July 8, 2010) a unanimous panel strictly applied the 'nominative use' test as was established by Judge Kozinski in New Kids on the Block.
The case concerned a couple - the Tabaris - who operated their auto-broker business as Fast Imports. The defendants assisted consumers in buying Toyota LEXUS cars as well as cars of other brands at the lowest possible price. The Tabaris offered their business through two domain names - buy-a-lexus.com and buyorleaselexus.com - both of which were the subject of the dispute. Toyota asserted that the use of these domain names infringed their trademarks and the Tabaris argued that the use fell under the 'nominative use' doctrine. The district court agreed with Toyota, forbidding the defendants from using "any [...] domain name, service mark, trademark, trade name, meta tag or other commercial indication of origin that includes the mark LEXUS". The Ninth Circuit disagreed and reversed the decision in light of the ‘nominative fair us’e doctrine and First Amendment concerns.
Judge Kozinski applied the three-part ‘nominative use’ test he established in New Kids on the Block, asking whether "(1) the product is 'readily identifiable' without use of the mark; (2) defendant uses more of the mark than necessary; and, (3) defendant falsely suggests he is sponsored or endorsed by the trademark holder". The Ninth Circuit found that all three part of the nominative use test are applicable and confirmed that the use of the domain names by the defendants were actually protected by the First Amendment.
The Ninth Circuit seeking to examine consumer confusion correctly mentioned that in such cases we should not be looking at all consumers. Instead, Judge Kozinski said: "In performing this analysis, our focus must be on the "reasonably prudent consumer" in the marketplace. The relevant marketplace is the online marketplace, the relevant consumer is the reasonably prudent consumer accustomed to shopping online; the kind of consumer who is likely to visit the Tabaris' website when shopping for an expensive product like a luxury car. Unreasonable, imprudent and inexperienced web-shoppers are not relevant".
The Court continued: "The injunction here is plainly overbroad—as even Toyota’s counsel grudgingly conceded at oral argument —because it prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement. The Tabaris are prohibited from doing business at sites like independentlexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn’t believe Toyota sponsors the websites using those domains. Prohibition of such truthful and non-misleading speech does not advance the Lanham Act’s purpose of protecting consumers and preventing unfair competition; in fact, it undermines that rationale by frustrating honest communication between the Tabaris and their customers.”
Further, the Ninth Circuit upheld the importance of the First Amendment in the context of trademark law stating that “Speakers are under no obligation to provide a disclaimer as a condition for engaging in truthful, non-misleading speech”. Judge Kozinski, even asserted that thousands of sites make ‘nominative use’ and, contrary to the way consumers are portrayed under ICANN’s trademark policies, in reality consumers are both sophisticated and not easily mislead. “On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder: You can preen about your Mercedes at mercedesforum.com and mercedestalk.net, read the latest about your double-skim-no-whip latte at starbucksgossip.com and find out what goodies the world’s greatest electronics store has on sale this week at fryselectronics-ads.com. Consumers who use the internet for shopping are generally quite sophisticated about such matters and won’t be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain”.
Judge Kozinski very aptly asserted that “a large expenditure of money [on behalf of big brand owners} does not in itself create legally protectable rights”. And, he continued “Indeed, it is precisely because of Toyota’s investment in the Lexus mark that ‘much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to [Lexus] by using its trademark”.
“It is the wholesale prohibition of nominative use in domain names that would be unfair. It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act.”
Well, here we have it. Judge Kozinski really provided answers to many of the debatable issues concerning the use of domain names. Trademark infringement in domain name disputes is not as clear-cut as ICANN, WIPO or the trademark community wants to make it look like. Nominative use is a basic principle, which, if not appropriately addressed, can raise serious free speech concerns.
The ICANN community should really pay attention to this ruling and should learn from the excellent reasoning of Judge Kozinski. This decision is really a victory for many legitimate domain name holders who lose their domain names, despite the fact that their use is protected under the ‘nominative use’ doctrine.
