The long-awaited interaction between the Governmental Advisory Committee (GAC) and ICANN’s Board of Directors wrapped up its proceedings today in Brussels, one day after the originally scheduled two day meeting. Trademark issues were once again at the forefront of the discussions with the ICANN Board providing some preliminary – and not final – answers to the GAC’s scorecard. For those who have not read or heard the trademark issues raised before the Board, the GAC scorecard focused on three issues relating to the protection of trademarks on the Internet: the Trademark Clearinghouse, the Uniform Rapid Suspension System (URS) and the Post Delegation Dispute Resolution Process (PDDRP). In my previous blog post, I identified the issues that I thought were problematic with the GAC scorecard, focusing mainly on the URS and the way it sought to provide a mechanism that would be beneficial for the trademark community and for no one else.
ICANN, in submitting its preliminary answers, got many things right, but also got some things wrong, whilst it referred some questions back to the GAC for more clarification. The ICANN Board emphasised that its inclination was not final and that further discussions with the GAC would be necessary to clarify and resolve the various outstanding issues. A further call between the GAC and the ICANN Board will be scheduled in the next few days (and before ICANN’s San Francisco meeting) to further discuss and deliberate on these issues with the hope that both entities will reach some agreement.
Regarding the GAC’s recommendation for all types of IP rights to be included in the Trademark Clearinghouse, the Board accepted in principle this proposal asserting, however, that further discussions were necessary to ensure that the implementation of this recommendation would not leave any rightful mark owners outside this framework. The Board accepted the recommendation that both sunrise services and IP claims should be mandatory and raised its objections on the issue of whether ‘IP claims services and sunrise services should go beyond exact matches to include exact match plus key terms associated with goods and services identified by the mark and typographical variations identified by the rights holder’. In relation to this, the Board expressed its difficulty in understanding and setting criteria as to how far the notion of these exact matches could go. One of the things that the Board focused on (and appeared to be quite adamant about it) is that only genuine trademark owners should be given the right to be listed in the Clearinghouse. By ‘genuine’ the Board asserted that proof of use on behalf of trademark owners should be required, expressing fears that various mark owners can potentially approach jurisdictions where no substantive review is conducted and, therefore, receive protection when it is debatable whether such protection should exist in the first place. Finally, in relation to who should bear the costs of sustaining the Clearinghouse, the Board asserted that trademark owners should pay a fee for registration, Registry operators should be required to pay a fee for using the services provided by the Clearinghouse and left open the idea that potentially registrants might bear some of the costs, since they will be using the Clearinghouse as a point of reference when registering a domain name.
In their majority, these preliminary answers seem to be fine. The fact that the ICANN Board was not willing to straightforward accept the ‘exact match plus key word’ issue is a very positive step in limiting the rights that mark owners should enjoy in the Internet, just like in traditional trademark law. The Board was actually very reasonable in expressing its difficulty in understanding how such a provision would work, what criteria would apply and what would be boundaries be.
Uniform Rapid Suspension System (URS)
Regarding the URS, the Board’s preliminary answers were far more contentious. The Board accepted the GAC’s recommendation to reduce the timescales but did not deliberate on which specific ones this reduction would apply (the URS includes various timescales ranging from the time of response to the time of appeal). However, the Board did indicate that the system is meant to be ‘rapid’, indirectly indicating that there might be a reduction in the time for the response. The Board also accepted that there should be a standardised format for the submission of the complaint, which, from the GAC proposal, appears not to apply in the case of the response. The Board further accepted that a qualified ‘Examiner’ should adjudicate URS disputes, instead of panel appointments. The Board was once again adamant that proof of use of the trademark should also apply in the case for a successful URS proceeding and, further, asserted that even in default the Examiner should have to go through the process in delivering his/her decision. The Board, however, rejected GAC’s recommendation for lowing the standard of proof from ‘clear and convincing evidence’ to a ‘preponderance of evidence’, stating that the first lays somewhere in between the notions of ‘preponderance of evidence’ and ‘beyond reasonable doubt’ and, thus, it is only fair. The Board took also a negative view on the recommendation that the bad faith element should be abandoned (an issue that I personally felt should not have made it to the scorecard) and rejected the ‘loser pays’ model, which was controversial and would act as a deterrent for registering new gTLDs. The time for filing an appeal in default cases, which was originally set in 2 years, was accepted by the Board as appropriate and as complying with the wishes of the wider community. The Board also accepted that the fee for a URS proceeding should not exceed the amount of $300 and indicated its wish to allow transfer of the domain name after a successful URS. Finally, the Board rejected again the notion of extending exact matches to keywords.
The worst aspect of the Board’s preliminary answer is the idea of allowing transfer of the domain name through a successful URS. As far as I am concerned, this recommendation stands no merit or justification and could in principle be the reason for the collapse of the whole URS. The initial justification of the URS was that it would be distinct from the UDRP as far as its remedies are concerned. Two distinct mechanisms with two distinct remedies: the UDRP would retain its remedial focus on transfer or cancellation of the domain name, whilst the URS would simply ‘lock’ the domain name. By allowing transfer of the domain name through a system intentionally not designed to proceed to substantive evaluation of facts, the need for the UDRP will slowly decrease. It should be anticipated that over time the URS will be used for every contentious issue, making the UDRP redundant. And, why shouldn’t it? If you are a trademark owner, of course you will opt for the cheaper (max. $300) and faster (the whole process will last substantially less than a UDRP process) system. And, if as I fear, the time of response is minimised to just 14 days, then ‘adios’ due process, procedural justice and balance.
The way the Board decided to treat default is also quite problematic. The Board appeared to share the GAC’s (negative) view that default means bad faith and, thus, the defaulting party (the language used is ‘the non-cooperative party’) should not be given any privileges. Again, both the GAC and the Board misunderstand the idea behind default and take into consideration only the very narrow view. Not acknowledging that default might occur for various reasons and within various context will create problems for registrants residing in developing nations, for registrants with limited Internet access and for registrants who are not familiar with the ICANN administrative proceedings and need to find a lawyer to assist them. And, if the time for the response gets to 14 days, then all URS default cases (and they will be many but not for the reasons the trademark community suggests) will be automatically deemed as in bad faith.
