The long-awaited GAC ‘scorecard’ on the protection of trademarks was released yesterday and, unfortunately, it did not come as much of a surprise. Following the direction that the USG ‘scorecard’ set in the beginning of the month, the recommendations of the GAC focus primarily on three rights protection mechanisms: the Trademark Clearinghouse (TMC), the Uniform Rapid Suspension System (URS) and the Post-Delegation Dispute Resolution Process (PDDRP). Although the recommendations for the TMC can objectively be negotiated as long as the official line remains that the creation of such a database will not confer any additional rights to right owners, it is the attempt of the GAC to change the substantive and procedural aspects of the URS that is of more concern.
The GAC’s advice in relation to the URS consists of the following elements:
· The complaint should be simplified by replacing the 5000 word free text limit + unlimited attachments with a simple pro forma standardised wording with the opportunity for not more than 500 words of freeform text and limit the attachments to copies of the offending website.
The idea of providing a standardised wording is not a good one, especially when it comes to disputes concerning two conflicting rights. Disputes vary both in nature and content and, despite the fact that the URS is meant to be used for those clear-cut cases of abuse, this recommendation is based on the arbitrary assumption that all types of disputes will inherently be the same. A standardised format will be detrimental in the delivery of justice. We need to bear in mind that a URS examination (in a similar manner to the UDRP) is based solely based on the documents submitted by the parties and panels make their determinations based on the content of these very submissions. How will a panel be allowed to make conclusive determinations if a standardised format is only permitted? I appreciate that the URS is meant to be used for those types of activities that on their face they appear egregious, but for the panel to determine the harmful activity parties should be permitted to produce their contentions, which will not be able to do if a standardised form is adopted.
· Decisions should be taken by a suitably qualified ‘Examiner’ and not require panel appointments.
Have we not learned anything from the UDRP and the potential bias that this recommendation will invite? If one thing is clear after ten years of UDRP adjudication is that the way panels are assigned to decide individual cases is highly problematic and that there is not a mechanism to hold panels accountable for the decisions they reach. When the same panellists are used, the possibility for bias becomes rife (http://www.dncrunch.com/?p=3199). But, at least the UDRP still operates on the basis that panels are assigned from a pool of panellists. Now, the GAC wants to make this rule redundant and suggests that a suitably qualified ‘Examiner’ will be deciding the case. This recommendation will make someone very rich and will allow the trademark community to ‘play’ and abuse the notion of adjudicators’ impartiality and independence.
· Where the complaint is based upon a valid registration, the requirement that the jurisdiction of registration incorporate substantive examination should be removed
This recommendation is reasonable to the extent that all trademark registrations, despite whether the jurisdiction granting them provides substantial review or not, can be subject to a URS process. This can prove to be disadvantageous for mark owners, whose jurisdiction requires a more substantive review, but at the same time respects the individuality of every trademark registration system. As long as mark owners that fail to get their trademarks in their own jurisdiction do not seek to play the system by attempting to register them in less-demanding jurisdictions, then this recommendation does not add much.
· If, as 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. The examination of possible defences of default cases according to para. 8.4 (2) would otherwise give an unjustified privilege tot eh non-cooperating defendant.
This recommendation has two problems: first of all, it designs a system based on the presumption of default (“as expected in the majority of cases”). No one, including the GAC, can determine whether or how many defaults will take place; similarly, no one can possibly pre-determine the reasons for the default, which brings me to the second problem. Default does not always mean bad faith. Despite the efforts of UDRP panels to establish such a normative rule, the simple fact remains that default can be attributed to a variety of reasons and, unless they are exhausted, bad faith is not to be considered the main reason behind default. This provision will be highly problematic for those registrants that are located in remote and isolated areas, where Internet connections are neither as available nor as inexpensive. Especially, governments of developing countries should object to this provision, as their registrants might find it difficult to receive the complaint and respond in the limited time of 14 days, which is currently recommended.
· The standard of proof should be lowered from ‘clear and convincing evidence’ to a preponderance of evidence.
