New generic Top-Level Domain Names (gTLDs) are all about innovation, entrepreneurship and creativity; they are about identifying new entrants, opening up competition and providing the domain name market with the opportunity to explore new means of interaction on the Internet. Equally, new gTLDs are a great opportunity for existing businesses and brands to reconsider their business practices and models and to adapt to new commercial realities and ideals. In both cases, however, it is important that some basic rules and principles are maintained so that terms are not abused, terms are assigned to their rightful owners and, where there are no rightful owners, a robust and fair process is in place to ensure that the assignment of words is done in a manner that does not endanger the Internet, does not confuse consumers or does not obstruct current societal structures.
I, for one, have been a proponent of new gTLDs from the early days of their policy development process within ICANN. I always believed that the existing gTLDs – and mainly the .com space – have created artificial scarcity, which is primarily responsible for much of the cybersquatting and the abuse trademarks experience. I do not share the same fears as those who argue that new gTLDs will create intolerable levels of cybersquatting or will necessitate defensive registrations from brand and trademark owners alike. As for the policy itself, I do not believe it is perfect and I feel that, for certain issues, ICANN could have taken a different direction, but, ultimately I recognize and respect ICANN’S multistakeholder governance structure and the decisions that have come out of it.
Lately, however, something has caught my attention, which can potentially create problems. Almost the same day ICANN opened up its application process, a tiny start-up was granted by the United States Patent and Trademark Office (USPTO) a trademark for .bank (registration number 4085335). What is the problem with this? The problem is twofold: first of all, there is a general principle within traditional trademark law, which instructs that generic terms cannot be trademarked if they are to reflect what the term means. In this context, a company would not be able to register the word coffee and sell coffee. This would provide an unfair competitive advantage to any company and would, most likely, excommunicate all other similar companies selling coffee. Secondly, by granting this application, the USPTO is essentially leaving ICANN and its Governmental Advisory Committee (GAC) with a big problem. Part of the whole exercise regarding the role of the GAC within the new gTLD process related to the GAC’s role; this issue was resolved with the agreement that the GAC would be in the position to provide early advice to any new gTLD application, effectively giving the GAC the right to torpedo and determine the success of an application, which the GAC believes it raises issues of cultural significance or is contrary to national laws. To this end, it is exactly names like .bank that the GAC had in mind when they were pushing ICANN to insert this provision within the Applicant Guidebook: “[The GAC may advise] ICANN that there are concerns about a particular application ‘dot-example’. The ICANN Board is expected to enter into dialogue with the GAC to understand the scope of concerns. The ICANN Board is also expected to provide a rationale for its decision”.
Now, with the USPTO granting trademark rights for .bank, this early warning mechanism becomes superfluous, and multiple rights are created for .bank. On the one side, there are the rights of the trademark owner; on the other, there is the GAC which believes that the term .bank is sensitive enough to interfere and whoever applies needs to go through a scrutiny process; and, finally, there is also the rumoured applicant of .bank – a joint effort made by the American Bankers Association (ABA) and BITS, part of Financial Services Roundtable. So, in practical terms, what the USPTO has essentially done is to provide the opportunity to an independent entity to object the application of .bank by asserting valid trademark rights.
So, this is a mess and a mess that will only get worse unless trademark offices around the world stop granting trademark registrations to .generics. The way things are right now, the GAC may sign off the .bank gTLD to ABA and BITS, but the owner of .bank will have valid claims to stop this application process or at least demand some sort of financial compensation for giving up the name to someone else. And, if he is really pissed off or he wants to retain .bank for his own personal use, he can then sue for trademark infringement. In any case, the trademark owner is the only winner here and both the GAC and the American Bankers should feel very pissed off with the USPTO. At this stage, the only solution is for the USPTO to accept that they screwed up and recall this trademark.
It is not a secret that I have been (and I continue to be) against the requests made to ICANN by the International Olympic Committee (IOC) and the Red Cross for special protection of their names and their variations. I am mainly against because of the problems associated with these types of protection, the potential implications they may have and the fact that any attempt to reserve any names in the Domain Name Space will set a very bad precedent that will be detrimental to the whole new gTLDs experience. Well, the effect of this precedent is right upon us and, once again, ICANN is faced with a big challenge to find ways to accommodate the similar demands of intergovernmental organizations in the new gTLDs space. But, let’s take things from the beginning.
