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The amended version of Senate Bill S.3804, released in response to global criticism on the Bill's effect, continues to pose serious dangers in the freedom of expression on the Internet. The amended version of S. 3804 (as it is also known) sees the removal of the original black listing of infringing domain names. This amendment is certainly welcoming, but the Bill continues to be far from perfect. Two issues are of imminent importance: first, the imposition of US law to the rest of the world through the 'abuse' of the DNS and, second, the threats to freedom of expression, which are yet to be addressed through this Bill.
In a previous post, I mentioned how the Bill (in its original form) will threaten freedom of speech and the problems with US Congress using the in rem jurisdiction - a device that has already manifested its problems within the Anticybersquatting Consumer Protection Act (ACPA). Ideally, I would like to see this Bill getting rejecting; but, we are far from ideal at this stage. The following constitute some proposals/comments that I see relevant and can potentially assist in making this Bill more equitable, fair and in line with due process. Here is a breakdown under three prongs: scope, due process and remedies. Purpose: the Bill seeks to takedown, suspend or block those domain names, dedicated to infringing activities. General thoughts: Senate bill S. 3804 is overly expansive and goes a step beyond other regulatory attempts around the world seeking to address the same issue (counterfeit goods and copyright infringement). The difference between this Bill and other regulatory attempts is both one of degree and substance. S. 3804 attempts, on the one hand, to regulate behaviour extra-territorially and, on the other, fails to take into consideration the ‘internal’ provisions of fair use and free speech/freedom of expression within U.S. copyright and trademark law. In both France and the United Kingdom, for instance, similar concerns have been addressed through the passage of laws, known as the ‘3 strikes copyright laws’. Despite the fact that both these pieces of legislation have been controversial and have been hastily passed without debate or consultation, still they only address issues of national interests. On the contrary, S. 3804 seeks to regulate online behaviour outside the United States and, by doing so it will be setting a very dangerous precedent to the rest of the world. COICA is taking advantage of the US’s control over the Domain Name System (DNS) and, despite the systematic efforts of the international community over the past few years to the contrary, it clearly demonstrates that the US still claims ownership over the DNS. The DNS belongs to all Internet users; it belongs to the Internet. Issues with the Bill: A. SCOPE: Ø Sec. 2, (a) (2)(A)(i) – it talks about the entire title 17 (Copyright provisions) – this is way too broad, with no explicit mention to the copyright’s provisions on fair use or free speech or freedom of expression. This section needs to eliminated. What S. 3804 is telling us is that prior to any notice to the registrant and prior to any response, the domain name will be taken down. There is no scope within this section for any political speech or any other form of free speech to proliferate. Ø According to A & M Records, Inc. vs. Napster, Inc., 239 F.3d 1004, 1013 (Ninth Cir. 2001), the copyright holder must prove that s/he owns the infringed copyright and the accused infringer violated one [emphasis added] of the copyright’s exclusive rights. S. 3804 does not make such a distinction. By taking down or blocking the whole domain name with its full content, COICA will potentially be removing protected speech. There is no provision within section 3804 that considers the possibility that the site might contain speech that falls within the freedom of speech parameters. In essence, S. 3804 re-interprets the boundaries and scope of traditional copyright law as well as eliminating fair use and free speech defenses. Is this, the DMCA on steroids? B. In Rem – 1. This whole section is far too broad. It is much wider than the in rem provision within ACPA (in ACPA in rem is used when all other jurisdictional options have been exhausted). According to ACPA: (2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if-- (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and (ii) the court finds that the owner-- (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by-- (aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and (bb) publishing notice of the action as the court may direct promptly after filing the action. 2. “District of Columbia” – why this choice of forum? Within ACPA, situs is clearly defined and certain criteria need to apply: “In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which-- (i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.” This provision facilitates to the creation of an international tribunal within the United States, allowed to adjudicate the rights of foreign registrants. B. DUE PROCESS 1. “…in which the domain name registrar or domain name registry for at least 1 such domain name is located …”: this part needs to be removed. It provides for an unprecedented ‘jurisdictional discretion’ allowing the removal of all domain names affiliated with one registrant – and is technological unfeasible. Is our reading here correct: can the in rem jurisdiction over one domain name of one foreign registrant really be extended to all domain names of that registrant? How is a registrar to handle such a court order to domain names over which they have no contractual relation or responsibility? A registry?. There is no justification for this and it is totally against due process and justice. 