Judge Kozinski did not seem impressed by the argument that brand owners spend a lot of money protecting their brands and therefore should be granted exclusive rights to all domain names that incorporate their trademarked term; and, nor should we!
The Morality and Public Order Objection (MAPO)
In reality, MAPO constitutes the most problematic issue within DAG. Its problem has two dimensions: first, the concept of ‘Morality and Public Order’ has been arbitrarily ‘borrowed’ by the Paris Convention for the protection of Industrial Property, which states in article 6(B)(iii): “Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: (iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.”
ICANN has taken this provision completely out of context by inserting it within DAG, failing to consider the following: not all domain names are trademarks, therefore the Convention has no jurisdiction; and, more importantly even if it were to have jurisdiction, the Paris Convention affords each state to determine its own standards on Morality and Public Order. On the contrary, ICANN seeks to assign an independent panel. International law has refrained from seeking to establish international standards on morality and public order and historically this right has always been associated with the right of sovereignty. The connotation of the term is so subjective, that morality and public order can simply not be compartmentalized into specific standards.
We feel that ICANN fails to understand the dangers that such a provision will create and its impact upon fundamental constitutional rights and civil liberties. Assigning the International Chamber of Commerce (ICC) – a consortium of business or as their website claims “the voice of world business championing the global economy as a force for economic growth, job creation and prosperity” is troublesome and manifests a great amount of ignorance on the nature of morality and public order disputes. MAPO issues cannot be determined according to business practices or rationales; they are domains of national states.
Moreover, the criteria ICANN will ask these panels (which we are still unaware of the way they will be composed) to apply are also problematic: “Incitement to or promotion of violent lawless action; • Incitement to or promotion of discrimination based upon race, color, gender, ethnicity, religion or national origin; • Incitement to or promotion of child pornography or other sexual abuse of children; or• A determination that an applied-for gTLD string would be contrary to equally generally accepted identified legal norms relating to morality and public order that are recognized under general principles of international law.”
How can a mere domain name registration ‘incite’ anyone to do anything? The concept of incitement incorporates that of intent and even in the most outrageous domain name registration we cannot possibly find intent. The only way to determine whether a domain name registration incites people to commit an unlawful act would be to also check content. In Brussels, NCUC raised this very comment with no convincing response. I would, therefore, like to ask ICANN to produce to the wider community examples of names that incite users to commit unlawful acts.
I would like, therefore, to suggest the following:
A ‘review panel’, limited to only provide recommendations about names. The panel will be comprised of experts in international/criminal law, will be divergent to correspond to issues of geopolitics, religion, etc and will provide recommendations that the applicant may use before the European Court of Human Rights or the International Criminal court (depending on the basis of the objection – human rights vs criminal activities). Panels will have to be composed according to geography, cultural divergence and will not be associated with any business interests but will represent the interest of states/regions and will not answer to business dogmas.
Some gTLDs will not be created for commercial purposes so the ICC is not the appropriate forum for morality and public order determinations. International courts, on the other hand, are. They constitute the only bodies that we can turn to for such delicate and controversial issues. I am surprised that the experts ICANN claims to have consulted have not suggested International courts for this kind of disputes.
I would like to urge you to think very carefully when implementing this mechanism and the potentially detrimental effects it will have on the DNS and the Internet in general.
DAG4: Comments on the Trademark Clearinghouse, the Uniform Rapid Suspension System and the Post-Delegation Dispute Resolution Process
Comments on the Trademark Clearinghouse, Uniform Rapid Suspension System and Post-Delegation Dispute Resolution ProcedureFirst of all, I would like to welcome the opportunity of submitting comments in relation to the Trademark Clearinghouse, the Uniform Rapid Suspension System (URS) and the Post-Delegation Dispute Resolution Policy (PDDRP).