For quite some time now, ICANN has been subjected to a huge amount of pressure by IOC and the Red Cross to protect their names in the new gTLD program. This request, which was also vehemently supported by ICANN’s Governmental Advisory Committee (GAC), was meant to ensure that all the names associated with these two organizations (OLYMPIC, OLYMPIAD, RED CROSS, RED CRESCENT, etc.) are reserved under both the top level and second level domain names. As it normally goes, the justification is that these organizations constitute targets of cybersquatting activities, their non-profit nature (a point which is questionable given their involvement in multi-billion dollar licensing deals) does not allow them to spend money defending their brands as other purely commercial entities do and, in any case, such organizations should receive special treatment especially since Treaties and international commitments provide them with presumed privileges that could justify such levels of protection. Seeking a solution to this issue and given the pressure inflicted upon it, the ICANN Board agreed to initiate a process between the GNSO and the GAC on finding ways to address this issue; in the meantime, IOC’s and the Red Cross’s requests were accommodated – at least partially, as ICANN has committed to reserve their names in the new gTLD space but only for the top level domain names, stating, “the extraordinary step of blocking the requested names at the second level should not be taken as it would deny those with a legitimate interest or rights in registering those names at the second level, e.g., olympic.taxis and redcross.salt.”
I still think that this compromise is problematic and it is not because I don’t believe in the mission of these organizations or what they stand for. My problem is that these organizations are misusing trademark law and international Treaties to receive unprecedented levels of protection, especially when their names (in the case of ‘Olympic’ at least) conflict with other recognized rights, associated with traditional knowledge as well as cultural and geographical identifications. But, ultimately, it is the very dangerous precedent that such policy compensations set.
A recent letter from a number of Intergovernmental Organizations “on the Expansion of Generic Top Level Domains” to ICANN is a case in point. Based on the justifications used by the Red Cross and the IOC, several intergovernmental organizations are requesting ICANN to afford them the same privileges as these two organizations. So, if with IOC and the Red Cross we were stuck between a rock and a hard place, now we are in real trouble. The problem is simple - the argument that all these organizations should be afforded special protection, despite the very valuable work they are doing, is weak and flawed. In the letter, the organizations state that measures to protect their names can “find support in international legal norms”, citing Article 6ter of the Paris Convention for the Protection of Industrial Property, Article 16 of the Trademark Law Treaty and Article 2 of the WTO Agreement on Trademark Related Aspects of Intellectual Property Rights.
It is indeed the case that all these statutes mainly reflect the need for the protection of these organizations; but they are equally being referenced quite widely. In particular, Article 6ter, para. 1(a) states: (a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks [emphasis added], of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view. And, para. 1(c) states: “The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization [emphasis added].” So, here we have provisions that commit to protect the names, abbreviations, flags, etc. of such organizations, but only in relation to trademarks. Neither of these statutes seeks to create or is willing to acknowledge special privileges like the ones being requested from ICANN.
But, the bigger picture here is the position that such pressures place ICANN. ICANN is not a trademark entity and was not created to confirm, amend or re-write trademark law. And, this is essentially what is being asked from ICANN - to interpret old Treaties into the realm of the Internet and, to do so, in a fashion that is not compatible with its governance structure. This is problematic.
It really took ICANN a lot of time to become a body that was not purely seen as a front for trademarks and their protection. The history of the organization is replete with examples of how the trademark lobby has used ICANN as the platform for many expansive policies. But, lately things have changed. For instance, the fact that ICANN resisted the adoption of the Globally Protected Marks List (GPML) is a credit to the organization, since its adoption would place ICANN as the new legislator of trademark law. The fact that such listed never existed and was requested by ICANN to do so is a clear indication of why ICANN should resist meddling with trademarks.