This recommendation makes me wonder whether the GAC has really considered its potential implications. A preponderance of evidence means that it is most likely that not that the fact that the complainant asserts is true. This means that even if there is an indication that a domain name might be infringing a trademark, then the URS can be activated; but, there also might be a possibility that this is not the case. Why then drag the registrant into this process based only on a possibility and not on a fact? This provision, coupled with the standardised form and the default, will ensure that a trademark owner will always prevail in the URS.
· The ‘bad faith’ requirement in paras 1.2(f), 1.2(g) and 8.1(c) is not acceptable. Complainants will in only rare cases prevail in URS proceedings if the standards to be fulfilled by registrants are lax. Correspondingly, the factors listed in paras 5.7(a) (‘bona fide’) and b) ‘been commonly known by the domain name’ can hardly allow a domain name owner to prevail over the holders of colliding trademarks.
What the GAC seems to be suggesting here is that no standards should apply for the determination of cybersquatting. If this is the case (and it appears to be so), then we are talking about a dispute resolution mechanism that will afford intolerable levels of discretion to the ‘Examiner’ to make final determinations. The GAC misunderstands the nature of the bad faith provisions. In the UDRP (and in similar proceedings) the complaining party carries the burden of proof, who has to prove that all three elements (identical or confusingly similar, no rights and legitimate interests and bad faith registration and use) are applicable. The list of bad faith factors is only indicative and is meant to provide the panel with some guidance as to how to determine bad faith. Now, the GAC wants to abandon this direction and give the freedom to the Examiner to make any determinations it wants without any guidance. This does not assist in the creation of a ‘Uniform’ system, but contributes to a system that will be based on arbitrary justifications and reasoning.
Similarly, the GAC wants to jettison the ‘fair use’ provisions within the URS, the only tool at the disposal of domain name holders to prove legitimate rights on the domain name. And, the justification offered by the GAC is simply nonsensical.
· A ‘loser pays’ mechanism should be added.
This recommendation is problematic for various reasons. First and foremost, the URS is a rapid review process. It is not a full and robust review of the underlying facts. Conclusions are rapid, thus mistakes will inevitably be made. Losing the domain name is bad, but the financial consequences of a URS action on the registrant can be disastrous.
The STI anticipates that a URS action will run about $500 — far cheaper than court, and about a third the price of a UDRP action. While this is considered a small amount of money for a large trademark owner, it is an enormous amount of money for a small businesses, an NGO, and an individual in any part of the world. A loss, even for a good faith registration, could be financial disastrous.
The 'Loser Pays' is inherently pro-complainant, and would especially favor big brand complainants who can outspend any individual legitimate registrant.
· There should be a clear rationale for appeal by the complainant. The time for filing an appeal in default cases must be reduced from 2 years to not more than 6 months. In addition, the examination of possible defences in default cases according to para 8.4 (2) means an unjustified privilege of the non-cooperative defendant.
There are three issues that the GAC addresses here and all three seek to work only to the advantage of the trademark owner.
a. The GAC suggests that the complainant should be given the right of an appeal: This would be fine, if both parties were subjected to the same deadlines and limitations. But, the truth is that complainants and domain name holders are asked to operate on completely different timeframes. The complainant, for instance, has all the time in the world to prepare the complaint before submitting it; the respondent has only 14 days to do what the complainant might have taken months to prepare. Moreover, the appeal process is meant to provide relief to the losing party and this is what the Applicant Guidebook suggests (12.1 Either party shall have a right to seek a de novo appeal of the Determination based on the existing record within the URS proceeding for a reasonable fee to cover the costs of the appeal). Why is it necessary to make such an explicit mention to the right of the Complainant to appeal?
b. The time for filing an appeal in default cases must be reduced from 2 years to not more than 6 months: This reduction is arbitrary and too short. A good compromise would suggest for the filing of an appeal in default cases to be reduced from 2 years to not more than 1 year.
c. In addition, the examination of possible defences in default cases according to para 8.4 (2) means an unjustified privilege of the non-cooperative defendant: Once again, the GAC here operates on the assumption that the reason for default is bad faith. Many respondents appear non-cooperative not because they are acting in bad faith, but because there are such provisions that indiscriminately equate default with bad faith, thus limiting the chances of a successful response. At the same time, what the GAC deems as non-cooperative, can be reasons for the respondent not being able to respond on time due to various technical or personal reasons.