Trademark ClearinghouseOverall, the Trademark Clearinghouse (TMC) is a good step towards a more efficient, centralised and coherent registration culture and I would like to congratulate ICANN for adhering to the vision and respecting the work of the Special Trademark Issues (STI) team in relation to the Trademark Clearinghouse. However, at the same time, there are some points within the Draft Applicant Guidebook (DAG4) that, if not addressed, could potentially create various problems for ICANN, the non-commercial users and the wider Internet community.
To this end, I would like, in general, to draw your attention to some concerns I feel should be either clarified, be re-worded or omitted.First of all, the initial and original purpose of the TMC was neither to create nor to confer any new rights upon trademark owners. Yet, according to the version that is incorporated in DAG4, the TMC will also be validating marks and this validation will subsequently be used as a justification in both the URS and the PDDRP. The TMC should not be allowed to be used as a validator for marks, which informally allows the TMC to acquire the same status as that of courts. Such an allowance gives the TMC power beyond its intended purpose and original mandate. I would, therefore, like to recommend that the term ‘Trademark Clearinghouse- validated marks’ is removed from all the various parts that is being mentioned in the TMC, the URS and the PDDRP.Another crucial issue that is missing from the TMC is a provision that allows trademarks to be classified in classes, mirroring the International Classes of Goods and Services. This is a crucial element, as this service will compensate for similar and identical trademarks that under traditional law co-exist harmoniously. It will especially be important for small and medium-sized enterprises (SMEs) and for trademark owners in developing countries. The International Classes of Goods and Services is mentioned in the Trademark Notice, but should be inserted within the main body of the TMC. I suggest that it is incorporated in section 5, “Criteria for Trademark Inclusion in Clearinghouse” before the paragraph beginning with “Registrations that include top level extensions … would not be permitted in the Clearinghouse)”.Other, more specific issues that we would like to draw your attention to include:
Page 2: “For Sunrise services – Registries must recognize all text marks: […] iii) that are protected by a statute or Treaty currently in effect on or before 26 June 2008”.
I would like to ask ICANN to clarify to which marks ‘protected by Treaty’ it refers. The only Treaty that I can think of in relation to the protection of marks is the 1981 Nairobi Treaty on the Protection of the Olympic Symbol. This Treaty, however, does not seek to protect the name ‘Olympic’ per se rather the whole icon of the Olympic mark along with its symbol and its association with games. (“Any State party to this Treaty shall be obliged, subject to Articles 2 and 3, to refuse or to invalidate the registration as a mark and to prohibit by appropriate measures the use, as a mark or other sign, for commercial purposes, of any sign consisting of or containing the Olympic symbol, as defined in the Charter of the International Olympic Committee, except with the authorization of the International Olympic Committee. The said definition and the graphic representation of the said symbol are reproduced in the Annex.” Article 1 of the Treaty). I would like to state that the term of Olympic, by itself and without any association to the Games, is a word associated with the tradition and culture of Greece and this should be taken into consideration when seeking to protect it beyond its original scope. (http://www.komaitis.org/1/post/2010/06/olympic-a-greek-word-the-mistake-the-international-olympic-committee-makes.html)
Page 3: “As set forth more fully below, there had been some suggestions that the role of the Clearinghouse be expanded beyond trademarks rights and the data that can be submitted be expanded beyond trademarks and service marks. As described below, there is no prohibition against the Trademark Clearinghouse Service Provider providing ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database”.
This is contrary to what the STI recommended; although it was accepted that the TMC provider may provide ancillary services, the STI envisioned and made clear that such services should be directly related only to trademarks (common law marks, etc). It was decided that all other intellectual property rights fall outside the scope of the Clearinghouse and therefore should not be included. (“As set forth more fully below, although there has been some suggestion that the role of the Clearinghouse be expanded beyond trademark rights and that the data which can be submitted be expanded beyond trademarks and service marks, after careful consideration, these suggestions are not part of this proposal largely because they are at odds with the core purpose of the Clearinghouse, which is to facilitate cost effective and efficient data validation, maintenance and transmission, STI RECOMMENDATION, pp.4-5). I would like to recommend therefore the removal of this section.Page 5: “Registrations that include top level extensions such as “icann.org” as part of the trademark or service mark will not be permitted in the Clearinghouse regardless of whether a trademark registration has issued or it has been otherwise validated or protected as a trademark (e.g., if a trademark existed for icann.org, icann.org would not be permitted in the Clearinghouse)”.