The Post Delegation Dispute Resolution System (PDDRP)
This has been a great victory for Registries, which, in any case, they were not particularly thrilled with the concept of the PDDRP. The Board did not seem to agree with most of the GAC’s recommendations regarding the PDDRP, and asked for further clarification in some particular issues.
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.
I have always been impressed with how proactive the US legislature is in addressing issues pertaining to the Internet. So, you can understand my excitement when a copy of the "Online Infringement and Counterfeits Act" fell on my hands. I have to admit that after reading it, I am not impressed at all.
The Act seeks to do exactly what it promises - try to combat infringement in the online environment and to eliminate the dissemination of counterfeit goods via the Internet. I, for one, am very much in favor of such an initiative, as long as it strikes a balance between the various conflicting rights and does not seek to address one harm by creating a new one. And, this Act does exactly this.
The Act gives the Attorney General carte blance to stigmatize any domain name that enables or facilitates infringement or the promotion of counterfeit goods "including by offering or providing access to, without the authorization of the copyright owner or otherwise by operation of law, copies of, or pubic performance or display of, works protected [...], in complete or substantially complete form, by any means, including by means of download, transmission, or otherwise, including the provision of a link or aggregated links to other sites or Internet resources for obtaining such copies for accessing such performance or displays".
But, perhaps the worst attribute of the Act has to be the insertion of the ill-conceived (at least for trademark law) in rem jurisdictional provision. Through this provision, the Act legitimizes the take down or blacklisting (or whatever else) of domain names both within the United States and around the world. And although the United States as a sovereign state may suggest any legislation with any content its sees necessary for the protection of its national interests, things get more problematic when American legislation affects the rights of individuals of other countries.
This is not the first time that the in rem provision makes its way within a statute dedicated to domain names. The same in rem provision can be seen in the context of the Anticybersquatting Consumer Protection Act (ACPA) and has been misused to enforce judgements on foreign nationals. Under the ACPA, a trademark owner can invoke the in rem provision either when she fails to identify the domain name registrant or when the registrant falls outside the jurisdiction of the court, which applies to many domain name holders residing out of the United States. On the issue of the 'minimum contacts' requirement, relevant to the application of the in rem jurisdiction, the Act provides a rather simplistic way of circumventing the high standards set by International Shoe and Shaffer.
Moreover, and for reasons beyond my understanding, the courts of the District of Columbia are being established as the new cyber default courts, a characterization previously held by the courts in Virginia, which held this title by virtue of sharing the same location with Network Solution, the sole Registry for the <dotcoms>.
And, just like other intellectual property statutes that have emerged since the commercialization of the Internet, this Act fails to take into account the rights of domain name holders and respect free speech. Nowhere in the current version of the document, do we come across the possibility for the registrant to explain the use of the domain name. On the contrary, the Attorney General will only ask trademark owners information that are relevant to making her determinations without consulting domain name holders. As if they don't exist or their rights are not as important as those of the trademark community. Free speech or even the possibility of redemption is not part of this Act. The Attorney General cannot only blacklist domain names but also to "include additional domain names that are used in substantially the same manner as the Internet site against which the action was brought". No inquiry into the nature of the domain name, no effort to understand its use and distinguish it from purely illegal uses.
Despite the ability of domain name holders to file a petition and ask the domain name to be removed from the 'black list', the Act still fails to secure the interests of legitimate registrants and repeats the mistake of ACTA, by putting all eggs into the same basket. Because the way I see it, the harm is already done. By the time the domain name holder is heard, it is too late into the process, the domain name has been stigmatized and the reputation of the domain name registrant has been tainted.
To me this Act is nothing more than another way for domain name take downs without proper justification; it is another way to expand and give trademark owners more rights in the naming and addressing space; it is a way for big American rights holders to instill their rights globally.
And, remember, I am all in favor of protecting intellectual property rights on and off the Internet. I just feel that this is not the way we are supposed to do it.
In the midst of ICANN's public comment period debate concerning the Rights Protection Mechanisms afforded to trademark owners in the new gTLD era, Judge Alex Kozinski for the United States Court of Appeals for the Ninth Circuit, provided answers to many issues that currently are part of the debate within ICANN. By applying the "Nominative Use' doctrine in domain names and by insisting on the boundaries of protection trademarks should receive in the Domain Name Space, Judge Kozinski put to rest how a trademarked term may be used in the context of domain names and helped define the boundaries of protection trademark owners are entitled to in the online environment.
In Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, et al. No. 07-55344 (9th Cir. July 8, 2010) a unanimous panel strictly applied the 'nominative use' test as was established by Judge Kozinski in New Kids on the Block.
The case concerned a couple - the Tabaris - who operated their auto-broker business as Fast Imports. The defendants assisted consumers in buying Toyota LEXUS cars as well as cars of other brands at the lowest possible price. The Tabaris offered their business through two domain names - buy-a-lexus.com and buyorleaselexus.com - both of which were the subject of the dispute. Toyota asserted that the use of these domain names infringed their trademarks and the Tabaris argued that the use fell under the 'nominative use' doctrine. The district court agreed with Toyota, forbidding the defendants from using "any [...] domain name, service mark, trademark, trade name, meta tag or other commercial indication of origin that includes the mark LEXUS". The Ninth Circuit disagreed and reversed the decision in light of the ‘nominative fair us’e doctrine and First Amendment concerns.
Judge Kozinski applied the three-part ‘nominative use’ test he established in New Kids on the Block, asking whether "(1) the product is 'readily identifiable' without use of the mark; (2) defendant uses more of the mark than necessary; and, (3) defendant falsely suggests he is sponsored or endorsed by the trademark holder". The Ninth Circuit found that all three part of the nominative use test are applicable and confirmed that the use of the domain names by the defendants were actually protected by the First Amendment.
The Ninth Circuit seeking to examine consumer confusion correctly mentioned that in such cases we should not be looking at all consumers. Instead, Judge Kozinski said: "In performing this analysis, our focus must be on the "reasonably prudent consumer" in the marketplace. The relevant marketplace is the online marketplace, the relevant consumer is the reasonably prudent consumer accustomed to shopping online; the kind of consumer who is likely to visit the Tabaris' website when shopping for an expensive product like a luxury car. Unreasonable, imprudent and inexperienced web-shoppers are not relevant".