· A successful complaint should have the right of first refusal for transfer of the disputed domain name after the suspension period so that the complainant is not forced to pursue a UDRP proceeding to secure a transfer.
The original justification of the URS as introduced by the IRT was that the distinct feature of the URS was its remedies. According to the IRT report:"The URS is intended to supplement and not replace the UDRP. They are separate proceedings with distinct remedies. The URS is designed to provide a faster means to stop the operation of an abusive site. The UDRP is designed to result in the transfer of the abusive domain name."
Seeking to allow the transfer of the domain name under the URS becomes problematic at various levels. First of all, the whole foundation of the URS's justification (and the way it was 'sold' to the Internet community) collapses. Secondly, by allowing transfer under the URS a variety of issues emerge: what will be the compatibility between the URS and the UDRP? What will the differences be between the two mechanisms?
If the URS is not meant to be a process that invites substantive evaluation but rather seeks to examine superficially the alleged infringement, then allowing a remedy that seeks transfer of the domain name is against due process and basic principles of justice.
Finally, transfer of the domain name under the URS was never part of the original IRT recommendation.
If you think that the issue of trademark protection in the new gTLDs was resolved, well you – like me – might be in for a big surprise. I knew that the recommendations of the Special Trademark Issues (STI) team were not at the satisfaction of the trademark community and I knew that trademark owners had approached ICANN’s Governmental Advisory Committee (GAC) as the last resort in actually getting what they wanted: overbroad, extra, uber(call it what you want, it is the same) protection for trademarks under the new gTLD programme. What, however, happened over the past few days and almost a month prior to the meeting between ICANN and the GAC is that the interaction between the GAC and the trademark community became more formalised and more institutional.
According to the World Trademark Review, the GAC has appointed UK’s GAC representative, Mark Carvell, ‘to collect community thoughts on this topic’. Now, here is the catch: repeating the same mistake the Implementation Recommendation Team (IRT) did almost two years ago, Mr. Carvell appears to have only summoned the industry in London last Friday to hear their views on what they would consider as an appropriate solution to the trademark conundrum. Vodafone, BBC, Richemont, BSkyB International and Shell were amongst the participants – and they all claimed that the only compromise they would consider would be going back to the IRT recommendations. To avoid any misunderstanding, the IRT is not a compromise nor should it be considered as such. I have repeatedly said that the problem with the IRT recommendation was that it was totally biased, disrespectful of the rights of legitimate domain name holders and users and an unnecessary document, parts of which were re-writing trademark law.
In theory, I should not really care about what the trademark community is trying to do. The IRT is so very expansive of trademark rights that, if we were to go back to it, it would feed my research for many years. Ethically and academically though I have a big problem. I never advocated against protecting trademarks in the Internet and I have been in favour of putting forward policies that would cure the issue of cybersquatting – past, present and future. But, the IRT does so much more – it re-writes trademark law. Over the past couple of years, I have blogged about it, I have discussed it with colleagues and students, I have researched on it and all seem to point to the same direction: the recommendations of the IRT team were biased, unreasonable and against the fundamental principles of trademark law. Do you think it is accidental that courts and legislators do not make any mention on any of ICANN’s trademark polices? It is simply because these mechanisms that are promoted so vociferously by the trademark community are not in compliance with trademark law. Period! So, by rejecting the IRT, ICANN did something right – it at least said no to an expansive approach that is against legal theory and practice. And, by forming the STI, ICANN did another thing right – it put in motion its multistakeholder model and let the community, as a collective body, to decide. (And, before I am accused for saying this because I was a member of the STI, let me say that I say it because of that: I witnessed the effort, the negotiations and the exchange of ideas that took place within this multistakeholder environment. And the STI should be applauded for managing to reach conclusions that all stakeholders- including the Intellectual Property Constituency - signed on to).