This provision appears to be discriminating against valid trademark registrations and fails to take into account contemporary business trends. Many businesses, especially SMEs, are established and they operate solely online. Such businesses hold valid trademark registrations and national Trademarks Offices (including those of the US and the UK) have acknowledged and have produced guidelines for such trademarks. I do not see the rationale behind such an exclusion and I would request ICANN to provide the community with some clarification on why such trademarks cannot be included in the TMC.
The Uniform Rapid Suspension System (URS)Overall, the URS model adheres to the vision of the STI to create a rapid system for the resolution of blatant and clear-cut cybersquatting cases. However in some instances, the new document incorporated in DAG4 departs from the language and wording of the STI model.
One of the issues that is of great concern, is the replacement of the phrase “Safe Harbors” with “Defenses”. The February 2010 revised URS document, mentioned the following: “The GNSO-STI Model called these Safe Harbor Provisions. Further independent analysis suggests these bullets may be more accurately termed as defenses”. I would request ICANN to produce to the community this independent analysis and elaborate on the change of terminology. I would like to further recommend that the term ‘defenses’ be substituted by the term ‘absolute or complete defenses’, which etymologically is closer to the original term “Safe Harbors”.
On more specific issues, I would like to draw your attention to the following issues and suggest some new wording and/or deletions in the current language of the URS.
Paragraph 1.2 (f) states: “A description of the grounds upon which the Complaint is based setting forth facts showing that the Complaining Party is entitled to relief, namely: (i) that the registered domain name is identical or confusingly similar to a mark in which the Complainant holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; (ii) and that the Registrant has no legitimate right or interest to the domain name and; (iii) the domain name was registered and is being used in bad faith.”.
I recommend this section to be amended as follows: “A description of the grounds upon which the Complaint is based setting forth facts showing that the Complaining Party is entitled to relief, namely: (i) that the registered domain name is identical or confusingly similar to a mark in which the Complainant holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; and (ii) that the Registrant has no legitimate right or interest to the domain name; and (iii) the domain name was registered and is being used in bad faith.”Paragraph 2 “Fees”, paragraph 2 states: “A ‘loser pays’ model has not been adopted for the URS. Given the nature of expected disputes through this mechanism, it is thought, more often than not, that no response to complaints will be submitted and the costs of recovering the fees actually will exceed their value”.
The way this sentence reads appears as if the URS is instructing its Examiners to view URS disputes under a presumption of guilt for the Respondents, which is totally unfair and against due process. We really cannot anticipate the volume of responses that will be filled under the URS. I, therefore, strongly recommend that the wording “it is though, more often than not, that no response to complaints will be submitted” is removed.
Paragraph 4 “Notice and Locking of the Domain”: This section requires Registry Operators to respond to the decision of a URS panel by ‘locking’ the domain name.Asking Registry Operators – instead of Registrars – to perform such an action is highly problematic. The registration system is hierarchical and involves Registrants, Registrars and Registries. Registries are not directly related with Registrants and use Registrars as their intermediaries to provide domain name services. Under the current language of section 4, it is not the job of Registries to proceed to the ‘locking’ of the infringing domain name, rather that of Registrars (who will naturally notify Registries). The current language bypasses one significant layer in the Registration hierarchy – that of Registrars and is contrary to the way the UDRP operates in this respect. We believe that Registrars should be the point of contact of the URS Examiners for the following reasons: (i) Registrars have existing procedures (as used in the context of the UDRP) in place to perform similar functions; (ii) Registrars have a direct relationship with Registrants, whereas Registry Operators have not; (iii) Registrars already have customer services that seek to assist Registrants.