The Court continued: "The injunction here is plainly overbroad—as even Toyota’s counsel grudgingly conceded at oral argument —because it prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement. The Tabaris are prohibited from doing business at sites like independentlexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn’t believe Toyota sponsors the websites using those domains. Prohibition of such truthful and non-misleading speech does not advance the Lanham Act’s purpose of protecting consumers and preventing unfair competition; in fact, it undermines that rationale by frustrating honest communication between the Tabaris and their customers.”
Further, the Ninth Circuit upheld the importance of the First Amendment in the context of trademark law stating that “Speakers are under no obligation to provide a disclaimer as a condition for engaging in truthful, non-misleading speech”. Judge Kozinski, even asserted that thousands of sites make ‘nominative use’ and, contrary to the way consumers are portrayed under ICANN’s trademark policies, in reality consumers are both sophisticated and not easily mislead. “On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder: You can preen about your Mercedes at mercedesforum.com and mercedestalk.net, read the latest about your double-skim-no-whip latte at starbucksgossip.com and find out what goodies the world’s greatest electronics store has on sale this week at fryselectronics-ads.com. Consumers who use the internet for shopping are generally quite sophisticated about such matters and won’t be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain”.
Judge Kozinski very aptly asserted that “a large expenditure of money [on behalf of big brand owners} does not in itself create legally protectable rights”. And, he continued “Indeed, it is precisely because of Toyota’s investment in the Lexus mark that ‘much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to [Lexus] by using its trademark”.
“It is the wholesale prohibition of nominative use in domain names that would be unfair. It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act.”
Well, here we have it. Judge Kozinski really provided answers to many of the debatable issues concerning the use of domain names. Trademark infringement in domain name disputes is not as clear-cut as ICANN, WIPO or the trademark community wants to make it look like. Nominative use is a basic principle, which, if not appropriately addressed, can raise serious free speech concerns.
The ICANN community should really pay attention to this ruling and should learn from the excellent reasoning of Judge Kozinski. This decision is really a victory for many legitimate domain name holders who lose their domain names, despite the fact that their use is protected under the ‘nominative use’ doctrine.
Judge Kozinski did not seem impressed by the argument that brand owners spend a lot of money protecting their brands and therefore should be granted exclusive rights to all domain names that incorporate their trademarked term; and, nor should we!
DAG4: Comments on the Trademark Clearinghouse, the Uniform Rapid Suspension System and the Post-Delegation Dispute Resolution Process
Comments on the Trademark Clearinghouse, Uniform Rapid Suspension System and Post-Delegation Dispute Resolution ProcedureFirst of all, I would like to welcome the opportunity of submitting comments in relation to the Trademark Clearinghouse, the Uniform Rapid Suspension System (URS) and the Post-Delegation Dispute Resolution Policy (PDDRP).
Trademark ClearinghouseOverall, the Trademark Clearinghouse (TMC) is a good step towards a more efficient, centralised and coherent registration culture and I would like to congratulate ICANN for adhering to the vision and respecting the work of the Special Trademark Issues (STI) team in relation to the Trademark Clearinghouse. However, at the same time, there are some points within the Draft Applicant Guidebook (DAG4) that, if not addressed, could potentially create various problems for ICANN, the non-commercial users and the wider Internet community.
To this end, I would like, in general, to draw your attention to some concerns I feel should be either clarified, be re-worded or omitted.First of all, the initial and original purpose of the TMC was neither to create nor to confer any new rights upon trademark owners. Yet, according to the version that is incorporated in DAG4, the TMC will also be validating marks and this validation will subsequently be used as a justification in both the URS and the PDDRP. The TMC should not be allowed to be used as a validator for marks, which informally allows the TMC to acquire the same status as that of courts. Such an allowance gives the TMC power beyond its intended purpose and original mandate. I would, therefore, like to recommend that the term ‘Trademark Clearinghouse- validated marks’ is removed from all the various parts that is being mentioned in the TMC, the URS and the PDDRP.Another crucial issue that is missing from the TMC is a provision that allows trademarks to be classified in classes, mirroring the International Classes of Goods and Services. This is a crucial element, as this service will compensate for similar and identical trademarks that under traditional law co-exist harmoniously. It will especially be important for small and medium-sized enterprises (SMEs) and for trademark owners in developing countries. The International Classes of Goods and Services is mentioned in the Trademark Notice, but should be inserted within the main body of the TMC. I suggest that it is incorporated in section 5, “Criteria for Trademark Inclusion in Clearinghouse” before the paragraph beginning with “Registrations that include top level extensions … would not be permitted in the Clearinghouse)”.Other, more specific issues that we would like to draw your attention to include:
Page 2: “For Sunrise services – Registries must recognize all text marks: […] iii) that are protected by a statute or Treaty currently in effect on or before 26 June 2008”.
I would like to ask ICANN to clarify to which marks ‘protected by Treaty’ it refers. The only Treaty that I can think of in relation to the protection of marks is the 1981 Nairobi Treaty on the Protection of the Olympic Symbol. This Treaty, however, does not seek to protect the name ‘Olympic’ per se rather the whole icon of the Olympic mark along with its symbol and its association with games. (“Any State party to this Treaty shall be obliged, subject to Articles 2 and 3, to refuse or to invalidate the registration as a mark and to prohibit by appropriate measures the use, as a mark or other sign, for commercial purposes, of any sign consisting of or containing the Olympic symbol, as defined in the Charter of the International Olympic Committee, except with the authorization of the International Olympic Committee. The said definition and the graphic representation of the said symbol are reproduced in the Annex.” Article 1 of the Treaty). I would like to state that the term of Olympic, by itself and without any association to the Games, is a word associated with the tradition and culture of Greece and this should be taken into consideration when seeking to protect it beyond its original scope. (http://www.komaitis.org/1/post/2010/06/olympic-a-greek-word-the-mistake-the-international-olympic-committee-makes.html)
Page 3: “As set forth more fully below, there had been some suggestions that the role of the Clearinghouse be expanded beyond trademarks rights and the data that can be submitted be expanded beyond trademarks and service marks. As described below, there is no prohibition against the Trademark Clearinghouse Service Provider providing ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database”.