The current requests by all these organizations are not that far away from the GPML idea; they may not be asking ICANN to create something new or novel, but they are asking ICANN to interpret international law instruments and translate them into DNS language. This is not ICANN’s job and ICANN should refrain from engaging in such dialectic. Imagine, for instance, if the World Health Organization were to reserve its abbreviation ‘WHO’. With many existing entities making legitimate use of the word ‘WHO’, it would be contrary to existing trademark law for only one entity to use it. (Examples include the music band ‘The WHO’, ‘Doctor Who’, the biographical encyclopaedia ‘Who’s Who’, etc.). If ICANN complies with this request and continues to grant these privileges, it exposes itself to all sorts of problems. It is time we reconsider the way trademarks fit within the domain name space.
The US Senate Committee on Commerce, Science and Transportation Hearing on ICANN’s Expansion of Top Level Domain Names on December 8, 2001 was all about strategy. The strategy was simple: while the world has its attention turned to the debate on the copyright legislative proposals of the Stop Online Piracy Act (SOPA) and the PROTECT IP Act, let’s have another ICANN hearing and try to re-open trademark protection for new gTLDs. And this time, let’s have a different crowd submitting the testimonies: Mr. Dan Jaffe of the Association of National Advertisers (ANA); Ms. Angela Williams, of the Young Men’s Christian Association of the United States of America (YMCA); and, Ms. Esther Dyson, first ICANN’s chairwoman.
What was heard at the Hearing was not something inspiringly new: brands will suffer and consumers will be confused. A lot was said about defensive registrations, how the Internet is a scary place for trademark and brand owners, how there is a possibility that child porn will proliferate, how cybersquatters can ‘blow us up’, how law enforcement will not be able to do their jobs and how US senators may not be able to register their names. Innovation was questioned in a much unconvincing way and much was argued about the presumed lack of consensus for the new gTLD program.
The new twist in this Hearing was the participation of non-profits, through the YMCA, which was used by the trademark community as the new vehicle to air trademark concerns and as a further attempt to demonstrate that if these organizations’ brands are suffering, then this should be enough to put the new gTLD program on hold. This might have impressed the Senators at the Hearing but it, ultimately, is a really weak argument. Non-profits are not trademark maximalists, especially in the way trademark interests are represented at the ICANN level. Non-profits are entities that protect their marks (not brands), but following the underpinning principles of goodwill, consumer protection, competition, etc. associated with the mark and the services they provide. So, I am not sure whether the YMCA’s testimony represents an understanding for NGOs and non-profits outside the US; in fact I am pretty sure it doesn’t represent the views of many NGOs and non-profits in Europe and, especially, in the developing world.
On the other hand, ANA’s message was simple: the new program is a threat to companies and consumers and it should be stopped. ANA has been particularly involved in this process after the Special Trademark Issues (STI) team recommendations were released, which were based on a consensus that the trademark community did not agree with. This consensus was highly challenged by ANA, on the basis that, since it didn’t reflect the views of the trademark industry and some non-profits, it was illegitimate. No matter what one thinks about ICANN’s consensus policies, these have been in place for many years, a lot of work to more accurately define it has been done and continues at the level of the GNSO, they are part of ICANN’s ecosystem of procedures and, in many cases, have been instrumental in the trademark community winning many policy battles. So, the idea that this consensus is not working is mistaken: it just didn’t work out this time for the trademark crowd.
I was quite puzzled with Esther Dyson’s testimony, especially the part where she argued that “the process of consulting with the public hasn’t really worked” and that she was representing Internet users, who will be confused through this expansion. There are two mistakes Ms. Dyson made: through NCUC for example, users have participated in the process and, for instance, concerns of free speech and freedom of expression (that no one at the meeting even dared to mention) have been addressed to the fullest extent possible within a multistakeholder model. (The difference is that, contrary to other groups, these groups have accepted the results of such multistakeholder recommendations.) And, as for the argument that users will be confused through this process is really not working any more. Users have become more savvy than any other time; by now the majority knows how to use the Internet, what to suspect and what to avoid. The idea that we need stronger intellectual property protection for the users reflects a time when our parents and grandparents were not logging on to Facebook and they thought computers were aliens.