Paragraph 4.3. states: “All Notices to the Registrant shall be sent through email, fax (where available) and postal mail. The Complaint and accompany exhibits, if any, shall be served electronically. The URS Provider shall also notify the registrar of record for the domain name at issue via the addresses the registrar has on file with ICANN”.
For purposes of clarity, this section should be split in two sections, namely: Paragraph 4.3.: All Notices to the Registrant shall be sent through email, fax (where available) and postal mail. The Complaint and accompany exhibits, if any, shall be served electronically.” And, Paragraph 4.4.: “The URS Provider shall also notify the registrar of record for the domain name at issue via the addresses the registrar has on file with ICANN.”
Paragraph 5 “The Response” section 5.4 (c) states: “Any defense which contradicts the Complainant’s claims”.This is a mistake. Domain name rights might exist independently and separately from the Complaint’s rights and, thus, there is no need to respond to such a defense. Section 5.4. (c) should be removed.
Paragraph 5 “The Response” section 5.4: We suggest that we add here another section (e) entitled: Absolute/Complete Defenses.Paragraph 5 “The Response” section 5.8 (b) states: “The domain name sites operated solely in tribute to or in criticism of a personal or business that is found by the Examiner to be fair use”.Fair use constitutes an affirmative defense and as long as the Registrant is able to provide evidence of such use, the Examiner should accept it unwittingly. The language of this section implies that the proof of fair use lies to the discretion of the URS Examiner. This is against due process and gives URS Examiners with too much discretionary power. I, therefore, recommend that the phrase: “that is found by the Examiner” be removed.Paragraph 5.9: It appears that there is a grammatical error and the word ‘NOT’ is missing. The sentence should read: “Other considerations that are not examples of bad fair for the Examiner”.Paragraph 12 “Appeal” in section 12.2. states: “The fees for an appeal shall be borne by the appellant. A limited right to introduce new admissible evidence that is material to the Determination will be allowed upon payment of an additional fee […]”.Making the introduction of new evidence contingent upon an additional fee is unfair and there is no rationale behind it. As long as the appellant pays the required fees for an appeal, there is really no justification for making new evidence contingent upon the payment of a fee. ICANN should waive this additional fee requirement.Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP)On the issue of the PDDRP, I would like to stress that the process of implementing such a dispute resolution model has not been discussed to the extent that other trademark protection mechanisms have and there are some crucial questions that are still awaiting answers. The PDDRP has not been part of the same consultation process as compared to the Trademark Clearinghouse and the URS; rather, it was a proposal submitted by the Implementation Recommendation Team (IRT), it was not part of the STI’s mandate and, therefore, it is not part of ICANN’s multi-stakeholder model.
One of the most important issues concerning the PDDRP, which is also of great concern, is the following: Considering that a PDDRP action is successful and that the ultimate sanction is imposed upon a Registry, i.e. its termination, what will be the processes allowing Registrants to vindicate their rights? How do ICANN and the PDDRP envision that the rights of legitimate Registrants will be secured? What mechanisms are in place? What about the future of Registrars? We believe that failure to provide sufficient answers to this question indicates that the PDDRP is pre-mature and should not be adopted.
Turning on the more substantive issues of the PDDRP, my concerns are the following:
Paragraph 3 “Language” states: “The language of all submissions and proceedings under the procedure will be English”.
This is too unfriendly and there is simply no justification why the language of the proceedings should be conducted in English, especially within ICANN’s multi-cultural and multi-language framework. What about IDN Registry Operators? What about Registry Operators in the developing world? ICANN should be striving towards creating procedures that are welcoming to all its participants and this achieves completely the contrary. I urge you to remove this rule and expand the availability of languages.