This is contrary to what the STI recommended; although it was accepted that the TMC provider may provide ancillary services, the STI envisioned and made clear that such services should be directly related only to trademarks (common law marks, etc). It was decided that all other intellectual property rights fall outside the scope of the Clearinghouse and therefore should not be included. (“As set forth more fully below, although there has been some suggestion that the role of the Clearinghouse be expanded beyond trademark rights and that the data which can be submitted be expanded beyond trademarks and service marks, after careful consideration, these suggestions are not part of this proposal largely because they are at odds with the core purpose of the Clearinghouse, which is to facilitate cost effective and efficient data validation, maintenance and transmission, STI RECOMMENDATION, pp.4-5). I would like to recommend therefore the removal of this section.Page 5: “Registrations that include top level extensions such as “icann.org” as part of the trademark or service mark will not be permitted in the Clearinghouse regardless of whether a trademark registration has issued or it has been otherwise validated or protected as a trademark (e.g., if a trademark existed for icann.org, icann.org would not be permitted in the Clearinghouse)”.
This provision appears to be discriminating against valid trademark registrations and fails to take into account contemporary business trends. Many businesses, especially SMEs, are established and they operate solely online. Such businesses hold valid trademark registrations and national Trademarks Offices (including those of the US and the UK) have acknowledged and have produced guidelines for such trademarks. I do not see the rationale behind such an exclusion and I would request ICANN to provide the community with some clarification on why such trademarks cannot be included in the TMC.
The Uniform Rapid Suspension System (URS)Overall, the URS model adheres to the vision of the STI to create a rapid system for the resolution of blatant and clear-cut cybersquatting cases. However in some instances, the new document incorporated in DAG4 departs from the language and wording of the STI model.
One of the issues that is of great concern, is the replacement of the phrase “Safe Harbors” with “Defenses”. The February 2010 revised URS document, mentioned the following: “The GNSO-STI Model called these Safe Harbor Provisions. Further independent analysis suggests these bullets may be more accurately termed as defenses”. I would request ICANN to produce to the community this independent analysis and elaborate on the change of terminology. I would like to further recommend that the term ‘defenses’ be substituted by the term ‘absolute or complete defenses’, which etymologically is closer to the original term “Safe Harbors”.
On more specific issues, I would like to draw your attention to the following issues and suggest some new wording and/or deletions in the current language of the URS.
Paragraph 1.2 (f) states: “A description of the grounds upon which the Complaint is based setting forth facts showing that the Complaining Party is entitled to relief, namely: (i) that the registered domain name is identical or confusingly similar to a mark in which the Complainant holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; (ii) and that the Registrant has no legitimate right or interest to the domain name and; (iii) the domain name was registered and is being used in bad faith.”.
I recommend this section to be amended as follows: “A description of the grounds upon which the Complaint is based setting forth facts showing that the Complaining Party is entitled to relief, namely: (i) that the registered domain name is identical or confusingly similar to a mark in which the Complainant holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; and (ii) that the Registrant has no legitimate right or interest to the domain name; and (iii) the domain name was registered and is being used in bad faith.”Paragraph 2 “Fees”, paragraph 2 states: “A ‘loser pays’ model has not been adopted for the URS. Given the nature of expected disputes through this mechanism, it is thought, more often than not, that no response to complaints will be submitted and the costs of recovering the fees actually will exceed their value”.
The way this sentence reads appears as if the URS is instructing its Examiners to view URS disputes under a presumption of guilt for the Respondents, which is totally unfair and against due process. We really cannot anticipate the volume of responses that will be filled under the URS. I, therefore, strongly recommend that the wording “it is though, more often than not, that no response to complaints will be submitted” is removed.
Paragraph 4 “Notice and Locking of the Domain”: This section requires Registry Operators to respond to the decision of a URS panel by ‘locking’ the domain name.Asking Registry Operators – instead of Registrars – to perform such an action is highly problematic. The registration system is hierarchical and involves Registrants, Registrars and Registries. Registries are not directly related with Registrants and use Registrars as their intermediaries to provide domain name services. Under the current language of section 4, it is not the job of Registries to proceed to the ‘locking’ of the infringing domain name, rather that of Registrars (who will naturally notify Registries). The current language bypasses one significant layer in the Registration hierarchy – that of Registrars and is contrary to the way the UDRP operates in this respect. We believe that Registrars should be the point of contact of the URS Examiners for the following reasons: (i) Registrars have existing procedures (as used in the context of the UDRP) in place to perform similar functions; (ii) Registrars have a direct relationship with Registrants, whereas Registry Operators have not; (iii) Registrars already have customer services that seek to assist Registrants.
Paragraph 4.3. states: “All Notices to the Registrant shall be sent through email, fax (where available) and postal mail. The Complaint and accompany exhibits, if any, shall be served electronically. The URS Provider shall also notify the registrar of record for the domain name at issue via the addresses the registrar has on file with ICANN”.
For purposes of clarity, this section should be split in two sections, namely: Paragraph 4.3.: All Notices to the Registrant shall be sent through email, fax (where available) and postal mail. The Complaint and accompany exhibits, if any, shall be served electronically.” And, Paragraph 4.4.: “The URS Provider shall also notify the registrar of record for the domain name at issue via the addresses the registrar has on file with ICANN.”
Paragraph 5 “The Response” section 5.4 (c) states: “Any defense which contradicts the Complainant’s claims”.This is a mistake. Domain name rights might exist independently and separately from the Complaint’s rights and, thus, there is no need to respond to such a defense. Section 5.4. (c) should be removed.