So, what one should take from this Hearing is that the people who actually have been involved in this process, Ms. Fiona Alexander from INTA and Mr. Kurt Pritz from ICANN, both celebrated and gave their vote of confidence to multistakeholder participation. They both correctly insisted on the fact that the new gTLD program was a consensus policy and that its language is an attempt to represent the multistakeholder environment of ICANN. They addressed how all stakeholders participated in the various policy groups and that, although work needs to be done, a lot has happened towards ensuring that ICANN’s work on the new gTLD program reflects its multistakeholder community in a transparent and accountable way. This is a very crucial point and Hearings like this one demonstrate how foreign multistakeholderism is for many US politicians. So, here’s a suggestion: if we wish to have Hearings like this one, let’s do so, at least with an understanding of how ICANN works, where we were and where we are now. Because it turns out that Hearings like the one of December 8, are not constructive at all; they are highly disruptive, in a time when ICANN should be focusing on finalizing and cross-checking everything in order to make sure that the January 2012 launch goes as smoothly as possible.
Non-Commercial Users Constituency Letter - To the Governmental Advisory Committee
September 28, 2011
Chairwoman of the Governmental Advisory Committee (GAC)
The Non-Commercial Users Constituency (NCUC) would like to take the opportunity to express its views in relation to the Uniform Domain Name Dispute Resolution Policy (UDRP). NCUC understands that the GAC has sent a letter to the Generic Names Supporting Organization (GNSO), raising some concerns as to whether a Policy Development Process (PDP) should be initiated in relation to a review of the UDRP.
NCUC would like to welcome the GAC’s initiative in approaching the GNSO and submit its statement with its views on the UDRP. NCUC thinks it is very encouraging that the GAC is willing to speak with the GNSO and exchange ideas on the UDRP, one of ICANN’s oldest and most important policies.
It has lately come to our attention, however, that the views of the GAC on the UDRP were drafted with the solicitation and advise submitted not by the entire groups represented at the GNSO Council. NCUC is very concerned with this process and would like to submit for your consideration the statement and the comments it has submitted during the public comment period for the UDRP. We hope that you take into consideration the indisputable evidence that exists and our serious concerns on the current operation and practice of the UDRP.
NCUC would like to thank you and the GAC for your attention to the NCUC's comments and requests the opportunity to discuss the issues related to the UDRP with members of the GAC at the meeting in Dakar. We look forward to cooperating with you on this very important matter.
Dr. Konstantinos Komaitis,
Chair of the Non-Commercial Users Constituency
Comments of the Noncommercial Users Constituency (NCUC) on the Preliminary GNSO Issue Report on the Current State of the Uniform Dispute Resolution Policy (UDRP)
UDRP review should be the presumptive outcome of this process.
NCUC supports a review and believes that the burden of proof is on those who oppose it. We believe so for the following reasons:
All other ICANN policies must be regularly reviewed and improvements continuously sought.
The UDRP has been in place for a long time, was put together very quickly in the earliest stages of ICANN’s existence, and has not been reviewed or modified since.
Many country code TLDs have instituted similar Dispute Resolution Procedures (DRPs). Although many are based in part on the ICANN model, they often introduce slight procedural or substantive modifications. ICANN needs to assess whether it can learn from those differing experiences.
A significant amount of academic research and critical literature has developed around the UDRP which can be assessed for problem areas and mined for proposals to improve it.
No stakeholder or independent commentator now claims that the UDRP is perfect. Virtually all of the panelists on the workshop held at the ICANN 41 meeting in Singapore and in the earlier webinar noted specific improvements or changes they would like to see, even if they did not prefer to invest time in a PDP.
NCUC believes that resistance to the policy’s review comes from two sources. One is a fear of various parties that a formal Policy Development Process (PDP) might make the policy “worse than it is now”. In response to that, we reply that a PDP does not presume that the UDRP will be changed; it simply allows all the Stakeholder Groups within ICANN to systematically explore and answer questions about whether it should be changed and if so, whether there is agreement on ways to change it. If there is no consensus among GNSO stakeholders about any specific change, nothing should change.