But, here is a question that keeps coming on my mind: why wasn’t a wider part of the community invited to the London meeting: academics that could talk about the law and registrants that could share their experience on the bullying they have to suffer from big and powerful brand owners? Why did only big and powerful brand owners make the cut? So, it is not really surprising that the discussion last Friday seemed to be going back to the IRT report.
This whole process manifests one big problem: trademark owners have the money, the resources, the stamina and the political leverage to lobby, and lobby and lobby. Registrants on the other hand do not have the money or the resources to engage in such a campaign, but they do have the stamina. And, what is truly upsetting is that in reality, they actually get to lose much more than trademark owners – they get to lose their right to communicate undisturbed, they get to lose their right to express themselves freely and they get to miss the opportunity of entering the DNS, things that trademark law has so far protected from. Instead, what they get to gain is an unfriendly DNS, bullying and intimidation.
So, here is an idea and I really hope it works: since legitimate registrants do not have the money or the resources to engage in endless lobbying, let’s use the Internet in order to make our voices heard. I would like to encourage everyone who agrees that we should not go back to the IRT and that trademark protection has been resolved through the STI recommendations, to sign on this blog post via the comments’ section. And, I promise that I will do my best to bring this to the attention of ICANN.
At the ICANN meeting in Cartagena, the Governmental Advisory Committee (GAC) made one major mistake: they collectively indicated that the new gTLD process is not ready to roll on because trademark issues are not resolved. But, here is the problem – trademark issues will never be resolved to the full satisfaction of all parties concerned (especially the trademark owners). They cannot.
In the past couple ICANN meetings, GAC finds a new objection to stall the new gTLD process to the frustration of many stakeholders and users– in Brussels it was the Morality and Public Order (MAPO) issue, this time it was trademarks. What this does is that it places an unrealistic burden upon ICANN to come up with recommendations and solutions within a very tight timeframe. The Recommendation 6 Cross-Community Working Group had 90 days. The Special Issues Trademark Team (STI) had a month and a half. It is obvious that the GAC is not ready to accept the addition of new gTLDs (for its own political reasons), but this still begs the question – why now, why so late in the process?
The point is that if the new gTLD process fails, ICANN fails. It is as simple as that. But, especially when it comes to trademark issues, the GAC’s objections can become really problematic. If GAC puts pressure on re-opening the trademark file, they will be negating a process that was based on multistakeholder participation – a model of Internet governance accepted by the community – and will be undermining the legitimate conclusion of the STI.
It took a long time and much effort for the current trademark protection proposals to acquire the desired legitimacy. In the beginning was the illegitimate Implementation Recommendations Team (IRT), which the majority of the community rejected through the public comments. Then came Staff’s proposals, which had their own problems in seriously tackling the issues. And, finally, came the STI – I was a member of this team and I can tell you that the final document was a compromise but a compromise that everyone could live with. The trademark community got the Trademark Clearinghouse, the Uniform Rapid Suspension System and the Post Delegation Dispute Resolution Process. Three new mechanisms dedicated to the protection and presence of trademarks in the DNS. This is significant in that there already are existing processes that protect trademarks and through this new system ICANN was doing more than enough in securing their place in the DNS.
So, what is GAC’s problem? The only thing that is certain that between Brussels and Cartagena the trademark lobbying must have been fierce and systematic. The GAC was brainwashed. But this is not an excuse or our problem. If the GAC wants to raise objections on the basis of trademark protection, then it needs to it needs to hear form the whole community and not just from trademark owners. It needs to conduct research into the existing mechanisms and see how they can be fixed; it needs to provide so much more that the arguments we heard in Cartagena, a mere repetition of the same arguments we hear from the trademark community over the past ten years.
I am concerned about the GAC position. I am concerned because it will further frustrate the community and it proves that governments are inclined to sacrifice a lot in order to please trademark owners. This is truly disappointing from a group that it is entrusted the heave duty to protect the human rights and civil liberties of its citizens.
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!