Paragraph 5 “The Response” section 5.4: We suggest that we add here another section (e) entitled: Absolute/Complete Defenses.Paragraph 5 “The Response” section 5.8 (b) states: “The domain name sites operated solely in tribute to or in criticism of a personal or business that is found by the Examiner to be fair use”.Fair use constitutes an affirmative defense and as long as the Registrant is able to provide evidence of such use, the Examiner should accept it unwittingly. The language of this section implies that the proof of fair use lies to the discretion of the URS Examiner. This is against due process and gives URS Examiners with too much discretionary power. I, therefore, recommend that the phrase: “that is found by the Examiner” be removed.Paragraph 5.9: It appears that there is a grammatical error and the word ‘NOT’ is missing. The sentence should read: “Other considerations that are not examples of bad fair for the Examiner”.Paragraph 12 “Appeal” in section 12.2. states: “The fees for an appeal shall be borne by the appellant. A limited right to introduce new admissible evidence that is material to the Determination will be allowed upon payment of an additional fee […]”.Making the introduction of new evidence contingent upon an additional fee is unfair and there is no rationale behind it. As long as the appellant pays the required fees for an appeal, there is really no justification for making new evidence contingent upon the payment of a fee. ICANN should waive this additional fee requirement.Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP)On the issue of the PDDRP, I would like to stress that the process of implementing such a dispute resolution model has not been discussed to the extent that other trademark protection mechanisms have and there are some crucial questions that are still awaiting answers. The PDDRP has not been part of the same consultation process as compared to the Trademark Clearinghouse and the URS; rather, it was a proposal submitted by the Implementation Recommendation Team (IRT), it was not part of the STI’s mandate and, therefore, it is not part of ICANN’s multi-stakeholder model.
One of the most important issues concerning the PDDRP, which is also of great concern, is the following: Considering that a PDDRP action is successful and that the ultimate sanction is imposed upon a Registry, i.e. its termination, what will be the processes allowing Registrants to vindicate their rights? How do ICANN and the PDDRP envision that the rights of legitimate Registrants will be secured? What mechanisms are in place? What about the future of Registrars? We believe that failure to provide sufficient answers to this question indicates that the PDDRP is pre-mature and should not be adopted.
Turning on the more substantive issues of the PDDRP, my concerns are the following:
Paragraph 3 “Language” states: “The language of all submissions and proceedings under the procedure will be English”.
This is too unfriendly and there is simply no justification why the language of the proceedings should be conducted in English, especially within ICANN’s multi-cultural and multi-language framework. What about IDN Registry Operators? What about Registry Operators in the developing world? ICANN should be striving towards creating procedures that are welcoming to all its participants and this achieves completely the contrary. I urge you to remove this rule and expand the availability of languages.
Paragraph 5 “Standing” states: “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that […]”.Although in the Trademark Clearinghouse there is distinction between registered and unregistered marks (in the latter case allowing only common law court-validated marks), in the context of the PDDRP such a distinction is not made. I would like to draw ICANN’s attention to the danger that such an inclusive provision will create. Almost every word is or can be a common law trademark. Allowing such trademarks to be part of the PDDRP dispute gives the trademark community the opportunity to turn against Registries for every single word that is part of our vocabularies. It is unrealistic to expect Registry Operators to provide due care to terms such as ‘fortune’, ‘people’, ‘time’ etc, which are common words and in some very few jurisdictions happen also to be trademarked terms. We recommend, therefore, that the same distinction that is part of the TMC be incorporated in the PDDRP.
Paragraph 9 “Threshold Review” section 2 states: “The Complainant has asserted that it has been materially harmed as a result of trademark infringement”.Although we understand the rationale behind it, we believe that the definition of material harm may prove challenging. By using this term, the PDDRP is recognizing abuse that does not require actual trademark infringement or threats of trademark infringement. I would like to ask ICANN to provide the wider Internet community with information as to the interpretational boundaries of material harm.
Paragraph 11 “Reply” states: “The Complainant is permitted ten (10) days from Service of the Response to submit a Reply addressing the statements made in the Response showing why the Complaint is not “without merit” […]”.
We would like to ask ICANN to explain what is the rationale for the PDDRP to provide two opportunities to trademark owners for a reply. On its face, this provision appears not to follow the paradigms of ICANN’s dispute resolution mechanisms, i.e. the UDRP and the URS.
Paragraph 14 “Expert Panel”: According to the PDDRP, one-member panels will be the default rule for PDDRP disputes (unless either of the parties requests a 3-member one). Given the importance and seriousness of such disputes, I would like to suggest that a three-member panel default rule should be enforced.
Paragraph 16 “Discovery” states: “Whether and to what extent discovery is allowed is at the discretion of the Panel, whether made on the Panel’s own accord, or upon the request from the Parties”.
Discovery is an important aspect of every adjudication process. Considering the seriousness of this dispute, discovery should not be vested upon the discretion of the panels, but should be an option that operates irrespective of the views of PDDRP panels.
Paragraph 20 “The Expert Panel Determination” states: “While the Expert Determination that a registry operator is liable under the standards of the Trademark PDDRP shall be considered, ICANN will have the authority to impose the remedies, if any, that ICANN deems appropriate given the circumstances of each matter”.
Why is ICANN afforded such discretion, especially given the fact that ICANN is not a party of the PDDRP dispute? This raises significant issues concerning privity of contract that we have already raised with ICANN and we have not received any response.We, generally, believe that the PDDRP is an issue that should be discussed further and to more detail. This is a dispute that can have considerable impact and potentially upset the whole registration culture. To a certain extent, it also raises issues of intermediary liability and directs the registration of domain names towards a more controlled system of content. Free speech and expression might be in jeopardy, unless due consideration is paid to the effect that such a dispute can have.
Comments for the attention of ICANN's Accountability and Transparency Team on the Formation of the IRT
ICANN was originally created as a technical entity responsible for the day-to-day management of the DNS. We would like to draw the attention to Esther Dyson – first chairwoman of the ICANN Board – who stated: “The White Paper articulates no Internet Governance role for ICANN, and the Initial Board shares that (negative) view. Therefore, ICANN does not ‘aspire to address’ any Internet Governance issues; in effect, it governs the plumbing, not the people [emphasis added]. It has a very limited mandate to administer certain (largely technical) aspects of the Internet infrastructure in general and the Domain Name System in particular.”
Domain names, however, often raise legitimate trademark concerns and ICANN, as the ‘ex machina deus’ of the Domain Name System (DNS), carries the responsibility to respond to these concerns and provide solutions. Responding though to such challenges is completely different to suggesting processes that fall outside ICANN’s scope, are biased and do not seek to nurture ICANN’s multi-stakeholder governance culture.