Another argument heard against a review is that the timing is bad. Some believe that the timing is bad because we are headed into the new TLD program, which relies on the UDRP and the Uniform Rapid Suspension (URS) policy, and that consideration of change will “destabilize” these efforts. Others believe that other policy-making activities should be prioritized. The first claim seems entirely illogical to us. The new TLD program will expand the usage of the UDRP and the URS will rely on certain elements of the UDRP. Moreover, the URS is designed upon the same substantive and procedural ethos of the UDRP; if the UDRP is not working, we need to ensure that we fix it so that its existing flaws are not transferred to and will not affect the operation of the URS. It seems that the time between now and the actual coming to market of new TLDs is the ideal time to review the UDRP and fix any flaws. Further, we simply cannot agree with anyone who sees the UDRP and trademark – domain name conflicts in general as a low-priority area for ICANN. The UDRP touches on issues that are central to ICANN’s mission and fundamental to the interests of nearly all of its stakeholder groups. If ensuring that the UDRP is functioning properly is not a priority, what is?
To conclude, regular review and updating of policies is often presented as an “ICANN value” or way of policymaking, and it would be terribly odd for that value to not apply to one of the only substantive policies that ICANN has created -one that impacts every domain name registrant. The presumption of any ICANN policy should be constant review and improvement and the UDRP is no exception to the presumption. After more than a decade of practice and evidence, this policy is beyond ripe for a review.
The Preliminary Issues Report
NCUC is not satisfied with the quality of the published GNSO Issue Report. We expect Issue Reports to involve the collection, compilation and analysis of relevant factual evidence, and a neutral and balanced assessment of relevant literature. The Report should be enhanced to take account of the factual evidence and analysis generated in the 12 years since the UDRP has been in effect, to provide the GNSO Council with informative background materials that can prepare it for policy discussions and debates.
Over the past twelve years, the UDRP has generated a significant amount of independent academic research and critical examination. There are also statistical sources available, both in the research literature and from the UDRP providers. If one uses focused search techniques and devotes two or three days to examining the most important materials, one finds about a dozen useful empirical studies and analytical law review pieces on the UDRP. These reports could have and should have been summarized and referenced in the Issues Report. While it does take time to sift through this material and glean its findings, the amount of time consumed would almost certainly be less than that consumed by organizing a “webinar” and a survey. Instead of webinars and surveys, that merely elicit opinions from the handful of people already involved in ICANN who happen to be available, a literature review considers the evidence amassed over time, and subject to peer and critical review. There is an important distinction between an internal opinion poll among insiders with an agenda and a fact-based Issues Report.
ICANN Issues Reports, and GNSO policy development processes generally, should not rely exclusively on casual internal soundings, but rather apply a higher intellectual standard and depth of understanding. If professionals, social scientists and researchers outside of ICANN have devoted resources and expertise to the analysis of ICANN and its policies, our processes can only benefit from drawing upon these materials. We note that the Security and Stability Advisory Committee (SSAC) reports routinely involve reviews of the relevant research literature and often do a good job of compiling and summarizing such literature. The GNSO needs to do the same. As the primary policy making arm for generic domains on the Internet, a higher level of analysis should be sought, as befitting its responsibility to good governance and the global public interest.
Summary of research literature
To aid the compilation of a more complete report, we list and provide brief summaries of the relevant research in the appendix to this comment. The sources are in chronological order. We ask that this information be incorporated into the revised Issues Report. The overview exposes a huge disparity between the Preliminary Issue Report conclusions and the conclusions of most of the research literature on UDRP. The preliminary report portrays the UDRP as completely consistent, fair and universally supported. Nearly all scientific reports, on the other hand, while noting the UDRP’s success at reducing the costs of resolving domain name disputes and rectifying gross forms of cybersquatting, tend to be critical of both substantive and procedural aspects of the UDRP. In other words, independent, neutral research does not support the preliminary report's assertions that UDRP is fair, consistent and in no need of review.
Helfer, Laurence R. and Dinwoodie, Graeme B., Designing Non-National Systems: The Case of the Uniform Domain Name Dispute Resolution Policy. William & Mary Law Review, Vol. 43, p. 141, 2001; Stanford/Yale Jr. Faculty Forum Paper No. 01-05. Available at SSRN: http://ssrn.com/abstract=275468
The article critically assesses the Uniform Domain Name Dispute Resolution Policy (UDRP) as a potential model for solving the legal challenges presented by transborder activity. It describes the conditions that led to the UDRP's formation and considers whether the UDRP can and should be replicated elsewhere. While authors believe that UDRP succeeded in bypassing cumbersome mechanisms of national and international law making and in fulfilling demand for effective dispute settlement, they do not believe that it should be uncritically extended to other contexts. This article contains no empirical or statistical analysis of UDRP results.