Paragraph 5 “Standing” states: “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that […]”.Although in the Trademark Clearinghouse there is distinction between registered and unregistered marks (in the latter case allowing only common law court-validated marks), in the context of the PDDRP such a distinction is not made. I would like to draw ICANN’s attention to the danger that such an inclusive provision will create. Almost every word is or can be a common law trademark. Allowing such trademarks to be part of the PDDRP dispute gives the trademark community the opportunity to turn against Registries for every single word that is part of our vocabularies. It is unrealistic to expect Registry Operators to provide due care to terms such as ‘fortune’, ‘people’, ‘time’ etc, which are common words and in some very few jurisdictions happen also to be trademarked terms. We recommend, therefore, that the same distinction that is part of the TMC be incorporated in the PDDRP.
Paragraph 9 “Threshold Review” section 2 states: “The Complainant has asserted that it has been materially harmed as a result of trademark infringement”.Although we understand the rationale behind it, we believe that the definition of material harm may prove challenging. By using this term, the PDDRP is recognizing abuse that does not require actual trademark infringement or threats of trademark infringement. I would like to ask ICANN to provide the wider Internet community with information as to the interpretational boundaries of material harm.
Paragraph 11 “Reply” states: “The Complainant is permitted ten (10) days from Service of the Response to submit a Reply addressing the statements made in the Response showing why the Complaint is not “without merit” […]”.
We would like to ask ICANN to explain what is the rationale for the PDDRP to provide two opportunities to trademark owners for a reply. On its face, this provision appears not to follow the paradigms of ICANN’s dispute resolution mechanisms, i.e. the UDRP and the URS.
Paragraph 14 “Expert Panel”: According to the PDDRP, one-member panels will be the default rule for PDDRP disputes (unless either of the parties requests a 3-member one). Given the importance and seriousness of such disputes, I would like to suggest that a three-member panel default rule should be enforced.
Paragraph 16 “Discovery” states: “Whether and to what extent discovery is allowed is at the discretion of the Panel, whether made on the Panel’s own accord, or upon the request from the Parties”.
Discovery is an important aspect of every adjudication process. Considering the seriousness of this dispute, discovery should not be vested upon the discretion of the panels, but should be an option that operates irrespective of the views of PDDRP panels.
Paragraph 20 “The Expert Panel Determination” states: “While the Expert Determination that a registry operator is liable under the standards of the Trademark PDDRP shall be considered, ICANN will have the authority to impose the remedies, if any, that ICANN deems appropriate given the circumstances of each matter”.
Why is ICANN afforded such discretion, especially given the fact that ICANN is not a party of the PDDRP dispute? This raises significant issues concerning privity of contract that we have already raised with ICANN and we have not received any response.We, generally, believe that the PDDRP is an issue that should be discussed further and to more detail. This is a dispute that can have considerable impact and potentially upset the whole registration culture. To a certain extent, it also raises issues of intermediary liability and directs the registration of domain names towards a more controlled system of content. Free speech and expression might be in jeopardy, unless due consideration is paid to the effect that such a dispute can have.
Comments for the attention of ICANN's Accountability and Transparency Team on the Formation of the IRT
ICANN was originally created as a technical entity responsible for the day-to-day management of the DNS. We would like to draw the attention to Esther Dyson – first chairwoman of the ICANN Board – who stated: “The White Paper articulates no Internet Governance role for ICANN, and the Initial Board shares that (negative) view. Therefore, ICANN does not ‘aspire to address’ any Internet Governance issues; in effect, it governs the plumbing, not the people [emphasis added]. It has a very limited mandate to administer certain (largely technical) aspects of the Internet infrastructure in general and the Domain Name System in particular.”
Domain names, however, often raise legitimate trademark concerns and ICANN, as the ‘ex machina deus’ of the Domain Name System (DNS), carries the responsibility to respond to these concerns and provide solutions. Responding though to such challenges is completely different to suggesting processes that fall outside ICANN’s scope, are biased and do not seek to nurture ICANN’s multi-stakeholder governance culture.