The Accountability and Transparency Review Team (ATR) ICANN established is a positive step towards ensuring an environment that sees ICANN adhering to its original mandate for openness and accountable procedures. It is in line with ICANN’s promise for bottom-up policy development within a multi-stakeholder environment for the management of the domain name system. The IRT recommendations constitute a true testament and exemplify the problematic and non-inclusive way in which ICANN has approached trademark issues in the Domain Name System. In this context, ICANN sought to exercise some form of Internet “Regulatory Governance” by governing certain aspects of individual behaviour on the Internet. The Internet community never opposed trademark rights or their legitimate protection. They opposed the re-tasking of ICANN to expand trademark rights in ways trademark law itself does not support. Trademark rights are governed by laws, treaties, legislatures, parliaments and other democratic bodies that are appropriately authorized to protect those rights; they evolve incrementally, through judicial reasoning. ICANN should not have set the precedent of inviting the introduction of new governance policies that cannot be obtained through legitimate means of existing legal regimes.
Formation of the Implementation Recommendation Team (IRT) took place in a non-inclusive and unrepresentative manner.
The first official document informing the GNSO community of the formation of the IRT was in the form of an email, sent by the Intellectual Property Constituency on March 11, 2009. It provided a mere 36 hours for groups to express interest in adding members to the IPC-formed IRT committee. Timely responses by the ALAC to add well-known attorney Bret Fausett and by the Internet Commerce Association to add its president were rejected. Clearly, the views of registrants – be it noncommercial, individual or commercial- were considered irrelevant.
We note that such a focus on the needs of only one constituency, the IPC, is undemocratic and against the traditional values of diversity and multistakeholderism within ICANN. Noticeable absent were those who represent human rights coalitions, free speech and freedom of expression organizations and privacy groups. Also not invited to participate were representatives of domain name registrants – those who will actually be impacted by these new rules. These organizations and individuals would have brought to the table valuable –critical – information about the balance of trademark law and its limits as regards fair use, free speech and freedom of expression.
A. The IRT Team Attempts to Rewrite GNSO Developed Policy When the Intellectual Property
Rights Constituency did not get everything it wanted in the GNSO policy development process it created the IRT to re-open and re-negotiate the issue to its liking. The GNSO carefully considered the issue of protecting trademark rights in new top-level domains and included GNSO negotiated solutions in its final recommendations. In particular, the GNSO Working Group “Protecting the Rights of Others” Working Group was tasked with this objective of protecting trademarks. This working group was not able to come to agreement and support the proposals of the Intellectual Property Constituency that were re-opened by the IRT Team. Re-opening these issues and throwing out the negotiated consensus that was reached between all stakeholders, undermined ICANN’s claim of “bottom-up” policy-making that involved all stakeholders equally.
B. The IRT Team Operated without Transparency
Contrary to the practices on which ICANN committees are based, the IRT Team provided no information about its meetings, and no proceedings of the development of its work. This ‘Masonic’ approach was worrying, put a big question mark to the way substantive policy issues have been approached, and set a precedent for a one-sided approach to policy which ICANN should never have followed.
C. ICANN Provided Travel Support and Expenditures for the World’s Largest Companies and IPC-Members
It is the tradition of the GNSO that individual constituencies pay the cost of their representatives to participate in the ICANN process. At great cost and difficulty, the NCUC has sent its members to participate for years. During the IRT process, ICANN clearly signalled its support for a single constituency in the GNSO in the negotiation of this issue, a constituency comprising the world’s largest and wealthiest companies. Asking Internet users to foot the bill for the creation and sale of this one-sided policy proposal which benefits a single interest (large brand owners) to the detriment of all others simply isn’t fair.
ICANN should ensure that such procedural mistakes are not repeated. ICANN should ensure that from now on and in the future it operates under a transparent, open, inclusive and bottom-up process of policy making and development.
The idea behind replacing trademark protection with discussions about branding on the Internet was innovative but, at the same time, it provided the only route for the trademark community to voice again its objection on the new gTLD process and the inefficiency of the rights protection mechanisms that have been recommended by the Special Trademark Issues (STI) team. It was innovative because, on the one hand, the trademark community was conscious of the fact that re-opening the trademark protection issue would alienate them within the new gTLD process and, on the other, ICANN was not willing to stall the process (again!) because of trademark issues. So, brand owners were left with no choice but to try a different approach by attempting to dissuade the community from new gTLDs. At least, that was my reading after attending the panel session, which was entitled: “Brand Management in the Age of new gTLDs”.
At this session, which was comprised by trademark attorneys representing big brands like the BBC, Nestle, the Red Cross, etc, the brand community appeared united against the new gTLD program, expressing their indecisiveness on whether they would apply for their <dotbrands>, arguing that users would not necessarily relate to this new state of domain name affairs, consumers would be more confused and claiming that the new gTLD process was financially burdensome with high costs and no assurances.
It is indeed true that ICANN’s application process for new gTLDs is highly costly - $185,000 costly to be precise and that is only to submit an expression of interest. But, are these brand owners really arguing that they cannot afford to spend that kind of money, when they spend even more to pay their attorneys to send cease and desist letters, draft UDRP claims and pay their first-class tickets to participate to ICANN meetings? Are they expecting us to believe that there is no benefit in having all their multiple brands under a single gTLD – the name of their main brand – which will allow them to promote their goods and services in a more efficient and organised manner?
But, the truth is that we really don’t know how users and consumers will welcome this new process. It is also though true that the <dotcom> space has created this artificial scarcity and has given birth to the mistaken assumption that the DNS is this exclusive trademark territory, hostile to anyone else that is not a member of the trademark club. This is not trademark law or, better yet, this is not the kind of trademark law we teach our students to apply. Trademark law is not meant to create a hostile environment for new entrants and does not claim exclusivity in words or spaces. It claims exclusivity in goodwill.