Mueller, M. (2001). Rough Justice: A Statistical Assessment of ICANN's Uniform Dispute Resolution Policy. The Information Society Volume 17, Issue 3, 2001, 151 - 163
A statistical analysis of UDRP case outcomes based on the concern that ICANN allows the complainant to select the dispute resolution service provider. The statistical tests indicate that complainant selection of dispute resolution service providers does lead to forum shopping that biases the results.
Geist, Michael (2001), Fair.com? An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP
This study finds that influence over panel composition is likely the most important controlling factor in determining case outcomes. Providers steer a majority of the cases toward complainant-friendly panelists. Fifty-three percent of all NAF single panel cases were decided by only six people, and the complainant winning percentage in those cases was 94%. Provider influence over panelists diminishes in three-member panel cases, 4
since both complainant and respondent choose one of the panelists and exercise some influence over the choice of the third; predictably, complainant win rates go down in three-member panels. The study concludes by proposing changes to the UDRP to instill greater fairness and confidence in the process.
Froomkin, A. Michael (2002), Uniform Dispute Resolution Policy—Causes and (Partial) Cures. 67 Brooklyn Law Review 605.
This paper describes the main features of the UDRP and ICANN’s accompanying rules of procedure and compares them to the recommendations of the WIPO proceeding and Report called for in the 1998 White Paper. The article documents four "unfair aspects of the UDRP rules:" (1) the selection and composition of the arbitral panel; (2) the failure to provide a registrant with adequate time to reply to a complaint; (3) the limited opportunity for complainants who lose a UDRP action to get their cases into court; and (4) the absence of any meaningful check on the providers’ creation of supplemental rules that effectively tilt the playing field. Notes that in practice, UDRP’s requirement that names be registered and used in bad faith “appears to have been completely lost on numerous arbitrators, who have read 'and' as if it meant 'or.'” Notes how the noncommercial use defense imported a tarnishment concept and that this "undermines a substantial part of the free-speech value of the non-commercial and fair use defenses" and "could be used to deny protection to legitimate criticism sites.”
Mueller, M. (2002). Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN’s UDRP. http://dcc.syr.edu/PDF/markle-report-final.pdf
Study supported by the Markle Foundation based on a comprehensive review and classification of the first 4,000 UDRP cases. The UDRP has been an effective remedy for cybersquatting primarily because it makes it economically inefficient for abusive registrants to defend their names. Known cybersquatters default 70–100% of the time. The study’s compilation of case statistics provides many insights into the UDRP’s results. E.g., eighteen percent (18%) of UDRP claims are based upon unregistered trademarks; the UDRP has protected personal names as strongly as registered marks; of the 20 cases UDRP panelists cite as precedents most often, all were won by Complainants and all but 4 were Respondent defaults. The study further provides proof that decisions regarding gripe and/or criticism sites are inconsistent, and calls for clarifying standards for a finding of “confusing similarity” to a trademark such that criticism, parody and commentary are not suppressed.
Selby, John (2004). Competitive Justice?: The Role of Dispute Resolution Providers under ICANN’s UDRP, 1 Macquarie Journal of Business Law 23
Having examined the quantitative and qualitative means by which Dispute Resolution Providers can compete for market share in UDRP disputes, the main thesis of the article is that the requirement that "competition" between dispute resolution providers be a design principle in the UDRP was (and continues to be) flawed. Competition between 5
such providers results in flawed incentives and likely injustices, most notably it can bias those providers towards making it easier for complainants to achieve victory over respondents (particularly through panelist selection processes and differences between provider supplemental rules). Competition between providers of justice in a situation where they are competing for selection by only party is antithetical to the principle of equal treatment of parties in a dispute.