2. Section (c) (1) (B) (i and ii) – the Registrant is not provided with the opportunity of a prompt response. COICA only allows the registrant to react “after the action is filed” which does not serve due process. 3. Section 3 – required actions by AG: This warrants expansion as it fails to consider the Registrants and the individual users. More precisely: a. The Attorney General (AG) shall also publish procedures developed in consultation with the International and National Registrant Community and with the public. b. The AG shall also provide guidelines to registrants about what safe harbor and protection mechanisms are in place. c. The AG shall also provide guidance to registrants concerning their fair use, free speech and freedom of expression rights and ways in which they can legitimately, fully and timely respond to the accusations against their domain names, webpages and speech. d. The AG shall also authorise the creation of entities that seek to support and advise registrants. (A similar concept exists within the European Union for consumers. Consumer protection regional offices exist throughout the countries of the EU). 4. Situs: Section (2) (d) (2) – Domains for which the Registry or Registrar is not located domestically: This whole section sounds as if the US is imposing its laws unilaterally around the world and the international registrant community, setting a very bad precedent. The language is so broad that in any given situation, section 2(d)(2)(A)(i) and (ii) will apply. The US is claiming ownership upon all domain name registrations. 5. Publication of Orders: Section (2)(f) does not provide the Registrant with the opportunity of a response. The Registrant should be allowed to respond prior to publication of the order. REMEDIES 1. Section 2(a)(2)(A)(i) and (ii) does not include a fair use, free speech provision. A number (iii) should be added along the following lines: (iii) the Attorney General, before issuing the order, shall exempt from consideration the internalised fair use and freedom of speech provisions of copyright and trademark law. 2. Service of Court Order: a. Section 2(e)(2)(B)(i) - This is a blocking provision. Considering the implications and effects of blocking, this provision opens a Pandora’s box. It paves the way for the possible and arbitrary blocking of other websites and the enforcement of other content restrictions. b. Section (2)(e)(2)(B)(i) currently reads: “a service provider, as that term is defined in section 512(k)(1) of title 17, United States Code, or any other operator of a nonauthoritative [emphasis added] domain name system server …”. What does ‘nonauthoritative’ mean? It is technically ambiguous. The definitions of a ‘service provider’ and ‘nonauthoritative domain name system server’ should be clear and unambiguous. 3. Communication with users: Section (2)(e)(3): It provides wide discretion at the expense of users. Communication to users should be prompt and clear. 4. Immunity. Section (2)(e)(5)(A) is too broad. Under this section the entities doing the blocking and takedowns are completely immune. This type of absolute immunity can be twisted and abused by ISP, for example, which will proceed in controlling Internet content. 5. Voluntary Actions. Section (2)(e)(5)(A) gives carte blance to providers to control determine which content is permissible. 6. Section on Modification or Vacation of Orders: the existing Defense clauses in this section are limited and should be expanded to include fair use, free speech and freedom of speech as exist within copyright and trademark statutes. Appendix A Discussion on In Rem Jurisdictional Provision There are 3 types: Ø true in rem (property rights constitute the subject of the dispute Ø quasi in rem I (property rights directly relate to a specific individual Ø quasi in rem II (property rights are related to a specific person, yet the underlying claim is unrelated to the res that justifies jurisdiction. So, in rem is an already wide provision. COICA is making use of all these types of in rem. 1. True in Rem: COICA will apply it in cases where the domain names are registered and hosted domestically. 2. Quasi in rem I: COICA will apply it when the registrant is a US citizen 3. Quasi in rem II: this is the provision to catch Registrants and speech located outside the US. This is also the most problematic. For quasi in rem II to exist, one needs to prove that some minimum contacts exist (International Shoe and Shaffer). The existence of minimum contacts and the requirements is not happening in this Bill. Traditionally, this requirement meant that contacts should be consistent, systematic and continuous. This sets of requirements is anathema to the new in rem jurisdiction defined in this Bill for domain names. ACPA started the slippery slope, transferring domain names arbitrarily (Cable News Network vs. cnnews.com). Applying the in rem in ACPA has been proven problematic. The traditional minimum contacts requirement standard cannot apply in the case of domain names. In order for the minimum contacts requirement to make sense in domain names we need to re-evaluate the criteria. For example, we have to determine that the standard is not only minimum contacts but also that these contacts have to be perpetual and substantial and clearly directed to the forum, claiming jurisdiction. 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. 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. 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! Dear ICANN,
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. |
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