And, let’s be honest here. Consumers and users are neither idiots nor do they get confused that easily. Trademark owners know that, as do consumers. I revisited the other day an article, written by trademark law czar, Thomas McCarthy, who was asking whether uses of AMAZON – a brand sizeable to the BBC and Nestle – for gardening services, hiking and survival equipment, restaurants or women’s health spas would confuse consumers. “My thought is that, to a majority of consumers, these uses would not immediately call to mind that particular use of the word “Amazon” as a famous mark for an online seller”. As far as I am concerned and I only speak for myself here, if professor McCarthy is asserting such a thing, it is not only valid but the reality of trademark law.
But the main question still remains unanswered: why does ICANN's trademark community not want new gTLDs? Well, as I said previously, they asserted that new gTLDs come with high costs and indeterminative expectations. The marketing of these new gTLDs might be excessive and arduous and it actually might fail; it can go wrong but it can also go right. If organised correctly, it can work to the benefit of both the trademark community and the social aspect of the DNS.
Imagine brands like Dr. Who, Dancing with the Starts, Top Gear - all BBC brands - under the .BBC gTLD. Imagine how trademark-friendly and commonsensical it would be for BBC to have full control of their space, which hosts all their brands; imagine how easy it would be for BBC to communicate to users the <dotbbc> as the only legitimate site and how beneficial it would be for consumers not to fear that the site they are visiting is genuine. For the past ten years, we have been told that this is the case; a DNS with too many abusive registrations, too much fraud, too many illegitimate domain names. For the past ten years, trademark owners asserted that the DNS is a dangerous territory and we need stronger forms of trademark protection if we want to be safe. So, does it not make more sense to help us create this safe place that we know is hospitable, welcoming and friendly?
Needless to say that the DNS needs new gTLDs to go back to its social roots and try and approximate to the particularities of trademark law. Trademarks fall under classes of goods and services and for me this would be the logical thing to do in the DNS. They are also associated with the goodwill of a product and what a better way to represent this goodwill with a <dotbrand> extension.
It is, therefore, indeed disappointing to hear what the panel said during the discussion. We really should give this a chance. We will see pretty soon whether it can fail and we can easily terminate it in such a case. But, if it succeeds, then much of our problems might actually disappear. It will take some time to educate users and consumers but the same way we did it with the <dotcom> we can do it with any <dotbrand>.
So, let’s really give this a chance!
I just happened to come across an article that shows what appears to be another hit in the process that ICANN has placed much of its future on - that is the Uniform Domain Name Dispute Resolution System (UDRP) of course. It all started when attorney Zak Muscovitch released a study concerning the way one of ICANN's accredited UDRP providers - the National Arbitration Forum - is distributing its case load to its various employees. His results show that some of the panelists receive a substantial amount of cases with the majority of these cases being decided in favor of the complaining party (trademark owner). This prompted DomainNameWire to conduct its own study of WIPO panelists and its conclusions were that many of the top 10 panelists have recorded the lowest complainant win.
What does this all mean? Well it means that we are exactly in the same place we were when professor Geist released his study almost 10 years ago. He introduced us to the possibility of forum shopping the same way he introduced us to the fact that we really have no knowledge as to how the centers appoint their UDRP panelists. And, when asked, we always seem to receive abstract and non-satisfying answers. What a great inconsistency for a system that is supposed to be uniform.
So, these results are not really something new and they should not come as a surprise to anyone. Even though it is really the responsibility of each one of the centers to appoint its panels equitably and to the best interests of both parties, the fact that ICANN has left the UDRP on its own and without proper review or control has resulted in a system that demonstrates signs of disintegration (look WIPO's attempt to sidetrack ICANN's Uniform Rapid Suspension System though the initiation of a 'fast-track' process). Needless to say that, at this point, it really makes no difference which center is more bias - the fact remains that the UDRP is disproportionally biased in favor of trademark interests whether this is done through forum shopping or through the intentional appointment of certain panelists.
However, the effect of this study is much more profound. ICANN is currently in the process of using the UDRP as the prototype to suggest the creation of two separate policies - the Uniform Rapid Suspension System URS) and the Post-Delegation Dispute Resolution Procedure (PDDRP). Both processes are conceived, structured and drafted with the whole skeleton of the UDRP in mind - everything, its rules, its procedures, its substance, everything - and have both been justified on the success of the UDRP. Now, what does that tell us about the fairness and justice of these systems?
It actually tells us a lot. It tells us that both systems are about to fail, are about to become biased and are about to create a highly competitive market for the ICANN-accredited centers that will seek to please their trademark customers. Now, if that is done through forum shopping or intentional panel appointments, again it does not really make that much difference. Complainants will still win and both systems will stagnate just like the UDRP.
The UDRP needs an immediate review, especially if it is to be used as the basis for other systems. The fact that the UDRP is so bankable explains why so far none of its stakeholders has initiated any process to review its body both substantially and procedurally; UDRP decisions bring a lot of money and reputation to both the centers and many of their panelists. This is the price of not having in place proper checks and balances that will ensure the proper application of justice.
I would first like to welcome the opportunity to submit comments on the revised ICANN proposals concerning the implementation of trademark protection mechanisms, namely the creation of a Trademark Clearinghouse (TMC), a Uniform Rapid Suspension (URS) system and a Post-Delegation Dispute Resolution Process (PDDRP). I would also like to commend ICANN for creating the Special Trademark Issues (STI) team to provide recommendations on how trademark issues should be addressed in light of the new gTLDs programme and the eminent expansion of the Root.
STI was tasked with a heavy duty – to recommend processes and address issues that sought to provide solutions to the benefit of both trademarks owners, non-commercial users and the wider DNS community. Despite the limited amount of time, STI managed to meet its targets and produce recommendations that achieved a legitimate balance between the conflicting interests of the trademark community and individual users. The work and results produced by the STI should not be taken lightly. Notwithstanding the fact that for some its recommendations were not ideal, in that they left some issues unanswered and subject to further deliberations, it has to be accepted that, in the history of ICANN, it has been perhaps the first time that trademark issues have been addressed by a multi-stakeholder body, following ICANN’s bottom-up processes. The recommendations produced by this divergent group were based on compromise and, in their majority, have reached unanimous consensus. To this end, it is important to treat the work of the STI as one that has facilitated the application of justice and due process, has set in motion the introduction of substantive qualitative criteria in the protection of trademarks in the DNS and has, finally, addressed the parameters of the intersection between trademarks and domain names. Seeking to support the vision of ICANN towards the introduction of new gTLDs, the STI recommendations contain certain qualities (unseen and unheard in other ICANN-related trademark policies) – normative generality, substantive definiteness and permanence, all of which contribute significantly to the legitimacy of the STI’s work and its final recommendations.