T. Lee, D. Hunter and D. Orr, "Cohesion and Coherence in the UDRP," (2008)
A study that tests the hypothesis that UDRP panelists are more likely to side with complainants or respondents who are of the same nationality as they are. The study used automated techniques to process UDRP decision documents to sample 2944 disputed domains where the nationalities of the panelist and both litigants were known. Based on this data, the hypothesis of a nationality bias appears to fail. However, the overwhelming number of Americans in both the respondent and complainant sample may limit the results’ generality.
Komaitis, Konstantinos. The Current State of Domain Name Regulation: Domain Names as Second-Class Citizens. Routledge, 2010.
Book-length analysis that argues that domain names are a form of property, and the property rights held by domain name registrants need to be recognized in law – independently of, and carefully distinguished from, the limited rights associated with trademark protection. The book discusses the history, legal basis, procedural aspects and performance of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Analyzes the differences between arbitration and the UDRP, which is sometimes characterized as an arbitral process; most of the differences are shown to weaken the rights of registrants, binding them to a procedure and rules while allowing the complainant more choice and options. The book concludes with some procedural and substantive recommendations that, if applied, will help the UDRP to become a more fair and balanced system.
Substantive and/or Procedural Review of UDRP?
For NCUC, the key question is not whether to conduct a review of the UDRP, but rather, how to conduct a review of the UDRP. NCUC members agree that at the very least, a review of the noted procedural flaws of the UDRP should be thoroughly examined by the impacted community. A number of NCUC members further believe there should be an additional review of the underlying substantive policies contained within the UDRP, including their ability to protect freedom of expression guarantees and the fair use or other noncommercial rights of domain name registrants. Thus while the precise scope and framing of the UDRP review is open for discussion and input from all impacted stakeholders, NCUC contends that at the very least, a procedural review of the UDRP is necessary at this time.
Use standard ICANN processes, not a hand-picked group
Existing GNSO policy development processes are precisely what this type of examination was set up for and allows for balanced input from all impacted stakeholders. NCUC does not support having this process carried out by an arbitrarily selected group of “experts”. The GNSO was established for exactly this purpose and has put in place processes that provide room for multi-stakeholder participation and can reach results that reflect the views of all stakeholder groups within the ICANN structure. The community learned a valuable lesson with the failure of the single-constituency-driven Implementation Review Team (IRT), and created the subsequent Special Trademark Issues Team (STI), which reached unanimous consensus within the GNSO and drew much less criticism concerning issues of bias or misrepresentation, because it had incorporated members from across the community. We, therefore, suggest that ICANN make use of the existing GNSO processes that were established to evaluate policies and make recommendations as the community deems necessary.
I would, first, like to take this opportunity and thank ICANN for issuing its preliminary Issues Report on the Current State of the UDRP and allowing a period for public comments. Having spent more than ten years observing the UDRP as a litigious machine, I believe that it is a system that has failed to evolve organically and to reflect the true value and potential of domain names. The UDRP is stuck to a microscopic view that sees domain names mainly as tools of trademark infringement, without making room for other uses, related to and recognized by trademark law itself.
Everyone will agree that the Uniform Domain Name Dispute Resolution Policy (UDRP) is a true phenomenon. It is a process that started more than ten years ago as part of the US Government’s White Paper mandate and has developed into a process that so far has adjudicated more than 30000 domain name disputes. This is both good and bad. It is good because it demonstrates the ability of the UDRP to operate in a fair, timely and cheap manner that eliminates jurisdictional issues. It is bad, however, because it has provided UDRP panels the ability to act as international arbitrators assigning rights of international recognition; it has allowed precedent to become an integral part of its processes and its rules have acquired a normative connotation, sufficient to provide the UDRP with an unprecedented authority.
All this is quite alarming considering that the UDRP was never meant to either transform trademark law or acquire the status it currently enjoys. Because of its current authority to adjudicate the rights of trademark owners and domain name registrants, it is vital we discuss and investigate the true efficiency of the UDRP and its ability to produce decisions that can be celebrated for their fairness, reasonableness, balance and legality. Currently, these values are highly disputed in the context and content of UDRP decisions.