The Accountability and Transparency Review Team (ATR) ICANN established is a positive step towards ensuring an environment that sees ICANN adhering to its original mandate for openness and accountable procedures. It is in line with ICANN’s promise for bottom-up policy development within a multi-stakeholder environment for the management of the domain name system. The IRT recommendations constitute a true testament and exemplify the problematic and non-inclusive way in which ICANN has approached trademark issues in the Domain Name System. In this context, ICANN sought to exercise some form of Internet “Regulatory Governance” by governing certain aspects of individual behaviour on the Internet. The Internet community never opposed trademark rights or their legitimate protection. They opposed the re-tasking of ICANN to expand trademark rights in ways trademark law itself does not support. Trademark rights are governed by laws, treaties, legislatures, parliaments and other democratic bodies that are appropriately authorized to protect those rights; they evolve incrementally, through judicial reasoning. ICANN should not have set the precedent of inviting the introduction of new governance policies that cannot be obtained through legitimate means of existing legal regimes.
Formation of the Implementation Recommendation Team (IRT) took place in a non-inclusive and unrepresentative manner.
The first official document informing the GNSO community of the formation of the IRT was in the form of an email, sent by the Intellectual Property Constituency on March 11, 2009. It provided a mere 36 hours for groups to express interest in adding members to the IPC-formed IRT committee. Timely responses by the ALAC to add well-known attorney Bret Fausett and by the Internet Commerce Association to add its president were rejected. Clearly, the views of registrants – be it noncommercial, individual or commercial- were considered irrelevant.
We note that such a focus on the needs of only one constituency, the IPC, is undemocratic and against the traditional values of diversity and multistakeholderism within ICANN. Noticeable absent were those who represent human rights coalitions, free speech and freedom of expression organizations and privacy groups. Also not invited to participate were representatives of domain name registrants – those who will actually be impacted by these new rules. These organizations and individuals would have brought to the table valuable –critical – information about the balance of trademark law and its limits as regards fair use, free speech and freedom of expression.
A. The IRT Team Attempts to Rewrite GNSO Developed Policy When the Intellectual Property
Rights Constituency did not get everything it wanted in the GNSO policy development process it created the IRT to re-open and re-negotiate the issue to its liking. The GNSO carefully considered the issue of protecting trademark rights in new top-level domains and included GNSO negotiated solutions in its final recommendations. In particular, the GNSO Working Group “Protecting the Rights of Others” Working Group was tasked with this objective of protecting trademarks. This working group was not able to come to agreement and support the proposals of the Intellectual Property Constituency that were re-opened by the IRT Team. Re-opening these issues and throwing out the negotiated consensus that was reached between all stakeholders, undermined ICANN’s claim of “bottom-up” policy-making that involved all stakeholders equally.
B. The IRT Team Operated without Transparency
Contrary to the practices on which ICANN committees are based, the IRT Team provided no information about its meetings, and no proceedings of the development of its work. This ‘Masonic’ approach was worrying, put a big question mark to the way substantive policy issues have been approached, and set a precedent for a one-sided approach to policy which ICANN should never have followed.
C. ICANN Provided Travel Support and Expenditures for the World’s Largest Companies and IPC-Members
It is the tradition of the GNSO that individual constituencies pay the cost of their representatives to participate in the ICANN process. At great cost and difficulty, the NCUC has sent its members to participate for years. During the IRT process, ICANN clearly signalled its support for a single constituency in the GNSO in the negotiation of this issue, a constituency comprising the world’s largest and wealthiest companies. Asking Internet users to foot the bill for the creation and sale of this one-sided policy proposal which benefits a single interest (large brand owners) to the detriment of all others simply isn’t fair.
ICANN should ensure that such procedural mistakes are not repeated. ICANN should ensure that from now on and in the future it operates under a transparent, open, inclusive and bottom-up process of policy making and development.
Views are my own and my own only!