Through the amendments suggested, the revised ICANN staff proposals place the work and value of the STI in jeopardy; this has a further impact upon the bottom-up policies followed by ICANN. On a general note, the new proposals contain many language mistakes that misinterpret the STI’s recommendations and can easily mislead the bodies that will eventually use these processes. This is a serious issue, considering that it is these proposals that will determine the de jure rights of the participants and their participation in the new gTLD process. Furthermore, some of the additions are arbitrarily inserted, with no justification or reason.
We have to be very careful and it is necessary that this time we get it right. Over the years, ICANN’s trademark policies have received heavy criticism of being captured by trademark lobbying and interests; this criticism should not be perceived as being unjustifiable. The UDRP experience has taught us a valuable lesson: unless we create solid and carefully- balanced frameworks, we are in danger of assigning broad rights to trademark owners, where there is no justification to do so, jeopardize the rights of legitimate domain name holders and upset fundamental principles of trademark legality. WIPO and the trademark community have easily declared the UDRP as a success story, but the issue is far more complex.
It is mainly for this reason that the revised proposals should be carefully worded, artistically structured and remain within their original mandate. The goal here is not just to protect the trademark community and its rights; the goal is to submit to well-balanced proposals that will smooth the registration system and will pave the way for the increase of more participants in the registration environment. The STI operated on that basis; it operated under the presumption that the registration system will have to protect the existing rights but not to the expense of the creation of new ones. Everyone should be afforded the right to participate in the new gTLD process and this should be reflected in all of ICANN’s new gTLD policies, including the one concerning the protection of trademarks.
More specifically and while adhering to the majority of the principles promoted by the STI, the Trademark Clearinghouse incorporates wording, which, at the same time, significantly departs from the STI’s vision. For example, it suggests that ‘ancillary services’ can extend to include every single intellectual property right (p.2), when in the STI’s mind these services only meant to relate to trademarks (‘ancillary trademark services’); through the inclusion of all marks, regardless of jurisdiction (p.2), it seems to be encouraging the creation of ‘trademark havens’, which will pave the way for ‘easy’ registrations, which will further negate the rights of registrants (to an extent even those of existing trademark owners) and make their participation in the gTLD programme a difficult task; it differentiates between valid trademark registrations, negating the right of specific mark owners (those who hold valid trademark registrations incorporating a gTLD term – p.4), even though such rights have been assigned by legitimate Patent and Trademark Offices around the world; it fails to identify the need to incorporate within its structure international agreements, such as the International Class of Goods and/or Services (p.5). These are all critical issues and the fact that have been misinterpreted, wrongly phrased or omitted within this revised version suggests that the proposal for the TMC was not drafted with the idea of having a repository of information, rather with the notion that the TMC constitutes an additional tool for the protection of trademark owners. This is disappointing and dilutes the value of the TMC.
More important issues are being raised in the context of the Uniform Rapid Suspension system and the way it is presented in this revised version. Whereas the STI was very conscious in getting the URS wording right, now attention has not been paid to the language of the rules and procedures, thus curtailing their procedural importance and substantive appearance within the system (for example, the pointless replacement of STI’s “Safe Harbor” terminology with the word “Defenses” or the poor wording of section 5.8, which changes the whole meaning of the sentence by inserting bad faith when it is really about the good faith of the Registrant). Moreover, the revised procedural aspects of the policy operate under a presumption of guilt for the Registrant (“Given the nature of expected disputes in this venue, it is thought, more often than not, that no response to complaints will be submitted… p.3) and create an illegitimate moral dependency upon trademark owners and their wishes (s. 5.2: “Upon request by the Registrant, a limited extension of time to respond may be granted by the URS Provider if there is a good faith basis for doing so and it does not harm the Complainant”, p.4).
The worst aspect of this version of the URS is that it seems to be limiting the procedural rights of the Registrants. In particular, the interpretation of default as being based also upon a mistake during the filing of the response (s. 6.1 “If the answer is determined not to be in compliance with the filing requirements, Default is also appropriate”) is illegitimate. In most of the cases, Registrants represent themselves, operate under confined deadlines and English is not their first language. Should we not, at the very least, recognize these difficulties and give Registrants the benefit of the doubt?
But, to an extent this new version of the Policy seeks to restrict the subject matter of the disputes as well as the remedies against the losing party. This is good, as long as Examiners adhere to it. For the STI, this was achieved through the ‘Safe Harbors’, the option of an internal appeals process, through the ‘Abusive Complaints provision (which needs to return to the STI’s wording since it contains a lot of language errors and is unnecessarily confusing) and, finally, through the mandatory review of the URS. This last provision of the STI, which received unanimous consensus and it would eventually determine the success of the URS, was ‘skilfully’ omitted from this version without any justification.
All these issues will certainly have an impact on the new gTLD programme. How is ICANN expecting to receive the trust of individual users, if it fails to respect their rights and demonstrate that it has learned from past mistakes? How will the wider Internet community trust the new gTLD registration environment?
The Post-Delegation Dispute Resolution Policy (PDDRP) answers this. The PDDRP provides for a mechanism, whose effects, unless carefully considered and reviewed, can have an impact upon the registration culture and the trust it currently enjoys. The Policy is bad – it fails to take into account important factors like the direction it pushes Registries towards, the implications this will have upon the creation of a highly trademark-oriented registration environment and how unsafe and fragile this procedure is.
The STI recommendation paved the way towards the direction of a balanced approach. The STI’s recommendations were the result of a multi-stakeholder team, representing all interests in the DNS and ICANN. There were no winners and no losers – there was a balance. I hope ICANN endorses the STI’s work and ensure that the insertions of version 4 of the Guidebook reflect this balance.
I hope you take these comments into consideration. Thank you.
Dr. Konstantinos Komaitis,
Author of the book “The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world” Routledge.
Konstantinos Komaitis, the individual!
Views are my own and my own only!