First, it is important we clarify a big misconception: Contrary to what the Issues Report suggests, the UDRP was never a consensus document. This has been well documented by those who participated in the UDRP process ten years ago (See, A. Michael Froomkin, A Catalog of Critical Process Failures; Progress on Substance; More Work Needed, available at http://www.law.miami.edu/~amf/-icann-udp.htm (Oct. 13, 1999). Now, however, ICANN is presented with a unique opportunity to achieve the consensus that failed to achieve some ten years ago; ICANN is provided with the right set of circumstances to involve all its stakeholders and continue to support its multistakeholder, bottom-up policy formation. The precedent established by the Special Trademark Issus Team (STI) recommendation proves that policy, based on multistakeholder participation is feasible and it can produce valuable conclusions.
The Issues Report further calls the UDRP a fair system. This is not entirely true and a close look at the UDRP and its rules clearly demonstrates the fundamental unfairness of the mechanism. Take a look, for example, at the lack of clear fair use provisions and safe harbors; calculate the unreasonably disproportionate deadlines that exist for the complainant and the respondent; pay close attention to the bias that takes place even at the time of the center selection; and, notice how the UDRP has failed to account for registrants and users located in countries, where Internet connectivity is still at its infancy.
It has been asserted during the UDRP Webinar that the UDRP has been fluid and flexible to deal with issues, not foreseen back in 1999 (pay per click, pshising, mousetrapping). This is true. But, at the same time, the UDRP has failed dramatically to account for the major changes in user participation and behaviour through domain names. Innovators, bloggers, entrepreneurs, new businesses and their domain names are not included in the UDRP of 2011. Actors administering and using the UDRP have only focused on those acts that affect trademark owners; they have completely disregarded those acts that can be harmed by the strong protection of trademarks. You only have to imagine the scenario of some trademark owner, somewhere in the world, contesting <facebook.com> and you will understand the narrow view the UDRP takes in the protection of domain names.
The Issues Report suggests that “many [of the issues of the UDRP] relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself”. This is an extremely narrow interpretation. It is very difficult (and would be naive) to divorce substance from process not just for the UDRP but for any system of adjudication. Rules that are clear and coherent allow for a more efficient procedural environment; when the substantive layer is concise, the procedural level operates smoothly – and visa versa.
Another issue that is presented as contributing to the success of the UDRP is its consistency. I personally find this consistency troubling, mainly for two reasons: first, because it is confused with the fairness or success of the UDRP. Consistency proves nothing, apart from a system that is trapped in its own discretionary interpretations. And, second, it is the wrong kind of consistency. It is consistency of decisions rather than of rules. For example, the UDRP should aim for consistency in the way its rules are interpreted or the way the supplemental rules of its accredited centers are enforced.
It is important to stop considering the UDRP as a business-making machine. The UDRP was created to provide relief and not to create an extremely profitable industry in the adjudication of domain names. Given that the Policy assigns and determines rights on the Internet, it should be clothed with solid checks and balances and depart from its current modus operandi, which focuses primarily on creating incentives and using the UDRP rules to satisfy certain interests than delivering justice.
Undeniably, a review of the UDRP will not be an easy task – with more than 30,000 domain name disputes, a huge volume of documented decisions, and a lot of academic writing, the body of the UDRP is colossal. However, this should not prevent the UDRP from being reviewed; on the contrary, it is should be the catalyst for its review. The UDRP will only get bigger and its case law will become more complex. ICANN is presented with a great opportunity to start discussions, deliberations and put in place mechanisms that will allow the UDRP to be properly analyzed. A good starting point would be the existing academic writings, which have produced valuable and objective considerations.
By suggesting that the UDRP should not be reviewed, the ICANN Staff is making a big mistake. We made this mistake back in 2003, when discussions for a potential review of the UDRP were cut abruptly short. We should not repeat the same mistake. We should not let the fear of what the review might do to the UDRP, take precedent over the real need to review a policy document that is very old, in many cases is out of touch with the way domain names are used nowadays and is not inclusive of emerging Internet economies.
It would be a shame, if we were to let this opportunity for a proper UDRP review pass us by. ICANN has a responsibility to make sure that the UDRP, like any of its policies, is fair and represents the needs of all the parties that participate and use it.
Dr. Konstantinos Komaitis
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.
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.
Views are my own and my own only!